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 .
Election/Restrictions
Claims 18 and 20 remain withdrawn from consideration as drawn to an unelected group as set forth in the Restriction set forth on 09/18/2024
Information Disclosure Statement
The information disclosure statement (IDS) submitted on 11/25/2025 is being considered by the examiner.
Response to Amendment
Applicant’s Amendments filed 11/25/2025 have been entered and are considered.
Response to Arguments
Applicant’s arguments filed alongside the amendments of 11/25/2025. All rejections have been withdrawn.
After further consideration, a new grounds of rejection is made over 35 USC 112b and separately over 35 USC 103.
Claim Rejections - 35 USC § 112
Claim 10 is 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.
Claim 1 recites that the composition is “essentially free” of solvent. Claim 10 recites that solvent is present in “at least” 15vol% based on the total volume of the composition.
Claim 10 is dependent from claim 1 – so the composition of claim 10 must be both essentially free of solvent and also comprise it in 15 or more – up to ~100% - by volume.
For the purposes of examination, the Examiner has looked to the specification – “essentially free” is not defined by Applicant in terms of volume but weight%, where “essentially free of a solvent” appears to apply to solvent being in “not greater than 5wt%” – interpreted as “0wt% to 5wt%. This parameter is not defined in terms of volume.
To abet examination, in the context of claim 10, the “essentially free” parameter is being considered compatible with solvent being present 15% or more (15% to 100% ) by volume, and consideration to processing that may reduce the amount of solvent present will also be considered. Applicant may wish to amend or otherwise clarify their position as to what “essentially free” means with respect to volume – with recognition that any amendment made must have support in the specification.
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.
Claim(s) 1-4, 6-8, 10, 13-17, and 21-22 is/are rejected under 35 U.S.C. 103 as being unpatentable over Nagasawa et al (US 20190256664 A1)
Regarding Claim 1-4, 7, 13 and 21-22, Nagasawa discloses a polymerizable composition comprising 100 parts by mass a reactive polysiloxane that is the condensation product of an alkoxysilicon compound, and 10-500 parts by mass at least one polymerizable compound having a double bond.
Nagasawa does not disclose a particular experimental example meeting the claim limitations.
These limitations are met by the general disclosure of the reference.
The polysiloxane of Nagasawa is described from [0042]-[0103], where the polymer is formed through a condensation polymerization and isolated.
The polymerizable compound (b) is at least one of a fluorene monomer (b1), an aromatic vinyl compound (b2), a polymerizable alkoxy silicon compound (b3), and/or an additional compound (b4).
Fluorenes (b1) are described from [0107]-[0116], as bounded by formula [3], where exemplary embodiments 9,9-bis(4-(2-(meth)acryloyloxyethoxy)phenyl)-9H-fluorene; where in [0115] the reference explicitly states that “methacryloyl” refers to both methacryloyl and acryloyl embodiments – methacrylate and acrylates are considered synonymous by the reference and refer to such interchangeably. The amount of this component ranges from 10 to 500 parts by mass relative to 100 parts by mass of the polysiloxane (a), or from 3-250 parts by mass when additional (b) components are present.
Aromatic vinyl compounds (b2) are described from [0118]-[0126], as bounded by formula [4], where 4,4'-divinylbiphenyl, bis(4-vinylphenyl)ether, and 2,2-bis( 4-vinylphenyl)propane are explicitly named as embodiments.
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4,4'-divinylbiphenyl meets the limitations of claim 1 for where formula (2)’s Y bears an R3 that is H, and R1 and R2 are each present in an amount of 0. Two Y 1 are present, one on each ring
4,4'-divinylbiphenyl meets the limitations of claim 2 for where formula (5)’s R3 is H, and R1 and R2 are each present in an amount of 0. This compound is (11) in claim 4.
