DETAILED ACTION
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 1-10, 19 and 20 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 1: The term “type” in claim 1 is a relative term which renders the claim indefinite. The term “type” 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. See MPEP 2173.05(b) III E. It is suggested to replace the word with “compound” or “component”, or similar language.
Regarding claim 4: The amendment to the claim erroneously deleted the “(meth)acrylate groups” phrase needed for the limitation to have clarity. Further, claim 4 is not further limiting since claim 1, from which claim 4 depends, already requires the multifunctional (meth) acrylate (B) to have two or more (meth)acrylate groups.
Allowable Subject Matter
Claims 1-10, 19 and 20 would be allowable if rewritten or amended to overcome the rejection(s) under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), 2nd paragraph, set forth in this Office action.
The following is a statement of reasons for the indication of allowable subject matter: Illsley et al. is the closest prior art as set forth in the previous action. However, in the two step process disclosed in Illsley et al., a bireactive amine is first reacted with a trifunctional acrylate which is then reacted with a diacrylate. This order does not read on the claims, which requires a difunctional (meth)acrylate selected from the group consisting of (meth)acrylic esters (Ai1) and polyester (meth)acrylates (Ai2) to be reacted to the bireactive amine before that product is then reacted to a multifunctional (meth) acrylate. There is no teaching or suggestion found in the prior art to use one of the specifically named difunctional (meth)acrylates instead of the trifunctional acrylate in the first reaction of Illsley et al.
Election/Restrictions
If applicants amend the elected claims to overcome the 112(b) rejections set forth above, the withdrawn claims would be considered for rejoinder. However, it appears there are some 112(b) issues with the withdrawn claims.
Regarding claim 11: It is unclear to change the name of the (Ai) component from a “difunctional (meth)acrylate (Ai)” in claim 1 to a “di(meth)acrylated compound (Ai)” in claim 11 because it calls into question if this is the same component or a different component.
Regarding claim 14: Claim 14 is a “use” claim. See MPEP 2173.05(q) for an explanation of the expected rejections.
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.
Contact Information
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Megan McCulley whose telephone number is (571)270-3292. The examiner can normally be reached Monday - Friday 9-5:30.
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/MEGAN MCCULLEY/Primary Examiner, Art Unit 1767
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