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 .
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.
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) 1-19 is/are rejected under 35 U.S.C. 103 as being unpatentable over Motofuji et al. (JP 2017-036361), wherein the machine English translation is used for citation.
Regarding claims 1-2; Motofuji et al. teaches a photocurable composition comprising a photobase generator (A) and an anionic polymerizable compound represented by the following formula (1) [0007-0008].
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Motofuji et al. teaches a preferred example of the photobase generator (A) is of the following formula 6 [0046].
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Motofuji et al. teaches the composition further comprises a photosensitizer [0060].
Motofuji et al. teaches all of the above required components, however fails to explicitly disclose each in a preferred embodiment. A reference may be relied upon for all that it would have reasonably suggested to one having ordinary skill the art, including the non-preferred embodiments. See Merck & Co. v. Biocraft Laboratories, 874 F.2d 804, 10 USPQ2d 1843 (Fed. Cir.); MPEP §2123. Motofuji et al. does not specifically disclose an embodiment containing the dicarbonyl compound, ionic photobase generator, and sensitizer. However, at the time of invention a person of ordinary skill in the art would have found it obvious to prepare a composition containing the dicarbonyl compound, ionic photobase generator, and sensitizer based on the invention of Motofuji et al., and would have been motivated to do so since Motofuji et al. suggests that the composition can contain the dicarbonyl compound [0007-0008], ionic photobase generator [0046], and sensitizer [0060].
Regarding claims 3-8 and 10-15; Motofuji et al. teaches the anion component of the photobase generator (A) may be -BPh4 [0046], however fails to explicitly teach fluorine substituents. Motofuji et al. teaches the photobase generator (A) may be represented by the following general formula (3) [0029].
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In the general formula (3), R14 to R19 are atoms or substituents selected from the group consisting of hydrogen atoms, halogen atoms, acyl groups having 1 to 20 carbon atoms, alkyl groups having 1 to 20 carbon atoms, alkoxy groups having 1 to 20 carbon atoms, alkylthio groups having 1 to 20 carbon atoms, alkylsilyl groups having 1 to 20 carbon atoms, nitro groups, carboxyl groups, hydroxyl groups, mercapto groups, amino groups, cyano groups, phenyl groups, naphthyl groups; wherein said halogen atoms include fluoride [0036]. As such, Motofuji et al. teaches it obvious to add a fluorine to the phenyl groups of the anion.
Regarding claims 9 and 16-19; Motofuji et al. teaches the weight ratio of the photobase generator (A) contained in the photocurable composition of the present invention is preferably 0.01 to 30% by weight [0048] and the weight ratio of the sensitizer is 1 to 15% by weight [0060]. The calculations of the molar ratio depends on the structure of the components employed, thus it is the Examiner’s position that based weight % ranges taught by Motofuji et al., the molar ratio would fall within the claimed range. Furthermore, the experimental modification of this prior art in order to ascertain optimum operating conditions fails to render applicants’ claims patentable in the absence of unexpected results. See In re Aller, 105 USPQ 233; see MPEP §2144.05. At the time of filing, a person having ordinary skill in the art would have found it obvious to optimize the molar ratio of the photobase generator and sensitizer and would have bene motived to do so in order to have efficient base generation. Generally, differences in concentration or temperature will not support the patentability of subject matter encompassed by the prior art unless there is evidence indicating such concentration or temperature is critical. “[W]here the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation.” In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955), MPEP 2144.05.
Response to Arguments
Applicant's arguments filed 17 October 2025 have been fully considered but they are not persuasive.
Applicants argue Motofuji et al. contains disclosure that is clearly incorrect; Motofuji et al. does not teach or suggest how to obtain Compound 6. Applicants argue one of ordinary skill in the art would not be able to synthesize Compound 6 based on the teachings of Motofuji et al., and one of ordinary skill in the art would understand that Motofuji et al. was not in possession of Compound 6; the prior art does not satisfy the requirements of 35 USC 112 with respect to Compound 6.
It is noted that the claims of the instant application is directed to a photocurable resin composition comprising components (a), (b), and (c), not to the method of making said components. Motofuji et al. teaches a composition comprising the components (a), (b), and (c), as required by the instant claim language. The Examiner makes no comment with respect to the validity of the prior art and presume the prior art is accurate in its teachings until proven otherwise.
Absent a clear teaching and factually supported data the arguments submitted by Applicants is merely an opinion. Arguments of counsel cannot take the place of factually supported objective evidence. See, e.g., In re Huang, 100 F.3d 135, 139-40, 40 USPQ2d 1685, 1689 (Fed. Cir. 1996); In re De Blauwe, 736 F.2d 699, 705, 222 USPQ 191, 196 (Fed. Cir. 1984) [See MPEP 2145].
As such, Motofuji et al. still renders obvious the basic claimed photocurable resin composition, as required by the instant claim language.
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.
Correspondence
Any inquiry concerning this communication or earlier communications from the examiner should be directed to JESSICA ROSWELL whose telephone number is (571)270-5453. The examiner can normally be reached M-F 8:00 am to 5:00 pm.
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/JESSICA M ROSWELL/ Primary Examiner, Art Unit 1767