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 Rejections and/or objections not reiterated from previous office actions are hereby withdrawn due to Applicant's amendments and/or arguments.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:
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 1-4, 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, 11, and 25, Lin discloses curable composition [1] comprising urethane multifunctional (meth)acrylate , i.e. urethane prepolymer, [39], inorganic filler including zinc oxide [63, 68], treated or untreated fumed silica [72], photoinitiator [75], adhesive promoter [78], reactive diluent including isobornyl acrylate [84], and crosslinking agent [91]. 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 moot in view of the new ground of rejection. See Action above.
Conclusion
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TAMRA L. DICUS
Primary Examiner
Art Unit 1787
/TAMRA L. DICUS/Primary Examiner, Art Unit 1787