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 . Per amendment dated 12/17/25, claims 1-4, 6-8 are currently pending in the application.
Applicant's election with traverse of Group I invention, encompassing claims 1-5, in the reply filed on 12/17/25 is acknowledged. The traversal is on the ground(s) that the subject matter of all Groups is sufficiently related that a thorough search for the subject matter of any one Group would encompass a search for the subject matter of the remaining Groups and the search and examination of the entire application could be made without serious burden. Referring to MPEP 803 section, Applicant asserts that search for all claims can be made without serious burden, avoiding unnecessary delay and expense to Applicant.
The arguments are not found persuasive because the standards and support for thefinding of lack of unity are consistent with the guidelines of International Authority, as stated inthe written restriction. Moreover, the consideration of undue burden is one that must be made by the Examiner. To that end, the searches are not co-extensive and additional search would be necessarily required for the combination of inventions. Regarding the concern of unnecessary delay and expense to Applicant, per Office practice and MPEP 806.05, withdrawn claims that depend from or otherwise require all the limitations of an allowable product claim will beconsidered for rejoinder when elected product claims are deemed allowable.
The requirement is still deemed proper and is therefore made FINAL. Claims 6-8 are withdrawn from further consideration pursuant to 37 CFR 1.142(b), as being drawn to a nonelected invention, there being no allowable generic or linking claim.
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 1-4 are rejected under 35 U.S.C. 103 as being unpatentable over Mizuta et al. (JP 2002338640 A, machine translation), in view of Sensarma et al. (EP1142912 A1)) alone, or further in view of Takachi (JP09-059535 A, machine translation).
Mizuta teaches photosensitive free-radically curable resin compositions comprising: (A) free-radically curable resin, (B) an N-vinyl compound ([0006], ref. claims), wherein said curable resin (A) may be an epoxy (meth)acrylate or urethane (meth)acrylate or epoxy (meth)acrylate in an amount of 1 to 99 wt.% [0041], and said N-vinyl compound (B) may be, for e.g.,
N-vinyl-5-methyl-2-ozazolidine, i.e., R5=methyl and R4=H (meets limitations of Formula (1) in claims 1 and 4);
N-vinyl-4-methyl-2-ozazolidine, i.e., R5=H and R4=methyl (meets limitations of Formula (1) in claims 1-3); and
N-vinyl 5-ethyl-4-methyl-2-ozazolidine, i.e., R5=ethyl and R4=methyl (meets limitations of Formula (1) in claim 1).
Thus, the disclosed N-vinyl compounds fall within the scope of monomers for providing claimed unit of Formula (1) and may be used in an amount of 99 to 1 wt.% to control the viscosity and workability of the composition, and shrinkage due to hardening [0043-[0045]. Mizuta is further open to further reactive diluents, other than the N-vinyl compounds, such as (meth)acrylonitrile (capable of providing for claimed unit (2)), preferably at 80-10 wt.% [0056]. Mizuta teaches the use of curable compositions in adhesives, coatings, optical members and a variety of other applications [0078].
Mizuta is silent on the mol% a copolymer having a unit of Formula (2) in claimed mol% and a unit of Formula (1).
At the outset, it is noted that in the case where the claimed ranges "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). See MPEP § 2144.05.
Mizuta, while teaching urethane (meth)acrylate resin as a curable resin, is silent on the molecular weight of the curable resin to enable calculating the mol% of acrylonitrile units in a cured product, i.e., copolymer formed. However, the secondary reference to Sensarma is in a related field of endeavor of radiation-curable compositions comprising curable oligomers, such as urethane (meth)acrylate oligomers, having a number average molecular weight of 1,200 to 20,000 (Ab., [0008], [0021], [0042]).
Given the teaching in Sensarma on suitable urethane (meth)acrylate oligomers for use in radiation-curable compositions, and the teaching in Mizuta on suitable components and amounts thereof for preparing a photosensitive curable resin composition, it would have been obvious to one of ordinary skill in the art, as of the effective filing date of the claimed invention, to prepare a curable composition comprising (A) a urethane (meth)acrylate (99-1 wt.%), such as those having number average molecular weight of 1,200 to 20,000, (B) any of N-vinyl-5-methyl-2-ozazolidine or N-vinyl-4-methyl-2-ozazolidine (1-99 wt.%) , and acrylonitrile (as a reactive diluent at 80-10 wt.%), and a cured product thereof, including copolymers within the scope of the claimed invention. It is prima facie obvious to select a known material based on its suitability for its intended use. See MPEP 2144.07.
