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 .
This Office action is in response to the amendment filed 4/27/2026. Claim 1 is amended; and claims 1-7 are currently pending in the application.
The text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action.
Claim Rejections - 35 USC § 112
The following is a quotation of 35 U.S.C. 112(b):
(b) CONCLUSION.—The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the inventor or a joint inventor regards as the invention.
The following is a quotation of 35 U.S.C. 112 (pre-AIA ), second paragraph:
The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.
Claims 1-7 are rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor (or for applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention.
Claim 1 recites “hydroxyl component composed only of” (line 5). MPEP § 2111.03(IV) states, transitional phrase “composed of” has been interpreted in the same manner as either “consisting of” or “consisting essentially of” depending on the facts of the particular case. It is not clear if the recitation “hydroxyl component composed only of” should be interpreted as “consisting of” or “consisting essentially of”. In light of the general disclosure, Examiner interprets it as “consisting essentially of” (see paragraphs 0042-0072 of present application).
Claims 2-7 are subsumed by this rejection because of the dependence either directly or indirectly on independent claim.
Claim Rejections - 35 USC § 102
In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis (i.e., changing from AIA to pre-AIA ) for the rejection will not be considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status.
The following is a quotation of the appropriate paragraphs of 35 U.S.C. 102 that form the basis for the rejections under this section made in this Office action:
A person shall be entitled to a patent unless –
(a)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention.
Claims 1 and 3-7 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Kibe (JP 2019-104886 A).
It is noted that JP 2019-104886 A is in Japanese. A copy of the machine translation into English is provided with Office action mailed 2/3/2026. All line/paragraph citations in the body of rejection below are to the English translation unless explicitly stated.
Regarding claims 1, 3, and 5, Kibe discloses polycarbonate based resin obtained by reacting (A) polycarbonate polyol, (B) a polyisocyanate compound and (C) (meth)acryloyl group-containing polyol having at least one (meth)acryloyl group and 2 or more hydroxyl groups. The cured resin layer contains a cured product of the resin composition (abstract) which reads on the cured product in present claim 5 and “curable” is implicit in the composition being cured. See example 6, wherein polyurethane acrylate based polycarbonate-based (i.e., reads on polyurethane in present claim 1) composition (paragraph 0138 and Table 2) is obtained from components comprising PCD3 (i.e., isosorbide based polycarbonate diol BENEBiOL HS0850, see paragraph 0122), hexamethylene diisocyanate (i.e., reads on aliphatic diisocyanate in present claim 1), and 2-hydroxyethyl acrylate (i.e., reads on monohydroxyl monoacrylate in present claim 1). It is noted that isosorbide based polycarbonate diol BENEBiOL HS0850 is derived from plants (i.e., reads on hydroxyl component composed only of a heterocyclic ring-containing plant-derived polyol in present claim 1; and isosorbide modified polycarbonate polyol in present claim 3). Additionally, while it is recognized that the phrase “composed only of” (interpreted as “consisting essentially of”) narrows the scope of the claims to the specified materials and those which do not materially affect the basic and novel characteristics of the claimed invention, absent a clear indication of what the basic and novel characteristics are, “consisting essentially of” is construed as equivalent to “comprising”. Further, the burden is on the applicant to show that the additional ingredients in the prior art, i.e. component “C” of Kibe, would in fact be excluded from the claims and that such ingredients would materially change the characteristics of the applicant’s invention, See MPEP 2111.03. Case law holds that “if an applicant contends that additional steps or material in the prior art are excluded by the recitation of ‘consisting essentially of,’ (i.e., composed only of) applicant has the burden of showing that the introduction of additional steps or components would materially change the characteristics of applicant’s invention.” In re De Lajarte, 337 F.2d 870, 143 USPQ 256 (CCPA 1964). Applicant is advised to submit clear and convincing evidence in the form of a declaration that component “C” of Kibe would materially affect the basic and novel characteristics of applicant’s invention.
Regarding claim 4, see example 7 (Table 2), wherein the pentaerythritol triacrylate is present in amounts greater than 30 parts per 100 parts by mass of the reaction product (i.e., reads on polyfunctional (meth)acrylate having 3 or more ethylenically unsaturated groups and its amount in present claim 4).
