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 Rejections - 35 USC § 112
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.
Claim 16 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. Claim 12 previously required an actinic radiation curable monomer that isn’t glycerol carbonate methacrylate selected from cyanoacrylates, vinyl ester etc. Applicant may cancel the claim(s), amend the claim(s) to place the claim(s) in proper dependent form, or present a sufficient showing that the dependent claim(s) complies with the statutory requirements.
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.
Claims 12-16 rejected under 35 U.S.C. 103 as being unpatentable over Miller 2004/0152799.
Miller exemplifies (#6) a UV polymerizable composition of 40.76 parts RX04918, 19.88 parts RX03593, 24.85 parts RD RX/201, 4.97 parts NVP, 4.97 parts Ebecryl7100, 0.6 parts TEGO and 3.98 parts Darocur 1173.
RD RX/201(paragraph 215) is glycerol carbonate methacrylate and is present at ~25wt%. RX04918 (paragraph 191) is a urethane acrylate which qualifies as applicant’s oligomer. NVP (paragraph 216) is vinylpyrrolidone. RX03593 (paragraph 205) is an unidentified acrylate monomer. Ebecryl7100 (paragraph 207) is an amine functional acrylate.
This example lacks one of applicant’s Markush list of monomers and a methacrylate other than the glycerol carbonate methacrylate.
However, Miller (paragraph 129) lists numerous monomers including (meth)acrylate (ie methacrylates or acrylates), vinyl pyrrolidone, vinylester etc as diluent monomers in the composition. It would have been prima facie obvious to substitute the cited example’s vinyl pyrrolidone with a vinylester and the RX03593 unidentified acrylate monomer with a methacrylate monomer as Miller considers these diluents as equivalent for the purpose of viscosity/rheology adjustment.
In regards to applicant’s dependent claims:
RX04918’s urethane acrylate has a molecular weight of 4,475 (paragraph 191). This is well within applicant’s 500-50,000 range (page 12 line 15 of spec). Furthermore, urethane acrylates such as NeoRad U-60 of Mw 4,500 have a viscosity of 27,000-37,000mPa.s (see page 4 of the Covestro brochure). For these reasons it is believed that inherently, RX04918 has a viscosity above 10,000cps. When this oligomer is combined with the glycerol carbonate methacrylate and additional diluent monomers in a ~40/60 ratio, presumably the viscosity would be significantly reduced below 10,000cps as in applicant’s example 19 which meets applicant’s claim 14.
Presumably the reference’s mixture of 40.76% urethane acrylate with 24.85% glycerol methacrylate meets applicant’s claim 15 requirements as the 24.85% glycerol carbonate methacrylate is well above applicant’s minimum of 1% (page 10 line 1 of spec) and above applicant’s amount of example 16.
Applicant's arguments filed 2/23/26 have been fully considered but they are not persuasive.
Applicant argues that Miller does not suggest any reason to replace two of the constituents of example 6 with alternatives.
This is not convincing. Applicant’s original disclosure only provides a similar (weak) suggestion of utilizing both the extra methacrylate monomer simultaneously with one of the monomers of the claimed Markush group (eg vinyl ester). Applicant’s specification merely indicates the extra methacrylate can be added to the carbonate methacrylate/curable oligomer mixture. Elsewhere in the specification, applicant indicates the claimed Markush group of monomers (eg vinyl ester) can be added to the carbonate methacrylate/curable oligomer mixture. If these disparate teachings support applicant’s claim (in the sense of 35U.S.C. 112 1st paragraph) to using both the extra methacrylate and claimed Markush group of monomers simultaneously, then this similar level of teaching in Miller must support the obviousness rejection.
A rejection over prior art broad disclosure is justifiable as a reference is relevant for all it contains – including alternative and nonpreferred embodiments (MPEP2123).
It is noted that applicant’s disclosure provides no examples of adding an acrylate or methacrylate to the carbonate methacrylate/curable oligomer mixture. Nor does applicant’s disclosure provide any examples of adding a vinylester to the carbonate methacrylate/curable oligomer mixture.
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 J BUTTNER whose telephone number is (571)272-1084. The examiner can normally be reached M-F 9-3pm.
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/DAVID J BUTTNER/Primary Examiner, Art Unit 1765 3/13/26