DETAILED ACTION
Notice of Pre-AIA or AIA Status
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
Election/Restrictions
Claims 9-14 are withdrawn from further consideration pursuant to 37 CFR 1.142(b), as being drawn to a nonelected invention, there being no allowable generic or linking claim. Applicant timely traversed the restriction (election) requirement in the reply filed on February 17, 2026.
Applicant's election with traverse of claims 1-8 in the reply filed on February 17, 2026 is acknowledged. The traversal is on the ground(s) that the species identified are each described as one example in a large list of many compounds and that Drujon never discloses a radiation-curable coating composition comprising the specific combination. However, Drujon explicitly contemplates that blends of the monomers identified are suitable for the intended purpose of copolymerization to form curable coating compositions. A person skilled in the art would therefore be motivated by Drujon to select the known material based on its suitability for its intended purpose — see MPEP 2144.07. With regard to Applicant’s argument that the identified neopentyl glycol diacrylate does not fall within the newly amended scope of component (C). However, it is the position of the Office that Drujon still meets the limitations of claim 1 as amended (see rejection below).
Accordingly, Applicants arguments are not found persuasive because the restriction was required on the grounds that the groups of inventions do not relate to a single general inventive concept under PCT Rule 13.1 because, under PCT Rule 13.2, they lack the same or corresponding technical feature because the shared technical feature among the inventions does not make a contribution over the prior art and Applicant’s arguments/amendments do not overcome the prior art.
The requirement is still deemed proper and is therefore made FINAL.
Information Disclosure Statement
The information disclosure statement (IDS) submitted on June 21, 2023, April 9, 2024, November 13, 2024, and April 24, 2026 were filed. The submissions are in compliance with the provisions of 37 CFR 1.97. Accordingly, the information disclosure statements are being considered by the Office.
Claim Rejections - 35 USC § 103
The following is a quotation of 35 U.S.C. 103 which forms the basis for all obviousness rejections set forth in this Office action:
A patent for a claimed invention may not be obtained, notwithstanding that the claimed invention is not identically disclosed as set forth in section 102, if the differences between the claimed invention and the prior art are such that the claimed invention as a whole would have been obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art to which the claimed invention pertains. Patentability shall not be negated by the manner in which the invention was made.
The factual inquiries for establishing a background for determining obviousness under 35 U.S.C. 103 are summarized as follows:
1. Determining the scope and contents of the prior art.
2. Ascertaining the differences between the prior art and the claims at issue.
3. Resolving the level of ordinary skill in the pertinent art.
4. Considering objective evidence present in the application indicating obviousness or nonobviousness.
Claims 1-3 and 6 are rejected under 35 U.S.C. 103 as being unpatentable over Drujon et al. (EP3428199, hereinafter referred to as “Drujon”).
As to Claim 1: Drujon teaches a curable coating composition for improving the surface properties of plastics comprising components including: at least one (meth)acrylate which may be, inter alia, isobornyl acrylate ([0074]) (which reads on component A according to the instant specification para. [0033]), a mixture of reactive diluents ([0081]) selected from monofunctional monomers including hydroxyalkyl (meth)acrylates ([0086]) (which read on the claimed component B according to the instant specification para. [0038]), and further teaches exemplary monomers having at least 2 (meth)acrylic groups ([0087]) including SR833S ([0087]) (having the structure1 tricyclodecanedimethanol diacrylate, which reads on the claimed component (C) according to the instant specification para. [0042]. It is also noted that the attached evidentiary reference indicates that the structure has a Tg within the claimed range (186 ˚C)) and dipentaerythritol hexaacrylate ([0087]) (which reads on the claimed component (D) according to the instant specification para. [0046]). Drujon further teaches that the composition may comprise a polymerization initiator ([0013]). Based on the monomers disclosed by Drujon, a person having ordinary skill in the art before the effective filing date of the claimed invention would reasonably recognize that blends of monomers which read on the claimed components (A) through (D) along with a polymerization initiator are suitable for forming coatings for molded plastics ([0021]) such that the surface properties (e.g., paint adhesion) are improved ([0001]). It has been found that the selection of a known material based on its suitability for its intended use supports a prima facie obviousness determination — see MPEP 2144.07.
As to Claim 2: Drujon teaches the composition of claim 1 (supra).
Drujon teaches an exemplary composition comprising SR833S ([0087]) (having the structure1 tricyclodecanedimethanol diacrylate, which reads on the claimed component (C) according to the instant specification para. [0042]) (Table 4, pg. 13), wherein the component is present in an amount of 20 wt% relative to a blend of other monomers, which is within the claimed range.SR833
As to Claim 3: Drujon teaches the composition of claim 1 (supra).
Drujon teaches that the composition comprises at least one (meth)acrylate which may be, inter alia, isobornyl acrylate ([0074]) (i.e., an esterified product of a monohydric alcohol having 10 carbons and acrylic acid).
As to Claim 6: Drujon teaches the composition of claim 1 (supra).
Drujon teaches that the composition may comprise monomer corresponding to the claimed component (A) in an amount of 0.1 to 35 wt%, which overlaps with the claimed range.
