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 .
Claims 1, 3-5, 7-13, 15-22 are pending.
Claims 1, 3-5, 7-13 and 22 are under examination on the merits.
Claim 1 is amended.
Claims 2, 6, 14 are previously canceled.
No claims are newly added.
Election/Restrictions
Applicant's election with traverse of Group I, claims 1-5, 7-14, 22 and species (a) lithium p- styrenesulfonate, (c) triethanolamine and (d) divinylbenzene is repeated herein for reference.
Claim Rejections - 35 USC § 112
The 112(b) rejection of claims 1, 3-5, 7-13 and 22 set forth in the previous action is withdrawn in view of applicant’s amendment to claim 1.
Claim Rejections - 35 USC § 103
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 rejection in the previous action of claim(s) 1, 3-5, 7-13, 22 under 35 U.S.C. 103 as being unpatentable over US 20010009967 by Lin et al in view of US 5545676 by Palazzotto et al as evidenced by “A Mechanistic Investigation of the Three-Component Radical Photoinitiator System Eosin Y Spirit Soluble, NMethyldiethanolamine, and Diphenyliodonium Chloride” by Padon et al is repeated and amended to reflect applicant’s amendment herein. Specifically,
Lin describes styrene sulfonate cation exchange membranes.
Regarding claim 1, Lin describes an ion exchange membrane synthesized from monomers divinyl benzene (reads on instantly elected (d)) and lithium styrene sulfonate (reads on instantly elected (a)) (paragraph 39, 40). Lin states that any polymerization initiating catalyst may be used with his invention (paragraph 25) but does not specifically describe the instant (b) and (c) combination.
Palazzotto describes a photoinitiator system.
Palazzotto describes a photoinitiator system comprising a ii) sensitizing compound which absorbs wavelengths between 300-1000nm, reading on instant (b), and i), an iodonium salt, reading on instant (c), in combination with ii) an electron donor, which could also read on instant component (c) (col 1 ln 37-47). See also col 3 ln 28-col 4 ln 13 and Table II and III for specific sensitizing compounds (instant b).
In this type of three-component radical photoinitiator systems, the iodonium salt reacts with the dye to create a radical when the dye is photoexcited (Padon p.717 col 2 paragraph 2 and p.715 col 2 final paragraph), as does the electron donor, meeting the claim phrase “wherein the co-initiator is a chemical which can generate a free radical in reaction with component (b) when the latter is in an electronic excited state”.
Further for (b), Palazzotto describes many sensitizing compounds which have an absorption maximum in the claimed range, see specifically Table II and III and also col 3 ln 28-col 4 ln 13.
Palazzotto describes embodiments with a large amount of sensitizer- up to 10 parts for every 10 parts monomer (col 5 ln 23-27). One of ordinary skill would reasonably expect excess, unreacted sensitizer in those and lower embodiments, such that at least 0.0005 wt% of the sensitizer (photoinitiator) is present in the ion exchange membrane once the membrane has formed, and thus give the ion exchange membrane its visible color.
Palazzotto states that his three-component photoinitiator system can be used with any free-radically polymerizable system (col 1 ln 25-27, col 1 ln 65-col 2 ln 2, col 2 ln 25). Palazzotto states that the initiator system provides a useful combination of cure speed, cure depth and shelf life (col 1 ln 49-50). Thus it would be obvious to one of ordinary skill to use Palazzotto’s initiator system where Lin states any can be used because it has a useful combination of cure speed, cure depth and shelf life.
Regarding the instantly elected species for (c), Palazzotto describes triethanolamine as a ii) electron donor (col 4 ln 48).
Regarding the new claim language of colored photoinitiator, Palazzoto’s disclosure of comprising a ii) sensitizing compound which absorbs wavelengths between 300-1000nm (col 1 ln 37-47) and specific examples in Table II and III meet “colored”.
Regarding the new language of molar ratio, Palazzotto describes amounts of sensitizer (reads on instant (b) photoinitiator) and donor (reads on instant (c) co-initiator) as between 0.005-10 parts per 10 parts monomer, each, independent of each other (col 5 ln 24-28). Palazzotto further states that lower amounts of sensitizer (photoinitiator) can be present (col 5 ln 29-32). Also, the sensitizers which overlap with instant, for example Eoisin Yellow (MW 692), methylene blue (MW 320), and rose Bengal (MW about 1000), have significantly higher molecular weights than triethanolamine (MW 149), the electron donor which Palazzotto describes and is instantly elected for species (c). Converting Palazzoto’s direction of parts per monomer therefore results in a lower molar ratio for photoinitiator: co-initiator than weight ratio. Palazzotto thus teaches values overlapping with the claimed range.
