Application/Control Number: 18/619,548 Page 2
Art Unit: 1765
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 .
Continued Examination Under 37 CFR 1.114
A request for continued examination under 37 CFR 1.114, including the fee set forth in 37 CFR 1.17(e), was filed in this application after final rejection. Since this application is eligible for continued examination under 37 CFR 1.114, and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114. Applicant's submission filed on 12/30/2025 has been entered.
Response to Amendment
In response to the Amendment received on 12/30/2025, the examiner has carefully considered the amendments. The examiner acknowledges the cancellation of claims 28 and 33-35, as well as, the addition of new claims 36-45. The claim rejection under 35 U.S.C. § 112, 2nd paragraph for claims 1 and 10 have been overcome by the amendment and has hereby been withdrawn for consideration.
Response to Arguments
Applicant's arguments filed 12/30/2025 have been fully considered but they are not persuasive. Applicant appears to be relying on the amendment to the claims to overcome the rejection. However, Arora set forth, in example, the addition of isobornyl acrylate which is deemed to read on the formula of claim 1, wherein R1 is a hydrogen (H) and R2 is a polycyclic group:
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, as well as, setting forth other useable acrylate and methacrylate monomers (see col. 2, line 65 to col. 3, line 10), thus it is deemed the indication of allowable subject matter was premature. The amendment requiring the primer composition to be curable with electromagnetic radiation having a wavelength between 315 and 400 nm is, also, not persuasive since Arora expressly uses trimethyl benzoylphenyl phosphine oxide as a photoinitiator. And as indicated previously trimethyl benzoylphenyl phosphine oxide photoinitiators activate upon exposure to radiation in the UVA range (315-400 nm), as evidenced by teaching a Zhuoer Chemicals (see previous PTO-892). Additionally, applicant sets forth said photoinitiator meets the claim limitation, as indication in the pending claims, as well as, the overall teachings of the disclosure.
After reconsideration of the applied reference, its deemed Arora does not set forth a urethane methacrylate having di-methacrylate functionality, nor the use of the methacrylate compounds of claims 4-6. Arora sets forth the use of acrylate functional monomers, except as indicated above, and acrylate functional oligomers. Thus, claims 2-6 will be removed from the rejection. New claims 37 and 43-45 will be added to the rejection for the reasons set forth previously. Please find 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.
Claim(s) 1, 7-12, 21-22, 25-26, 27, 31-32, 36-37 and, 43-45 is/are rejected under 35 U.S.C. 103 as being unpatentable over Arora et al (8,399,534), as evidenced by Zhuoer Chem. (teaching reference).
Arora sets forth energy curable coatings and ink having improved resistance. Said coating, primer and ink composition are suitable for use on substrates such as concrete, and the like—see col. 4, lines 57-62.
Said compositions comprise a) an Isobornyl acrylate monofunctional monomer; (b) a difunctional oligomer selected from the group consisting of bisphenol A epoxy acrylate and polyurethane acrylate; (c) a photoinitiator; (d) a reactive diluent; (e) a colorant, wherein the ratio of the monofunctional monomer to the difunctional oligomer is from about 1:3 to about 1:5—see col. 2, lines 15-25.
Regarding claims 1, 7-10, 27, 36-37, and 43-44: Per example 2, Arora sets forth a composition comprising a 47.4 % of a composition comprising 11.3 wt. % of isobornyl acrylate (claim 1, see above); 0.5 wt. % of an organophosphorus stabilizer; 48.3 wt. % of bisphenol A epoxy acrylate oligomer; 4.94 wt. % of trimethyl benzoylphenyl phosphine oxide (photoinitiator claim 1, see above); 2.0 wt. % of a UV polymerization inhibitor; 0.06 wt. % of propylene glycol acrylate; and 30.9 wt. % of N-vinylpyrrolidone; 11.34 wt. % of a yellow pigment; 5.7 wt. % of trimethylolpropane acrylate; 14.3 wt. % of a polyester acrylate; 4.0 wt. % of other additives; 5.2 wt. % of trimethylolpropane ethoxy triacrylate; ‘ 5.0 wt. % of epoxy acrylate; and 4.8 wt. % of a yellow dye, wherein said composition is applied to a foil stock, wherein said composition is mixed to homogenous, wherein it is deemed a skilled artisan would understand and/or find obvious heating the mixture combine all components until homogenous in absence of evidence to the contrary since heating is a known method to combined/dissolve composition components, additionally, it is deemed heating is implied in the method since Arora allows the mixture to cool prior to adding and/mixing all component (claim 25-26 and 32)---see col. 5, lines 56-67 and col. 6, example 2.
