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
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.
Claims 1-6 are rejected under 35 U.S.C. 103 as being unpatentable over Boardman et al., U.S. Patent Application Publication No. 2007/0092736 in view of Lee et al., U.S. Patent # 4,874,667 and Fujiki et al., U.S. Patent # 6,040,361 for the reasons outlined previously.
Response to Arguments
As an initial matter, the Examiner accedes to the idea that, not only does Boardman not stipulate that the amount of a catalyst inhibitor would be consistent with that now claimed, but a skilled practitioner of the invention defined therein would likely not be motivated to use correspondingly low quantities insofar as the presence of an inhibitor represents the only mechanism by which crosslinking of the composition is precluded until such time as it is desirable to do so. However, because Fujiki justifies the replacement of the heat-activated catalyst component of Boardman with one that is microencapsulated inside a thermoplastic resin, one of ordinary will appreciate that the amount of any added inhibitor should be comparable to that prescribed by Fujiki. In this connection, Applicant notes that Fujiki alludes to a broad operable range of 0.001 to 20 parts at the top of column 3 and subsequently asserts that one of ordinary skill is directed to higher amounts than what is permitted by the claims. The Examiner does not concur and points Applicant to Examples 1 and 2 of Fujuki where .002 parts of the inhibitor 2-ethylhexanol to a composition that weighs over 100 total parts. (The Examiner presumes here that Fujiki intended 2-ethylhexynol and that the recitation of 2-ethylhexanol was a typographical error insofar as all the alcohol compounds delineated in the paragraph bridging columns 7 and 8 are acetylenic alcohols.) It is, thus, easily verified mathematically that the amount of the inhibitor component in exemplifications of the supporting reference shall be less than 0.002%, which is compliant with the limitation of claim 1 governing inhibitor quantities.
Insofar as the prior art rejection was formulated under 35 U.S.C. 103, it is acknowledged that any assertions of unexpected results shall be considered as part of any patentability determination. The Examiner first notes that Table 1 on which Applicant relies mentions a component D-2 for which there is no antecedent basis in the passages preceding the table where the different components of an exemplary composition are defined. Instead, there is disclosed a catalyst component D’ which, in turn, does not appear in the aforementioned Table. The following are statements regarding the comparative examples that Applicant has deemed surprising/unexpected:
“Comparative Example 1 employ(ing) a hydrosilylation inhibitor in place of the claimed microencapsulated catalyst system, fails to achieve rapid UV curing.”
The Examiner fails to understand why sluggish curing is at-all unexpected given that it is already well-documented that this represents one of the difficulties of using catalyst inhibitors in quantities that maintain stability against premature cure while the composition is stored. In any case, Table 1 seems to indicate the absence of an inhibitor from Comparative Example 1 as neither component E-1 nor E-2 appears to be present.
“Comparative Example 2, which omits the microencapsulated catalyst, fails to achieve curing in light-shielded regions.”
The Examiner cannot fully speak to the curing behavior of this example, at least in part due to the lack of a description of D-2. Assuming that it is a catalyst that ordinarily promotes curing with the addition of heat to the system, it would indeed be not easily explained why the composition failed to undergo curing in those regions shielded by light. The observation that the mixture evolved a significant amount of hydrogen bubbles in addition to being given a “rating” of NG suggests, though, that there may be other factors at play, such as the possible presence of adventitious water.
“Comparative example 3, which employs a non-encapsulated thermal hydrosilylation catalyst, likewise fails to achieve rapid UV curing.”
The Examiner does not regard this outcome as unexpected per se. The role of a catalyst inhibitor is, again, well-established as are the repercussions of using too much of it. Therefore, it is a known result-effective variable that one of ordinary skill would optimize as a matter of routine experimentation. Comparative Example 3 merely shows that, at this level of inhibitor incorporation, UV-promoted curing is slowed as the platinum compound is “re-deactivated” by the inhibitor. This experiment obviously informed the Applicants’ selection of the original claimed range of less than 0.1 mass% of the inhibitor (now removed from claim 4).
The probative value of Comparative Example 4 is not clear given that it differs from the inventive trials in a plurality of ways including the utilization of much different ratios of crosslinker to chain extender. Between this consideration and the complete lack of detail of the makeup of the thermally-activated catalyst, it is impossible to ascertain to what the performance differences might be attributed.
As an aside, it is rather curious that all of the comparative trials incorporate a different base polymer than that used in the lone inventive trial, and particularly the presence of micron-sized silica particles, of which A-1 is entirely devoid.
Allowable Subject Matter
Claims 7 and 9-13 are allowable. Applicant has introduced the allowable subject matter of original claim 8 into amended claim 7. The reasons why these aspects impart patentability were explained in the previous Office communication.
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.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to MARC S ZIMMER whose telephone number is (571)272-1096. The examiner can normally be reached M-F 8:30-5:00.
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June 30, 2026
/MARC S ZIMMER/Primary Patent Examiner, Art Unit 1765
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