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
Applicant’s election of Group I, claims 1-15, in the reply filed on 03 March 2026 is acknowledged. Because applicant did not distinctly and specifically point out the supposed errors in the restriction requirement, the election has been treated as an election without traverse (MPEP § 818.01(a)).
Claims 16-31 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected invention, there being no allowable generic or linking claim. Election was made without traverse in the reply filed on 03 March 2026.
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.
Claim(s) 1-2, 4-12, 14, and 15 is/are rejected under 35 U.S.C. 103 as being unpatentable over Izawa et al. (US Serial No. 2013/0140083).
Regarding claims 1-2, 4, 5, 10-12, and 14-15; Izawa et al. teaches a composition comprising a urethane di(meth)acrylate (compound A) [0102], having a weight average molecular weight of not less than 5000 to less than 30,000 [0107], an N-vinyl monomer (e.g. N-vinyl caprolactam; compound B, claim 14) [0122], a radical photoinitiator (curing agent D, claim 15) [0127], and 1 wt% to 50 wt% of silicon particles [0083], such as core-shell silicon particles, wherein the shell is silsesquioxane [0072]. In a preferred embodiment, Izawa et al. teaches KMP-600 (core-shell type particle wherein the shell is composed mainly of a random polysilsesquioxane and has a methyl group, with an average particle size of 5.0 μm, instant claims 2, 4, 10-12; see spec [00103-00104]), in an amount of 20 parts with respect to 100 parts of the radically polymerizable component (as calculated by Examiner). In the instance a urethane di(meth)acrylate compound having a weight average molecular weight of 10,000, it would thus have an ethylenically unsaturated group equivalent of 5,000 g/eq (as calculated by Examiner).
Urethane diacrylate with average molecular weight of 10,000 (i.e. diacrylate contains 2 moles of acrylate groups per 1 mole of compound)
acrylic equivalent = 10,000 (g) = 5,000 (g/eq)
2 (eq)
Izawa et al. teaches all of the above required components, however fails to explicitly disclose each in a preferred embodiment. A reference may be relied upon for all that it would have reasonably suggested to one having ordinary skill the art, including the non-preferred embodiments. See Merck & Co. v. Biocraft Laboratories, 874 F.2d 804, 10 USPQ2d 1843 (Fed. Cir.); MPEP §2123. Izawa et al. does not specifically disclose an embodiment containing a urethane diacrylate having a MW of 10,000, a N-vinyl monomer, a polysilsesquioxane particle, and a photoinitiator. However, at the time of invention a person of ordinary skill in the art would have found it obvious to prepare a composition containing a urethane diacrylate having a MW of 10,000, a N-vinyl monomer, a polysilsesquioxane particle, and a photoinitiator based on the invention of Izawa et al., and would have been motivated to do so since Izawa et al. suggests that the composition can contain a urethane diacrylate having a MW of 10,000, a N-vinyl monomer, a polysilsesquioxane particle, and a photoinitiator. Additionally, “It is prima facie obvious to combine two compositions each of which is taught by the prior art to be useful for the same purpose, in order to form a third composition to be used for the very same purpose.... [T]he idea of combining them flows logically from their having been individually taught in the prior art.” In re Kerkhoven, 626 F.2d 846, 850, 205 USPQ 1069, 1072 (CCPA 1980) (citations omitted) [see MPEP 2144.06].
Regarding claims 6-7; Izawa et al. teaches the urethane (meth)acrylate may be used in combination with other radical polymerizable compounds [0101], for example a compound of general formula (B), wherein R3-R4 represent hydrogen, c and d are an integer of 2 (MW of about 792 g/mol) [0089].
PNG
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134
532
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Greyscale
Presuming a 1:1 weight ratio mixture:
[50 * (2/792) + 50 * (2/10,000)] = 0.126 + 0.01 = 0.00136 eq/g = (1 / 0.00136) = 735eq/g
100 100
When faced with a mixture, one of ordinary skill in the art would be motivated to select a 1:1 ratio, absent evidence of unexpected or surprising results. Case law holds that "[h]aving established that this knowledge was in the art, the examiner could then properly rely... on a conclusion of obviousness, 'from common knowledge and common sense of the person of ordinary skill in the art within any specific hint or suggestion in a particular reference.'" In re Bozek, 416 F.2d 1385, 1390, 163 USPQ 545, 549 (CCPA 1969). Given the recitation of a “combination” in Izawa et al., one of ordinary skill in the art would at once envisage a 1:1 ratio, since a 1:1 ratio is the most common starting point when mixing two components.