As per claim 21, this compounds also meets the limitations for where X is not O and n is 0
As per claim 22, this monomer is 93.08% carbon by weight, obtained by calculating the ratio of carbon to hydrogen (Applicant’s own specification attests to this value at Table 1)
bis(4-vinylphenyl)ether meets the limitations of claim 3 for where formula (2)’s Y1 each bear an R3 that is H, and R1 and R2 are each present in an amount of 0. One Y1 are present on each ring.
bis(4-vinylphenyl)ether meets the limitations of claim 3 for where formula (9)’s R3 are each H, and R1 and R2 are each present in an amount of 0. This compound is (15) in claim 4.
The amount of this component ranges from 10 to 500 parts by mass relative to 100 parts by mass of the polysiloxane (a), or from 3-250 parts by mass when additional (b) components are present. Calculated out – the range of component (b2) such as divinyl biphenyl may range from 10/110 = ~9.1% by mass to 500/600 = ~83.3% by mass based on the total weight of the photocurable composition, overlapping the claimed range of 5 to 50% by weight based on the total weight of composition. The mass of photoinitiator may be as low as 0.1% by mass (see below) of this composition and is considered negligible in this calculation (claim 1 and claim 13).
Polymerizable alkoxy silicon compounds are described from [0128]-[0133], as bounded by formula [5]. Polymerizable groups on this compound include those described regarding the formation of the polysiloxane (a), such as vinyl biphenyl. The amount of this component ranges from 10 to 500 parts by mass relative to 100 parts by mass of the polysiloxane (a), or from 3-250 parts by mass when additional (b) components are present.
The additional polymerizable compound (b4) is described from [0134]-[0138], where named embodiments are to refer to both methacrylate and acrylate embodiments, such as ethyl methacrylate and benzyl methacrylate or ethyl acrylate and benzyl acrylate. For the sake of brevity, the full list of acrylate and methacrylate species is listed in [0137]-[138]. The amount of this component ranges from 10 to 500 parts by mass relative to 100 parts by mass of the polysiloxane (a).
When the composition comprises both a (b1) and (b4) compound, a difunctional and monofunctional acrylate monomer are present (claim 7).
A polymerization initiator is present in the composition – this may be either a photopolymerization initiator or a thermal initiator. Preferred photoinitiators include Michler’s ketones, acylphosphine oxides, and others described from [0139]-[0143]. Initiators are added in 0.1-20 parts by mass with respect to 100 parts by mass of the weight of the polymerizable components of the composition.
Additional additives such as antioxidants and chain transfer agents are described from [0149]-[155], but are not required.
The compositions of the disclosure are prepared by mixing the components in predetermined ratios and adding any additional additives as described in [0157]. A solvent is not required. The reference ascribes improve excellent mold (and thus substrate) release properties to the composition in [0035].
Regarding the viscosity limitation of the instant claim 1 and claim 21: Viscosity is a property. Properties are emergent from structure – the viscosity of the claimed composition is emergent from the components included therein. Applicant’s claim recites a generic acrylate, a generic photoinitiator, and a broad range of potential first monomers. The structure of the composition - all of these components combined into a composition – has been found in the art. As such, the viscosity is considered inherent, as the structure it corresponds to has been found.
A person having ordinary skill in the art would have found it obvious to arrive at the claimed invention from the general disclosure of the reference, using the disclosed components in disclosed amounts to arrive at a composition that is curable and exhibits improved release properties after curing.
Regarding Claim 6, Nagasawa discloses the limitations of the claim as discussed above regarding claim 1.
Nagasawa however does not disclose an experimental example meeting the limitations of claim 1 and as such does not do so for claim 6.
These limitations are met by the general disclosure of the reference.
When referring to the polymerizable compound (b), the reference then discloses that “the compound (b)” may be multiple compounds (b1-b4). The reference states that the embodiments of (b) are not limited to a single individual and mixtures of embodiments may be used. A person having ordinary skill in the art would consider this teaching to mean that combinations of (b1), (b2), and/or multiple (b3) or (b4) may be present. Compounds that are (b4) are monofunctional acrylates. Compositions using more than one (b4) acrylate compound in conjunction with (b2) and (b1) meet the limitations of the claim where the composition would comprise at least two monofunctional acrylates.
