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 .
Claim Rejections - 35 USC § 102
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 the appropriate paragraphs of 35 U.S.C. 102 that form the basis for the rejections under this section made in this Office action:
A person shall be entitled to a patent unless –
(a)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention.
Claim(s) 1-4 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Cohn et al. (USPGPub 2012/0179193).
Regarding claims 1-3, Cohn teaches a polymer reading upon the claimed Formula I [0055][00249] that may contain polymeric backbone units as claimed which may be combined with a crosslinker such as polyoxyethylene bis (azide) provided in conjunction with a free radical initiator that is a copper (1) compound [0310][0560](Example 3). Further is noted that composition of the current claims being “pre-cured” reasonably implies that the pre-cured composition is already cured or crosslinked. This further implies that the composition does not comprise either of the components claimed because those components have reacted with one another to form the pre-cured composition and are no longer present. The current claims are more properly described as a pre-cured composition formed from a polymer and cross-linking agent. Therefore the current claims are more properly viewed as product-by-process claims wherein the product composition is attempted to be claimed by requiring the use of particular components to form it. However, the Court has long held that “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, 227 USPQ 964, 966 (Fed. Cir. 1985). Therefore the prior art composition merely need to be capable of being processed in the manner claimed and reacting in the manner claimed. Therefore there is no requirement that the prior art use the exact composition of the current claim wherein any parts reacts in any way claimed so long as the prior art product is the same. However, in this case the composition of Cohn reads upon that of the current claims having the same chain structure with the same claim linking moieties and the same cross-linkable functional groups using the same type of initiator. As such, it would be expected that the prior art product formed would be the same as that claimed. A reference which is silent about a claimed invention’s features is inherently anticipatory if the missing feature is necessarily present in that which is described in the reference. In re Robertson, 49 USPQ2d 1949 (1999).
Regarding claim 4, Cohn further teaches wherein the crosslinkable functional groups may be acrylic functional [0410][0317].
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.
Claim(s) 5-7 is/are rejected under 35 U.S.C. 103 as being unpatentable over Cohn et al. (USPGPub 2012/0179193).
Regarding claims 5-7, the teachings of Cohn are as shown above. Cohn fails to teach explicitly that all components are provided as liquids prior to being combined. However, Cohn does teach that his coating is applied as a solution wherein this reasonably implies that all components are present in solution (liquid form) prior to deposition and in combination. As such, the difference between the prior art and the current claims is not compositional but rather the order in which ingredients are combined, wherein the Court has long held that in general the transposition of process steps, the splitting of one step into two or changes in the order of adding ingredients wherein the processes are substantially identical or equivalent in terms of function, manner and result are held to not patentably distinguish the processes. See Ex parte Rubin, 128 USPQ 440 (Bd. Pat. App. 1959). See also In reBurhans, 154 F.2d 690, 69 USPQ 330 (CCPA 1946) (selection of any order of performing process steps is prima facie obvious in the absence of new or unexpected results).
Response to Arguments
The applicant argues that the prior art composition does not comprise a “first cross-link” as described relating to item Z. Further, the applicant in defines the “first cross-link”. The applicant states that “the first cross-link may comprises any suitable linking group capable of attaching two polymeric backbones”. As relates to this specially provided definition looking at Fig. 11 of Cohn, the PCL2000 employed by Cohn is polycaprolactone diol which comprises two polycaprolactone chains linked together centrally with an ester linkage. This ester linkage reads upon the applicants’ provided definition of a “first cross-link” and therefore the prior art reads upon the claim limitations.
As relates to claim 5, Cohn does teach wherein the composition is employed in a liquid format, Further it is noted that claim 5 is a product-by-process claim. It is not a requirement of the claim that the prior art composition be stored in liquid form in two separate parts. It is merely a requirement that the product claimed by capable of being made wherein the prior art product of Cohn does seem capable of this limitations as described.
As relates to claim 6, again it is noted that claim 6 is a product-by-process claim. Further however, the applicant argues that the prior art does not teach initiator-activator separation but this is not claimed. Claim 6 clearly states that initiator may be present “in liquid A/or said liquid B”.
As relates to claim 7, the applicant argues that Cohn does not “disclose or suggest the broader initiator types claimed here”. However, it is not a requirement of the prior art to broadly discuss all possibilities provided by the applicant within a Markush group. The prior art specifically discloses initiators within the categories claimed and therefore meets the limitations of the claims.
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 ANDREW J BOWMAN whose telephone number is (571)270-5342. The examiner can normally be reached Mon-Sat 5:00AM-11:00AM.
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, Dah-Wei Yuan can be reached at 571-272-1295. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/ANDREW J BOWMAN/Examiner, Art Unit 1717
/ROBERT S WALTERS JR/Primary Examiner, Art Unit 1717
Prosecution Insights