3/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 .
Claim Rejections - 35 USC § 112
Claims 13, 16 and 18-20 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.
In claim 13, it is unclear whether the X and R units defining the Z group C(=O)-NH-X-NH-C(=O)-OR in formula (V) have the same definitions as those defining the antecedently-recited formula (III).
In claim 16, there is no express antecedent basis for “the ratio R1”. Moreover, it is unclear whether the ratio refers to a weight ratio.
In claim 18, it is unclear how the ethylenically unsaturated compound distinguishes over the antecedently recited urethane (meth)acrylate, which necessarily has ethylenically unsaturation.
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, 3, 5-7, 9, 11 and 17-20 are rejected under 35 U.S.C. 102(a1) as being anticipated by JP 2021- 0446483 (Deguchi) abstract and machine translation.
Deguchi discloses an active energy ray-curable composition comprising:
a urethane (meth)acrylate resin from the reaction of
(a1) a polyol compound containing a polyglycerin (meets Applicants’ polyglycerin polyol);
(a2) a polyisocyanate (meets Applicants’ polyisocyanate); and
(a3) a hydroxy group-containing (meth)acrylate compound (meets Applicants’ hydroxy-functional (meth)acrylate); and
an aqueous unsaturated group-containing compound (e.g., abstract, examples, claims).
As to claim 1, Deguchi expressly sets forth various urethane acrylates (e.g., urethane acrylates (1)-(8), (10)-(11)) resulting from the reaction of polyglycerin polyol, polyisocyanate and hydroxy-functional acrylate (abstract).
As to claim 3, Deguchi’s urethane (meth)acrylates are governed by hydroxyl values and, as such, have residual hydroxy groups.
As to claims 5 and 7 Deguchi exemplifies the same polyglycerin R-PG [0056] described by specification and, as such, such would necessarily be free of oxyethylene and/or oxypropylene groups and have a structure meeting formula (I).
As to claim 6, Deguchi exemplifies the same polyglycerin R-PG [0056] described by specification having a molecular weight of 240.
As to claim 9, Deguchi discloses isophorone diisocyanate [0056] (cycloaliphatic) and tolylene diisocyanate [0060] (aromatic).
As to claim 11, Deguchi discloses hydroxyethyl acrylate [0056].
As to claim 17, Deguchi exemplifies the same successive method steps [0056].
As to claim 18, Deguchi’s composition comprises (A) a urethane (meth)acrylate resin and (B) an aqueous unsaturated group-containing compound.
As to claim 19, Deguchi sets forth various compositions in Table 1 meeting the presently claimed ethylenically unsaturated compound content.
As to claim 20, Deguchi discloses cured products resulting from curing the composition.
Claim Rejections - 35 USC § 102/103
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 2 and 13 are rejected under 35 U.S.C. 102(a1) as anticipated by or, in the alternative, under 35 U.S.C. 103 as obvious over JP 2021- 0446483 (Deguchi) described hereinabove.
As to claim 2, it would be expected that the urethane (meth)acrylates disclosed by Deguchi would inherently meet the presently claimed molecular weight. In this regard, Deguchi’s urethane acrylate resin (1) is obtained by reacting 182.6 pbw of isophorone diisocyanate (Mw 222), 95.4 pbw hydroxyethyl acrylate (Mw 116) and polyglycerin (Mw 240), which reasonably engenders a urethane acrylate having a molecular weight as presently claimed. In the alternative, it would have been within the purview of one having ordinary skill in the art to formulate a urethane (meth)acrylate according to Deguchi having a molecular weight as presently claimed in accordance with the ultimate properties desired.
As to claim 13, it is reasonably believed that Deguchi’s urethane (meth)acrylate meets the presently claimed formula (III). Illustratively, Deguchi’s urethane acrylate (1) meets the presently claimed formula (III) wherein R is derived from hydroxyethyl acrylate, X is derived from isophorone diisocyanate and A is derived from polyglycerin R-PG. In the alternative, it would have been within the purview of Deguchi’s inventive disclosure, and obvious to one having ordinary skill in the art, to select the appropriate amounts of diisocyanate, hydroxyalkyl (meth)acrylate and polyglycerin polyol to arrive at the presently claimed formula (III) for the expected additive effects and with the reasonable expectation of success.
Claims 4, 8, 10, 12 and 14-16 are rejected under 35 U.S.C. 103 as being unpatentable over JP 2021- 0446483 (Deguchi) described hereinabove.
As to claim 4, it would have been within the purview of one having ordinary skill in the art to formulate a urethane (meth)acrylate according to Deguchi free of hydroxy groups in accordance with the ultimate properties desired.
As to claim 8, it would have been within the purview of one having ordinary skill in the art to formulate a urethane (meth)acrylate according to Deguchi having a polyglycerin polyol unit content as presently claimed in accordance with the ultimate properties desired.
As to claim 10, it would have been within the purview of one having ordinary skill in the art to formulate a urethane (meth)acrylate according to Deguchi having a polyisocyanate unit content as presently claimed in accordance with the ultimate properties desired.
As to claim 12, it would have been within the purview of one having ordinary skill in the art to formulate a urethane (meth)acrylate according to Deguchi having a hydroxy-functional (meth)acrylate unit content as presently claimed in accordance with the ultimate properties desired.
As to claims 14 and 15, Deguchi discloses urethane (meth)acrylates preferably having a hydroxyl value of 200 to 900 mg KOH/g [0024]. Thus, it would have been within the purview of Deguchi’s inventive disclosure, and obvious to one having ordinary skill in the art, to formulate urethane (meth)acrylates having an OH value as presently claimed in accordance with the ultimate antifogging properties desired and with the reasonable expectation of success.
As to claim 16, it would have been within the purview of one having ordinary skill in the art to formulate a urethane (meth)acrylate according to Deguchi having a weight ratio of polyisocyanate to hydroxy-functional (meth)acrylate unit as presently claimed in accordance with the ultimate properties desired.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Ana L Woodward whose telephone number is (571)272-1082. The examiner can normally be reached M-F 8am-5pm.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Heidi Kelley can be reached at 571-270-1831. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/ANA L. WOODWARD/Primary Examiner, Art Unit 1765
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