DETAILED ACTION
Notice of Pre-AIA or AIA Status
1. 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 the Claims
2. Claims 1, 5-15 are currently pending. Claims 9-10 have been withdrawn as being drawn to non elected inventions. Claims 1, 5-8 and 11-15 are currently under examination. This office action is in response to the amendment filed on 01/15/2025.
Claim Rejections - 35 USC § 112
The following is a quotation of the first paragraph of 35 U.S.C. 112(a):
(a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
The following is a quotation of the first paragraph of pre-AIA 35 U.S.C. 112:
The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention.
3. Claim 6 and 13 are rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the written description requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for applications subject to pre-AIA 35 U.S.C. 112, the inventor(s), at the time the application was filed, had possession of the claimed invention. Concerning claims 6 and 13 applicants specification does not provide enough support to indicate to one of ordinary skill in the art at the time of invention that the inventor had possession of the claimed combination of the indicated monomers of the composition and the indicated polymer. Applicants specification paragraph 0091 indicates that the composition comprises the copolymer comprising the one or more high refractive index first monomer and the one or more second monomers comprising a reactive side chain and one or more additional polymers or copolymers. Applicants specification does not provide support for a composition of the unpolymerized monomers in combination with the indicated polymer only for the polymer of these monomers with the indicated polymer.
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.
4. Claims 1, 5, and 7 are rejected under 35 U.S.C. 103 as being unpatentable over Yoshimune (JP 2009-051972 A; all citations refer to the English machine translation which is provided).
Concerning claim 1, and 5 Yoshimune teaches a carbazole containing polymer that is made from a monomer having a structure of (paragraph 0014-0016)
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336
370
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Where R is a hydrogen, a methyl or a hydroxymethyl group R2 to R9 may be a hydrogen atom (paragraph 0018) and X is (paragraph 0019)
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134
346
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Where n and m are each an integer of 0 or more (paragraph 0021). Specific examples of the carbazole containing monomer include n-allyl carbazole, N-acryloylcarbazole, n-methacryloylcarbazole, carbazoyl ethoxy ethyl acrylate carbazoyl ethoxyethyl methacrylate, carbazoyl(2-methylethyl)acrylate carbazoyl (2-methyl ethyl)methacrylate (paragraph 0021). The polymer is indicated to be made from another copolyemrizable monomer examples of which include (meth)acrylic acid, methyl (meth)acrylate, ethyl (meth)acrylate, n-propyl (meth)acrylate, isopropyl (meth)acrylate, n-butyl (meth)Acrylate, isobutyl (meth)Acrylate, t-butyl (meth)acrylate, methyl 2-ethylehxyl (meth)methacrylate cuc;pjexu; (meth)acrylate, 2- (hydroxyethyl (meth)acrylate, styrene , vinyl toluene, butadiene, isoprene, acrylonitrile, and vinyl acetate (paragraph 0023) with the preferred comonoemrs being (meth)acrylic acid, methyl (meth)Acryalte, cyclohexyl methacrylate, benzyl methacrylate, styrene N-benzilic maleimide and dimethyl2,2’ [oxybis (methylene)}bis-2-proenoate which are preferable in that transparency is good and heat resistance is hardly impaired (paragraph 0023). It should be noted that all but 2 of these preferable monomers are monomers which are listed for the claimed one or more second monomers. Yoshimune further teaches that the method of the polymerization is preferably a solution polymerization (paragraph 0026) which includes a solvent (paragraph 0027). In producing the polymer Yoshimune indicated that a polymerization initiator may be added if necessary and a chain transfer agent may be added as necessary (paragraphs 0028-0029).
Yoshimune teaches an exemplary method that includes a formulation of carbazoylethyl acrylate, methacrylic acid, mercaptopropionic acid, t-butylperoxy-2-ethylhexanoate and toluene (paragraph 0054).
It should be noted that a composition consisting of the indicated components is given its broadest reasonable interpretation that the composition can be mixed with other components that are not considered to be a part of the composition as is required by the formulation of claim 7.
As such the formulation of Yoshimune teaches a composition that consists of carbazoylethyl acrylate, methacrylic acid and a solvent of toluene which is an aromatic hydrocarbon in a formulation that further comprises mercaptopropionic acid and t-butylperoxy-2-ethylhexanoate.
