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 .
Priority
Receipt is acknowledged of certified copies of papers required by 37 CFR 1.55.
Election/Restrictions
Claims 21-23 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected inventions, there being no allowable generic or linking claim. Election was made without traverse in the reply filed on July 27, 2026.
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.
The factual inquiries for establishing a background for determining obviousness under 35 U.S.C. 103 are summarized as follows:
1. Determining the scope and contents of the prior art.
2. Ascertaining the differences between the prior art and the claims at issue.
3. Resolving the level of ordinary skill in the pertinent art.
4. Considering objective evidence present in the application indicating obviousness or nonobviousness.
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.
Claims 1, 4-5, 8, 10, 12-14, and 19 are rejected under 35 U.S.C. 103 as being unpatentable over Yamashita et al JP2015147700A.
Regarding claim 1, Yamashita teaches a radiation curable coating composition for optical fibers comprising components (A1) a urethane (meth)acrylate having a structure derived from a polycarbonate diol and one (meth)acryloyl group; (A2) a urethane (meth)acrylate having a structure derived from a polycarbonate diol and two (meth)acryloyl groups; (B) a compound having an ethylenically unsaturated group other than urethane (meth)acrylate; (C) A radiation polymerization initiator, ¶¶[0001, 0008].
The urethane acrylate (A1) is derived from a reaction of a polycarbonate diol, diisocyanate, and hydroxyl group-containing (meth)acrylate, and a monohydric alcohol, ¶[0012]. The urethane acrylate (A1) reads on the claimed urethane (meth)acrylate-based resin of claim 1.
The urethane acrylate (A2) is a separate component derived from a polycarbonate polyol, diisocyanate and hydroxyl group-containing (meth)acrylate, ¶[0015], and reads on the multifunctional urethane (meth)acrylate compound of claim 1.
The component (B) includes monofunctional (B1) and multifunctional (B2) unsaturated compounds, ¶[0037]. Yamashita lists monofunctional compounds of alkyl (meth)acrylates like methyl (meth)acrylate, alicyclic (meth)acrylates like isobornyl (meth)acrylate, aromatic (meth)acrylates like benzyl (meth)acrylate, polar (meth)acrylates like 2-hydroxyethyl (meth)acrylate, and polar aromatic (meth)acrylates like phenoxyethyl (meth)acrylate, ¶[0038], which read on the five different (meth)acrylate monomers of claim 1 in the monomer mixture.
Yamashita further lists compounds having two or more ethylenically unsaturated groups (B2) such as trimethylolpropane tri(meth)acrylate, ¶[0049], and reads on the multifunctional (meth)acrylate-based compound of claim 1.
Yamashita teaches that the compounds of (B1) and (B2) can each be used in combinations of two or more, ¶¶[0044, 0051].
The mixture including components (A1) and (B1) reads on the claimed resin syrup because the term “syrup” is interpreted as another word for mixture because applicant does not give it a distinct definition, nor distinguish a difference between the meaning of “syrup” versus “mixture” in the as-filed specification.
The fact that Yamashita discloses numerous types of (meth)acrylate monomers which can be suitably selected to form a coating composition does not render any particular combination of two or more of Yamashita’s disclosed monomers less obvious. A reference is available for all that it teaches to a person of ordinary skill in the art. Merck & Co., Inc. v. Biocraft Laboratories, Inc. 874 F.2d 804, 807 (Fed. Cir. 1989).
Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to practice the invention of Yamashita using a (meth)acrylate monomer mixture that includes an alkyl (meth)acrylate, an alicyclic (meth)acrylate, a polar functional (meth)acrylate, an aromatic (meth)acrylate, and a polar and aromatic (meth)acrylate because these are all types of (meth)acrylate monomers disclosed by Yamashita as being suitable for use in combination with each other in the composition, and with the motivation of producing the predictable result of another permutation of a radiation curable coating for optical fibers as taught by Yamashita.
