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 .
DETAILED ACTION
Election/Restrictions
Applicant’s election of Group I, claims 1-12 in the reply filed on December 22, 2025 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Claims 13-20 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected invention, there being no allowable generic or linking claim.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 in the reply filed on December 22,2025.
Claim Objections
Claim 2 is objected to because of the following informalities: at line 1, insert “the” before “Formula 1”.
Appropriate correction is required.
Claim Rejections - 35 USC § 102/103
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 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.
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 1-5, 7, 11, and 12 are rejected under 35 U.S.C. 102(a)(1) as anticipated by or, in the alternative, under 35 U.S.C. 103 as obvious over Kim et al. (US 20190177459 A1).
As to claim 1, Kim discloses a photocurable resin composition including 100 parts by weight of (meth)acrylic resin ((meth)acrylate polymer), about 20 to about 40 parts by weight of a photopolymerization initiator (photoinitiator), about 400 to about 600 parts by weight of a photopolymerizable monomer such as isobornyl acrylate ((meth)acrylate monomer containing (meth)acryloyl group), and about 10 to about 50 parts by weight of a urethane acrylate oligomer (urethane (meth)acrylate oligomer) (0008, 0057). Further, Kim discloses that the (meth)acrylic resin is synthesized with a monomer such as methyl methacrylate and 2-ethylhexyl methacrylate (0040 disclosing “methyl (meth)acrylate…2-ethhylhexyl (meth)acrylate…or at least two mixtures thereof). The examiner submits that a person having ordinary skill in the art would recognize that (meth)acrylic monomers such as methyl (meth)acrylate and 2-ethylhexyl (meth)acrylate inherently meets Formula 1 as claimed (R1 is hydrogen or methyl, and R2 is unsubstituted methyl (C1 alkyl) or 2-ethylhexyl (C8 alkyl); see also claims 2 and 3 of present application).
As to claim 1, Kim discloses claimed resin composition except for the feature that an end group of the (meth)acrylate polymer comprises a (meth)acrylate group. However, where the claimed and prior art products are identical or substantially identical in structure or composition, or are produced by identical or substantially identical processes, a prima facie case of either anticipation or obviousness is established. See MPEP 2112.01 (I). The examiner submits that the claimed (meth)acrylate polymer and the (meth)acrylate polymer of Kim as set forth previously are synthesized with the same monomer (e.g. methyl methacrylate and 2-ethylhexyl acrylate). Accordingly, absent any factual evidence on the record, it is reasonable to presume that the (meth)acrylate polymer of Kim inherently has an end group comprising a (meth)acrylate group. Alternatively, the claimed feature would obviously be present, once the (meth)acrylate polymer of Kim is provided.
As to claims 2 and 3, Kim as set forth previously discloses methyl (meth)acrylate and 2-ethylhexyl acrylate (0040).
As to claims 4 and 5, Kim discloses that two or more (meth)acrylic monomers are used in preparing the (meth)acrylic resin. Further, Kim discloses methyl (meth)acrylate and 2-ethylhexyl acrylate as (meth)acrylic monomers (0040).
As to claim 7, Kim discloses 100 parts by weight of (meth)acrylic resin ((meth)acrylate polymer), about 20 to about 40 parts by weight of a photopolymerization initiator, about 400 to about 600 parts by weight of a photopolymerizable monomer such as isobornyl acrylate ((meth)acrylate monomer containing (meth)acryloyl group), and about 10 to about 50 parts by weight of a urethane acrylate oligomer (urethane (meth)acrylate oligomer) (0008, 0057). Based on this, calculated amount of the (meth)acrylate polymer in Kim is in the range of from 12.66 wt% to about 18.87 wt%, which is within the claimed range of about 1 wt% to about 20 wt%. The amount of (meth)acrylate polymer in wt% in Kim is calculated as : (100/(100+40+600+50)) * 100 = 12.66 wt%, (100/(100+20+400+10)) * 100 = 18.87 wt%.
As to claim 11, Kim discloses claimed resin composition except for the property of shear viscosity. However, where the claimed and prior art products are identical or substantially identical in structure or composition, or are produced by identical or substantially identical processes, a prima facie case of either anticipation or obviousness is established. See MPEP 2112.01 (I). The examiner submits that as set forth previously Kim teaches or renders obvious claimed resin composition. Accordingly, absent any factual evidence on the record, it is reasonable to presume that the resin composition of Kim inherently has the claimed shear viscosity. Alternatively, the claimed viscosity would obviously be present, once the resin composition of Kim is provided.
As to claim 12, Kim discloses examples of the photopolymerization initiators (0060 and Table 2), which would be recognized by one of ordinary skill in the art as radical polymerization initiator.
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.
Claims 6 and 8-10 are rejected under 35 U.S.C. 103 as being unpatentable over Kim et al. (US 20190177459 A1) as applied to claim 1 above.
