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 .
Election/Restrictions
Newly amended/submitted claims 18 and 22-23 directed to an invention that is independent or distinct from the invention originally claimed for the following reasons: the newly amended and submitted claims are directed to a network polymer, which is a different class of invention than the method as originally examined. The inventions have acquired a separate status in the art in view of their different classification, the inventions require a different field of search, and the prior art applicable to one invention would not likely be applicable to another invention.
Since applicant has received an action on the merits for the originally presented invention, this invention has been constructively elected by original presentation for prosecution on the merits. Accordingly, claims 18 and 22-23 are withdrawn from consideration as being directed to a non-elected invention. See 37 CFR 1.142(b) and MPEP § 821.03.
To preserve a right to petition, the reply to this action must distinctly and specifically point out supposed errors in the restriction requirement. Otherwise, the election shall be treated as a final election without traverse. Traversal must be timely. Failure to timely traverse the requirement will result in the loss of right to petition under 37 CFR 1.144. If claims are subsequently added, applicant must indicate which of the subsequently added claims are readable upon the elected invention.
Should applicant traverse on the ground that the inventions are not patentably distinct, applicant should submit evidence or identify such evidence now of record showing the inventions to be obvious variants or clearly admit on the record that this is the case. In either instance, if the examiner finds one of the inventions unpatentable over the prior art, the evidence or admission may be used in a rejection under 35 U.S.C. 103 or pre-AIA 35 U.S.C. 103(a) of the other invention.
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) 1-6, 11-13 and 24-26 is/are rejected under 35 U.S.C. 103 as being unpatentable over Catena (US Serial No. 2016/0024331).
Regarding claims 1-6, 11, 12, and 25; Catena teaches a method of forming a polymerizable thiolene ink and coating composition (i.e. polymer network) which provides excellent adhesion and low shrinkage when cured onto an imprintable surface [0016]. Catena teaches wherein a quantity of mercapto compounds and unsaturated monomers are mixed to form a coating mixture, applied to an imprintable surface, exposed to an energy emission source (e.g. actinic radiation [0021]), thus polymerizing and curing the coating mixtures onto the imprintable surface [Fig.1]. Catena teaches suitable mercapto compounds, which can be used in combinations, include, for example, thiophenol (reads on photoinitiator of formula I wherein Ar is an aryl group, n is 1, X is a bond; claims 2-6, 25) and pentaerythritol tetra-(3-mercapto-thiopropionate) (claim 11) [0017]. Catena teaches suitable unsaturated monomers include, for example, 1,6-hexanediol diacrylate or 1,4-butanediol diacrylate (claim12) [0018].
Catena 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. Catena does not specifically disclose an embodiment containing a combination thiophenol, pentaerythritol tetra-(3-mercapto-thiopropionate) and 1,6-hexanediol diacrylate or 1,4-butanediol diacrylate. However, at the time of invention a person of ordinary skill in the art would have found it obvious to prepare a composition containing a combination thiophenol, pentaerythritol tetra-(3-mercapto-thiopropionate) and 1,6-hexanediol diacrylate or 1,4-butanediol diacrylate, based on the invention of Catena, and would have been motivated to do so since Catena suggests that the coating composition can contain a combination thiophenol, pentaerythritol tetra-(3-mercapto-thiopropionate) [0117] and 1,6-hexanediol diacrylate or 1,4-butanediol diacrylate [0018].
The Examiner makes note that although thiophenol is not explicitly named as a photoinitiator, it is the Examiner’s position that it has the capability of functioning as a photoinitiator. The courts have held that “a compound and all its properties are mutually inseparable”, In re Papesch, 315F.2d 381, 137 USPQ 42, 51 (CCPA 1963). Further, attention is drawn to MPEP 2112.01, which states that “products of identical chemical composition cannot have mutually exclusive properties. A chemical composition and its properties are inseparable. Therefore, if the prior art teaches the identical chemical structure, the properties applicant discloses and/or claims are necessarily present.”, In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990).
