DETAILED CORRESPONDENCE
This Office action is in response to the RCE received May 5, 2026.
Bolded text indicates new language in the office action.
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.
(a)(2) the claimed invention was described in a patent issued under section 151, or in an application for patent published or deemed published under section 122(b), in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention.
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.
The factual inquiries set forth in Graham v. John Deere Co., 383 U.S. 1, 148 USPQ 459 (1966), that are applied 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.
Claims 1-9 and 11, 12 are rejected under 35 U.S.C. 103 as being unpatentable over KAWANA (5,620,831) or TANAKA et al in view of IMKEN et al (2002/0114969) and HIGUCHI et al (2014/0186766) and SANTOBIANCO et al (2003/0065049) and FUJIKAWA et al (20180134838).
The claimed invention now recites the following:
PNG
media_image1.png
328
702
media_image1.png
Greyscale
KAWANA report a photocurable composition comprising a resin, defined to be a carboxyl containing polymer formulated with an epoxy resin, a photopolymerization initiator and a filler (silica), see Example 5 in column 26, line 44 to column 27, line 40 below:
PNG
media_image2.png
360
360
media_image2.png
Greyscale
PNG
media_image3.png
662
358
media_image3.png
Greyscale
Each of the components is highlighted above and no claims are allowed.
TANAKA et al discloses the claimed ingredients at Examples 1-5 on Table 1 in column 17/18, see below:
PNG
media_image4.png
432
650
media_image4.png
Greyscale
TANAKA et al lack a working example employing a silica or talc filler, however those fillers are reported in column 12, lines 15-25, see below:
PNG
media_image5.png
202
444
media_image5.png
Greyscale
IMKEN et al report an epoxy novolac/photopolymerization initiator composition with the use of adjuvants/fillers such as silica and wollastonite, see page 4, para. [0057] below:
PNG
media_image6.png
288
370
media_image6.png
Greyscale
HIGUCHI et al report the claimed invention at Examples 1-13 wherein Table 1 and Table 2 report the components of the composition which include carboxyl group containing resins and an epoxy compound and a photopolymerization initiator, see Table 1below:
PNG
media_image7.png
1056
742
media_image7.png
Greyscale
The amount of the filler as seen in HIGUCHI et al, Example 1, Table 1 is calculated to be at 40%, as seen Example 1 for reference, meeting the amended content as now seen in claim 1.
SANTOBIANCO et al (2003/0065049) is cited to disclose the use of fillers such as talc, silica and wollastonite in an amount of 1 to 40 percent by weight (para. [0042], while FUJIKAWA et al (20180134838) disclose the use of fillers in an amount of 1 to 30 parts by weight (para. [0116]
It would have been prima facie obvious to one of ordinary skill in the art of photocurable composition use any of the listed filler/adjuvants components reported in IMKEN et al, HIGUCHI et al, TANAKA et al, FUJIKAWA et al and SANTOBIANCO et al, such as talc, silica and wollastonite in a composition such as reported in KAWANA or HIGUCHI et al in an amount of 30 to 40 percent by weight as seen in the newly cited references with the reasonable expectation of same or similar results for swift reactions to heat and the ability to remain stable at low temperatures.
The rejection is repeated wherein the solvent resistance property now recited in claim 1 is a property of the composition after processing wherein any of the prior art compositions could be cured and processed in a myriad number of ways to arrive at the same or similar post curing properties as recited. Amended claim 1 to the composition continues to be seen as obvious over the prior art references for the formulation.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to JOHN S CHU whose telephone number is (571)272-1329. The examiner can normally be reached M-F, IFP-Flex.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Mark Huff, can be reached at telephone number 571-272-1385. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
Information regarding the status of an application may be obtained from the Patent Application Information Retrieval (PAIR) system. Status information for published applications may be obtained from either Private PAIR or Public PAIR. Status information for unpublished applications is available through Private PAIR only. For more information about the PAIR system, see http://portal.uspto.gov/external/portal. Should you have questions about access to the Private PAIR system, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free).
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.
/John S. Chu/ Primary Examiner, Art Unit 1737
J. Chu
May 16, 2026
Prosecution Insights