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 .
Status of Application
Claims 1-21 are pending and presented for examination.
Double Patenting
The nonstatutory double patenting rejection is based on a judicially created doctrine grounded in public policy (a policy reflected in the statute) so as to prevent the unjustified or improper timewise extension of the “right to exclude” granted by a patent and to prevent possible harassment by multiple assignees. A nonstatutory double patenting rejection is appropriate where the conflicting claims are not identical, but at least one examined application claim is not patentably distinct from the reference claim(s) because the examined application claim is either anticipated by, or would have been obvious over, the reference claim(s). See, e.g., In re Berg, 140 F.3d 1428, 46 USPQ2d 1226 (Fed. Cir. 1998); In re Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993); In re Longi, 759 F.2d 887, 225 USPQ 645 (Fed. Cir. 1985); In re Van Ornum, 686 F.2d 937, 214 USPQ 761 (CCPA 1982); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Thorington, 418 F.2d 528, 163 USPQ 644 (CCPA 1969).
A timely filed terminal disclaimer in compliance with 37 CFR 1.321(c) or 1.321(d) may be used to overcome an actual or provisional rejection based on nonstatutory double patenting provided the reference application or patent either is shown to be commonly owned with the examined application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. See MPEP § 717.02 for applications subject to examination under the first inventor to file provisions of the AIA as explained in MPEP § 2159. See MPEP § 2146 et seq. for applications not subject to examination under the first inventor to file provisions of the AIA . A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
The filing of a terminal disclaimer by itself is not a complete reply to a nonstatutory double patenting (NSDP) rejection. A complete reply requires that the terminal disclaimer be accompanied by a reply requesting reconsideration of the prior Office action. Even where the NSDP rejection is provisional the reply must be complete. See MPEP § 804, subsection I.B.1. For a reply to a non-final Office action, see 37 CFR 1.111(a). For a reply to final Office action, see 37 CFR 1.113(c). A request for reconsideration while not provided for in 37 CFR 1.113(c) may be filed after final for consideration. See MPEP §§ 706.07(e) and 714.13.
The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The actual filing date of the application in which the form is filed determines what form (e.g., PTO/SB/25, PTO/SB/26, PTO/AIA /25, or PTO/AIA /26) should be used. A web-based eTerminal Disclaimer may be filled out completely online using web-screens. An eTerminal Disclaimer that meets all requirements is auto-processed and approved immediately upon submission. For more information about eTerminal Disclaimers, refer to www.uspto.gov/patents/apply/applying-online/eterminal-disclaimer.
1. Claims 1-3, 13, 17 and 19 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-3 and 14 of copending Application No. 19/132429 (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other because claims 1-3 and 14 of Application No. 19/132429 anticipate claims 1-3, 13, 17 and 19.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
2. Claims 1, 13 and 19-21 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1 and 19-21 of copending Application No. 19/132441 (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other because claims 1 and 19-21 of Application No. 19/132441 anticipate claims 1, 13 and 19-21.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
3. Claims 1, 13 and 19-21 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1 and 12-14 of copending Application No. 19/132446 (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other because claims 1 and 12-14 of Application No. 19/132446 anticipate claims 1, 13 and 19-21.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
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.
4. Claims 9 and 10 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.
Claims 9 and 10 recite the percentage of the light that is emitted in a certain wavelength range is given relative to the light that is emitted at 200 to 390 nm (claim 9) or 231 to 390 (claim 10). This language is indefinite. There is no antecedent basis for “the percentage of the light that is emitted” and it is unclear as to what light is being referred to. Additionally, these recitations don’t appear to provide an additional limitation to the claim, but appear to only provide a definition for a value that has no antecedent basis in the parent claim. Note that parent claim 1 refers to a percentage of the actinic radiation power and not a percentage of the light. Therefore, claims 9 and 10 are indefinite. For examination purposes, if the light used in step 2 meets the limitations with respect to the light having wavelengths essentially in the range from 231-280 as defined in claim 1, then that light will be interpreted as meeting the limitations of claims 9 and 10 as well.
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.
5. Claim(s) 1-21 is/are rejected under 35 U.S.C. 103 as being unpatentable over Mehnert et al. (DE102017008353, reference is made to the English translation provided by Applicant) in view of Becker et al. (WO 2019/034675).