The Examiner takes the position that the polymerized composition of Catena reads on the claimed polymer network. That is, when the compounds as disclosed by Catena are subjected to ultraviolet light, they polymerize, thus forming a network polymer.
Regarding claim 13; Catena teaches the actinic radiation is ultraviolet (UV) visible light having a wavelength in the range of 280-700 nanometers to effectively trigger the chemical reaction [0021].
Regarding claim 24; Catena teaches the unsaturated monomers are typically in the range of approximately 0-70 wt% [0018], a preferred example employing 42.9 wt%. Catena teaches, the mercapto compounds may be used in combinations [0017], and in a preferred embodiment, teaches the mercapto compound employed in an amount of 5 wt.% [Ex2]. In the instance, the 5 wt.% of the mercapto compound is a 1:1 mixture of two (e.g. 2.5 wt.% thiophenol and 2.5 wt.% pentaerythritol tetra-(3-mercapto-thiopropionate) and the 42.9 wt.% of the unsaturated compound is 1,4-butanediol diacrylate, the thiophenol is employed in an amount of 10 mol% relative to the amount of the unsaturated compound (as calculated by Examiner).
2.5g (mol/110.17g) = 0.023 mol thiophenol
42.9g (mol/198.22g) = 0.22 mol 1,4-butanediol diacrylate
0.023 mol thiophenol / 0.22 mol 1,4-butanediol diacrylate = 0.10*100 = 10 mol%
When faced with a mixture, one of ordinary skill in the art would be motivated to select a 1:1 ratio, absent evidence of unexpected or surprising results. Case law holds that "[h]aving established that this knowledge was in the art, the examiner could then properly rely... on a conclusion of obviousness, 'from common knowledge and common sense of the person of ordinary skill in the art within any specific hint or suggestion in a particular reference.'" In re Bozek, 416 F.2d 1385, 1390, 163 USPQ 545, 549 (CCPA 1969). Given the recitation of a “combination” in Catena, one of ordinary skill in the art would at once envisage a 1:1 ratio, since a 1:1 ratio is the most common starting point when mixing two components.
In the alternative, in the instance the 5 wt.% of the mercapto compound is a 1:1 mixture of two (e.g. 2.5 wt.% thiophenol and 2.5 wt.% pentaerythritol tetra-(3-mercapto-thiopropionate) and an amount of 1,6-hexanediol diacrylate is increased to 55 wt.% (falls within the range as provided by [0018]), the thiophenol is employed in an amount of 9.5 mol% relative to the amount of the unsaturated compound (as calculated by Examiner).
2.5g (mol/110.17g) = 0.023 mol thiophenol
55g (mol/226.27g) = 0.24 mol 1,6-hexanediol diacrylate
0.023 mol thiophenol / 0.24 mol 1,6-hexanediol diacrylate = 0.95*100 = 9.5 mol%
Regarding claim 26; Catena teaches the actinic radiation is ultraviolet (UV) visible light having a wavelength in the range of 280-700 nanometers to effectively trigger the chemical reaction [0021, 0024], however fails to explicitly teach a light source having a wavelength entered at about 405 nm. 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 the invention a person having ordinary skill in the art would have found it obvious to optimize the wavelength by which the reaction occurs (e.g. 405 nm), based on the reaction components and catalysts and/or initiators used in the composition, and would have been motivated to do so in order to achieve adequate and efficient polymerization. Furthermore, a prior art reference that discloses a range encompassing a somewhat narrower claimed range is sufficient to establish a prima facie case of obviousness. See In re Peterson, 315 F.3d 1325, 1330, 65 USPQ2d 1379, 1382-83 (Fed. Cir. 2003). See also In re Harris, 409 F.3d 1339, 74 USPQ2d 1951 (Fed. Cir. 2005), see MPEP §2144.05.
