DETAILED ACTION
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
Response to Amendment
Applicant’s amendment filed on 12/30/2025 is acknowledged. The previous rejection is maintained in this office action. Claims 1-6 and 8-12 are examined on the merits in this office action.
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.
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 1-6 and 8-12 are rejected under 35 U.S.C. 103 as being unpatentable over Shigong et al. (CN 102199377 A), taken in view of evidence by Allnex and Millipore Sigma. It is noted that the disclosures of Shigong et al. are based on a machine translation of the reference which is included in this action.
Regarding claims 1-6 and 8-12, Shigong et al. discloses a UV-curable treatment composition (i.e. coating composition) comprising 100 parts of an oligomer containing at least one double bond such as a multifunctional urethane acrylate-based oligomer, 30 to 1000 parts of thermoplastic resin such as homopolymer of methyl methacrylate (i.e. polymethylmethacrylate substantially free of curable functional group or reactive moiety), 0.5 to 20 parts of photoinitiator and a solvent such as an organic solvent (see Abstract and paragraphs 0010, 0019, 0020, 0023, 0042, 0043, 0030, 0050 and 0051). Therefore, the oligomer and the thermoplastic resin are blended in a weight ratio of 3.3 to 0.1, which overlaps with that presently claimed. Further, the thermoplastic resin is blended without reacting with oligomers (see paragraph 0033). Given that polymethylmethacrylate is free of curable functional group or reactive moiety, when blended in a three-dimensional network structure that would necessarily inherently be formed by polymerization of the multifunctional acrylate-based oligomer, the polymethyl methacrylate would necessarily inherently be blended without forming chemical bonds.
Further, Shigong et al. disclose the solvent is added so that the solid content is in the range of 15 to 40 wt% (see paragraphs 0050, 0072 and Table 1). Accordingly, the amount of solvent is 60 to 85 wt% in the coating composition. Based on 100 parts of the oligomer, 30 to 1000 parts of thermoplastic resin and 0.5 to 20 parts of initiator, the amount of the oligomer is 9 to 77 wt% (9 = 100/1120 x 100 and 77 = 100/130.5), the amount of thermoplastic resin is 23 to 89 wt% (23 = 30/130.5 x 100 and 89 = 1000/1120 x 100) and the amount of photoinitiator is 0.4 to 1.8 wt% (0.38 = 0.5/130.5 and 1.8 = 20/1120 x 100). Therefore, based on the solid content of 15 to 40 wt%, the amount of oligomer is 1.35 to 30.8 wt% (1.35 = 15 x 9/100 and 30.8 = 40 x 77/100), the amount of thermoplastic resin is 3.45 to 35.6 wt% (3.45 = 15 x 23/100 and 35.6 = 40 x 89/100) and the amount of photoinitiator is 0.06 to 0.72 wt% (0.06 = 15 x 0.4/100 and 0.72 = 40 x 1.8/100) in the coating composition. Based on the present claims, the amount of initiator is 0.01 to 9 wt% in the coating composition (0.01 = 0.01/100.01 x 100 and 9 = 10/110 x 100).
The composition can be coated on a substrate such as polycarbonate to form a coating, followed by curing the coating, i.e. a coating film formed by curing the coating composition (see paragraphs 0010, 0058, 0062, 0065). The coated substrate reads on a plastic product as presently claimed.
Shigong discloses multifunctional urethane acrylate includes those known under the tradename Ebecryl 4858 (see paragraph 0025), which as evidenced by Allnex has a glass transition temperature of 113 C. Further, as evidenced by Millipore Sigma, polymethylmethacrylate has a glass transition temperature of 105 C or 120 C. Given the glass transition temperatures of each of the multifunctional urethane acrylate and polymethylmethacrylate of Shigong fall within the claimed glass transition temperature range, it is clear that the coating film of Shigong would also necessarily have a glass transition temperature that falls within the claimed range.
Shigong et al. do not disclose a thermoformable coating film.
While there is no disclosure that the coating film is a thermoformable coating film as presently claimed, applicants attention is drawn to MPEP 2111.02 which states that “if the body of a claim fully and intrinsically sets forth all the limitations of the claimed invention, and the preamble merely states, for example, the purpose or intended use of the invention, rather than any distinct definition of any of the claimed invention’s limitations, then the preamble is not considered a limitation and is of no significance to claim construction”. Further, MPEP 2111.02 states that statements in the preamble reciting the purpose or intended use of the claimed invention must be evaluated to determine whether the purpose or intended use results in a structural difference between the claimed invention and the prior art. Only if such structural difference exists, does the recitation serve to limit the claim. If the prior art structure is capable of performing the intended use, then it meets the claim.
It is the examiner’s position that the preamble does not state any distinct definition of any of the claimed invention’s limitations and further that the purpose or intended use, i.e. thermoforming coating film, recited in the present claims does not result in a structural difference between the presently claimed invention and the prior art coating film and further that the prior art structure which is a coating film identical to that set forth in the present claims is capable of performing the recited purpose or intended use.
