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 § 112
The following is a quotation of 35 U.S.C. 112(b):
(b) CONCLUSION. —The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the inventor or a joint inventor regards as the invention.
The following is a quotation of 35 U.S.C. 112 (pre-AIA ), second paragraph:
The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.
Claims 2-10, 12-13, and 21-24 are rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor (or for applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention.
Regarding claim 2, the phrase "for example" in line 4, renders the claim indefinite because it is unclear whether the limitation(s) following the phrase are part of the claimed invention. See MPEP § 2173.05(d).
Regarding claim 2, the phrase "such as" in lines 5, 8, 10, and 12 renders the claim indefinite because it is unclear whether the limitations following the phrase are part of the claimed invention. See MPEP § 2173.05(d).
Regarding claim 2, the phrase "preferably" in line 7 renders the claim indefinite because it is unclear whether the limitations following the phrase are part of the claimed invention.
Regarding claim 3, the phrase "such as" in lines 3, 5, 9, 15, and 19 renders the claim indefinite because it is unclear whether the limitations following the phrase are part of the claimed invention. See MPEP § 2173.05(d).
Regarding claim 3, the phrase "for example" in lines 8, 14, 18, and 21 renders the claim indefinite because it is unclear whether the limitation(s) following the phrase are part of the claimed invention. See MPEP § 2173.05(d).
Regarding claim 3, the phrase "preferably" in line 7 renders the claim indefinite because it is unclear whether the limitations following the phrase are part of the claimed invention
Regarding claim 4, the phrase "such as" in lines 4, 11-12, 14, and 16 renders the claim indefinite because it is unclear whether the limitations following the phrase are part of the claimed invention. See MPEP § 2173.05(d).
Regarding claim 4, the phrase "preferably" in line 17 renders the claim indefinite because it is unclear whether the limitations following the phrase are part of the claimed invention.
Regarding claim 4, the phrase "for example" in lines 19-20, and 30 renders the claim indefinite because it is unclear whether the limitation(s) following the phrase are part of the claimed invention. See MPEP § 2173.05(d).
Regarding claim 5, the phrase "such as" in line 3 renders the claim indefinite because it is unclear whether the limitations following the phrase are part of the claimed invention. See MPEP § 2173.05(d).
Regarding claim 5, the phrase "preferably" in lines 12 and 20 renders the claim indefinite because it is unclear whether the limitations following the phrase are part of the claimed invention.
Regarding claim 6, the phrase "preferably" in lines 9, 14-15, 17-18 and 22 renders the claim indefinite because it is unclear whether the limitations following the phrase are part of the claimed invention.
Regarding claim 7, the phrase "such as" in line 2renders the claim indefinite because it is unclear whether the limitations following the phrase are part of the claimed invention. See MPEP § 2173.05(d).
Regarding claim 7, the phrase "for example" in line 8 renders the claim indefinite because it is unclear whether the limitation(s) following the phrase are part of the claimed invention. See MPEP § 2173.05(d).
Regarding claim 10, the phrase "such as" in lines 13, 34 renders the claim indefinite because it is unclear whether the limitations following the phrase are part of the claimed invention. See MPEP § 2173.05(d).
Regarding claim 10, the phrase "for example" in lines 21 and 40 renders the claim indefinite because it is unclear whether the limitation(s) following the phrase are part of the claimed invention. See MPEP § 2173.05(d).
Regarding claim 10, the phrase "preferably" in lines 24-26, 28-29, 33, and 39 renders the claim indefinite because it is unclear whether the limitations following the phrase are part of the claimed invention.
Regarding claim 12, the phrase "preferably" in lines 2-3 renders the claim indefinite because it is unclear whether the limitations following the phrase are part of the claimed invention.
Claim 13 sets forth in lines 2-3 “…to UV, Visible, to near-infrared irradiation”, it is unclear if applicant intends for said composition to be exposed to all three types of radiation, i.e., UV, visible and near-infrared. It is unclear if applicant intends for said compositions to be irradiated with at least one, i.e., UV, visible or near-infrared or UV, visible and/or near-infrared radiation. Clarification is requested.
Regarding claim 21 sets forth a method for forming the composite according to claim 20 , wherein said process comprises spraying, coating, or applying “a composition” in line 2; however, it is unclear if said “a composition” in line 2 is the same composite composition set forth in claim 20, i.e., (i) the cured reaction product (epoxy-anhydride resin) according to claim 10 further comprising (ii) a reinforcing agent, or if the “a composition” is intended to be the curable composition set forth in lines 5-13 of claim 21.
It is not clear if the “a composition” in line 2 of claim 21 is intended to comprise (i) the cyclic ether-anhydride resin and (ii) a reinforcing agent (the composite according to claim 20) and further comprising the composition set forth in lines 5-13, i.e., (a) at least one polyfunctional cyclic ether comprising at least two cyclic ether groups, (b) at least one carboxylic anhydride moiety; and (c) a photoinitiator system generating catalytic species comprising at least one suitable photoinitiator or photosensitizer that absorbs light at the desired UV-visible to near-infrared irradiation and (i) at least one oxidation agent…selected from iodonium salts, sulfonium salts, peroxides and thianthrenium salts and/or at least one accelerator…selected from imidazoles. Clarification is requested.
