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 .
The preliminary amendment filed 11/10/2023 has been entered. New claims 15-20 have been added. Claims 1-20 are pending in the application.
Claim Rejections - 35 USC § 112
The following is a quotation of 35 U.S.C. 112(b):
(b) CONCLUSION.—The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the inventor or a joint inventor regards as the invention.
The following is a quotation of 35 U.S.C. 112 (pre-AIA ), second paragraph:
The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.
Claims 1-20 are rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor (or for applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention. Claim 1 recites, “A radiation curable coating composition – based on the total weight of the coating composition – a) at least one unsaturated urethane (meth)acrylate oligomer or polymer (A), b) at least one unsaturated acid-functional acrylic (meth)acrylic oligomer or polymer (B), c) at least one ethylenically unsaturated monomer (C) having a calculated Hansen solubility parameter δp of less than 5 MPa1/2, d) more than 20 wt.% of at least one ethylenically unsaturated monomer (D) having a calculated Hansen solubility parameter δp of at least 5 MPa1/2, and e) optionally at least one photoinitiator (E)” on lines 1-9, however, it is first noted that the claim does not clearly specify how the components a) to e) on lines 3-9 are related to the “radiation curable coating composition” on line 1 due to the lack of a transitional phrase between lines 1-2 and the remainder of the claim, e.g. are they separate components from the “radiation curable coating composition”, does the “radiation curable coating composition” comprise or include said components a)-e), does the radiation curable coating composition consist of said components a)-e), etc.? It is also noted that a claim in which one ingredient is defined so broadly that it reads upon a second does not meet the requirements of 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph. See Ex parte Ferm and Boynton, 162 USPQ 504 (BdPatApp & Int 1969.) In the instant case, the unsaturated urethane (meth)acrylate oligomer or polymer (A) may be acid-functional thereby reading upon the at least one unsaturated acid-functional acrylic (meth)acrylate oligomer or polymer (B) of component b). Further, although claim 1 recites “based on the total weight of the coating composition” (emphasis added) on lines 1-2, it is unclear whether the “more than 20 wt.%” of the at least one ethylenically unsaturated monomer (D) of component d) is actually based on a total solids weight of the coating composition given that an optional solvent (H) may be further included, or based on a total weight of components a)-e) only, or based on a total weight of all components of the coating composition being 100%, particularly given the disconnect in the relationship between the coating composition and components a)-e) as noted above, that component d) is the only component that recites a weight percentage in claim 1, and more particularly given that in looking to the specification and working examples, at least two inventive examples have compositions that do not total 100wt% (see Table 1). Hence, one having ordinary skill in the art would not be reasonably apprised of the scope of the claimed invention and could not interpret the metes and bounds of the claim so as to understand how to avoid infringement.
The dependent claims do not remedy the above and hence are indefinite for the same reasons as above. In addition, with respect to dependent claims 9 and 20, it is noted that claim 9 recites, “The radiation curable coating composition according to claim 1, wherein the coating composition comprises a weight ratio of ethylenically unsaturated hydroxy-functional monomers to ethylenically unsaturated alkoxylated monomers to ethylenically unsaturated aliphatic monomers having at least 2 ethylenically unsaturated groups of 2:1:0.4 to 1:2:0.6” on lines 2-5, however, given that the recited ethylenically unsaturated monomers are so broadly defined that a single monomer may read upon more than one of said ethylenically unsaturated monomers, it is unclear as to what is meant to be encompassed by the recited three prong weight ratio range. It is also unclear whether the recited weight ratio corresponds to all ethylenically unsaturated hydroxy-functional monomers, all ethylenically unsaturated alkoxylated monomers, and all ethylenically unsaturated aliphatic monomers having at least 2 ethylenically unsaturated groups that present in the radiation curable coating composition or to just those that are attributed to the instantly claimed compound (D), i.e. just those that have a calculated Hansen solubility parameter δp of at least 5 MPa1/2 as in instant claims 1 and 8. Dependent claim 20 recites a similar “weight ratio” limitation of the same recited ethylenically unsaturated monomers of 1:1:0.4 to 1:1:0.7 and hence is indefinite for the same reasons as discussed with respect to claim 9 above. Further, dependent claims 15 and 18 recite weight percentage ranges but fall to recite a basis for said weight percentages wherein it is again noted that given the disconnect in the relationship between the curable coating composition and the claimed components a)-e) and that as discussed in detail above, the recited components are not required to total 100wt%, dependent claims 15 and 18 are further indefinite.
