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 .
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.
Election/Restrictions
Applicant’s election without traverse of claims 1 - 17 in the reply filed on 11/7/25 is acknowledged.
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.
Claim(s) 1 – 6, 8, 11, 13 and 17 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by US 20210230341 A1 to Hiratani et al. hereinafter “Hiratani” and as evidenced by the NPL titled Hansen Solubility Parameters, CRC Press, second edition, 2007, selected pages, and JP 2022083414 A to Hiratani et al. hereinafter “Hiratani 2”.
Hiratani is directed to curable resin compositions and a cured product thereof [0002].
Regarding claims 1 – 2, 4 - 6, 8, 11, 13 and 17, Hiratani teaches an example 11 in Table 2 comprising 30 parts of a polyfunctional urethane methacrylate A-1 (Kayarad UX-6101), 50 parts of monofunctional monomer B-1 (acryloylomorpholine), 20 parts of monofunctional monomer B-4 (acryloylpiperidine), 25 parts of rubber particles D-1 and 2 parts of a radical initiator E-1 (Irgacure 819). All component other than E-1 comprise radically polymerizable groups. The total amount of monofunctional monomers is 70 parts based on the 100 parts by mass of the total of radical polymerizable compounds (A) and (B). Monofunctional monomer B-1 (acryloylmorpholine) has a molecular weight of 141.17 g/mol (www.sigmaaldrich.com). Monofunctional monomer B-4 (acryloylpiperidine) has a molecular weight of 139.19 g/mol (www.sigmaaldrich.com). The total weight of the monofunctional monomers B-1 + B-4 = 70 parts. This is within the claimed range. Monomers B-1 and B-4 are cyclic acrylamides. The rubber particle D-1 has a core/shell structure [0138]. From the evidentiary reference to Hiratani 2, urethane methacrylate A-1 is a polyester urethane bifunctional acrylate with an weight average molecular weight of 6,700 g / mol and a radically polymerizable functional weight of 500 g/eq. Composition 11 of Hiratani was cured [0142 – 0143].
As to claim 3, the Examiner takes the position that acryloyl morpholine has a log (S) value of > 0.4.
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) 9 and 10 are rejected under 35 U.S.C. 103 as being unpatentable over US 20210230341 A1 to Hiratani et al. hereinafter “Hiratani” and as evidenced by the NPL titled Hansen Solubility Parameters, CRC Press, second edition, 2007, selected pages, hereinafter “Hansen”, JP 2022083414 A to Hiratani et al. hereinafter “Hiratani 2” and the NPL titled Acryloylmorpholine, TCI Chemicals, 2026, hereinafter “Acryloylmorpholine”.
Regarding claims 9 - 10, Hiratani teaches a Hiratani teaches an example 20 in Table 2 comprising 20 parts of a polyfunctional urethane methacrylate A-1 (Kayarad UX-6101), 60 parts of monofunctional monomer B-1 (acryloylomorpholine), 20 parts of monofunctional monomer B-13 (methyl methacrylate), 25 parts of rubber particles D-1 and 2 parts of a radical initiator E-1 (Irgacure 819). All component other than E-1 comprise radically polymerizable groups. The total amount of monofunctional monomers is 80 parts based on the 100 parts by mass of the total of radical polymerizable compounds (A) and (B). Monofunctional monomer B-1 (acryloylmorpholine) has a molecular weight of 141.17 g/mol (www.sigmaaldrich.com). Monofunctional monomer B-4 (acryloylpiperidine) has a molecular weight of 139.19 g/mol (www.sigmaaldrich.com). The weight of the monofunctional monomers B-1 = 60 parts. This is within the claimed range. Monomers B-1 is a cyclic acrylamide. Monomer B-13 is methyl methacrylate and is a (meth)acrylate monomer. The rubber particle D-1 has a core/shell structure [0138]. From the evidentiary reference to Hiratani 2, urethane methacrylate A-1 is a polyester urethane bifunctional acrylate with an weight average molecular weight of 6,700 g / mol and a radically polymerizable functional weight of 500 g/eq. Composition 20 of Hiritani was cured [0142 – 0143]. From the NPL to Hansen the hydrogen bonding value (dipole interaction energy) of methyl methacrylate is 5.4. This is within the claimed range.
Example 20 comprises 20 parts of a polyfunctional urethane methacrylate A-1 (Kayarad UX-6101). This is outside the independent claim range. However, Hiratani teaches that the use level for the polyfunctional urethane (meth)acrylate is preferable 5 parts by mass or more and 70 parts by mass or less [0031]. Therefore, it would be obvious to one of ordinary skill to increase the use level to at least 25 parts as this is directly taught by Hiratani.
Allowable Subject Matter
Claims 7, 12, 14, 15 and 16 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.
Conclusion
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PAS 1/23/26
/PETER A SALAMON/Primary Examiner, Art Unit 1759
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