A broad range or limitation together with a narrow range or limitation that falls within the broad range or limitation (in the same claim) may be considered indefinite if the resulting claim does not clearly set forth the metes and bounds of the patent protection desired. See MPEP § 2173.05(c). In the present instance, claim 21 recites the broad recitation applying, and the claim also recites spraying and coating which is the narrower statement of the range/limitation. The claim(s) are considered indefinite because there is a question or doubt as to whether the feature introduced by such narrower language is (a) merely exemplary of the remainder of the claim, and therefore not required, or (b) a required feature of the claims. It is deemed spraying and coating are both methods of applying. Clarification is requested.
The term “configured” in claims 8 and 22-24 is a relative term which renders the claim indefinite. The term “configured” is not defined by the claim, the specification does not provide a standard for ascertaining the requisite degree, and one of ordinary skill in the art would not be reasonably apprised of the scope of the invention. Claim 3 requires a photoinitiator or photosensitizer in combination with an oxidation agent selected from iodonium salt, sulfonium salts, peroxides and thianthrenium salts configured for accelerated photopolyaddition of cyclic ether-anhydride resins under UV-visible to near infrared irradiation. It is unclear how the combination of photoinitiator or photosensitizers and selected oxidation agent are configured to accelerate the photopolyaddition. It’s not clear if applicant means a mixing step (combining the component). Its unclear if applicant intends for said configured to mean the exposure to radiation step. It is unclear if applicant intends for the configured to actually mean “capable of” accelerating under irradiation. Clarification is requested.
In claim 22, it is unclear if the configured for increasing the delamination strength is intended to be an unclaimed method step, such as spraying with a softening composition or de-tackifying composition. It is unclear if applicant intends for the configured for increasing the delamination step to actually mean “capable of” increasing the delamination strength. Clarification is requested.
In claim 23-24, it is unclear if the configured for enhancing a curing process is intended to be an unclaimed method step of heating prior to irradiation. It is unclear if applicant intends for the configured for enhancing a curing process to actually mean “capable of” enhancing a curing process. Clarification is requested.
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 21 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 21 sets forth a process for obtaining the composite resin according to claim 20 which included spraying, coating, or applying “a composition” in line 2 of claim 21. Claim 21 further comprising said “a composition” comprises (a) at least one polyfunctional cyclic ether comprising at least two cyclic ether groups, (b) at least one carboxylic anhydride moiety; and (c) a photoinitiator system generating catalytic species comprising at least one suitable photoinitiator or photosensitizer that absorbs light at the desired UV-visible to near-infrared irradiation and (i) at least one oxidation agent…selected from iodonium salts, sulfonium salts, peroxides and thianthrenium salts and/or at least one accelerator…selected from imidazoles. However, this appears to be the same composition found in the process of claim 10 (see above 35 USC 112 (b) rejection since the limitations after the phrases, such as, as well as, for example are not clearly or positively claimed limitations) which is the cures composite resin of claim 20 from which the process of claim 20 depends. 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 § 102
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) 1-3, 5, 8-10, 13-21 and 23 is/are rejected under 35 U.S.C. 102(a1) as being anticipated by Hayashi et al (US 6,919,385).
Hayashi sets forth energy curing resin compositions. Said energy-ray curing resin composition comprise a photopolymerizable resin component which can be cured by irradiation with an energy ray, such as a photopolymerizable oligomer or a photopolymerizable monomer, a photopolymerization initiator component which is capable of curing the above photopolymerizable resin component upon irradiation of an energy ray, and a curing agent component which is capable of curing at least one of the above photopolymerizable resin components without irradiation of an energy ray, such as room temperature or heat curing agent. Said composition further comprises a curing accelerator component which accelerates curing when curing at least one of the above photopolymerizable resin components and the above curing agent component without irradiation of an energy ray, such as room temperature curing or heat curing—see col 3, lines 5-23. Hayashi sets forth an epoxy resin component having a cyclic ether structure in a molecular structure as the photopolymerizable resin component; an acid anhydride or a derivative thereof such as dicarboxylic acid or an esterified product thereof as the curing accelerator component—see col. 3, lines 22-35. Said photoinitiator component comprises a cationic photoinitiator comprising an iron-allene base compound represented by formulas (I), (II) or (III) found in col. 4 and may further comprise a photo-thermopolymerization initiator, such as a sulfonium salt represented by formulas (IV), (VI), or (V) found in col. 4 to col. 5.