Claim 11 is rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor (or for applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention. Claim 11 recites, “wherein the coating composition is a primer coating composition” on lines 2-3, however, given that the claim is directed to the “radiation curable coating composition” and not a cured layer formed therefrom wherein a ”primer” layer formed from a “primer coating composition” would be expected to be positioned between a substrate or underlayer and a further applied layer, and that the claim nor the specification provides any additional structural or material limitations in terms of the coating composition being a “primer” coating composition, implicitly or inherently by definition of a “primer” coating composition, the claimed “is a primer coating composition” appears to merely constitute intended end use of the coating composition, and hence, it is unclear how the claimed radiation curable coating composition of claim 11 is different from the radiation curable coating composition of claim 1.
Claim Rejections - 35 USC § 101/112
35 U.S.C. 101 reads as follows:
Whoever invents or discovers any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof, may obtain a patent therefor, subject to the conditions and requirements of this title.
Claim 14 is rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor (or for applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention. Claim 14 recites, “A method of using the radiation curable coating composition of claim 1, the method comprising using the radiation curable coating composition to improve the surface roughness of plastic substrates” (emphasis added), however, it is first noted that the claimed “method” fails to recite any active, positive step(s) delimiting how the radiation curable coating composition is actually being used “to improve the surface roughness of plastic substrates”, e.g. as a polish in a polishing step that is used to polish the plastic substrate(s), as an adhesive that is utilized to apply an adherend to the plastic substrate(s) wherein the adherend has an improved surface roughness in comparison to the plastic substrate(s), as a removable coating to strip dirt and contaminants from a surface of the plastic substrate(s), etc. It is also noted that there is insufficient antecedent basis for “the surface roughness” in the claim, especially given that there are various different surface roughness parameters known in the art, and whether a specific roughness is “improved” is subjective.
Further, claim 14 is rejected under 35 U.S.C. 101 because the claimed recitation of a use, without setting forth any steps involved in the process, results in an improper definition of a process, i.e. results in a claim which is not a proper process under 35 U.S.C. 101. See for example Ex parte Dunki, 153 USPQ 678 (Bd.App.1967) and Clinical Products, Ltd. v. Brenner, 255 F. Supp. 131, 149 USPQ 475 (D.D.C. 1966).
Claim Interpretation
Consistent with MPEP § 2111, claims are given their broadest reasonable interpretation wherein “the meaning given to a claim term must be consistent with the ordinary and customary meaning of the term (unless the term has been given a special definition in the specification), and must be consistent with the use of the claim term in the specification and drawings. Further, the broadest reasonable interpretation of the claims must be consistent with the interpretation that those skilled in the art would reach. In re Cortright, 165 F.3d 1353, 1359, 49 USPQ2d 1464, 1468 (Fed. Cir. 1999).” However, although the claims are interpreted in light of the specification, limitations from the specification are not read into the claims. See In re Van Geuns, 988 f.2d 1181, 26 USPQ2d 1057 (Fed. Cir. 1993.) It is also noted that a recitation of the intended use of the claimed invention must result in a structural difference between the claimed invention and the prior art in order to patentably distinguish the claimed invention from the prior art. If the prior art structure is capable of performing the intended use, then it meets the claim.
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 1-8 and 10-19 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Goto (JP2018-192470A, please refer to the attached machine translation for the below cited sections). Goto discloses a radiation curable coating composition, a method of forming a coating film from the radiation curable coating composition on a surface of a substrate and curing by irradiation with active energy rays, and a coated substrate comprising a cured coating film formed thereon from the radiation curable coating composition (Entire document, particularly Paragraphs 0007-0009), wherein the radiation curable coating composition comprises a urethane (meth)acrylate (A) having a weight average molecular weight of 550 or more and less than 10,000 and 2 or more (meth)acryloyl groups in one molecule, reading upon the instantly claimed “at least one unsaturated urethane (meth)acrylate oligomer or polymer (A)” (Paragraphs 0013-0039); a polymerizable unsaturated compound (B) having at least one group selected from the group consisting of a carboxyl group, a phosphoric acid group, and a phosphonic acid group (Paragraph 0012), and an acid value of preferably 100 to 950 mg KOH/g, with specific examples thereon reading upon the instantly claimed “at least one unsaturated acid-functional acrylic (meth)acrylate oligomer (B)” (Paragraphs 0040-0054, Examples); a polymerization initiator (C), particularly a photopolymerization initiator (C1) reading upon the instantly claimed “optionally at least one photoinitiator (E)”, in a content of preferably 0.1 to 20 parts by mass, more preferably 0.5 to 15 parts by mass, and even more preferably 1 to 10 parts by