A person having ordinary skill in the art would have found it obvious to arrive at the claimed invention from the general disclosure of the reference, which provides known compounds and disclosed amounts thereof to arrive at a composition that is curable and exhibits improved release properties after curing.
Regarding claim 8, Nagasawa discloses the limitations of the claim as discussed above regarding claim 1.
Nagasawa however does not disclose an experimental example meeting the limitations of claim 1 and as such does not do so for claim 8.
These limitations are met by the general disclosure of the reference.
The Examiner points out that “polymerizable material” as defined in claim 1 is described using “comprising” language and as such only excludes the photoinitiator from being considered such. The photoinitiator of the instant application is present in 0.1 to 20% by weight of the composition, meaning that the “polymerizable material” comprising the two required monomers of claim 1 and allowed, unexcluded polysiloxane and other monomers is present in the remaining 80% to 99.9% of the composition, overlapping the claim.
A person having ordinary skill in the art would have found it obvious to arrive at the claimed invention from the general disclosure of the reference, which provides known compounds and disclosed amounts thereof to arrive at a composition that is curable and exhibits improved release properties after curing.
Regarding Claim 10, Nagasawa discloses the limitations of the claim as discussed above regarding claim 1.
Nagasawa however does not disclose an experimental example meeting the limitations of claim 1 and as such does not do so for claim 10.
These limitations are met by the general disclosure of the reference.
Nagasawa discloses that the composition may be solventless. However, a solvent may be comprised therein for the purpose of dissolving the components. The solid content of the composition in this situation may be 1% to 50% by mass, where the solvent takes up 99% to 50% by mass. However – this composition is cured and baked, at which point the composition loses solvent during the curing process. As such, the amount of solvent present in the composition as a result of processing may range from 99% to near-0% by mass and by volume dependent upon the starting amount of solvent and the degree of solvent removal during processing.
A person having ordinary skill in the art would have found it obvious to arrive at the claimed invention from the general disclosure of the reference, which provides known compounds and disclosed amounts thereof to arrive at a composition that is curable and exhibits improved release properties after curing.
Regarding Claim 14, the claim recites that the composition is “adapted for use” in IA P or NIL processes. The only positive limitation here is the composition, which has been rendered obvious as described above regarding claim 1. As such, the composition is “adapted for use” by nature of being the composition of the claim. There are no positive limitations laying out either IAP or NIL processes in this claim and they are not granted patentable weight.
A person having ordinary skill in the art would have found it obvious to arrive at the claimed invention from the general disclosure of the reference, which provides known compounds and disclosed amounts thereof to arrive at a composition that is curable and exhibits improved release properties after curing.
Regarding Claims 15-17, the laminate of the instant claim is described as a substrate and a photocured-layer overlaying the substrate.
Nagasawa discloses the limitations of claim 1 as described above
Nagasawa does not explicitly disclose an experimental example of the composition of claim 1 as described above and thus does not explicitly disclose the limitations of claim 15-17
These limitations are met by the general disclosure of the reference.
In describing the processing of the curable composition, the composition is filtered through a filter as described in [0158]. The composition is used as per [0160]-[0170], where the composition is applied to a support and a mold set atop, after which the composition is photopolymerized through light exposure and optionally post-baked to stabilize physical properties. Post-baking may take place between 50 and 300 degrees Celsius for 1 minute to 2 hours as per [0163]. Regarding the carbon content of the photocured layer and thermal stability thereof – if the layer is being heated above 250 degrees Celsius as is described in [0163] for as long as 2 hours, it is presumed thermally stable at least 250 degrees Celsius. The carbon content is a property of the layer and the composition used to make it. Properties are emergent from structure, and the structure of the composition of claim 1 used to make the layer of claim 15 has been found. Any properties ascribed thereto are presumed inherent .
A person having ordinary skill in the art would have found it obvious to arrive at the claimed invention from the general disclosure of the reference to arrive at a cured product laminate, using a known material (the reference composition) in a known process (the reference’s method) to arrive at a known product (the laminate).
Conclusion
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/A.P.T./Examiner, Art Unit 1737
/JONATHAN JOHNSON/Supervisory Patent Examiner, Art Unit 1734