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 .
Election/Restrictions
Applicant’s election without traverse of Group I, claims 1-5 and 7 in the reply filed on 23 April 2026 is acknowledged.
Claims 6 and 8 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected invention, there being no allowable generic or linking claim. Election was made without traverse in the reply filed on 23 April 2026.
Claim Rejections - 35 USC § 112
The following is a quotation of 35 U.S.C. 112(b):
(b) CONCLUSION.—The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the inventor or a joint inventor regards as the invention.
The following is a quotation of 35 U.S.C. 112 (pre-AIA ), second paragraph:
The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.
Claims 1-5 and 7 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. Specifically, claim 1 contains parenthesis. Parenthesis and/or brackets in claims should only be used with labels/number from the specification or drawings. It is unclear whether the applicant intends these limitations to be a part of the claim. As such, dependent claims 2-4 and 7 are also rejected.
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.
Claim(s) 1 and 5 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Miyakubo et al. (JP 2017-165962), wherein the machine English translation is used for citation, as evidenced by Arkema (SR499 US).
Regarding claims 1 and 5; Miyakubo et al. teaches, in a preferred embodiment, a photosetting resin composition, suitable for use as an antifogging film, comprising SR 499 (ethoxylated (6) trimethylolpropane triacrylate), BYK 345 (water soluble surfactant), and Irgacure® 184D (1-hydroxy-cyclohexyl-phenyl-ketone) [Ex2], used to produce a cured film [0084-0087].
Arkema provides evidence that SR 499 is ethoxylated (6) trimethylolpropane triacrylate.
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) 2 and 7 is/are rejected under 35 U.S.C. 103 as being unpatentable over Miyakubo et al. (JP 2017-165962), wherein the machine English translation is used for citation, as evidenced by Arkema (SR499 US), as applied to claim 1 above, further in view of Terauchi et al. (JP 2015-059167).
Miyakubo et al. teaches the basic claimed active energy ray curable composition, as set forth above, with respect to claim 1.
Regarding claims 2 and 7; Miyakubo et al. fails to teach the composition further comprising a compound having a carboxyl group and a (meth)acryloyl group and a compound having an alkoxylyl group and a (meth)acryloyl group. Terauchi et al. teaches a composition comprising a compound having an alkoxysilyl group and (meth)acrylate group [0026-0029], and a compound having a (meth)acrylate and an acid structure [0030-0033]. Miyakubo et al. and Terauchi et al. are analogous art because they are both concerned with the same field of endeavor, namely curable coating compositions suitable for producing cured films. At the time of filing, a person of ordinary skill in the art would have found it obvious to add the compound having an alkoxysilyl group and (meth)acrylate group, as taught by Terauchi et al., to the composition of Miyakubo et al., and would have been motivated to do so in order to improve adhesion to the substrate and hardness and scratch resistance, as suggested by Terauchi et al. [0025]. At the time of filing, a person of ordinary skill in the art would have found it obvious to add the compound having a (meth)acrylate and acid structure, as taught by Terauchi et al., to the composition of Miyakubo et al., and would have been motivated to do so in order to promote the reaction of the alkoxysilyl group with the substrate to promote the improvement of adhesion, and also further improving hardness and scratch resistance, as suggested by Terauchi et al. [0025]. Miyakubo et al. teaches the composition of the invention are used to produce cured films [0064-0087].
Claim(s) 3-4 is/are rejected under 35 U.S.C. 103 as being unpatentable over Miyakubo et al. (JP 2017-165962), wherein the machine English translation is used for citation, as applied to claim 1 above.
Miyakubo et al. teaches the basic claimed active energy ray curable composition, as set forth above, with respect to claim 1.
Regarding claims 3 and 4; Miyakubo et al. teaches the composition may include a mixture of compounds, in addition to the ethoxylated trimethylolpropane triacrylate, such as propoxylated polyethylene glycol di(meth)acrylate (polyfunctional acrylate not modified by ethylene oxide and having a polyethylene glycol structure) [0030-0031].
Miyakubo 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. Miyakubo et al. does not specifically disclose an embodiment further comprising propoxylated polyethylene glycol di(meth)acrylate. However, at the time of invention a person of ordinary skill in the art would have found it obvious to prepare a composition further containing propoxylated polyethylene glycol di(meth)acrylate based on the invention of Miyakubo et al., and would have been motivated to do so since Miyakubo et al. suggests that the composition can mixtures of the component (A) including propoxylated polyethylene glycol di(meth)acrylate [0030-0031]. 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].
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.
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, Mark Eashoo can be reached at 571-272-1197. 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.
/JESSICA M ROSWELL/Primary Examiner, Art Unit 1767
Prosecution Insights