Per example 18, Hayashi exemplifies a composition comprising Araldite AER 260 (poly(Bisphenol A-co-epichlorohydrin) glycidyl end-capped); Celoxide 2000 (cyclohexene vinyl monoxide, reactive diluent); maleic anhydride/hexahydrophthalic anhydride/polyethylene glycol ether; 0.2 parts Irgacure 261 (photoinitiator:
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); 0.8 parts Daicat 11 (an aryl-based sulfonium salt initiator); and 1.4 parts Sun Aid SI-60 (photo-thermopolymerization initiator having formula (IV) in col. 5—see examples 16, 17, and 15. The composition is deemed to comprise a cyclic ether compound ( poly(Bisphenol A-co-epichlorohydrin) glycidyl end-capped) having at least two cyclic ether groups; a carboxylic acid anhydride (maleic anhydride
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and hexahydrophthalic anhydride:
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) ; a photoinitiator (
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having a prominent absorption maxima at 249 nm, 297 nm, 375 nm, and 440 nm (UV-Vis); and a sulfonium salt photoinitiator Sun Aid SI-60 (having general formula (IV) in col. 5). This is deemed to anticipate claim 1. Claims 2-3 appears to be anticipated in light of the 35 USC 112 (b) rejections found above, additionally, the hexahydrophthalic anhydride anticipates (i) in claim 3 when Ran is H. Claim 5 is anticipated in light of the 35 USC 112(b) above, additionally, it is deemed the photo-thermopolymerization initiator having general formula (IV) in col. 5, specially having the formula:
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.
Regarding claims 8-10: Hayashi sets forth curing the composition of example 8 with UV radiation to obtain a fully cured composition—see example 18.
Regarding claims 13 and 20: per example 20 Hayashi sets forth impregnating (coating/applying) a carbon-fiber woven fabric with a composition comprising a diepoxide compound (Celoxide 2021P) with reactive diluent Celoxide 2000 (cyclohexene vinyl monoxide, an epoxy diluent) with a photoinitiator component comprising Irgacure 261, Daicat 11 and Sun Aid SI-60L (set forth in the above example). The carbon fiber fabric is deemed to anticipate claim 14—carbon fibers. Hayashi sets forth said impregnated woven fabric was fully cured after exposure to UV radiation—see example 20.
Regarding claim 16: Both example 18 and 20 are exposure to radiation in air—see examples 18 and 21.
Regarding claim 17: the casted resin composition of example 18 and the coated/impregnated carbon fiber fabric in example 20 are deemed to anticipate claim 17.
Regarding claim 18: Hayashi sets forth coating example 18 onto a glass vessel.
Regarding claim 19: Hayashi sets forth said compositions are suitable as adhesives, thus claim 19 has sufficient specificity—see col. 29, line 44.
Regarding claim 20: Hayashi sets forth said compositions are suitable to obtain carbon-fiber reinforced composites—see col. 29, line 43 and example 20.
Regarding claim 23: It is deemed the teaching of the polyol curing accelerator, as well as, the polyethylene glycol found in examples 18 and 21 are deemed to anticipate claim 23.
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) 11-12 is/are rejected under 35 U.S.C. 103 as being unpatentable over Hayashi as applied to claims 1-3, 5, 8-10, 12-21 and 23.
Hayashi is set forth above as anticipating the invention of claims 1-3, 5, 8-10, 12-21 and 23. Hayashi does not expressly set forth the irradiation intensity as found in claim 11; however, Hayashi does set forth irradiating claim 18 and 21 with UV radiation having an intensity of 125 W/cm2—see example 2. However, in absence of the criticality of the claimed intensity range the courts have upheld, "[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). Therefore, it is deemed in absence of evidence to the contrary and/or the criticality of the claimed intensity range, it is deemed a skilled artisan would have been able to obtain the claimed range by routine experimentation. Thus, the claim 11 is obvious in view of the teachings.
Regarding claim 12: Hayashi does not expressly set forth the instantly claimed duration of exposure; however, Hayashi sets forth in the examples the compositions were fully cured after “several minutes” of exposure—see examples 2, 18 and 20. It is deemed in absence of evidence to the contrary “several minutes” is at least within the claimed range of 1 to 8000 seconds (13 minutes) since the Patent and Trademark Office is not equipped to conduct experimentation in order to determine whether Applicant’s composition differs and, if so, to what extent, from the discussed reference. Therefore, with the showing of the reference, the burden of establishing non-obviousness by objective evidence is shifted to the Applicants.
Allowable Subject Matter
Claims 4*, 6-7* and 24 is objected to as being dependent upon a rejected base claim, but would be allowable if rewritten in independent form including all of the limitations of the base claim and any intervening claims.
Regarding claim 4: Hayashi (the closest prior art) fails to set forth the Type I and II photoinitiators found, as well as, the red to near infrared photoinitiators set forth.
Regarding claims 6: Hayashi does not set forth imidazole curing accelerators.
Regarding claim 7: Hayashi does not set forth the benzyl-type alcohols as accelerators. *(Note: claims 4 and 6-7 are rejected above for being indefinite).
Regarding claim 24: Hayashi is silent with regarding to the addition of N-substituted imidazole ring compounds.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to SANZA L MCCLENDON whose telephone number is (571)272-1074. The examiner can normally be reached 8-5.
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/SANZA L. McCLENDON/Primary Examiner, Art Unit 1765
SMc
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