As to claim 6, Kim discloses that the (meth)acrylic resin has Mw of about 10,000 to about 70,000 (0009) in order to avoid lowering of adhesion and maintain the viscosity of the composition so that the workability is not weakened (0042). The claimed range of Mw of about 4,000 to about 20,000 overlaps with the range disclosed by Kim such that a prima facie case of obviousness exists. See MPEP 2144.05 (I). It would have been obvious to a person having ordinary skill in the art before the effective filing date of the claimed invention to arrive at the Mw as claimed which is rendered obvious from Kim, motivated by the desire to form the resin composition with suitable adhesion and workability.
As to claim 8, Kim discloses 100 parts by weight of (meth)acrylic resin ((meth)acrylate polymer), about 20 to about 40 parts by weight of a photopolymerization initiator, about 400 to about 600 parts by weight of a photopolymerizable monomer such as isobornyl acrylate ((meth)acrylate monomer containing (meth)acryloyl group), and about 10 to about 50 parts by weight of a urethane acrylate oligomer (urethane (meth)acrylate oligomer) (0008, 0057). Based on this, calculated amount of the photoinitiator in Kim is in the range of from 2.60 wt% to 7.27 wt%. The amount of photoinitiator in wt% Kim is calculated as : (20/(20+600+50+100)) * 100 = 2.60 wt%, (40/(40+400+10+100)) * 100 = 7.27 wt%. The claimed range of photoinitiator of about 1 to about 5 wt% overlaps with the range disclosed by Kim such that a prima facie case of obviousness exists. It would have been obvious to a person having ordinary skill in the art before the effective filing date of the claimed invention to arrive at the claimed range of photoinitiator as rendered obvious from Kim so that the photopolymerization reaction can be sufficiently carried out without lowering physical properties of a coating film (0061 of Kim).
As to claim 9, Kim as set forth previously discloses 100 parts by weight of (meth)acrylic resin ((meth)acrylate polymer), about 20 to about 40 parts by weight of a photopolymerization initiator, about 400 to about 600 parts by weight of a photopolymerizable monomer such as isobornyl acrylate ((meth)acrylate monomer containing (meth)acryloyl group), and about 10 to about 50 parts by weight of a urethane acrylate oligomer (urethane (meth)acrylate oligomer) (0008, 0057). Based on this, calculated amount of the (meth)acrylate monomer in Kim is in the range of 67.80 wt% to 82 wt%. The amount of (meth)acrylate monomer in wt% Kim is calculated as : (400/(400+100+50+40)) * 100 = 67.80wt%, (600/(600+100+10+20)) * 100 = 82 wt%. The claimed range of (meth)acrylate monomer of about 75 to about 90 wt% overlaps with the range disclosed by Kim such that a prima facie case of obviousness exists. It would have been obvious to a person having ordinary skill in the art before the effective filing date of the claimed invention to arrive at the claimed range of (meth)acrylate monomer as rendered obvious from Kim, motivated by the desire to control the viscosity of the composition and the crosslinking density in order to improve adhesive property of the cured coating film and improve workability (0058 of Kim).
As to claim 10, Kim as set forth previously discloses 100 parts by weight of (meth)acrylic resin ((meth)acrylate polymer), about 20 to about 40 parts by weight of a photopolymerization initiator, about 400 to about 600 parts by weight of a photopolymerizable monomer such as isobornyl acrylate ((meth)acrylate monomer containing (meth)acryloyl group), and about 10 to about 50 parts by weight of a urethane acrylate oligomer (urethane (meth)acrylate oligomer) (0008, 0057). Based on this, calculated amount of the urethane (meth)acrylate oligomer in Kim is in the range of 0.90 wt% to 8.78 wt%. The amount of urethane (meth)acrylate oligomer in wt% Kim is calculated as : (10/(10+100+600+400)) * 100 = 0.90 wt%, (50/(50+100+400+20))) * 100 = 8.78 wt%. The claimed range of urethane (meth)acrylate of about 1 to about 20 wt% overlaps with the range disclosed by Kim such that a prima facie case of obviousness exists. It would have been obvious to a person having ordinary skill in the art before the effective filing date of the claimed invention to arrive at the claimed range of urethane (meth)acrylate oligomer as rendered obvious from Kim in order to form a coating film from the resin composition that has appropriate hardness and interlayer bonding strength (0044 of Kim).
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. Morita et al. (US 20220204672 A1) discloses a resin composition, Saito (US 20240218105 A1) discloses a resin composition, Saito (US 20240240054 A1) discloses a resin composition, Morita (US 12252569 B2) discloses a resin composition, KR 1020170115227 discloses an adhesive composition for optical use, and KR102229361 discloses a photocurable resin composition.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to ANISH P DESAI whose telephone number is (571)272-6467. The examiner can normally be reached Mon-Fri 8:00 am ET to 4:30 PM ET.
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/ANISH P DESAI/Primary Examiner, Art Unit 1788 February 25, 2026
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