For instance, a cured product formed from a composition comprising a urethane (meth)acrylate (10 wt.%, number average mol. wt. of 1,200), N-vinyl-5-methyl-2-ozazolidine (60 wt.%) and of acrylonitrile (30 wt.%), would provide for a copolymer having units of urethane (meth)acrylate (0.9 mol%), N-vinyl-5-methyl-2-ozazolidine (45 mol%) and acrylonitrile (54.1 mol%) and reads on the claimed copolymer. It is noted that the recitation “A copolymer having” in claim 1 is open ended to structural units other than those of Formula (1) and Formula (2).
In the alternative, noting that Mizuta’s teaches a variety of monomers for use as reactive diluents [0056], the teaching “vinyl esters such as (meth)acrylonitrile” therein appears to suggest that (meth)acrylonitrile as a species of the vinyl ester genus. However, in a related field, the secondary reference to Takachi resin teaches active energy curing type resins comprising urethane acrylate, and acrylonitrile as a suitable monomer for adjusting the viscosity, i.e., as a reactive diluent (Overview, [0005], [0019]). Thus, Takachi further confirms the suitability of (meth)acrylonitrile, i.e., acrylonitrile and methacrylonitrile, as reactive diluents in curable compositions.
Thus, given the teaching in Takachi on the suitability of acrylonitrile as a reactive diluent, it would have been obvious to one of ordinary skill in the art, as of the effective filing date of the claimed invention, to prepare a curable composition, for e.g., comprising (A) a urethane (meth)acrylate (99-1 wt.%, number average molecular weight of 1,200 to 20,000), (B) N-vinyl-5-methyl-2-ozazolidine or N-vinyl-4-methyl-2-ozazolidine as the N-vinyl compound (1-99 wt.%) , and acrylonitrile (a reactive diluent at 80-10 wt.%), and a cured product thereof, including copolymers within the scope of the claimed invention.
Response to Arguments
In view of the amendment 12/17/25, the rejections of record are withdrawn and new grounds of rejection are presented. Applicant’s arguments on unexpected results have been duly considered and would be pertinent to obviousness type rejections presented above.
Applicant argues that the claimed range of molar % of Formula (2) provides unexpected results. Referring to copolymers of Example 2, Example 6, Example 7, Example 10, Example 11, Example 14, Example 15, Example 18, Example 19, Example 22, Example 26, or Example 27 in which the amount of the structural unit represented by Formula (2) is 30 to 60 mol % as a piezoelectric material, Applicant noted the these Examples had a larger piezoelectric constant d33 and better piezoelectric property than other examples in which the structural units A to G represented by Formula (1) were the same. Applicant asserts that the claimed range for General Formula (2) can provide these superior properties.
In response, as an initial matter, referring to data in Table 1 of the disclosure, Example 2 is comparative (Comp.) in that Formula (1) has R1=R2=H falls outside of the scope of that of the claimed invention although the amount of Formula (2) meets the claimed range. However, Example 2 (Comp.) provides for a superior d33 value of 3.2, very close to that of Example 6 (Inv.), with a d33 value of 3.3, having both, Formula (1) type and Formula (2) amount within the scope of claimed invention. That is, the d33 values of Example 2 (Comp.) and Example 6 (Inv.) differ only marginally, by ~3.1%, despite the amount of Formula (2) in both being within the claimed range. Thus, the criticality of the claimed species of Formula (1) is not evident based on the data.
More importantly, Example 19 is inventive in that it has both, Formula (1) type and Formula (2) amount within the scope of the claimed invention, but has a d33 value of only 1.8. In comparison, Example 24 has a d33 value of 2.9, even though this is comparative, with only 13 mol% of Formula (2). In addition, Example 24 (Comp.) outperforms many other Examples in Table 1 that are representative of the claimed invention based on its d33. Thus, the criticality for the amount of Formula (2) is not evident from the data in Table 2.
In summary, the data in Table 1 falls short on establishing the criticality for a copolymer having the claimed species of Formula (1), in combination with the claimed amount of Formula (2).
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 Satya Sastri at (571) 272 1112. The examiner can be reached Monday-Friday, 9AM-5.30PM (EST). If attempts to reach the examiner by telephone
are unsuccessful, the examiner's supervisor, Mr. Robert Jones can be reached at (571)-270-
7733. The fax phone number for the organization where this application or proceeding is
assigned is (571) 273 8300.
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/Satya B Sastri/
Primary Examiner, Art Unit 1762