mass, per 100 parts by mass of the coating composition (Paragraphs 0066-0067 and 0075, as in instant claim 10); a polymerizable unsaturated compound (D) having two or more polymerizable unsaturated groups in one molecule, preferably a polymerizable unsaturated compound (D’) having a polyoxyalkylene chain, with specific examples thereof recited in Paragraph 0072 including various polyoxyalkylene (meth)acrylates and polyhydric alcohol-based (meth)acrylates such as dipropylene glycol di(meth)acrylate (as utilized in the instant examples) which has a calculated Hansen solubility parameter δp exceeding 5.5 MPa1/2 (i.e. 6.2) or hexanediol diacrylate (HDDA) as utilized in the examples which also has a calculated Hansen solubility parameter δp exceeding 5.5 MPa1/2 (i.e. 5.9 as in the instant examples), in a content of (D) of preferably 10 to 80 parts by mass, more preferably 15 to 70 parts by mass, and even more preferably 20 to 60 parts by mass, or 10 to 55 parts by mass of (D’), when the total non-volatile components of the coating composition is taken as 100 parts by mass and the coating is preferably a solvent-free coating composition having a non-volatile content of more preferably 98 to 100 mass% (Paragraphs 0072-0076 and 0100, reading upon the instantly claimed component d) of more than 20wt.% of at least one ethylenically unsaturated monomer (D) having a calculated Hansen solubility parameter δp of at least 5 MPa1/2 as in instant claim 1, and more particularly at least 5.5 as in instant claim 7 and between 5.6 and 8 as in instant claim 19); and a further polymerizable unsaturated compound other than the above components (A), (B), and (D), suitably a compound having one polymerizable unsaturated group in one molecule, with examples thereof recited in Paragraphs 0089-0096, such as isobornyl (meth)acrylate (as in instant claims 4-5 and 17 with respect to the instantly claimed compound (C) that is an ethylenically unsaturated monomer (C) having a calculated Hansen solubility parameter δp of less than 5 MPa1/2 as in instant claim 1 and more particularly has a calculated Hansen solubility parameter δp of less than 4.5 MPa1/2 as in instant claim 3 and between 1 and 4.5 MPa1/2 as in instant claim 16) as utilized in the examples; and given that Goto specifically discloses at least one working example comprising isobornyl acrylate (“IBOA-B”) reading upon the instantly claimed monomer (C) in a content falling within the claimed range of 0.1 to 35wt% of instant claim 2 or 5 to 40wt% of instant claim 15, in combination with components reading upon each of the instantly claimed components (A), (B), (D), and (E), in contents within the claimed ranges as recited in instant claims 1, 6, 10, and 18 (Examples), the Examiner takes the position that Goto discloses the claimed radiation curable coating composition with sufficient specificity to anticipate instant claims 1-8, 10, and 15-19, especially given the lack of clarity thereof as discussed in detail above, as well as instant claims 12 and 13 directed to the coating method and coated object, respectively, particularly in light of the working examples.
With respect to instant claim 11, given that the claimed “is a primer coating composition” constitutes intended end use of the coating composition and does not add any additional material or structural limitations to the claimed “radiation curable coating composition” to differentiate the claimed “radiation curable coating composition” of instant claim 11 from the radiation curable coating composition disclosed by Goto, the Examiner takes the position that instant claim 11 is anticipated by Goto.
With respect to instant 14, Goto discloses that the substrate to be coated may be a plastic substrate, particularly those recited in Paragraphs 0110-0111, and given that Goto specifically applies the curable coating compositions in the examples to the surface of a plastic substrate and then cures the curable coating composition to form a cured coating layer on the plastic substrate (Paragraphs 0107 and 0109-0111), thereby affecting “the surface roughness” of the plastic substrate in some manner, the Examiner takes the position that Goto anticipates instantly claim 14 especially given the lack of clarity thereof as discussed in detail above.
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.
Alternatively, claims 1-8 and 10-19 as well as claims 9 and 20 are rejected under 35 U.S.C. 103 as being unpatentable over Goto, as applied above to claims 1-8 and 10-19, and further discussed below.
The teachings of Goto are discussed in detail above and although the Examiner is of the position that the reference is anticipatory with respect to instant claims 1-8 and 10-19, particularly given the working examples of Goto and the lack of clarity of the instant claims as discussed in detail above, especially with respect to the recited weight percentages, the Examiner alternatively takes the position that Goto clearly teaches a radiation curable coating composition comprising components reading upon each of the components of the instantly claimed composition as discussed in detail above, as well as a method of coating a substrate, particularly a plastic substrate, with the curable coating composition to form a coating film thereon and curing the coating composition by irradiation with active energy rays to form a coated substrate comprising the cured coating film thereon, and given that it is prima facie obviousness to choose from a finite number of identified, predictable solutions, with a reasonable expectation of success, the Examiner alternatively takes the position that absent any clear showing of criticality and/or unexpected results, the claimed invention as recited in instant claims 1-8 and 10-19 would have been obvious over the teachings of Goto.
