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 .
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 – 3 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by JPH0633217 to Yamazaki et al. (hereinafter Yamazaki), as evidenced by US 2024/0149197 to Yonezawa. For the purposes of examination, citations for Yamazaki are taken from a machine translation of the document obtained from the European Patent Office website in March 2026, except where expressly noted.
Regarding Claims 1 and 2. Yamazaki teaches a composition comprising (A) a polymerizable compound of formula (I) and (C) a photopolymerization initiator [0008], i.e. a photocurable composition.
The polymerizable compound of formula (I) may specifically be U2-02, which corresponds to a compound represented by instantly claimed formula (A1) in which R1 and R4 are ethylene, i.e. an alkylene group having two carbon atoms; R2 and R3 are hexamethylene, i.e. groups in which isocyanate groups are respectively removed from an a+1-valent aliphatic isocyanate compound and a b+1-valent aliphatic isocyanate compound correspond to hexamethylene diisocyanate; R5 is a hydrogen atom; and a and b are each 1. The molecular weight of the unit represented by –(O-R1)n–O– can be calculated to be roughly 3,520 g/mol, as n corresponds to a value of 80 (see formula (I) depicted on Page 1 of the original publication and [0038] of the machine translation of the document furnished with this Office action).
Yamazaki also teaches the photocurable composition may further comprises NK Ester BPE-500 [0012]. Yonezawa provides evidence that NK Ester BPE-500 is an ethoxylated bisphenol A dimethacrylate [0273], i.e. a chain aliphatic dimethacrylate. [0063] of the PG-PUB of the instant application sets forth ethoxylated bisphenol A dimethacrylate as a photopolymerizable monomer.
Regarding Claim 3. Yamazaki teaches the photocurable composition according to Claim 1 wherein the polymerizable compound of formula (I) may be provided as component (A) [0009], i.e. a ratio of a mass of the urethane (meth)acrylate of instantly claimed formula (I) to a mass of the urethane (meth)acrylate (A) is 100% by mass.
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.
This application currently names joint inventors. In considering patentability of the claims the examiner presumes that the subject matter of the various claims was commonly owned as of the effective filing date of the claimed invention(s) absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and effective filing dates of each claim that was not commonly owned as of the effective filing date of the later invention in order for the examiner to consider the applicability of 35 U.S.C. 102(b)(2)(C) for any potential 35 U.S.C. 102(a)(2) prior art against the later invention.
Claim 4 is rejected under 35 U.S.C. 103 as being unpatentable over JPH0633217 to Yamazaki et al. (hereinafter Yamazaki), as applied to Claim 1 above.
Regarding Claim 4. Yamazaki teaches the photocurable composition of Claim 1. As detailed in the rejection of Claim 1 above, R1 corresponds to ethylene, i.e. an ethane-1,2-diyl group. Thus, R1 does not correspond to a propane-1,2-diyl group as instantly claimed in the inventive examples. However, in the general disclosure, Yamazaki teaches the R4 group in its formula (I), which corresponds to the instantly claimed R1 group, may correspond to isopropylene [0009], i.e. a propane-1,2-diyl group. Before the effective filing date, it would have been obvious to substitute the ethylene group corresponding to the instantly claimed R1 group with a propane-1,2-diyl group. The motivation would have been that it is obvious to substitute equivalents known for the same purpose. (MPEP 2144.06) Ethylene and propane-1,2-diyl are both set forth by Yamazaki as suitable species of this moiety [0009], thus providing obviousness of substituting one for the other in the disclosed structure.
Claim 7 is rejected under 35 U.S.C. 103 as being unpatentable over JPH0633217 to Yamazaki et al. (hereinafter Yamazaki), as applied to Claim 1 above, and further in view of US 5,338,613 to Tomotsugu et al. (hereinafter Tomotsugu).
