DETAILED ACTION
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA . Claims 1-16 are currently pending in the application.
Applicant’s election of Group I election (claims 1-14) in the reply filed on 4/20/26 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Claims 15 and 16 are withdrawn from further consideration pursuant to 37 CFR 1.142(b), as being drawn to a nonelected invention, there being no allowable generic or linking claim.
Claim Rejections -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.
Claims 1-3, 6-14 are rejected under 35 U.S.C. 103 as being unpatentable over Iizuka et al. (JP 2004-217809 A, machine translation), in view of Kimura (JP 2010-007049A, MT).
Regarding claims 1, 2, 6-11, 14, Iizuka teaches a composition containing (A) 50 parts by mass or more and 90 parts by mass or less of a urethane (meth)acrylate-based oligomer (A) and a reactive diluent monomer (B), said amount being based on the total amount of (A) and (B) (Overview, [0025]). In addition, said composition may include a photopolymerization initiator (reads on (C)) [0026]-[0028], and a lubricant [0028].
Disclosed urethane (meth)acrylate (A) has two polymerizable (meth) acryloyloxy groups [0013], and formed by reacting (a-1) an organic diisocyanate, (a-2) polyether glycol, polyester glycol or polycarbonate glycol and (a-2) hydroxyalkyl (meth)acrylate, wherein the urethane (meth)acrylate and an average molecular weight between crosslinking points is preferably from 1500 to 4000 (overlaps in scope with the range in claim 2, and said glycols meet the limitation of claim 11 [0014]-[0020]). Disclosed amount of urethane (meth)acrylate (A) and disclosed components (a-1), (a-2) and (a-3) overlap in scope with the requirements of urethane (meth)acrylate compounds of the instant disclosure (suitable as claimed component (A)) [0022]-[0036].
As component (B), disclosed genus includes monofunctional monomers, with acrylamide, isobornyl (meth)acrylate and acryloylmorpholine taught as preferred and/or exemplified species of (B) ([0023]-[0024], Examples, TABLES 1,2, [0037], meet limitation of claim 10). It is noted that the disclosed monomers overlap in scope with those of the instant disclosure ([0038]-[0043], TABLE 2).
Iizuka is silent on a composition comprising (1) a metallic soap (B), and (2) a difference in HSP within the scope of claim 1, or a cured product thereof.
At the outset, it is noted that in the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists. In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976). See MPEP § 2144.05.
Regarding (1), noting that Iizuka is open to including a lubricant [0028], the secondary reference to Kimura is in a related field of endeavor and drawn to energy-curable composition comprising a slip agent, i.e., a lubricant, such as calcium stearate and aluminum oleate (read on metallic soap (B)), in an amount of less than 5 wt.% so as to confer the effect of addition, clarity and heat resistance [0057]-[0058]. Disclosed species falls within the scope of compounds recited in claims 6 and 7, with calcium stearate falling within the scope of claims 8 and 9.
Given the teaching in Kimura on advantages of a slip agent, it would have been obvious to one of ordinary skill in the art, as of the effective filing date of the claimed invention, to include any of calcium stearate and aluminum oleate in Iizuka’s curable compositions, and cured products thereof.
Regarding (2), for reasons stated above, disclosed components (A) and (B) in Iizuka overlap in scope with components and amounts taught in the instant disclosure as being suitable for forming claimed (A). Additionally, the secondary reference to Kimura teaches claimed (B) as being advantageous in curable compositions. Thus, a skilled artisan would reasonably expect Iizuka’s photocurable composition comprising components within the scope of claim (A), as modified by Kimura, to satisfy the claimed HSP difference, absent evidence to the contrary. As a practical matter, the Patent Office is not equipped to manufacture products by the myriad of processes put before it and then obtain prior art products and make physical comparisons
Regarding claim 3, Kimura teaches in an amount of less than 5 wt.% of the composition. Moreover, it is the examiner’s position that the amount of slip agent in the composition is a result effective variable because changing it will clearly affect the type of product obtained. See MPEP § 2144.05 (B). Case law holds that “discovery of an optimum value of a result effective variable in a known process is ordinarily within the skill of the art.” See In re Boesch, 617 F.2d 272, 205 USPQ 215 (CCPA 1980). It would have been obvious to a skilled artisan to utilize appropriately effective amount of a slip agent in Iizuka’s compositions of overlapping scope, to provide for the desired level of advantages, including in the amounts within the scope of the claimed invention absent evidence to the contrary.
Regarding claim 12, Iizuka teaches a composition containing (A) 50 parts by mass or more and 90 parts by mass or less of a urethane (meth)acrylate-based oligomer (A) and a reactive diluent monomer (B), said amount based on the total amount of (A) and (B) (Overview, [0025]).
Regarding claim 13, Kimura teaches slip agent such as metallic soaps (e.g., calcium stearate, aluminum oleate), and silicones (dimethyl silicone oil, alkyl-modified silicone oil) [0057], i.e., equivalence thereof. It would have been obvious to one of ordinary skill in the art at the time the claimed invention was made to combine a metallic soap and silicone oil since the two are recognized by the prior art as equivalents suitable for the same purpose, i.e., as slip agents.
Allowable Subject Matter
Claims 4 and 5 are objected to as being dependent upon a rejected base claim, but would be allowable if rewritten in independent form including all of the limitations of the base claim and any intervening claims.
Conclusion
Any inquiry concerning this communication or earlier communications from the
examiner should be directed to Satya Sastri at (571) 272 1112. The examiner can be reached Monday-Friday, 9AM-5.30PM (EST). If attempts to reach the examiner by telephone are unsuccessful, the examiner's supervisor, Mr. Robert Jones can be reached at (571)-270-7733. The fax phone number for the organization where this application or proceeding is assigned is (571) 273 8300.
Information regarding the status of an application may be obtained from the Patent Application Information Retrieval (PAIR) system. Status information for published applications may be obtained from either Private PAIR or Public PAIR. Status information for unpublished applications is available through Private PAIR only. For more information about the PAIR system, see https://ppair-my.uspto.gov/pair/PrivatePair. Should you have questions on access to
the Private PAIR system, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative or access to the automated information system, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/Satya B Sastri/
Primary Examiner, Art Unit 1762
Prosecution Insights