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 § 103
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 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.
This application currently names joint inventors. In considering patentability of the claims the examiner presumes that the subject matter of the various claims was commonly owned as of the effective filing date of the claimed invention(s) absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and effective filing dates of each claim that was not commonly owned as of the effective filing date of the later invention in order for the examiner to consider the applicability of 35 U.S.C. 102(b)(2)(C) for any potential 35 U.S.C. 102(a)(2) prior art against the later invention.
Claim(s) 1-8 and 10-11 is/are rejected under 35 U.S.C. 103 as being unpatentable over Uhl et al. (EP 3707216), wherein the machine English translation is used for citation.
Regarding claims 1-2 and 4-8; Uhl et al. teaches a dual curing composition comprising a mixture of initiators such as radical photoinitiators [0107-0108], diacyl peroxides (thermal initiator) [0110], and heat latent acid formers based on quaternary benzylammonium salts, such as benzyl quaternary ammonium salt with hexafluoroantimonate anion [0062, 0033]. Uhl et al. teaches the composition comprises urethane (meth)acrylates [0081-0083] and multifunctional acrylate compounds (crosslinking agents) [0081-0082].
Uhl et al. teaches all of the above required components, however fails to explicitly disclose each in a preferred embodiment. A reference may be relied upon for all that it would have reasonably suggested to one having ordinary skill the art, including the non-preferred embodiments. See Merck & Co. v. Biocraft Laboratories, 874 F.2d 804, 10 USPQ2d 1843 (Fed. Cir.); MPEP §2123. Uhl et al. does not specifically disclose an embodiment containing radical photoinitiators, diacyl peroxides (thermal initiator), heat latent acid formers based on quaternary benzylammonium salts, such as benzyl quaternary ammonium salt with hexafluoroantimonate anion, urethane (meth)acrylate and multifunctional acrylate compounds (crosslinking agents). However, at the time of invention a person of ordinary skill in the art would have found it obvious to prepare a composition containing radical photoinitiators, diacyl peroxides (thermal initiator), heat latent acid formers based on quaternary benzylammonium salts, such as benzyl quaternary ammonium salt with hexafluoroantimonate anion, urethane (meth)acrylate and multifunctional acrylate compounds (crosslinking agents) based on the invention of Uhl et al., and would have been motivated to do so since Uhl et al. suggests that the composition can contain radical photoinitiators [0107-0108], diacyl peroxides (thermal initiator) [0110], heat latent acid formers based on quaternary benzylammonium salts, such as benzyl quaternary ammonium salt with hexafluoroantimonate anion [0062, 0033], urethane (meth)acrylate [0081-0083] and multifunctional acrylate compounds (crosslinking agents) [0081-0082].
Additionally, “It is prima facie obvious to combine two compositions each of which is taught by the prior art to be useful for the same purpose, in order to form a third composition to be used for the very same purpose.... [T]he idea of combining them flows logically from their having been individually taught in the prior art.” In re Kerkhoven, 626 F.2d 846, 850, 205 USPQ 1069, 1072 (CCPA 1980) (citations omitted) [see MPEP 2144.06].
Regarding claim 3; Uhl et al. teaches the composition further comprises fillers [0113].
Regarding claims 10-11; Uhl et al. teaches the composition may further comprise additives, such as pigments, in an amount of 1-80 wt.% [0013-0016].
Claim(s) 9 is/are rejected under 35 U.S.C. 103 as being unpatentable over Uhl et al. (EP 3707216), wherein the machine English translation is used for citation, as applied to claim 3 above, and further in view of JP 2017-513729A, wherein the machine English translation is used for citation.
Uhl et al. renders obvious the basic claimed composition as set forth above, with respect to claim 3.
Regarding claim 9; Uhl et al. teaches the composition further comprises fillers, such as silica [0133], however fails to explicitly teach the fillers required by claim 9. JP 2017-513729A teaches opaque compositions, comprising a radiation curable resin, and additives including fillers, such as silica, calcium carbonate, and calcium sulfate [00146]. Therefore, JP 2017-513729A teaches that silica, calcium carbonate, and calcium sulfate are functional equivalents for the purpose of functioning as fillers in opaque coating compositions. It is prima facie obvious to substitute art-recognized functional equivalents known for the same purpose (See MPEP § 2144.06).
Response to Arguments
Applicant's arguments filed 17 July 2026 have been fully considered but they are not persuasive.
Applicants argue nowhere in Uhl are both cationic and radical cure pathways disclosed or suggested. The Examiner respectfully disagrees. Uhl teaches in a first preferred embodiment of the process according to the invention, dual-curing compositions are used which can be cured both by irradiation with actinic radiation and by heat induction and which comprise an irreversible thermochromic compound. Uhl teaches these composition contain a heat latent acid former (thermal cationic initiator) and additionally a photolatent acid former or radical photoinitiator together with a thermally activatable radical former [0033]. Applicants are reminded that a reference may be relied upon for all that it would have reasonably suggested to one having ordinary skill the art, including the non-preferred embodiments. See Merck & Co. v. Biocraft Laboratories, 874 F.2d 804, 10 USPQ2d 1843 (Fed. Cir.); MPEP §2123.
In response to applicant's argument that the examiner's conclusion of obviousness is based upon improper hindsight reasoning, it must be recognized that any judgment on obviousness is in a sense necessarily a reconstruction based upon hindsight reasoning. But so long as it takes into account only knowledge which was within the level of ordinary skill at the time the claimed invention was made, and does not include knowledge gleaned only from the applicant's disclosure, such a reconstruction is proper. See In re McLaughlin, 443 F.2d 1392, 170 USPQ 209 (CCPA 1971).
In response to applicant's argument that the references fail to show certain features of the invention, it is noted that the features upon which applicant relies (i.e. the instant application does not require multiple phases and instead uses exothermic heat of surface-initiated cure to induce secondary curing with the mass of the instantly claimed composition that has not been exposed to UV cure) are not recited in the rejected claim(s). 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).
Regarding arguments directed to JP1 (JP 2017-513729), JP1 is only relied upon for teaching silica, calcium carbonate, and calcium sulfate to be functionally equivalent.
As such, Uhl et al. is still relied upon for rendering obvious the basic claimed composition as required by the instant claim language.
Conclusion
THIS ACTION IS MADE FINAL. Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any nonprovisional extension fee (37 CFR 1.17(a)) pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the mailing date of this final action.
Correspondence
Any inquiry concerning this communication or earlier communications from the examiner should be directed to JESSICA ROSWELL whose telephone number is (571)270-5453. The examiner can normally be reached M-F 8:00 am to 5:00 pm.
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/JESSICA M ROSWELL/Primary Examiner, Art Unit 1767
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