The composition does not expressly set forth the addition of a wax. However, Arora sets forth a wax can be added as a customary addition in amounts from 0.1 to 3 wt. % based on the total weight of the composition—see col. 4, lines 29-36. Therefore, from the overall teachings of the reference a skilled artisan would be able to obtain a composition as previously detailed in the previous communication comprising a wax additive in amounts from at least 0.1 to 3 wt.% with a reasonable expectation of successfully obtaining the desired results set forth in the overall teachings. Thus, claims 31and 35 are obvious.
The one primary difference Arora does not expressly set forth the composition of claims 1 and 36-37 and 44 or the methods 12 and 45, such as found in the examples, are curable in the -presence of natural light. However, it is known that the photoinitiator TPO activates upon exposure to radiation in the UVA range (315-400 nm) which is the same wavelength range of natural light, as evidenced by teaching a Zhuoer Chemicals—see PTO-892. Thus, the composition is inherently configured to cure upon exposure to natural light.
Regarding claims 21-22: Arora sets forth applying said coatings to a substrate at room temperature (25-27 deg. C) which is encompassed by the temperature range of claim 21 and thus deemed obvious. Said coating, primer and ink composition are suitable for use on substrates such as concrete, and the like—see col. 4, lines 57-62.
Regarding claim 23: Arora renders obvious coating and curing on concrete with a composition deemed to render the instant composition obvious; therefore, the coated substrate should inherently have the same properties. The courts have upheld products of identical chemical composition cannot have mutually exclusive properties. A chemical composition and its properties are inseparable. Therefore, if the prior art teaches the identical chemical structure, the properties applicant discloses and/or claims are necessarily present. If applicants are of the position that the prior art does not, in fact, possess the same properties as the claimed composition, the claimed composition should be amended to distinguish itself from the prior art--In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990).
Claim(s) 29-30 is/are rejected under 35 U.S.C. 103 as being unpatentable over Arora et al as applied to claims 1, 7-12, 21-22, 25-26, 27, 31-32, 36-37 and, 43-45above, and further in view of Zhao et al (US 2015/0191622).
Aroura is set forth above.
Regarding claims 29: While Aroura sets forth the addition of a wax to the compositions as discussed above; Aroura is silent the type of wax. It is known in the art of primer compositions to use paraffin wax in primer compositions for substrates such as concrete, as evidenced by Zhao. Zhao and Aroura both set forth polyurethane acrylate containing primer composition. Zhao sets forth it is known to add paraffin wax to primer compositions comprising a polyurethane acrylate compound and hydroxyethyl acrylate—see comparative example 12 in table II, page 6 of Zhao. Therefore, it would have been within the skill level of an ordinary artisan to add paraffin wax, evidenced by Zhao, to the compositions of Aroura in absence of evidence to the contrary and/or unexpected results. The courts have upheld it is prima facie obvious to add a known ingredient for its function—In re Linder 173 USPQ 356 and In re Dial et al 140 USPQ 244.
Regarding claim 30 and 34: Paraffin wax has a melting temperature between 46 deg. and 68 deg. C.
Allowable Subject Matter
Claims 2-6, and 38-42 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 for the reasons set forth above.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to SANZA L MCCLENDON whose telephone number is (571)272-1074. The examiner can normally be reached 8-5.
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/SANZA L. McCLENDON/Primary Examiner, Art Unit 1765
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