Patent Application 16760131 - CURABLE COMPOSITIONS CONTAINING THIOL COMPOUNDS - Rejection

Patent Application 16760131 - CURABLE COMPOSITIONS CONTAINING THIOL COMPOUNDS

Title: CURABLE COMPOSITIONS CONTAINING THIOL COMPOUNDS

Application Information

• Invention Title: CURABLE COMPOSITIONS CONTAINING THIOL COMPOUNDS
• Application Number: 16760131
• Submission Date: 2025-05-20T00:00:00.000Z
• Effective Filing Date: 2020-04-29T00:00:00.000Z
• Filing Date: 2020-04-29T00:00:00.000Z
• National Class: 528
• National Sub-Class: 376000
• Examiner Employee Number: 85106
• Art Unit: 1767
• Tech Center: 1700

Rejection Summary

• 102 Rejections: 0
• 103 Rejections: 2

Cited Patents

The following patents were cited in the rejection:

• US 2496990🔗

Office Action Text

    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 .

Claim Objections
Claim 9 is objected to because of the following informalities: “insaturation” should be “unsaturation”.  Appropriate correction is required.

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 4, 8, 11, and 12 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 4 and 8 require “wherein said at least monomer or oligomer a): …a2) is a mixture of at least one allyl-functional monomer or allyl-functional oligomer and at least one (meth)acrylate-functional or vinyl-functional monomer or (meth)acrylate functional or vinyl-functional oligomer.”  It is unclear if the “allyl-functional oligomer” and/or  “(meth)acrylate-functional or vinyl-functional oligomer” is intended to be included in the composition in addition to the urethane oligomer required by independent claim 1 or is intended to further define the urethane oligomer required by independent claim 1.  The claims have multiple interpretations, thus unclear.  For purpose of further examination, the Examiner is interpreting claim 4 to further define the urethane oligomer as required by claim 1 and claim 8 to require a mixture of urethane oligomers.
Claims 11, 12, and 24 recites the limitation "said oligomer" in line 1 (claims 11 and 12) and line 2 (claim 24).  There is insufficient antecedent basis for this limitation in the claim.

The following is a quotation of 35 U.S.C. 112(d):
(d) REFERENCE IN DEPENDENT FORMS.—Subject to subsection (e), a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.

The following is a quotation of pre-AIA  35 U.S.C. 112, fourth paragraph:
Subject to the following paragraph [i.e., the fifth paragraph of pre-AIA  35 U.S.C. 112], a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.


Claims 9, 10, and 25 are rejected under 35 U.S.C. 112(d) or pre-AIA  35 U.S.C. 112, 4th paragraph, as being of improper dependent form for failing to further limit the subject matter of the claim upon which it depends, or for failing to include all the limitations of the claim upon which it depends.  Claims 9 and 10 require “wherein a) is a (meth)acrylated non-hydrogenated polydiene polyol oligomer, bearing internal cis/trans ethylenic insaturation.”  Independent claim 1 requires a “urethane oligomer bearing at least one allyl-functional group”.  The (meth)acrylated non-hydrogenated polydiene polyol oligomer falls outside the scope of at least one urethane oligomer bearing at least one allyl-functional group.  Applicant may cancel the claim(s), amend the claim(s) to place the claim(s) in proper dependent form, rewrite the claim(s) in independent form, or present a sufficient showing that the dependent claim(s) complies with the statutory requirements.

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) 1-8, 11, 12, 15, 16, 19, 20, 24 is/are rejected under 35 U.S.C. 103 as being unpatentable over Cooke et al. (GB 2496990).
Regarding claims 1, 5, 6, 11; Cooke et al. teaches a nail coating composition comprising an acrylate-terminated oligomer in combination with at least one acrylate monomer (reactive diluent); and a thiol component present in an amount of from about 5% to about 90% w/w of the nail coating composition, wherein the thiol component comprises a compound containing two or more SH groups, and wherein when the thiol component consists of a bis and/or tris functional thiol it is present as at least 15% of the nail coating composition; and (ii) a means for applying the nail coating composition to a nail [0032].  Cooke et al. teaches preferably the thiol component is employed in an amount of about 15% w/w to about 20% w/w [0072] and  a preferred thiol compound to be of the following formula [0099]:

    PNG
    media_image1.png
    264
    378
    media_image1.png
    Greyscale

Cooke et al. teaches the composition may further comprise an allyl monomer component in an amount of from about 10% to 80% w/w [0182-0187]; a suitable example includes the triallyl monomer of the following formula (at least one monomer bearing at least one allyl-functional group) [0188]:

    PNG
    media_image2.png
    252
    420
    media_image2.png
    Greyscale

Cooke et al. teaches the composition further comprises a photoinitiator [0193-0196].
Cooke 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.  Cooke et al. does not specifically disclose an embodiment containing an acrylate-terminated oligomer in combination with at least one acrylate monomer (reactive diluent); a thiol component, an allyl monomer, and a photoinitiator.  However, at the time of invention a person of ordinary skill in the art would have found it obvious to prepare a coating composition containing an acrylate-terminated oligomer in combination with at least one acrylate monomer (reactive diluent); a thiol component, an allyl monomer, and a photoinitiator, based on the invention of Cooke et al., and would have been motivated to do so since Cooke et al. suggests that the coating composition can contain an acrylate-terminated oligomer in combination with at least one acrylate monomer (reactive diluent); a thiol component, an allyl monomer, and a photoinitiator.  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].
Regarding claim 2; Cooke et al. teaches the composition comprises the photoinitiator in an amount of from about 0.5% to about 3% w/w of a photoinitiator [0193-0204] and may further comprise an adhesion promoter (additive) in an amount of from about 1% to about 8% w/w [0234].
Regarding claim 4; the allyl tri-functional monomer, as set forth above, reads on the required a1) wherein it bears in the same molecule at least two functional groups, one selected from vinyl group and at least one additional second functional group being an allyl group.  The Examiner makes note that an allyl group is a species of a vinyl group.
Regarding claim 7; the limitations merely further defines an optional limitation to the urethane oligomer a); wherein Cooke et al. teaches the monomer.
Regarding claim 8; Cooke et al. teaches the oligomer component may include a mixture of more than one (e.g. two or three) different oligomers [0115]; suitable examples include a acrylate-terminated urethane oligomer [0111, 0126-0127] and an allyl-terminated urethane oligomer [0137].  It is prima facie obvious to combine two compositions (in this case compounds) 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; the idea of combining them flows logically from their having been individually taught in the prior art. See In re Kerkhoven, 626 F.2d 846, 850, 205 USPQ 1069, 1072 (CCPA 1980), see MPEP §2144.06.
Regarding claim 12; Cooke et al. teaches the allyl-terminated oligomer may be of the following formula (having both urethane and alkoxy units) [0138]. 

    PNG
    media_image3.png
    298
    284
    media_image3.png
    Greyscale

Regarding claim 14; Cooke et al. teaches the composition further comprises about 0.5% to about 2% w/w of a free radical stabilizer, such as butyl hydroxytoluene (hindered phenol) [0213-0215].
Regarding claims 15-16 and 20; Cooke et al. teaches a UV cured nail varnish [0251-0252].
Regarding claim 19; “for use in optical applications” is an intended use limitation.  A recitation of the intended use of the claimed invention must result in a structural difference between the claimed invention and the prior art in order to patentably distinguish the claimed invention from the prior art. If the prior art structure is capable of performing the intended use, then it meets the claim; see MPEP §2111.02, 7.37.09.
Regarding claim 24; Cooke et al. teaches the oligomer component of the acrylate-terminated oligomer can include aliphatic and aromatic urethane oligomers [0124].

Claim(s) 1, 6, 9, 10, and 25 is/are rejected under 35 U.S.C. 103 as being unpatentable over Umino et al. (JP 2011-026492), wherein the machine English translation is used for citation.
Regarding claims 1, 6, 9, 10, and 25; Umino et al. teaches a curable composition comprising a diene compound (A) (e.g. polybutadiene-based urethane (meth)acrylate resin [0018]) [0013-0020] in an amount of 60-80 wt% [0062], diallyl and triallyl compounds [0066], polybutadiene diacrylate [0132], a thiol compound (B) [0063-0064], such as pentaerythritol tetrakis(3-mercaptobutyrate) [0079], employed in an amount of 20-40 wt.% [Table1; 0062], and a photoinitiator [0094].  Umino et al. teaches the composition may further comprise mono- and multifunctional acrylate monomers (reactive diluent) [0069-0073].  Umino et al. taches that the diallyl and triallyl compounds are employed within a range not impairing the effects of the present invention [0064], thus it is the Examiner’s position that the total amount of the polybutadiene-based urethane acrylate resin and allyl-functional compound would fall within the amount of 60-80 wt%.
Umino 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.  Umino et al. does not specifically disclose an embodiment containing polybutadiene diacrylate, pentaerythritol tetrakis(3-mercaptobutyrate), and a photoinitiator.  However, at the time of invention a person of ordinary skill in the art would have found it obvious to prepare composition containing polybutadiene-based urethane (meth)acrylate resin, diallyl or triallyl compounds, pentaerythritol tetrakis(3-mercaptobutyrate), and a photoinitiator, based on the invention of Umino et al., and would have been motivated to do so since Umino et al. suggests that the composition can contain polybutadiene-based urethane (meth)acrylate resin [0018], diallyl or triallyl compounds [0066], pentaerythritol tetrakis(3-mercaptobutyrate) [0079], and a photoinitiator [0094].

Response to Arguments
Applicant’s arguments with respect to claim(s) 1-12, 14-16, 19-20, and 24-25 have been considered but are moot because the new ground of rejection does not rely on any reference applied in the prior rejection of record for any teaching or matter specifically challenged in the argument.

Conclusion
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). 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.

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 on 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