Regarding claims 1-4, 6-10, 12 and 19-21, Mehnert teaches a method for forming a cured coating (abstract) comprising: applying a radiation curable coating on a substrate (0094) and irradiating the radiation curable coating with UV light having a wavelength 185 nm and 254 nm (claim 1) wherein 80% of the radiation power is provided by the light at 254 nm (0043) which partially cures the surface (0028); and finish curing with actinic radiation to thereby fix the partially cured layer with reduced gloss and form a cured coating having a low gloss surface (claim 1). Mehnert teaches that the irradiation with 185 nm and 254 nm light is done in air (0096), the dose used in the step is 100 mJ/cm2 (0075) and conducted with ten low pressure mercury vapor lamps (0059) or with a single Ga-doped mercury medium pressure lamp (0072). Mehnert teaches the finish curing may be electron beam curing (claim 1). Mehnert further teaches the coating composition comprises Irgacure 184 (0093 and note that Irgacure 184 has absorption peaks at 246 nm and 330 nm). Mehnert also teaches the gloss of surface is less than 52 gloss units at 60º and less than 60 gloss units at 85º (see Tables) and that the full curing can be done with a medium pressure mercury vapor lamp (0089 and note that this is a type of broad band UV lamp). Mehnert fails to explicitly teach the final curing done in air.
However, Becker teaches a similar process for curing to form a matte coating (abstract) where a first irradiation is conducted to cause partial curing (abstract) and then a final curing is done potentially with electron beam irradiation (abstract) to result in full end curing (abstract). Becker further teaches that the full end curing step can be done in air (see Production of coatings section). Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify Mehnert’s process by conducting the finish curing in air as disclosed by Becker. One would have been motivated to make this modification as it would simplify the process and alleviate the need for a special chamber and special atmospheric conditions.
II. Regarding claim 5, Mehnert in view of Becker make obvious claim 1 (see above), but fail to explicitly teach the irradiance from each lamp used in the irradiation with 185 nm and 254 nm light. However, adjusting the irradiance will adjust the dose delivered and will adjust the curing depth (see Mehnert at 0036) and ultimately the microfolding. Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to choose the instantly claimed range for irradiance from each lamp through process optimization, since it has been held that where the general conditions of a claim are disclosed in the prior art, discovering the optimum or workable ranges involves only routine skill in the art. See In re Boesch, 205 USPQ 215 (CCPA 1980).
III. Regarding claim 11, Mehnert in view of Becker make obvious claim 1 (see above), but fail to explicitly teach the radiation dose used for full curing. However, the dose is a result-effective variable as it will be necessary to optimize the dose for fully curing based on the specific composition that is being cured and the thickness of the coating. Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to choose the instantly claimed range for dose through process optimization, since it has been held that where the general conditions of a claim are disclosed in the prior art, discovering the optimum or workable ranges involves only routine skill in the art. See In re Boesch, 205 USPQ 215 (CCPA 1980).
IV. Regarding claims 13-17, Mehnert in view of Becker make obvious the process of claim 13 wherein there is no optional pre-curing step (see above). The limitations with respect to the optional step (1b) only provide further limitations when the prior art teaches the optional step. In this case, as the step is optional and Mehnert in view of Becker do not teach the optional step, Mehnert in view of Becker also make obvious claims 13-17.
III. Regarding claim 18, Mehnert in view of Becker make obvious claim 1 (see above), and Mehnert further teaches that the irradiation with 185 nm and 254 nm light creates a microfold pattern (0049). Further, as Mehnert in view of Becker are teaching an identical process using identical ranges of wavelength, then inherently the microfolded patterns with have an average spacing between adjacent peaks and/or valleys shorter than 100 microns. Therefore, Mehnert in view of Becker make obvious claim 18.
Conclusion
Claims 1-21 are pending.
Claims 1-21 are rejected.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to ROBERT S WALTERS JR whose telephone number is (571)270-5351. The examiner can normally be reached Monday-Friday 8-5.
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/ROBERT S WALTERS JR/
July 22, 2026Primary Examiner, Art Unit 1717
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