DETAILED ACTION
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
Applicants' arguments have been fully considered. Rejections and/or objections not reiterated from previous office actions are hereby withdrawn due to Applicant's amendments and/or arguments. The following rejections and/or objections are either reiterated or newly applied.
NEW REJECTIONS: NECESSITATED BY AMENDMENT
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 1-5, 7-11, 13-15, and 25 are rejected under 35 U.S.C. 103 as being unpatentable over Lin et al. (US 2021/0198520).
Re claims 1-3 and 11, Lin discloses curable composition [1] comprising 10-60% urethane multifunctional (meth)acrylate, i.e. urethane prepolymer, [5, 39], corrosion inhibitor including zinc phosphate complex [83], treated or untreated fumed silica [72], photoinitiator [75], adhesive promoter [78], 10-80 wt.% reactive diluent including isooctyl acrylate [84, 87] which meets the claimed formula when R is C8 alkyl, and crosslinking agent [91]. Although there is no disclosure that the zinc phosphate is an acid scavenger, given that the zinc phosphate is identical to that presently claimed, it would necessarily function as an acid scavenger.
Although there is no disclosure that the zinc oxide is an acid scavenger, given that the zinc oxide is identical to that presently claimed, it would necessarily function as an acid scavenger. In claim 11, ‘treated’ is held to be a product by process claim limitation. Even though product-by-process claims are limited by and defined by the process, determination of patentability is based on the product itself. The patentability of a product does not depend on its method of production. If the product in the product-by-process claim is the same as or obvious from a product of the prior art, the claim is unpatentable even though the prior product was made by a different process.” In re Thorpe, 777 F.2d 695, 698. Both Applicant's and prior art reference's product are the same.
In light of the overlap between the claimed composition and that disclosed by Lin, it would have been obvious to one of ordinary skill in the art to use a composition that is both disclosed by Lin and encompassed within the scope of the present claims, and thereby arrive at the claimed invention.
Re claim 4, the photoinitiator includes UV initiated photoinitiator [40].
Re claim 5, the urethane multifunctional (meth)acrylate incudes urethane diacrylate made from polyether [53, 54].
Re claim 7, the adhesion promoter incudes methacrylic acid [78].
Re claim 12, there is no disclosure in Lin of solvents, i.e. composition is 100% solids.
Re claims 13-15, given that Lin discloses composition as presently claimed, it is clear that the composition would inherently have the same breakdown voltage, remain adhesive, and be free from pin holes and/or bubbles as presently claimed.
Claim 6 is rejected under 35 U.S.C. 103 as being unpatentable over Lin et al. (US 2021/0198520) in view of JP2017082035 (Shibahara).
For claim 6, Lin discloses curable composition, however, there is no disclosure of dipentaerythritol hexacrylate.
Shibahara discloses curable composition [1] comprising dipentaerythritol hexacrylate from the viewpoints of curability, scratch resistance, and cost [10].
In light of the motivation for using dipentaerythritol hexacrylate disclosed by Shibahara as described above, it would have been obvious to one of ordinary skill in the art at the time of the effective filing date of the claimed invention to use dipentaerythritol hexacrylate in the curable composition of Lin to produce composition with good curability and scratch resistance.
In view of the forgoing, the above claims have failed to be patently distinguishable over prior art.
Response to Arguments
Applicant’s arguments are not convincing.
Applicant argues that Lin does not disclose acrylate monomers as claimed, discloses a broader amount of acrylate monomers than claimed, and that the examples of Lin do not disclose either the amount or type of acrylate monomer as claimed.
However, Lin does disclose acrylate monomer as now required in the present claims. Specifically, paragraph 0084 of Lin discloses reactive diluents that include isooctyl acrylate which meets the claimed formula when R is C8 alkyl. Further, the amount of the acrylate monomer disclosed by Lin overlaps that presently claimed. As set forth in MPEP 2144.05, in the case where the claimed range “overlap or lie inside ranges disclosed by the prior art”, a prima facie case of obviousness exists, In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990). Additionally, it is noted that applicant must look to the whole reference for what it teaches. Applicant cannot merely rely on the examples and argue that the reference did not teach others.” In re Courtright, 377 F.2d 647, 153 USPQ 735,739 (CCPA 1967).
Applicant argues that it would not have been obvious to select the claimed acrylate monomer from the broader teaching of Lin or to select amount as claimed.
However, given that the reactive diluents disclosed by Lin include isooctyl acrylate identical to that presently claimed, it would have been obvious to one of ordinary skill in the art to choose any reactive diluent in Lin including the claimed isooctyl acrylate absent some evidence to the contrary. One of ordinary skill in the art would consider all the reactive diluents disclosed by Lin to be equivalent and interchangeable and equally suitable absent a showing of criticality by applicant of the claimed arylate monomer. In MPEP 2141, III, one of the rationales set forth as to “why” the claimed invention would be obvious is choosing from a finite number of identified, predictable solutions, with a reasonable expectation of success. Therefore, given that Lin discloses a finite number of acrylate monomers and given that the reference discloses all the acrylate monomers being equally applicable, there would be a reasonable expectation of success when using the isooctyl acrylate as set forth by the examiner. It is further noted the fact that “..the [prior art] patent discloses a multitude of effective combinations does not render any particular formulation less obvious.….”; See, e.g., Merck & Co. v. Biocraft Labs., Inc., 874 F.2d 804, 807 (Fed. Cir. 1989) See also In re Corkill, 771 F.2d 1496, 1500 (Fed. Cir. 1985) (affirming obviousness rejection of claims in light of prior art teaching that “hydrated zeolites will work” in detergent formulations, even though “the inventors selected the zeolites of the claims from among ‘thousands’ of compounds”). Regarding the amount, it would have been obvious to choose any amount from the range disclosed by Lin absent evidence to the contrary.
Applicant argues that Shibara does not cure the deficiencies of Lin
However, as set forth above, it is the examiner’s position that Lin does not have the deficiencies described by applicant.
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.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to TAMRA L. DICUS whose telephone number is (571)272-2022. The examiner can normally be reached M-F 8:00 am 4:00 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, Callie Shosho can be reached on 571-272-1123. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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TAMRA L. DICUS
Primary Examiner
Art Unit 1787
/TAMRA L. DICUS/Primary Examiner, Art Unit 1787
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