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 .
This Office action is in response to the amendment filed 8/8/2025. Claims 1 and 6 are amended; and claims 1-8 are currently pending in the application.
The text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action.
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.
Claims 1-8 are rejected under 35 U.S.C. 103 as being unpatentable over Sanai et al (JP 2004-285113 A).
It is noted that JP 2004-285113 A is in Japanese. A copy of the machine translation into English is provided with Office action mailed 5/9/2025. All line/paragraph citations in the body of rejection below are to the English translation unless explicitly stated.
Regarding claims 1-5, Sanai et al disclose a curable composition comprising a copolymer (C) obtained from an alkenyl (meth)acrylate having 2 to 12C alkenyl group, and as necessary a substance which contains a radically polymerizable monomer (B) polyvalent thiol compound (E) and an initiator (abstract). See example 9 (Table 2 and paragraph 0085), wherein the curable composition comprises copolymer C2, TMTP (i.e., trimethylpropane tris(thiopropionate) and reads on polythiol compound (B) having at least two thiol groups in one molecule in present claim 1) and PV. See example 2, wherein the copolymer C2 is formed from a monomer mixture comprising methallyl methacrylate and HA (i.e., 2-ethylhexyl acrylate). The obtained copolymer has 0.142 mol of double bonds (paragraph 0080). It is noted that methallyl methacrylate is represented by the formula:
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. The (meth)acryloyl groups have a high polymerization activity and allyl group has relatively low polymerizability (paragraph 0011). Hence, it is the Office’s position that the copolymer C2 necessarily has double bonds arising from the methallyl group (i.e., alkenyl group) while methacryloyl group is polymerized.
Sanai e al fails to disclose as in present claims, a polymer comprising at least one structural unit selected from the group consisting of structural unit represented by formula I and structural unit derived from a compound represented by formula II.
However, Sanai in the general disclosure teach that alkenyl (meth)acrylate is preferably an alkenyl (meth)acrylate comprising an alkenyl group having 2 to 12 carbon atoms from the view point of availability and good compatibility with the polyvalent thiol compound (paragraph 0018). It is noted that alkenyl methacrylate with 5 carbon atoms in the alkenyl group may be represented by
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(i.e., reads on the structural unit of formula I in present claim 1 wherein n = 1, R1 = C1-alkyl, R2 and R3 = hydrogen atom; n = 1 in present claim 2; R2 and R3 = hydrogen atom in present claim 3; R1 = alkyl group having 1 carbon atom in present claim 4; and formula II in present claim 5 wherein R5 is a methyl group). Therefore, in light of the teachings in general disclosure of Sinai et al, it would have been obvious to one skilled in art prior to the filing of present application to include any of the alkenyl (meth)acrylate including that which has 2 to 12 C atoms in the alkenyl group, absent evidence to the contrary. Alternatively, methallyl methacrylate is a homolog of the structural unit represented by general formula I, wherein n = 1. Case law holds that structural similarities have been found to support a prima facie case of obviousness. See, e.g., In re Wilder, 563 F.2d 457, 460, 195 USPQ 426, 429 (CCPA 1977) (adjacent homologs and structural isomers).
Regarding claim 6, see example 1 of Sanai, wherein the polymer is formed from a monomer mixture comprising 2-ethylhexyl acrylate (paragraph 0079) which reads on radical polymerizable monomer in present claim 6.
Regarding claim 7, see Table 2 and paragraph 0085 of Sanai, wherein the compositions comprise PV (i.e., t-butyl peroxypivalate and reads on radical polymerization initiator in present claim 7).
Regarding claim 8, Sanai teaches that composition comprising the copolymer, polyvalent thiol compound and initiator is cured (paragraph 0088) which reads on cured product obtained by curing the curable composition in present claim 8.
Response to Arguments
The rejections under 35 U.S.C. 112(b) and 103 as set forth in paragraphs 4-5 and 9, of office action mailed 5/9/2025, are withdrawn in view of the amendments and/or applicant argument and/or new grounds of rejection set forth in this Office action, necessitated by amendment.
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.
Contact Information
Any inquiry concerning this communication or earlier communications from the examiner should be directed to KARUNA P REDDY whose telephone number is (571)272-6566. The examiner can normally be reached 8:30 AM to 5:00 PM M-F.
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, Arrie (Lanee) Reuther can be reached at 571-270-7026. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/KARUNA P REDDY/Primary Examiner, Art Unit 1764