Regarding claims 4-5, Yamashita teaches the structure of the polycarbonate diol is formula 3, ¶[0020] of original document, which shows a carbonate repeat unit, R1 is an alkanediyl group of 3-9 carbons, and includes branched structures, ¶¶[0019,0021], also see ¶[0022] (original document is clearer) where the examples of R1 include at least the structure of –(CH2)2-CH(CH3)-(CH2)2- which has a methyl group coming off the chain and reads on the side chain of 1-3 carbon atoms of claim 4.
Yamashita further teaches the formation of the urethane acrylate by reacting the polycarbonate diol with a diisocyanate first and then reacts it with a hydroxyl functional (meth)acrylate, ¶¶[0012-0013, 0064]. In production example 1, UA1-1 is produced by reacting the polyalkylene carbonate diol with toluene diisocyanate in a first reaction, and then in a second reaction, 2-hydroxy acrylate is added, ¶[0064], which reads on the prepolymer reaction of claim 5.
Regarding claim 8, Yamashita teaches the urethane (meth)acrylate (A1) makes up 10-60 wt.% of the entire composition, ¶[0034], and the acrylate monomers (B1) make up 10-70 wt.% of the entire composition, ¶[0047]. These are the two components for the claimed syrup mixture, therefore calculating based off the total of (A1) and (B1), (A1) can be in an amount of 12.5 parts to 85.71 parts per 100 parts total (A1) and (B1). This is calculated from 10% A1/ (10% A1 + 70% B1) = 10%/80% = 12.5% or 12.5 parts/100 parts. And for the maximum, 60% A1/ (60% A1 + 10% B1) = 60%/70%= 85.71 parts/100 parts.
These ranges overlap with the claimed ranges; therefore it would have been obvious to one of ordinary skill in the art before the effective filing date of the invention to have selected the overlapping portion of the ranges disclosed by Yamashita because selection of the overlapping portion of ranges has been held to be prima facie obvious. In the case where the claimed ranges “overlap or lie inside ranges disclosed by the prior art” a prima facie case of obviousness exists. In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976).
Regarding claim 10, Yamashita teaches the urethane (meth)acrylate (A1) makes up 10-60 wt.% of the entire composition, ¶[0034], and the acrylate monomers (B1) make up 10-70 wt.% of the entire composition, ¶[0047]. Furthermore, the claimed second (meth)acrylate monomer is the alicyclic monomer, which Yamashita teaches preferably makes up 30-100% of the (B1) monomers, ¶[0048]. (A1) and (B1) are the two components for the claimed syrup mixture, therefore by calculating based off the total of (A1) and (B1), the alicyclic (meth)acrylate monomer can be in an amount of 4.28 parts to 87.5 parts per 100 parts (A1) and (B1). This is calculated from 10% B1/ (60%A1 + 10%B1) = 10%/70% = 14.28 then multiply by 0.30, which equals 4.28 parts/ 100 parts. For the maximum, it is calculated from 70% B1/ (10%A1 + 70% B1) = 70%/80% = 87.5 parts/ 100 parts.
These ranges overlap with the claimed ranges; therefore it would have been obvious to one of ordinary skill in the art before the effective filing date of the invention to have selected the overlapping portion of the ranges disclosed by Yamashita because selection of the overlapping portion of ranges has been held to be prima facie obvious.
Regarding claim 12, Yamashita teaches the urethane (meth)acrylate (A1) makes up 10-60 wt.% of the entire composition, ¶[0034], and the acrylate monomers (B1) make up 10-70 wt.% of the entire composition, ¶[0047]. Furthermore, the claimed fourth (meth)acrylate monomer is the aromatic monomer, which Yamashita teaches preferably makes up 30-100% of the (B1) monomers, ¶[0048]. (A1) and (B1) are the two components for the claimed syrup mixture, therefore by calculating based off the total of (A1) and (B1), the aromatic (meth)acrylate monomer can be in an amount of 4.28 parts to 87.5 parts per 100 parts (A1) and (B1). This is calculated from 10% B1/ (60%A1 + 10%B1) = 10%/70% = 14.28 then multiply by 0.30, which equals 4.28 parts/ 100 parts. For the maximum, it is calculated from 70% B1/ (10%A1 + 70% B1) = 70%/80% = 87.5 parts/ 100 parts.