Regarding claim 6, Kibe teaches that in various electric fields, a coating film may be provided for protecting the base material. In the field of electronic devices, a transparent protective layer is provided on the surface of the touch panel (paragraph 0002). Given that the coating film may be used in electronic devices and comprises reaction product as in present claims, it is the Office’s position that cured polyurethane produced in Kibe inherently has a haze of less than 0.5%. Case law holds that a material and its properties are inseparable. In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990).
Regarding claim 7, Kibe teaches that laminate is produced by forming a resin composition layer of the polycarbonate-based resin on a substrate (paragraph 0105), cured by polymerizing and solidifying the resin components in the resin composition layer (paragraph 0109) and thickness of the resin composition layer after drying is 0.1 to 50 microns (paragraph 0108).
Claim Rejections - 35 USC § 103
In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis (i.e., changing from AIA to pre-AIA ) for the rejection will not be considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status.
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.
Claim 2 is rejected under 35 U.S.C. 103 as being unpatentable over Kibe (JP 2019-104886 A).
The discussion with respect to Kibe in paragraph 8 above is incorporated here by reference.
Kibe is silent with respect to plant derived 1,5-pentamethylene diisocyanate.
However, Kibe in the general disclosure teach that from the view point of reducing yellowing discoloration due to light, as the aliphatic polyisocyanate, pentamethylene diisocyanate is preferable (paragraph 0064). Additionally, Lee et al in the same field of endeavor teach eco-friendly biopolyurethane adhesives prepared by using biobased isosorbide carbonate diol and 1,5-pentamethylene diisocyanate (abstract). Due to environmental regulations and restrictions on use of organic solvents as well as problems with carcinogens due to the use of petroleum based polyols and isocyanates, there is a need for bio-based polyurethanes (page 318, col. 2). Therefore, in light of the teachings in Lee et al and given that pentamethylene diisocyanate is a preferred isocyanate in the preparation of resin composition in Kibe, it would have been obvious to one skilled in art prior to the filing of present application to include plant derived 1,5-pentamethylene diisocyanate in the preparation of the resin composition, of Kibe, for above mentioned advantages.
Response to Arguments
The objections, and rejections under 35 U.S.C. 102 and 103 as set forth in paragraphs 3, 6, and 10, of Office action mailed 2/3/2026, are withdrawn in view of amendments and/or applicant arguments and/or new grounds of rejection set forth in this Office action, necessitated by amendment.
Applicant's arguments filed 4/27/2026 have been fully considered but they are not persuasive. Specifically, general thrust of Applicant’s Argument is that claim 1 has been amended to recite “hydroxyl group-containing unsaturated compound is monohydroxyl mono(meth)acrylate” and “the hydroxyl component is composed only of a heterocyclic ring-containing plant-derived polyol and a hydroxyl group-containing unsaturated compound”. Synthesis example 6, of Kibe, uses DA-250 in addition to isosorbide-based polycarbonate diol, 2-hydroxyethyl acrylate and hexamethylene diisocyanate. DA-250 has at least one (meth)acryloyl group and two or more hydroxyl groups in the molecule and thus differs from the monohydroxyl mono(meth)acrylate of the present invention. Kibe discloses component (C) such as DA-250 as an essential component and does not have an idea of excluding the component (C).
In response, hydroxyl component of the curable composition based on the recitation “composed only of” can be interpreted as “consisting of” and “consisting essentially of”, see MPEP § 2111.03(IV). However, if “consisting of” is what Applicant intended, by the recitation “composed only of”, Kibe teaches that phrase “formed by reacting at least the component (A), the component (B), and the component (C) includes … also obtaining a reaction product by reacting the component (A), the component (B), and other components as necessary, and then reacting the obtained reaction product with the component (C)” (paragraph 0081). Therefore, it is the Office’s position that it would have been obvious to one skilled in art prior to the filing of present application to prepare a curable composition comprising a reaction product all components, except component (C) and adding component (C) to the curable composition comprising obtained reaction product, absent evidence to the contrary.
Conclusion
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any nonprovisional extension fee (37 CFR 1.17(a)) pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the mailing date of this final action.
Contact Information
Any inquiry concerning this communication or earlier communications from the examiner should be directed to KARUNA P REDDY whose telephone number is (571)272-6566. The examiner can normally be reached 8:30 AM to 5:00 PM M-F.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Arrie (Lanee) Reuther can be reached at 571-270-7026. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/KARUNA P REDDY/Primary Examiner, Art Unit 1764
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