Drujon further contemplates wherein the composition comprises reactive diluents in an amount of 0 to 75 wt% of the composition ([0081]). The reactive diluents may be a mixture of multiple species ([0081]) selected from monofunctional monomers including hydroxyalkyl (meth)acrylates ([0086]) (which read on the claimed component B according to the instant specification para. [0038]), and further teaches exemplary monomers having at least 2 (meth)acrylic groups ([0087]) including SR833S ([0087]) (having the structure1 tricyclodecanedimethanol diacrylate, which reads on the claimed component (C) according to the instant specification para. [0042]) and dipentaerythritol hexaacrylate ([0087]) (which reads on the claimed component (D) according to the instant specification para. [0046]). Although Drujon contemplates blends of multiple reactive diluents, Drujon does not explicitly teach an amount for each of the corresponding monomers, a person having ordinary skill in the art at the time of the invention would have recognized that the relative amounts of monomers having two polymerizable unsaturated groups per molecule and a monomer having 3 to 9 polymerizable unsaturated groups per molecule and would control the crosslinking of the polymeric product of polymerization and the resultant properties thereof (i.e., viscosity, see [0082]). As such, it would have been considered to be a result effective variable by a person having ordinary skill in the art at the time of the invention. “[W]here the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation.” In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955). See MPEP § 2144.05(II). It would have been obvious to a person having ordinary skill in the art at the time of the invention to have optimized the relative amounts of monomers having two polymerizable unsaturated groups per molecule and a monomer having 3 to 9 polymerizable unsaturated groups per molecule of Drujon through routine experimentation, and the motivation to have done so would have been, as Drujon suggests, to control the resultant properties of the polymer formed from polymerization thereof (e.g., adhesion, handleability, viscosity, see [0082]).
Claim 5 is rejected under 35 U.S.C. 103 as being unpatentable over Drujon et al. (EP3428199, hereinafter referred to as “Drujon”) in view of Hosokawa (US Pat. No. 5,409,965, hereinafter referred to as “Hosokawa”).
As to Claim 5: Drujon teaches the composition of claim 1 (see above).
Drujon teaches various crosslinking monomers having a functionality of (meth)acrylic groups greater than 2 (e.g., dipentaerythritol hexa(meth)acrylate) ([0087]). However, Drujon is silent towards wherein the composition comprises a caprolactone-modified polyfunctional (meth)acrylate that is an esterified product of a polyhydric alcohol and a reaction product of (meth)acrylic acid and ε-caprolactone.
Hosokawa teaches a related curable coating compositions intended for coating plastic articles (col. 1, ln. 22-30, col. 7) comprising a blend of multifunctional acrylate-based monomers (Abstract). Hosokawa further teaches a polyfunctional acrylate having at least three acryloyl groups per molecule which may be, inter alia, caprolactone-modified dipentaerythritol hexaacrylate (col. 3, ln. 46-64), which reads on the claimed caprolactone-modified polyfunctional (meth)acrylate that is an esterified product of a polyhydric alcohol and a reaction product of (meth)acrylic acid and ε-caprolactone. Drujon and Hosokawa are considered analogous art because they are directed towards the same field of endeavor, namely, acrylate-based radically curable coating compositions intended for plastic substrates. It would have been obvious to a person having ordinary skill in the art before the effective filing date of the claimed invention to select caprolactone-modified dipentaerythritol hexaacrylate as an alternative to the at least one crosslinking monomer with a functionality of (meth)acrylic groups of at least two per molecule of Drujon and the motivation would have been that Hosokawa teaches that such a species is recognized within the art as suitable for the intended purpose of acting as a muti-functional crosslinker for (meth)acrylate-based coating compositions for plastic substrates. It has been found that the selection of a known material based on its suitability for its intended use supports a prima facie obviousness determination — see MPEP 2144.07.
Claims 7-8 are rejected under 35 U.S.C. 103 as being unpatentable over Drujon et al. (EP3428199, hereinafter referred to as “Drujon”) in view of Cooper et al. (US 20060118999, hereinafter referred to as “Cooper”).
As to Claims 7-8: Drujon teaches the composition of claim 1 (see above).
Drujon teaches wherein the composition may comprise a pigment ([0030]) and contemplates commercial conductive pigmented coatings ([0099]). However, Drujon does not explicitly teach a composition comprising a conductive pigment.
Cooper teaches a coating composition for in-mold coating of plastic articles (Abstract) based on curable monomers and oligomers having ethylenically unsaturated groups ([0091]) further comprising pigments which may be conductive carbon pigments ([0093]). Drujon and Cooper are considered analogous art because they are directed towards the same field of endeavor, namely, curable acrylate based coating compositions. It would have been obvious to a person having ordinary skill in the art before the effective filing date of the claimed invention to include a conductive carbon pigment within the composition of Drujon based on the finding that Cooper teaches that (1) conductive pigments are recognized within the art as suitable pigment additives for plastic article coating compositions and (2) that doing so improves deficiencies associated with coatings of molded plastic articles, namely, a lack of electrical and/or thermal conductivity ([0003]).
Correspondence
Any inquiry concerning this communication or earlier communications from the examiner should be directed to CULLEN L. G. DAVIDSON IV whose telephone number is (703)756-1073. The examiner can normally be reached M-F 9:30-6:00.
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/C.L.G.D./ Examiner, Art Unit 1767
/Andrew J. Oyer/Primary Examiner, Art Unit 1767
1 Arkema – SR833S Tricyclodecanedimethanol Diacrylate Technical Data Sheet
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