Regarding claim 8; Izawa et al. teaches the mixing amount of the urethane (meth)acrylate is preferably 5 to 95 wt.% of the composition [0115] and the mixing amount of the N-vinyl compounds is 0.2 to 15 wt% [0123], thus the amount of the urethane (meth)acylate falls within the scope required by the claim language. In the case where the claimed ranges “overlap or lie inside ranges disclosed by the prior art” a prima facie case of obviousness exists. See In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990), see MPEP §2144.05.
Regarding claim 9; Izawa et al. teaches the urethane acrylate can be prepared from polycarbonate diols [0106].
Claim(s) 3 is/are rejected under 35 U.S.C. 103 as being unpatentable over Izawa et al. (US Serial No. 2013/0140083), as applied to claim 1 above, and further in view of Sukata (US Serial No. 2015/0255633).
Izawa et al. renders obvious the basic claimed photocurable resin composition, as set forth above, with respect to claim 1.
Regarding claim 3; Izawa et al. teaches a polysilsesquioxane particle, such as KMP-600 (core shell) [Table 1], however fails to teach a polysilsesquioxane particle composed entirely of polysilsesquioxane. Sukata teaches a composition, suitable used as an adhesive composition, comprising urethane acrylate oligomers [0087] and silicone containing fillers such as KMP-600 and X-52-854 (polysilsesquioxane particle made entire of polysilsesquioxane, see instant spec [0099]) [0091]. Therefore, Sukata teaches that KMP-600 and X-52-854 are functional equivalents for the purpose of functioning as silicon fillers for use in adhesive compositions. It is prima facie obvious to substitute art-recognized functional equivalents known for the same purpose (See MPEP § 2144.06).
Claim(s) 1 and 13 is/are rejected under 35 U.S.C. 103 as being unpatentable over Qiu et al. (CN 110669423), wherein the machine English translation is used for citation.
Regarding claims 1 and 13; Qiu et al. teaches a composition comprising a urethane di(meth)acrylate (compound A) [046], having a weight average molecular weight of 1500 to 4500 and a functionality of 6-15 [046], a (meth)acrylate monomer (compound B) [048-049], a radical photoinitiator (curing agent D) [050], and 20 wt% to 40 wt% of reactive (meth)acrylate-polysilsesquioxane modified silica nanoparticles [034]. In the instance a urethane di(meth)acrylate compound having a weight average molecular weight of 4500 and a functionality of 6, it would thus have an ethylenically unsaturated group equivalent of 750 g/eq (as calculated by Examiner).
Urethane diacrylate with average molecular weight of 4,500 (i.e. diacrylate contains 6 moles of acrylate groups per 1 mole of compound)
acrylic equivalent = 4,500 (g) = 750 (g/eq)
6 (eq)
Qiu et al. teaches all of the above required components, however fails to explicitly disclose each in a preferred embodiment. A reference may be relied upon for all that it would have reasonably suggested to one having ordinary skill the art, including the non-preferred embodiments. See Merck & Co. v. Biocraft Laboratories, 874 F.2d 804, 10 USPQ2d 1843 (Fed. Cir.); MPEP §2123. Izawa et al. does not specifically disclose an embodiment containing a urethane hexaacrylate having a MW of 4500, an acrylate monomer, a polysilsesquioxane particle, and a photoinitiator. However, at the time of invention a person of ordinary skill in the art would have found it obvious to prepare a composition containing a urethane hexaacrylate having a MW of 4500, an acrylate monomer, a polysilsesquioxane particle, and a photoinitiator based on the invention of Qiu et al., and would have been motivated to do so since Qiu et al. suggests that the composition can contain a urethane hexaacrylate having a MW of 4500, an acrylate monomer, a polysilsesquioxane particle, and a photoinitiator. Additionally, “It is prima facie obvious to combine two compositions each of which is taught by the prior art to be useful for the same purpose, in order to form a third composition to be used for the very same purpose.... [T]he idea of combining them flows logically from their having been individually taught in the prior art.” In re Kerkhoven, 626 F.2d 846, 850, 205 USPQ 1069, 1072 (CCPA 1980) (citations omitted) [see MPEP 2144.06].
Correspondence
Any inquiry concerning this communication or earlier communications from the examiner should be directed to JESSICA ROSWELL whose telephone number is (571)270-5453. The examiner can normally be reached M-F 8:00 am to 5:00 pm.
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/JESSICA M ROSWELL/ Primary Examiner, Art Unit 1767
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