Claim(s) 14 is/are rejected under 35 U.S.C. 103 as being unpatentable over Catena (US Serial No. 2016/0024331), as applied to claim 1, and further in view of Cunningham (US Serial No. 2018/0244951).
Catena teaches the basic claimed method, as set forth above, with respect to claim 1.
Regarding claim 14; Catena teaches low intensity radiation, however fails to teach an intensity of 1 mW/cm2 to 20 mW/cm2. Cunningham teaches thiol-ene based coating compositions which are exposed to UV light at an intensity of between 2-15 mW/cm2 [0059]. Catena and Cunningham are analogous art because they are both concerned with the same field of endeavor, namely thiol-ene based coating compositions. At the time of filing, a person of ordinary skill in the art would have found it obvious to irradiate the composition of Catena at an intensity of 2-15 mW/cm2, as taught by Cunningham, and would have been motivated to do so, because such low doses would not cause samples to exotherm and fume or boil over (i.e. loss of product), as suggested by Cunningham [0059]
Response to Arguments
Applicant's arguments filed 20 January 2026 have been fully considered but they are not persuasive.
Applicants argue Catena describes ink formulations that contain “a quantity of mercapto compounds, a quantity of functional silane compounds, a quantity of unsaturated polymers, a quantity of unsaturated oligomer compounds, a quantity of unsaturated monomers, and an activation catalyst which impart desired properties to the present invention.” Thus, the polymeric ink of Catena necessarily contains silane compounds that react with mercapto compounds.
The Examiner makes note that the claims of the instant invention are directed to a method of generating a network polymer, the method “comprising…”. The transitional term “comprising”, which is synonymous with “including,” “containing,” or “characterized by,” is inclusive or open-ended and does not exclude additional, unrecited elements or method steps. See, e.g., > Mars Inc. v. H.J. Heinz Co., 377 F.3d 1369, 1376, 71 USPQ2d 1837, 1843 (Fed. Cir. 2004) (“like the term comprising,’ the terms containing’ and mixture’ are open-ended.”). Invitrogen Corp. v. Biocrest Mfg., L.P., 327 F.3d 1364, 1368, 66 USPQ2d 1631, 1634 (Fed. Cir. 2003). Thus, although Catena teaches the composition further comprising other components (i.e. silane compounds), it still reads on the claimed method as required by the claim language.
Applicants argue that network polymers are a particular type of rigid polymer whose properties are contrary to those described in the Catena compositions. The Examiner respectfully disagrees. While Applicants can be their own lexicographer, the instant specification provides no definition with respect to the term “network polymer.” That is, Applicant’s argument that “network polymers are a particular type of rigid polymer” is not persuasive absent a definition provided in the specification. A “network polymer” to one of ordinary skill in the art is a polymer structure formed by the reaction of reactants forming crosslinks, thus creating a “network”. Such networks do not exclusively form “rigid” structures.
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). The Examiner takes the position that Catena teaches the composition comprises mercapto compounds, specifically thiophenol, which although not explicitly listed as a photoinitiator, has the capability of functioning as one based on the structure of the compound. The courts have held that “a compound and all its properties are mutually inseparable”, In re Papesch, 315F.2d 381, 137 USPQ 42, 51 (CCPA 1963). Further, attention is drawn to MPEP 2112.01, which states that “products of identical chemical composition cannot have mutually exclusive properties. A chemical compound and its properties are inseparable. Therefore, if the prior art teaches the identical chemical structure, the properties applicant discloses and/or claims are necessarily present.”, In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990).
As such, Catena is still relied upon for rendering obvious the basic claimed method, as required by the instant claim language. Cunningham is still relied upon for rendering obvious the claimed UV light intensity.
Conclusion
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). 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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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Mark Eashoo can be reached at 571-272-1197. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/JESSICA M ROSWELL/Primary Examiner, Art Unit 1767
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