These ranges overlap with the claimed ranges; therefore it would have been obvious to one of ordinary skill in the art before the effective filing date of the invention to have selected the overlapping portion of the ranges disclosed by Yamashita because selection of the overlapping portion of ranges has been held to be prima facie obvious.
Regarding claim 13, Yamashita teaches the urethane (meth)acrylate (A1) makes up 10-60 wt.% of the entire composition, ¶[0034], and the acrylate monomers (B1) make up 10-70 wt.% of the entire composition, ¶[0047]. Furthermore, the claimed fifth (meth)acrylate monomer is the polar and aromatic monomer, which Yamashita teaches the aromatic (meth)acrylates preferably makes up 30-100% of the (B1) monomers (whether it has a polar group or not), ¶[0048]. (A1) and (B1) are the two components for the claimed syrup mixture, therefore by calculating based off the total of (A1) and (B1), the polar and aromatic (meth)acrylate monomer can be in an amount of 4.28 parts to 87.5 parts per 100 parts (A1) and (B1). This is calculated from 10% B1/ (60%A1 + 10%B1) = 10%/70% = 14.28 then multiply by 0.30, which equals 4.28 parts/ 100 parts. For the maximum, it is calculated from 70% B1/ (10%A1 + 70% B1) = 70%/80% = 87.5 parts/ 100 parts.
These ranges overlap with the claimed ranges; therefore it would have been obvious to one of ordinary skill in the art before the effective filing date of the invention to have selected the overlapping portion of the ranges disclosed by Yamashita because selection of the overlapping portion of ranges has been held to be prima facie obvious.
Regarding claim 14, Yamashita teaches the urethane (meth)acrylate (A1) makes up 10-60 wt.% of the entire composition, ¶[0034], and the acrylate monomers (B1) make up 10-70 wt.% of the entire composition, ¶[0047]. Furthermore, the claimed fourth and fifth (meth)acrylate monomers are the aromatic monomer and the polar and aromatic monomer, which Yamashita teaches the aromatic (meth)acrylates preferably makes up 30-100% of the (B1) monomers (whether it has a polar group or not), ¶[0048]. (A1) and (B1) are the two components for the claimed syrup mixture, therefore by calculating based off the total of (A1) and (B1), both types of aromatic (meth)acrylate monomer can have a total amount of 4.28 parts to 87.5 parts per 100 parts (A1) and (B1). This is calculated from 10% B1/ (60%A1 + 10%B1) = 10%/70% = 14.28 then multiply by 0.30, which equals 4.28 parts/ 100 parts. For the maximum, it is calculated from 70% B1/ (10%A1 + 70% B1) = 70%/80% = 87.5 parts/ 100 parts.
These ranges overlap with the claimed ranges; therefore it would have been obvious to one of ordinary skill in the art before the effective filing date of the invention to have selected the overlapping portion of the ranges disclosed by Yamashita because selection of the overlapping portion of ranges has been held to be prima facie obvious.
Regarding claim 19, Yamashita teaches the composition further comprises a radiation polymerization initiator ¶[0057] and is in the amount of 0.1-10% by mass in the total composition, ¶[0058]. The urethane (meth)acrylate (A1) is in the composition from 10-60 wt.% ¶[0034], so the amount of initiator per 100 parts A1 is 0.17-50 parts. This is calculated from 0.1%/(60% + 0.1%) = 0.1%/60.1% = 0.17 parts/100 parts A1. And for the maximum, 10%/(10% + 10%) = 50 parts/ 100 parts A1.
These ranges overlap with the claimed ranges; therefore it would have been obvious to one of ordinary skill in the art before the effective filing date of the invention to have selected the overlapping portion of the ranges disclosed by Yamashita because selection of the overlapping portion of ranges has been held to be prima facie obvious.
Claims 2, 3, and 20 are rejected under 35 U.S.C. 103 as being unpatentable over Yamashita et al JP2015147700A in view of Kimura, K. JP2006188589A.