Regarding Claim 7. Yamazaki teaches the photocurable composition of Claim 1 may be, for example benzophenone [0018]. Yamazaki does not then expressly teach the photopolymerization initiator corresponds to one of the instantly claimed species. However, Tomotsugu teaches the concept of providing both benzophenone and acylphosphine oxides as photosensitizers/photopolymerization initiators in photocurable compositions based on urethane acrylate resins (Column 4, Lines 1 – 9). Yamazaki and Tomotsugu are analogous art as they are from the same field of endeavor, namely photocurable compositions based on urethane acrylate resins. Before the effective filing date of the instantly claimed invention, it would have been obvious to a person of ordinary skill in the art to substitute an acylphosphine oxide for benzophenone in Yamazaki. The motivation would have been that it is obvious to substitute equivalents known for the same purpose. (MPEP 2144.06) Tomotsugu teaches both benzophenone and acylphosphine oxides are known photopolymerization initiators for urethane acrylate resins (Column 4, Lines 1 – 9), thus providing obviousness of substituting one for the other in such compositions.
Claims 8 – 11 are rejected under 35 U.S.C. 103 as being unpatentable over JPH0633217 to Yamazaki et al. (hereinafter Yamazaki), as applied to Claim 1 above, and further in view of US 4,929,491 to Kawakami et al. (hereinafter Kawakami).
Regarding Claims 8 – 11. Yamazaki teaches the photocurable composition of Claim 1 and a step of photocuring by ultraviolet exposure [0029].
Yamazaki does not expressly teach said composition is used for manufacturing a foam through mixing with a gas before curing. However, Kawakami teaches the concept of manufacturing a foam through mixing with FE-788 as a foaming agent, heating to decompose the foaming agent, and then photocuring via ultraviolet ray radiation (Column 3, Lines 1 – 7 and Line 47). FE-788 corresponds to a commercially available form of azodicarbonamide, which would be readily recognized by persons of ordinary skill in the art to provide bubbles of carbon dioxide gas when exposed to heat. Yamazaki and Kawakami are analogous art as they are from the same field of endeavor, namely photocurable compositions comprising acrylate compounds for the preparation of circuit boards. Before the effective filing date of the instantly claimed invention, it would have been obvious to a person of ordinary skill in the art to foam the photocurable composition of Yamazaki, as taught by Kawakami. The motivation would have been that foaming the material may provide advantages, such as allowing for control over the thickness of the layer prepared from the photocurable composition and the preparation of a single layer instead of multiple layers (Column 3, Line 58 – Column 4, Line 11).
The references are silent with respect to the size of the bubbles of the gas in a cured material which has been cured under atmospheric pressure. Consequently, the Office recognizes that all of the claimed effects or physical properties are not positively stated by the reference(s). However, Yamazaki, when modified with Kawakami in the manner proposed, teaches a product prepared from all of the claimed ingredients in the claimed amounts by a substantially similar process. Therefore, the claimed effects and physical properties, i.e. bubbles of the gas in a cured material which has been cured under atmospheric pressure with a size in the instantly claimed range, would implicitly be achieved in a product prepared from all of the claimed ingredients in the claimed amounts by a substantially similar process. See In Re Spada, 911, F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990) and MPEP 2111.01 (I)(II). If it is applicant’s position that this would not be the case: (1) evidence would need to be provided to support the applicant’s position and (2) it would be the Office’s position that the application contains inadequate disclosure as to how to obtain the claimed properties in a product prepared from all of the claimed ingredients in the claimed amounts by a substantially similar process.
Response to Arguments
Applicant's arguments filed May 12, 2026 have been fully considered but they are not persuasive. Applicant argues that the ethoxylated bisphenol A di(meth)acrylate (NK Ester BPE-500) of Yamazaki is an aromatic compound and therefore does not correspond to one of the instantly claimed species of photopolymerizable monomer (B).
However, [0042] of the instant specification filed with the United States Patent and Trademark Office on September 18, 2023 expressly sets forth ethoxylated bisphenol A di(meth)acrylate as a species of chain aliphatic di(meth)acrylate. The ethoxylated bisphenol A di(meth)acrylate taught by Yamazaki is then suitably relied upon to meet the species of photopolymerizable monomer (B) corresponding to a chain aliphatic di(meth)acrylate.
Applicant’s arguments that the other references applied in the outstanding rejections under 35 U.S.C. 103 fail to overcome the deficiencies of Yamazaki are not persuasive, as the alleged deficiencies have been addressed above.
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.
Correspondence
Any inquiry concerning this communication or earlier communications from the examiner should be directed to MELISSA RIOJA whose telephone number is (571)270-3305. The examiner can normally be reached Monday - Friday 10:00 am - 6:30 pm EST.
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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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/MELISSA A RIOJA/Primary Examiner, Art Unit 1764
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