Further with respect to instant claims 9 and 20, Goto specifically teaches various ethylenically unsaturated hydroxy-functional monomers suitable for use in the coating composition whether for component (B) and/or the further polymerizable unsaturated compound other than components (A), (B), and (D); as well as various ethylenically unsaturated alkoxylated monomers, especially with respect to component D/D’ reading upon the instantly claimed component (D); and various ethylenically unsaturated aliphatic monomers having at least 2 ethylenically unsaturated groups, particularly with respect to component (D) that are also ethylenically unsaturated alkoxylated monomers as recited in Paragraph 0072, the Examiner takes the position that given the lack of clarity of instant claims 9 and 20 as discussed in detail above, and the lack of any clear showing of criticality and/or unexpected results with respect to the claimed weight ratios of instant claims 9 and 20, the claimed invention as recited in instant claims 9 and 20 would have been obvious over the teachings of Goto given that one having ordinary skill in the art before the effective filing date of the claimed invention would have been motivated to select from any of the suitable ethylenically unsaturated monomers taught by Goto in contents as taught by Goto that would read upon and/or render obvious the claimed ratios, particularly in the case where one of the ethylenically unsaturated monomers reads upon another.
Citation of pertinent prior art
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. Choi (US2019/0002718A1) discloses a radiation curable ink composition for steel comprising 10 to 30 parts by weight of a mixture of a urethane acrylate oligomer and another type of acrylate oligomer different from the urethane acrylate oligomer, 65 to 80 parts by weight of a radiation curable monomer which is a mixture of a monofunctional radiation curable monomer and a di- or more functional radiation curable monomer, 1 to 10 parts by weight of a photoinitiator, and 0.01 to 10 parts by weight of an adhesion promoter, particularly an acidic group-containing adhesion promoter such as phosphoric acid-based adhesion promoter with a structure of a phosphoric acid in a structure, and a carboxylic acid-based adhesion promoter with a structure of a carboxylic acid; with working examples comprising a mixture of isobornyl acrylate as the monofunctional monomer and hexanediol diacrylate as the di- or more functional monomer. Arai (JP2012140490A) discloses a curable ink composition comprising a dark colored ink and a light colored ink, both of which comprise a radically polymerizable compound (component A), a photoinitiator (component B), and a pigment (component C), with component (A) containing a monofunctional monomer and a polyfunctional monomer, and optionally a radical polymerizable oligomer, with working examples comprising at least a urethane acrylate oligomer, isobornyl acrylate, and dipropylene glycol diacrylate. Miyata (US2020/0183272A1) discloses a radiation curable composition comprising a polymerizable monomer having an ethylenically unsaturated bond, a resin P having a specific d value of Hansen solubility parameter, and an acid resin as a polymeric dispersant, with at least one working example utilizing a mixture of polymerizable monomers comprising one monomer having a p value of Hansen solubility parameter of 2.1 and one monomer having a p value of Hansen solubility parameter of 7.4. Drujon (US2021/0130622A1) discloses a radiation curable coating composition for improving the surface properties of plastics wherein the coating composition comprises: “A) from 20 to 60 wt.-% of at least one oligomer bearing at least one ethylenic unsaturation, B) from 0.1 to 35 wt.-% of at least one ethylenically unsaturated monomer having a surface tension measured according to contact angle method NF EN14370 which is lower than 35 mN/m, C) from 0.1 to 20 wt.-% of at least one ethylenically unsaturated monomer with high hydrophilicity having a Hansen solubility parameter δp, calculated according to the method described in “Hansen Solubility Parameters: a user's handbook” by Charles M. Hansen ISBN 068494-1525-5 (chapter I, table 1.1), higher than 4 MPa1/2, preferably higher than 5 MPa1/2, D) 0 to 10 wt.-% of at least one photoinitiator, E) 0 to 75 wt.-% of a reactive diluent selected from at least one ethylenically unsaturated monomer other than B) and C) and bearing at least one ethylenically unsaturated group, F) 0 to 20 wt.-% of a phosphoric ester comprising a (meth)acrylate group used as an adhesion promoter and wherein the sum of wt % of components A+B+C+D+E+F is 100%.”
Any inquiry concerning this communication or earlier communications from the examiner should be directed to MONIQUE R JACKSON whose telephone number is (571)272-1508. The examiner can normally be reached Mondays-Thursdays from 10:00AM-5:00PM.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Callie Shosho can be reached at 571-272-1123. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/MONIQUE R JACKSON/Primary Examiner, Art Unit 1787