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); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990), In re Geisler, 116 F.3d 1465, 1469-71, 43 USPQ2d 1362, 1365-66 (Fed. Cir. 1997). It would be obvious to one of ordinary skill to arrive at values in the claimed range because Palazzoto describes values of molar ratio of photoinitiator: co-initiator overlapping with the claimed range.
Regarding claim 3, Palazzotto describes several of the instant compounds which are described as Norrish Type II photoinitiators, e.g. in Table III run 1 is methylene blue, run 3 is rose bengal and run 8 is eosin yellow. Further examples are in Table II and Table IV-V. See instant specification p.22. Note that Palazzotto may use different nomenclature for some sensitizers than instant.
Regarding claim 4, notably there is no requirement for the presence of solvent in the final, claimed ion exchange membrane, but nevertheless Lin describes solvent in the preparatory mixture (paragraph 35, 37-40).
Regarding claim 5, Palazzotto describes several of the instantly measured photoinitiators as sensitizing compounds (See instant p.23 Table 1), including for example Eosin yellow, methylene blue, rose Bengal. See Palazzotto Tables II-IV. Note that Palazzotto may use different nomenclature for sensitizing compounds than instant. In instant Table 1 the cited compounds have molar attenuation coefficients in the claimed range.
Regarding claim 7, in the instant specification a combination of monomers lithium styrene sulfonate and divinyl benzene with photoinitiator fluorescein, with co-initiators triethanolamine (TEOA) and iodonium (IO) (instant Table 2 Example 4) yields a value according to instant equation 1 of 246 (instant Table 3). Since Palazzotto describes photoinitiator fluorescein, with co-initiators triethanolamine (TEOA) and iodonium (IO), e.g. in Table 5 run no. 6 final column, Palazzotto reads on the instant claim.
Regarding claim 8, Palazzotto describes the instantly elected tertiary amine triethanolamine (col 4 ln 47). See also col 4 ln 32-45 and other specific examples for other species. Palazzotto also describes onium salts as present (col 2 ln 26-46).
Regarding claim 9, Palazzotto describes at least xanthene, porphyrin, anthraquinone, acridine, thioxanthone, coumarin, fluorenone, arylmethane, benzophenone, cyanine, squarine, and styryl (col 3 ln 28-40; col 3 ln 59-col 4 ln 11). See also col 3 ln 28-40; col 3 ln 59-col 4 ln 11 and Tables III-V for use of different nomenclature.
Regarding claim 10, the relative amounts of the initial composition need not affect the claimed membrane, since processing parameters can be adjusted to arrive at similar membranes from different compositions. However, Lin does describe 31 or 3.2 wt% lithium styrene sulfonate (reads on instant (a), paragraph 40, 35) and 32 or 29 wt% divinyl benzene (reads on instant (d), paragraph 35, 39). Palazzotto states that each of his initiator components may be present in an amount of 0.005-10 parts for every 10 parts monomer (col 5 ln 23-27). This overlaps with the claimed ranges, even though they are not present in the final, claimed membrane.
Regarding claim 11, the relative amounts of the initial composition need not affect the claimed membrane, since processing parameters can be adjusted to arrive at similar membranes from different compositions. However, Lin does describe solvent, e.g. 36 or 39 wt% solvent N-methyl pyrrolidone (paragraph 35, 28). Palazzotto’s composition is compatible with solvents (Palazzotto col 5 ln 34).
Regarding claim 12, Lin meets the claim since processing parameters can be adjusted to arrive at similar membranes from different compositions. Nevertheless Lin’s resultant membrane has water since the resultant membrane is soaked in water, where his solvent NMP is miscible (paragraph 36).
Regarding claim 13, Lin describes a polypropylene cloth substrate (paragraph 36, 37), which reads on porous support.
Regarding claim 22, Palazzotto describes many sensitizers (photoinitiators) with at least 10 delocalized electrons, including fluorescein, methylene blue, eosin y, rose bengal, etc. See Tables II-V and col 3 ln 28-40; col 3 ln 59-col 4 ln 11.
