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
Claims 6-8 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected invention, there being no allowable generic or linking claim.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 June 3, 2026.
Claim Rejections - 35 USC § 102
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.
(a)(2) the claimed invention was described in a patent issued under section 151, or in an application for patent published or deemed published under section 122(b), in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention.
Claims 1-5 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Kida et al (JP 2016147969).
With regards to claim 1, Kida teaches a photocuring composition (0002) that contains a urethane prepolymer having at least one (meth)acryloyl group (0003) that is a bifunctional or tri-functional acrylate (0029), a photoradical polymerization initiator (0006), and a moisture-setting urethane resin (reading on a polyurethane) (0049). Kida teaches the amount of the urethane prepolymer to be 20 parts and the amount of the urethane resin to be 50 parts (0084) reading on a ratio of 28:72.
With regards to claim 2, Kida teaches the amount of the urethane prepolymer to be from 40 to 100 parts by weight (0031) and the amount urethane resin to be from 30 to 75 parts by weight (0050) reading on a ratio of 40:70 to 99:1.
With regards to claim 3, Kida teaches the weight average molecular weight of the urethane to be 800 to 10,000 (0049).
With regards to claim 4, Kida teaches the polymerization initiator to include acylphosphine oxide compounds (0051) including Irgacure 819 (0052) reading on a bisacylphosphine oxide.
With regards to claim 5, Kida is silent on the hardness of the composition before and after curing. Hardness of a composition determines how well a material can maintain its shape or resist wear over time. The hardness depends on the material’s composition and treatment process. Kida teaches the composition to contain the same components and to be cured by radiation. Therefore, when the composition recited in the reference is substantially identical to that of the claims, the claimed properties or function are presumed inherent. MPEP 2112.01. Because the prior art exemplifies Applicant’s claimed composition in that the claimed components in the claimed amounts are used, the claimed physical properties relating to the hardness of the composition before and after curing are inherently present in the prior art. Absent an objective showing to the contrary, the addition of the claimed physical properties to the claim language fails to provide patentable distinction over the prior art.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to JESSICA WHITELEY whose telephone number is (571)272-5203. The examiner can normally be reached 8 - 5:00.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Joseph Del Sole can be reached at 5712721130. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/JESSICA WHITELEY/Primary Examiner, Art Unit 1763
Prosecution Insights