Regarding claims 2, and 20, Yamashita teaches the invention according to claim 1 explained above. Yamashita does not teach the target molecular weight of the urethane (meth)acrylate resin nor the viscosity of the composition.
Kimura discloses a photocurable composition for optical fiber coatings ¶[0008], which comprises a polycarbonate urethane acrylate resin and (meth)acryloyl functional monomer, ¶[0012]. Kimura further discloses the weight average molecular weight of the urethane acrylate is in the range of 10,000-50,000 g/mol because if it is below 10,000 g/mol a low heat shrinkage rate cannot be achieved, and if it is higher than 50,000 g/mol, the viscosity is too high which can lead to an uneven coating and it would be difficult to achieve dimensional accuracy, ¶[0024]. Kimura further discloses the viscosity of the composition is 1,000-30,000 mPa.s (which converts to 1,000-30,000 cP), and that outside of this range, the coating will be uneven causing waviness and will be difficult to control ¶[0027]. These ranges overlap with the claimed molecular weight and viscosity ranges.
Yamashita and Kimura are analogous to the claimed invention because both are in the field of photocurable coating compositions comprising urethane (meth)acrylates and (meth)acrylate monomers.
Therefore it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to practice the invention of Yamashita and producing a urethane (meth)acrylate resin with a weight average molecular weight of 10,000-50,000 g/mol because a resin in this range has a low heat shrinkage rate, optimal viscosity, and dimensional accuracy; and further produce a composition with a viscosity of 1,000-30,000 mPa.s with the motivation of preventing an uneven, wavy coating and optimizing control of the composition as disclosed by Kimura.
Regarding claim 3, Yamashita is silent to the viscosity of the urethane (meth)acrylate resin mixed with the monofunctional (meth)acrylate monomers (i.e. the syrup), but Kimura discloses the viscosity of the resin composition is 1,000-30,000 mPa.s ¶[0027], which is the urethane (meth)acrylate resin and acrylate monomers. Therefore, it would be obvious that this viscosity range also applies to the mixture of the urethane (meth)acrylate resin and monofunctional monomers (syrup) of Yamashita with the motivation of producing a coating that is not uneven or wavy and is not difficult to control as disclosed by Kimura.
Allowable Subject Matter
As allowable subject matter has been indicated, applicant's reply must either comply with all formal requirements or specifically traverse each requirement not complied with. See 37 CFR 1.111(b) and MPEP § 707.07(a).
Claims 6, 9, 11, and 15 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.
The following is a statement of reasons for the indication of allowable subject matter: Yamashita does not teach, suggest, or disclose the subject of claims 6, 9, 11, and 15. Regarding claim 6, Yamashita does not give a weight percent range in the broader disclosure for the diisocyanate, but exemplifies its use in the production examples in an amount of about 36 parts per 100 parts polycarbonate diol ¶¶[0064-0065], which is much higher than the claimed range and there is no suggestion to lower it to the claimed range.
Regarding claims 9 and 11, Yamashita gives the range of the total amount of (B1) monomers as 10-70% ¶[0047], and gives an amount for the alicyclic or aromatic monomers as 30-100% of the B1 component, but does not give a suggestion for how much alkyl (meth)acrylate or polar (meth)acrylate monomers would be in the B1 component, nor does Yamashita provide any guidance that would lead the skilled artisan to selecting the claimed ranges for each of those monomers. Similarly, for claim 15, Yamashita does not suggest what weight ratio the two different aromatic (meth)acrylate monomers would be blended in, and the skilled artisan is not given any motivation to select the claimed ratio.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to VIRGINIA L STONEHOCKER whose telephone number is (571)272-3431. The examiner can normally be reached Monday-Friday 7:00AM-4:00PM EST.
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, Randy Gulakowski can be reached at 571-272-1302. 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.
/V.L.S./Examiner, Art Unit 1766
/MARC S ZIMMER/Primary Patent Examiner, Art Unit 1765
Prosecution Insights