Response to Arguments
Applicant’s argument p.6 paragraph 2-p.7 penultimate paragraph of Remarks submitted 5/27/26 has been considered but is not persuasive. Applicant states that Lin, Palazzotto and Padon do not teach the coloring of a membrane. This is not found convincing because the fact that the inventor has recognized another advantage which would flow naturally from following the suggestion of the prior art cannot be the basis for patentability when the differences would otherwise be obvious. See Ex parte Obiaya, 227 USPQ 58, 60 (Bd. Pat. App. & Inter. 1985). That Lin does not describe coloring does not prevent his composition, in combination with Palazzotto, from being colored. Furthermore, Palazzotto does explicitly describe the color of his sensitizers (e.g. Table II and III wavelengths). The advantage of having a visibly discernable membrane flows naturally from the combination of Lin and Palazzotto. Palazotto teaches the type II photoinitiators instantly claimed.
Applicant’s argument p.7 final paragraph-p.8 paragraph 2 has been considered but is not persuasive. Applicant states that Palazzotto prefers a lower amount of sensitizer. This is not found convincing because (a) even if Palazzotto’s lower amount of photoinitiator (sensitizer) is used in the curable composition, one of ordinary skill would reasonably expect some amount of color to result in the cured composition as the photoinitiator is colorful and present and (b) the significantly higher molecular weight of the photoinitiator (sensitizer) relative to the co-initiator (donor) makes meeting the newly claimed molar ratio more likely and (c) the claim is to a cured composition, not the curable composition, and Lin’s membrane initiated by Palazzotto’s initiators need not have the exact molar ratio of the curable composition.
Applicant’s argument p.8 penultimate paragraph-p.9 paragraph 1 has been considered but is not persuasive. Applicant states that Palazzotto does not teach excess of unreacted sensitizer. This is not found convincing because Palazzotto need not use the words “excess, unreacted” sensitizer for such to exist. Palazzotto teaches 0.005-10 parts per 10 parts monomer. The amount taught by Palazzotto significantly overlaps with the instant amount, even in relation to other reactants -see rejection of claim 10 above. This is instantly described as “excess, unreacted”, therefore Lin’s membrane initiated by Palazzotto’s process is reasonably also expected to have excess, unreacted photoinitiator.
Applicant’s argument p.9 paragraph 2 citing Palazzotto’s teaching that the photoinitiator is present in “photochemically effective amounts” has been considered but is not persuasive. Palazzotto does not teach away from values in his ranges recited. “Photochemically effective amounts” can include values higher than the minimum required to photochemically intitiate, as he continues to teach in the range recited after this quotation. Furthermore, a reference "teaches away" when it states that something cannot be done. See In re Gurley, 27 F.3d 551, 553, 31 USPQ2d 1130, 1130 (Fed. Cir. 1994). That Palazzotto states some sensitizers are “generally” used on the lower end of the disclosed range does not amount to teaching away from any value in the range disclosed.
In response to applicant's argument that the examiner's conclusion of obviousness is based upon improper hindsight reasoning, it must be recognized that any judgment on obviousness is in a sense necessarily a reconstruction based upon hindsight reasoning. But so long as it takes into account only knowledge which was within the level of ordinary skill at the time the claimed invention was made, and does not include knowledge gleaned only from the applicant's disclosure, such a reconstruction is proper. See In re McLaughlin, 443 F.2d 1392, 170 USPQ 209 (CCPA 1971). Palazzotto’s disclosure is open to the full range that Palazzotto discloses. It is not improper hindsight reasoning to apply this range to the instant invention.
Applicant’s argument p.10 paragraph 1-2 has been considered but is not persuasive. As discussed above, Palazzotto discloses values of 0.005-10 parts per 10 parts monomer for each of the photoinitiator (sensitizer) and co-initiator (electron donor), independently. However the molecular weight of the sensitizer is significantly higher than that of the electron donor, meaning a molar ratio of 1:2 is achieved by many embodiments in this range. Furthermore, there is no need for the molar ratio to be preserved in the final ion exchange membrane, which is what is claimed, not the curable composition. As such Palazzotto’s teaching reads on the instant ratio.
Conclusion
THIS ACTION IS MADE FINAL. 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 CHRISTINA W ROSEBACH whose telephone number is (571)270-7154. The examiner can normally be reached 8am-3:30pm.
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/CHRISTINA H.W. ROSEBACH/Examiner, Art Unit 1766
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