As such the difference between the claimed composition and the composition of Yoshimune is that the composition of Yoshimune uses carbazoylethyl acrylate instead of one the claimed high refractive index monomers.
However as is stated above Yoshimune teaches thatspecific examples of the carbazole containing monomer include n-allyl carbazole, N-acryloylcarbazole, n-methacryloylcarbazole, carbazoyl ethoxy ethyl acrylate carbazoyl ethoxyethyl methacrylate, carbazoyl(2-methylethyl)acrylate carbazoyl(2-methyl ethyl)methacrylate which are indicated to be alterative carbazole containing monomers to carbazoyl ethyl acrylate (paragraph 0021). As such these compounds are substantially equivalent and interchangeable with one another.
It would have been obvious to one of ordinary skill in the art at the time of filling to alter the composition of Yoshimune to include the one or more high refractive index monomers comprising an aromatic heterocycle instead of carbozyolyethyl acrylate in the exemplary formulation because Yoshimune teaches that the claimed aromatic heterocycle monomers are alternatives to the exemplary carbazoylethyl acrylate and so these monomers are substantially equivalent and interchangeable with one another.
Concerning claim 7 Yoshimune teaches the composition of claim 1 and the exemplary formulation which is discussed in the rejection of claim 1.
Yoshimune does not specifically teach that the formulation includes one or more solvents in addition to the solvent of the composition of claim 1
Yoshimune further teaches that the solvent of the polymerization can be a single solvent or a combination of two or more solvents (paragraph 0027).
It would have been obvious to one of ordinary skill in the art at the time of filling to alter the formulation of Yoshimune to include an additional solvent to give the claimed formulation because Yoshimune teaches that two or more solvents can be used for the polymerization solution.
5. Claim 8 is rejected under 35 U.S.C. 103 as being unpatentable over Yoshimune (JP 2009-051972 A; all citations refer to the English machine translation which is provided) as is further evidenced by Vesta Chemicals “Enox TBPO”, 2025 accessed at https://vestachem.com/chemicals/enox-tbpo/ on 04/12/2025.
Concerning claim 8 Yoshimune teaches the formulation of claim 7 as is indicated above.
Yoshimune does not specifically teach that one of the claimed components is present in the formulation.
However Yoshimune teaches that the formulation includes t-butylperoxy-2-ethylhexanoate (paragraph 0054).
Vesta Chemicals provides evidence that t-butylperoxy-2-ethylhexanoate is known as a crosslinking agent (pg 1 paragraph 1) and as such would be a crosslinker.
As such the formulation of Yoshimune taught in the discussion of claim 7 would have the claimed limitation.
Allowable Subject Matter
6. Claims 6, 11-15 are allowable over the prior art of record.
Claims 6 and 13 are rejected under 112(a) as is stated in the rejections provided above.
The following is a statement of reasons for the indication of allowable subject matter: The claims are allowable over the prior art of record as the prior art of record does not teach or fairly suggest the claimed components with the claimed one or more additional polymers of claims 6 and 13, or teach or fairly suggest the claimed composition of claim 11.
Response to Arguments
7. Applicant's arguments filed 01/15/2025 have been fully considered but they are not persuasive. Applicant argues with regard to the rejection over 112(a) that claim 6 has been amended to include all the limitations of base claim 1 and claim 13 has been rewritten to include all of the limitations of base claim 11.
This argument is not found to be persuasive as this does not point to applicants originally filed specification for the support for the composition of the indicated monomers solvent and one or more additional polymers. As no indication of this support has been provided the rejection is maintained.
Applicant’s arguments with respect to claim(s) 1, 5 and 7-8 over the prior art 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
8. Claims 1, 5-8, 13 are rejected. Claims 11-12, 14-15 are allowable. Claims 6 and 13 are allowable over the prior art of record but are rejected under 112(a).
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.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to DAVID L MILLER whose telephone number is (571)270-1297. The examiner can normally be reached M-F 7:30-4:00.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Ling Siu Choi can be reached on 571-2721098. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/DAVID L MILLER/
Examiner, Art Unit 1763
/LING SIU CHOI/Supervisory Patent Examiner, Art Unit 1763
