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 1-14 and 16-20 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.
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1. Claims 1-7 and 14 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-3 and 19 of copending Application No. 19/132423 in view of Gotou et al. (U.S. PGPUB No. 2018/0312697).
Although the claims at issue are not identical, they are not patentably distinct from each other because claims 1-3 and 19 recite identical processes except for failing to teach that the curable composition comprises a photoinitiator which is an aryl ketone photoredox active compound and a tertiary amine redox active compound. However, Gotou teaches a photoinitiation system for polymerizing acrylate monomers (abstract) which comprises benzophenone (0099, an aryl ketone photoredox active compound having a peak absorption in the range 244 to 265, see Applicant’s specification at page 18) and a tertiary amine co-initiator (0099, which serves as a redox active compound, see Applicant’s specification at page 18-19). Gotou further teaches the photoinitiation system present in an amount of 1-10% (0109, and note that overlapping ranges are prima facie evidence of obviousness) and Gotou teaches that the photoinitiator is selected from a group including Irgacure 184 (0101). Therefore, it would have been obvious to modify claims 1-3 and 19 of U.S. Application No. 19/132423 by using a photoinitiator system as disclosed by Gotou. One would have been motivated to make this modification as Gotou teaches it is a well-known system to initiate curing reactions of monomers for coatings.
This is a provisional nonstatutory double patenting rejection.
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.
2. Claim(s) 1-7, 10-14, 16 and 18 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) and Gotou et al. (U.S. PGPUB No. 2018/0312697).
I. Regarding claims 1-7, 10, 14 and 18, Mehnert teaches a method for forming a cured coating (abstract) comprising: applying a radiation curable coating comprising acrylate monomers (0093) 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 the 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 and wherein the photoinitiation system comprises a photoredox active compound and one or more redox active compounds the system present in the composition in an amount as claimed.
First, 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, such that the entire process is conducted in air. 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.
Second, Gotou teaches a photoinitiation system for polymerizing acrylate monomers (abstract) which comprises benzophenone (0099, an aryl ketone photoredox active compound having a peak absorption in the range 244 to 265, see Applicant’s specification at page 18) and a tertiary amine co-initiator (0099, which serves as a redox active compound, see Applicant’s specification at page 18-19). Gotou further teaches the photoinitiation system present in an amount of 1-10% (0109, and note that overlapping ranges are prima facie evidence of obviousness) and Gotou teaches that the photoinitiator is selected from a group including Irgacure 184 (0101). 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 substituting Gotou’s photoinitiation system for Mehnert’s. One would have been motivated to make this modification as one could have made this substitution with a reasonable expectation of success (particularly given that both systems are for polymerizing acrylates and Gotou specifically teaches that Irgacure and a system including benzophenone and a tertiary amine are interchangeable as photoinitiators), and the predictable result of providing a cured coating.
II. Regarding claims 11-13, Mehnert in view of Becker and Gotou make obvious claim 1, but fail to explicitly teach the ratio of benzophenone to tertiary amine or the specific amounts of benzophenone and tertiary amine in the composition. However, these values and this ratio are result effective variables as this ratio and these amounts will alter the curing characteristics of the composition and the curing rate. Furthermore, these will need to be adjusted based on coating thickness and the specific acrylate monomers that are used. 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 ranges 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 16, Mehnert in view of Becker and Gotou make obvious the process of claim 1. Further, Mehnert teaches a coated substrate prepared by the process (0098 and Figures). Therefore, Mehnert in view of Becker and Gotou also make obvious claim 16.
3. Claim(s) 8, 9, 17, 19 and 20 is/are rejected under 35 U.S.C. 103 as being unpatentable over Mehnert in view of Becker and Gotou as applied to claim 1 above, and further in view of Hoyle et al. (U.S. PGPUB No. 2008/0132601).
I. Regarding claims 8, 9 and 17, Mehnert in view of Becker and Gotou teach all the limitations of claim 1, but fail to teach the tertiary amine being an aliphatic tertiary amine having one or two acrylate groups. However, Hoyle teaches utilizing acrylate functional aliphatic tertiary amines as co-initiators (0028) in combination with benzophenone photoinitiators (abstract). Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to substitute an acrylate functionalized aliphatic tertiary amine for Mehnert in view of Becker and Gotou’s tertiary amine. One would have been motivated to make this modification as Hoyle teaches that the acrylate functionality allows for the amine to be a non-migrating component (0028) and would have beneficial properties as the amine would not leach from the coating and deteriorate or change the aesthetic appearance of the coating.
II. Regarding claims 19 and 20, Mehnert in view of Becker and Gotou make obvious the process of claim 1, wherein the photoredox active compound is an aryl ketone moiety and the redox active compound is a tertiary amine. Mehnert in view of Becker and Gotou fail to teach the tertiary amine being an aliphatic tertiary amine including an acrylate group and the molar ratio being 1:3 to 3:1.
First, Hoyle teaches utilizing acrylate functional aliphatic tertiary amines as co-initiators (0028) in combination with benzophenone photoinitiators (abstract). Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to substitute an acrylate functionalized aliphatic tertiary amine for Mehnert in view of Becker and Gotou’s tertiary amine. One would have been motivated to make this modification as Hoyle teaches that the acrylate functionality allows for the amine to be a non-migrating component (0028) and would have beneficial properties as the amine would not leach from the coating and deteriorate or change the aesthetic appearance of the coating.
Second, the ratio is a result effective variable as this ratio will alter the curing characteristics of the composition and the curing rate. Furthermore, this ratio will need to be adjusted based on coating thickness and the specific acrylate monomers that are used. 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 ranges 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).
Conclusion
Claims 1-14 and 16-20 are pending.
Claims 1-14 and 16-20 are rejected.
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/ROBERT S WALTERS JR/
July 30, 2026Primary Examiner, Art Unit 1717
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