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 .
Status of Application
Claims 1-19 are pending. Claims 15-19 are withdrawn. Claims 1-14 are presented for examination.
Response to Arguments
Applicant's arguments filed 4/17/2026 have been fully considered but they are not persuasive.
In response to applicant's argument that the examiner's conclusion of obviousness is based upon improper hindsight reasoning, it must be recognized that any judgment on obviousness is in a sense necessarily a reconstruction based upon hindsight reasoning. But so long as it takes into account only knowledge which was within the level of ordinary skill at the time the claimed invention was made, and does not include knowledge gleaned only from the applicant's disclosure, such a reconstruction is proper. See In re McLaughlin, 443 F.2d 1392, 170 USPQ 209 (CCPA 1971). In this case, the Examiner only relied on knowledge which was within the level of one of ordinary skill in the art at the time the invention was made.
Applicant argues that the proposed modification to exclude polyfunctional epoxy compounds is contrary to the teachings of Valeri. However, the Examiner disagrees and notes that Valeri specifically teaches that polyfunctional epoxy compounds can be excluded (see abstract and Examples 4 and 5, Table 1). Applicant contends that the Examples pointed to are not devoid of polyfunctional components. The Examiner agrees, but notes that the claims only exclude polyfunctional epoxy compounds and not polyfunctional compounds in general. Therefore, the Examiner maintains that Valeri makes obvious the exclusion of polyfunctional epoxy compounds.
Applicant argues that there is no suggestion or motivation to combine the two modifications. However, the Examiner maintains that the polyfunctional epoxy can be excluded by including different polyfunctional compounds that would yield the same improved toughness as the epoxy compound and that silica can be included for improved abrasion resistance. Therefore, the Examiner maintains that it would have been obvious to one of ordinary skill in the art to contemplate both modifications for the reasons as set forth in Valeri. Thus, the rejections of record are maintained as presented below.
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.
1. Claims 1-11, 13 and 14 is/are rejected under 35 U.S.C. 103 as being unpatentable over Valeri (U.S. Pat. No. 9557449).
I. Regarding claims 1, 2, 4-7, 10, 11 and 13, Valeri teaches a photocurable composition (abstract) comprising: only non-hydrolyzed epoxy alkoxysilane (abstract) in an amount of 42.77% (Example 1, Table 1), which is γ-glycidoxypropyltrimethoxysilane (Example 1, Table 1); vinyltrimethoxysilane in an amount of 10.69% (Example 1, Table 1); a photoinitiator (a triarylsulfonium hexafluoroantimonate salt) in an amount of 1.87% (Example 1, Table 1); a surfactant (fluorocarbon modified siloxane) in an amount of 0.21% (Example 1, Table 1); and at least one acrylate binder in an amount of 35.64% and not including other acrylate binders (Example 1, Table 1). Valeri fails to explicitly teach this example not including a polyfunctional epoxy compound and including a dispersion of colloidal silica nanoparticles in an amount as claimed.
However, Valeri does teach that polyfunctional epoxy compounds can be excluded (see abstract and Examples 4 and 5, Table 1) and that colloidal silica (note that colloidal silica comprises nanoparticles) can be included in the dispersion (column 4, lines 33-37). Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify Valeri to exclude polyfunctional epoxy compounds from the composition and to include colloidal silica. One would have been motivated to make this modification to provide enhanced abrasion resistance (see Valeri at column 4, lines 36-37) and to optimize for improved scratch resistance and better adhesion to thermoplastic substrates through the use of only acrylate compounds in the absence of the polyfunctional epoxy compounds (see Valeri at column 3, lines 10-12).
Further, Valeri fails to explicitly teach the amount of the combination of acrylate binder and silica nanoparticles. However, amount of the combination of acrylate and silica nanoparticles is result-effective as adjusting this value will alter the scratch resistance and abrasion resistance (see Valeri at Table 2). Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to choose the instantly claimed ranges through process optimization, since it has been held that where the general conditions of a claim are disclosed in the prior art, discovering the optimum or workable ranges involves only routine skill in the art. See In re Boesch, 205 USPQ 215 (CCPA 1980).
II. Regarding claim 3, Valeri teaches all the limitations of claim 2 (see above), including the silane in an amount of 10.69% but fails to teach the exemplary example including 5-10 parts of the silane binder. However, 10% is so close to 10.69% that this substitution would not change the properties of the composition. Furthermore, the courts have held that a prima facie case of obviousness exists where the claimed ranges and prior art ranges do not overlap but are close enough that one skilled in the art would have expected them to have the same properties. Titanium Metals Corp. of America v. Bonner, 778 F.2d 775, 227 USPQ 773 (Fed. Cir. 1985).
III. Regarding claim 8, Valeri teaches all the limitations of claim 7 (see above), including the epoxy(alkoxy)silane present in an amount of 42.77% but fails to teach an exemplary embodiment where the epoxy(alkoxy)silane is present in 45-50 parts. However, Valeri generally teaches that the epoxy(alkoxy)silane can be present in an amount of 30-55% (column 2, lines 39-51) which overlaps the claimed range. Furthermore, overlapping ranges have been held as prima facie evidence of obviousness.
IV. Regarding claim 9, Valeri teaches all the limitations of claim 1 (see above), and teaches an exemplary embodiment using glycidoxypropyl trimethoxysilane (see above), but fails to teach an embodiment using glycidoxypropyl triethoxysilane. However, Valeri does teach that the epoxy(alkoxy)silane may be selected from a group including glycidoxypropyl triethoxysilane (column 2, lines 39-45). Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to substitute glycidoxypropyl triethoxysilane for glycidoxypropyl trimethoxysilane. One could have made this modification with a reasonable expectation of success (Valeri actually teaches that these epoxy(alkoxy)silanes can be used interchangeably as noted above), and the predictable result of providing a photocurable composition.
V. Regarding claim 14, Valeri teaches all the limitations of claim 1 (see above), but fails to teach the inclusion of solvent in the exemplary embodiment cited. However, Valeri does teach that solvent may additionally be included (column 4, lines 50-55). Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to include solvent. One would have been motivated to make this modification as Valeri specifically teaches that solvent can be included in compositions including colloidal silica to control viscosity and improving cosmetic flow (column 4, lines 50-53).
2. Claim(s) 12 is/are rejected under 35 U.S.C. 103 as being unpatentable over Valeri in view of Higuchi et al. (U.S. PGPUB No. 2011/0223414).
Regarding claim 12, Valeri teaches all the limitations of claim 1, including the composition including a dispersion of colloidal silica, but fails to teach the dispersion of acrylate and silica nanoparticles including 50% silica dispersed in ethoxylated pentaerythritol tetraacrylate. However, Higuchi teaches including 50% silica dispersed in ethoxylated pentaerythritol tetraacrylate (0145) in a photocurable coating composition (0145). Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to substitute a 50% silica dispersion in ethoxylated pentaerythritol tetraacrylate for the silica of Valeri. One would have been motivated to make this modification as Higuchi teaches the silica in this dispersion provides improved scratch resistance (Table 2 and 0087).
Conclusion
Claims 1-19 are pending.
Claims 15-19 are withdrawn.
Claims 1-14 are rejected.
THIS ACTION IS MADE FINAL. 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.
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/ROBERT S WALTERS JR/
April 28, 2026Primary Examiner, Art Unit 1717
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