In light of the overlap between the claimed thermoformable coating film and that disclosed by Shigong et al., it would have been obvious to one of ordinary skill in the art to use a coating film that is both disclosed by Shigong et al. and is encompassed within the scope of the present claims, and thereby arrive at the claimed invention.
Response to Arguments
Applicant's arguments filed 12/30/2025 have been fully considered but they are not persuasive because of following reasons.
Applicants argue that however, Shigong mentions the contents of these components independently and does not disclose, emphasize, or recognize any specific weight ratio between the oligomer and the thermoplastic resin. Shigong does not disclose the ratio as a design choice or as a parameter to be selected for any purpose. Accordingly, while a ratio retroactively calculated from the disclosed component amounts may fortuitously end up overlapping with the claimed range, nothing in Shigong teaches or suggests purposefully selecting the weight ratio to be within any particular range. As such, Shigong fails to teach "selecting" the weight ratio of the multifunctional acrylate- based oligomer and the thermoplastic polymer to be within a range of 1:9 to 9:1.
However, the fact remains that Shigong disclose the oligomer and the thermoplastic resin are blended in a weight ratio of 3.3 to 0.1, which overlaps with that presently claimed. As set forth in MPEP 2144.05, in the case where the claimed range “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); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990).
Applicants argue that as shown in Table 1 reproduced below, Applicant discovered that a weight ratio between 1:9 and 9:1 represents an optimal range that produces unexpected and superior results for the purpose of the claimed invention. More specifically, the present application demonstrates that when the cured coating film is formed by particularly selecting the weight ratio to be within the range of 1:9 to 9:1, the coating film consistently exhibits thermoformability and excellent scratch resistance. See pre-grant publication of the application ("PG-Pub") at paragraph [0029]. When the mixing ratio falls outside this range, however, the cured coating film lacks sufficient flexibility to allow thermoforming or exhibits deteriorated properties such as reduced adhesion and hardness, rendering the film unsuitable for practical applications.
However, the data is not persuasive given that the data is not commensurate in scope with the scope of the present claims given that (i) the examples recite a specific multi-functional acrylate-based oligomer in specific amounts, while the present claim recite any multi-functional acrylate-based oligomer in any amounts (ii) the examples recite specific thermoplastic polymer in specific amounts, while the present claim recite any thermoplastic polymer in any amounts (iii) the examples recite a specific organic solvent in specific amounts, while the present claim recite any organic solvent in any amounts and (iv) the examples recite a specific weight ratio of the multifunctional acrylate-based oligomer and the thermoplastic polymer, while the present claim has broad recitation of weight ratio of the multifunctional acrylate-based oligomer and the thermoplastic polymer.
Additionally, even if the data were commensurate in scope with the scope of the present claims, the data would not be persuasive given that the data is not commensurate in scope with the closest prior art Shigong et al. Specifically, the ratio of oligomer to polymer in Comparative Examples 1-3 is not only outside the scope of the present claims but also outside the scope of Shigong et al.
Further, given that Shigong discloses the coating composition including the multi-functional acrylate-based oligomer and thermoplastic polymer identical to that presently claimed, with their weight ratio overlapping with that presently claimed, within the overlapping ranges, the coating composition will necessarily inherently provide cured coating film with properties similar to the present invention.
Applicants argue that Shigong provides no disclosure or recognition of limiting the mixing ratio of a multifunctional acrylate-based oligomer and a thermoplastic polymer to a specific range, nor does Shigong provide any teaching or suggestion regarding the effect of such a ratio on thermoformability, flexibility, adhesion, or scratch resistance of a cured coating film. Moreover, Shigong is generally directed to an ultraviolet-curable treatment agent comprising a monomer having at least one double bond, an oligomer having at least one double bond, or a mixture thereof. As such, Shigong does not require the inclusion of a multifunctional acrylate-based oligomer as an essential component. This is clearly evidenced by Preparation Example 4 in Table 1 of Shigong reproduced below, which does not include any oligomer.
However, the fact remains that Shigong disclose the oligomer and the thermoplastic resin are blended in a weight ratio of 3.3 to 0.1, which overlaps with that presently claimed. As set forth in MPEP 2144.05, in the case where the claimed range “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); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990). Further, given that Shigong discloses the coating composition including the multi-functional acrylate-based oligomer and thermoplastic polymer identical to that presently claimed, with their weight ratio overlapping with that presently claimed, within the overlapping ranges, the coating composition will necessarily inherently provide cured coating film with properties similar to the present invention.
While Shigong disclose Example 4 in Table 1 that does not include any oligomer, Shigong also has broad disclosure that either a monomer containing at least one double bond or an oligomer containing at least one double bond is used (see paragraph 0019). Further, “applicant must look to the whole reference for what it teaches. Applicant cannot merely rely on the examples and argue that the reference did not teach others.” In re Courtright, 377 F.2d 647, 153 USPQ 735,739 (CCPA 1967).
In light of amendments, claim objections are withdrawn.
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.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to KRUPA SHUKLA whose telephone number is (571)272-5384. The examiner can normally be reached M-F 7:00-3:00 PM.
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/KRUPA SHUKLA/Examiner, Art Unit 1787
/CALLIE E SHOSHO/Supervisory Patent Examiner, Art Unit 1787
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