DETAILED ACTION
Response to Amendment
The text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action.
The new grounds of rejection set forth below are necessitated by applicant’s amendment filed on 10/30/2025. In particular, claim 1 has been amended to recite the poly(oxyalkylene) group comprises a group represented by formula (OA-1). New claim 22 has been added. This presents the claims in a manner with a scope not previously examined. Thus, the following action is properly made FINAL.
Priority
Receipt is acknowledged of certified copies of papers required by 37 CFR 1.55.
Claim Rejections - 35 USC § 112
The following is a quotation of 35 U.S.C. 112(d):
(d) REFERENCE IN DEPENDENT FORMS.—Subject to subsection (e), a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
The following is a quotation of pre-AIA 35 U.S.C. 112, fourth paragraph:
Subject to the following paragraph [i.e., the fifth paragraph of pre-AIA 35 U.S.C. 112], a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
Claim 9 is rejected under 35 U.S.C. 112(d) or pre-AIA 35 U.S.C. 112, 4th paragraph, as being of improper dependent form for failing to further limit the subject matter of the claim upon which it depends, or for failing to include all the limitations of the claim upon which it depends.
Claim 9 recites the compound is a compound of formula (C-1), however claim 9 depends from claim 1 which recites the compound is formula (OA-1). Formula (C-1) is broader than formula (OA-1) because Formula (C-1) states each L11 independently represents an alkylene group while formula (OA-1) is limited to a propylene group (where one of RO1 and RO2 is H and the other is methyl). As the scope of claim 9 includes embodiments outside the scope of claim 1, claim 9 fails to properly limit claim 1.
Applicant may cancel the claim(s), amend the claim(s) to place the claim(s) in proper dependent form, rewrite the claim(s) in independent form, or present a sufficient showing that the dependent claim(s) complies with the statutory requirements.
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.
Claim(s) 1-16, 18, 22 is/are rejected under 35 U.S.C. 103 as being unpatentable over Goto (WO 2020/050207). As the WO document is not in English, citations are made to the attached translation. Computer translation of Tables 1 and 4 are included below.
Goto teaches a curable composition which includes a polymerizable compound, an initiator, and a mold releasing agent (abstract) where examples include compound A-1, B-1, and C-5 (Table 1) where A-1 is the reaction product of a silicone resin and hydroxyethyl acrylate and has a Mw of 2500 (Table 4), B-1 is a photoinitiator
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96
162
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(Table 7) and C-5 is
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78
290
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(Table 8). Photoinitiators generate radicals (¶ 52) and the C-5 has a polyoxyethylene group with 5 ethylene oxide repeat groups (each having 2 carbon atoms) and is terminated by a C6 alkyl group.
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290
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has a molecular weight of about 405 where the polyoxyethylene portion has a molecular weight of about 235 which is about 58 wt% of the compound. Goto teaches the polyethlyene compound is used in about 0.8 wt% (Table 1) which falls in the range of claims 12 and 14. Goto teaches the solvent PGMEA is added such that the solids content is 4 wt% (Table 1) which corresponds to a solvent amount of about 96%. Goto teaches the composition forms a cured film for imprinting (¶ 7, 57, 74).
Computer translation of Table 1:
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770
1063
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Computer translation of Table 4:
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590
1063
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Goto does not explicitly recite an example using a polyoxyalkylene group having formula (OA-1). However, Goto teaches the polyalkylene glycol compound includes polypropylene glycols and mono-butyl ethers and mono-octyl ethers (¶ 49). A mono-butyl or mono-octyl ether of polypropylene glycol meets the limitation of formula (OA-1) as an oxypropylene group gives a hydrogen atom and methyl group for RO1 and RO2. A mono-ethyl results in a hydroxyl group being present. Goto teaches a poly(propylene oxy group) is particularly preferred (¶46). Goto teaches the number of repeat units is 3-100, more preferably 6-20 (¶47) which gives a molecular weight that overlaps the claimed range. Goto teaches the release agent is present in 0.1-1mass% (¶ 43) and the release agent includes the polyalkylene glycol compound (¶ 43).
Alternatively, Goto teaches the polyalkylene glycol compound is represented by formula P1
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68
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where RP1 is an alkylene group, preferably having 1-3 carbon atoms, RP2 and RP3 each represent a hydrogen atom or an alkyl group having 1-36 carbon atoms, preferably 2-12, and p is an integer of 1-24 (¶ 50). When RP1 is a C3 alkylene group (propylene) RO1 and RO2 are a hydrogen atom and methyl group.
It would have been obvious to one of ordinary skill in the art to use the polyoxypropylene ethers of Goto because Goto teaches these compounds are suitable polyalkylene glycols (¶46-51) and because “a reference may be relied upon for all that it would have reasonably suggested to one having ordinary skill the art…” Merck & Co. v. Biocraft Laboratories, 874 F.2d 804, 10 USPQ2d 1843 (Fed. Cir.), cert. denied, 493 U.S. 975 (1989). See MPEP 2123.
Response to Arguments
Applicant's arguments filed 10/30/2025 have been fully considered but they are not persuasive.
Applicant argues that Goto does not teach the compound according to claimed formula (OA-1). This is not persuasive because Goto teaches the polyalkylene glycol compound includes polypropylene glycols and mono-butyl ethers and mono-octyl ethers (¶ 49) and polyalkylene glycol compounds represented by formula P1
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as described above.
As the scope of the claimed polyoxyalkyene compound is encompassed by the polyalkylene glycols of Goto, the claims remain rejected.
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 ROBERT C BOYLE whose telephone number is (571)270-7347. The examiner can normally be reached Monday-Thursday, 10am-4pm.
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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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/ROBERT C BOYLE/Primary Examiner, Art Unit 1764