DETAILED ACTION
A request for continued examination under 37 CFR 1.114, including the fee set forth in 37 CFR 1.17(e), was filed in this application after final rejection. Since this application is eligible for continued examination under 37 CFR 1.114, and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114. Applicant's submission filed on 1/7/26 has been entered.
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA . Per amendment dated 1/7/26, claims 1, 3-7 are currently pending in the application.
Terminal Disclaimer
The terminal disclaimer filed on 1/7/26 disclaiming the terminal portion of any patent granted on this application which would extend beyond the expiration date of US. Appl. No 18/021,214 has been reviewed and is accepted. The terminal disclaimer has been recorded.
Claim Objection
Claim 1 is objected to because of the following informalities:
Claim 1 should be amended to recite the mass% range of (a2) as being based on the entire cycloolefin monomer, as supported by paragraph [0017] in the disclosure.
Appropriate correction is required.
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, 3-7 are rejected under 35 U.S.C. 103 as being unpatentable over Iwabuchi (JP 2014136728A, machine translation, of record).
Regarding claims 1, and 6, Iwabuchi teaches a crosslinked cycloolefin resin obtained from a polymerizable composition comprising cyclic olefin monomers and a ring-opening metathesis catalyst (ref. claims, [0009]-[0012]). Disclosed cyclic olefin monomers include those having 3 rings and 5 rings [0016], [0019], as well as monocyclic olefin monomers in an amount of, preferably, 40 mass% or less, based on the total amount of the cyclo olefin monomer, and that the cyclic olefin monomers may be used alone or in combination of two or more [0022]-[0023]. Iwabuchi further teaches that said monomers may be polymerized by bulk polymerization [0056], [0078].
Disclosed Examples in Table 1 are based on a norbornene monomer mixture of dicyclopentadiene and tricyclopentadiene compounds, at 90:10 relative mass parts, respectively [0084].
Iwabuchi is silent on a cured product formed from a composition comprising a monocyclolefin in the claimed range, and said cured product having the claimed elongation at break.
At the outset, it is noted that in the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists. See MPEP § 2144.05.
Given that Iwabuchi is open to including a monocyclic cycloolefin in the polymerizable composition, it would have been obvious to one of ordinary skill in the art, as of the effective date of the claimed invention, to prepare a cured product by bulk polymerizing a composition comprising dicyclopentadiene compound, a tricyclopentadiene compound, a monocyclic olefin, and a metathesis catalyst, including those within the scope of claimed invention. Additionally, given the teaching on the upper limit of, preferably, 40 % by mass of the monocyclic olefin monomers, it would have been obvious to a skilled artisan to include the same in an amount within the scope of the claimed range, absent criticality for the claimed range. A teaching contained in a reference’s broader disclosure may be relied upon despite not appearing in the reference’s examples. Disclosed examples and preferred embodiments do not constitute a teaching away from a broader disclosure or nonpreferred embodiments. In re Susi, 440 F.2d 442, 169 USPQ 423 (CCPA 1971). A reference may be relied upon for all that it would have reasonably suggested to one having ordinary skill the art, including nonpreferred embodiments. Merck & Co. v. Biocraft Laboratories, 874 F.2d 804, 10 USPQ2d 1843 (Fed. Cir.), cert. denied, 493 U.S. 975 (1989). See MPEP 2123.
Although Iwabuchi is silent on the claimed elongation at break, Iwabuchi’s cured product may be formed from a composition comprising the same cyclic olefin monomers in amounts as claimed, using the same catalyst and by the same polymerization method. Thus, a skilled artisan would reasonably expect cured products of overlapping scope to have the claimed elongation at break, absent evidence to the contrary. As a practical matter, the Patent Office is not equipped to manufacture products by the myriad of processes put before it and then obtain prior art products and make physical comparisons. In re Brown, 459 F.2d 531, 535, 173 USPQ 685, 688 (CCPA 1972).
Regarding claims 3 and 4, Iwabuchi teaches 1,5-cyclooctadiene, cyclooctene and cyclohexene as suitable monocyclic olefin monomers [0022].
Regarding claim 5, Iwabuchi teaches fillers for improving physical properties [0063].
Regarding claim 7, noting that it is a product-by-process claim, although Iwabuchi is silent on the method of forming the composition, Iwaguchi teaches a number additives, e.g. plasticizer, for use in the polymerizable composition [0061]. It would have been within the level of ordinary skill in the art to prepare a liquid formulation comprising one or more (liquid) additives and the metathesis catalyst, for mixing in quantitatively with a formulation comprising (liquid) monomers as and when required, so as to prevent premature polymerization. As such, product-by-process claims are not limited to the manipulations of the recited steps, only to the structure implied by the steps. If the product in a product-by-process claim is the same as or obvious from a product of the prior art, the claim is unpatentable even though the product was made by a different process. See MPEP 2113(I).
Response to Arguments
In view of the amendment dated 1/7/26, the rejections set forth in the office action dated 10/26/25 are withdrawn and new grounds of rejections are presented herein above, relying on the art of record. Applicant’s arguments with respect to the claim rejections and applied art have been duly considered.
Applicant argues that Iwabuchi teaches the content of monocyclic olefin monomers in cyclic olefin monomers is preferably 40 mass% or less, and suggests the opposite of amended claim 1 regarding the content of monocyclic olefin monomers. Applicant concludes that Iwabuchi does not teach the content of monocyclic olefin monomers of 50 to 99 mass%.
In response, it is noted that Iwabuchi teaches the following:
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Iwabuchi teaches a upper limit of, preferably, 40% my mass or less, i.e., as a preferred embodiment. As stated in the rejection above, a reference may be relied upon for all that it would have reasonably suggested to one having ordinary skill the art, including nonpreferred embodiments. In addition, the phrase “too large” implies an excessively large amount whereas the claimed lower limit of 50 mass% is close to the preferred upper limit. Moreover, the teaching that the heat resistance of the film “may be insufficient” implies only a possibility. Thus, Examiner maintains that Iwabuchi obviates the claimed cured product, absent evidence of criticality for the claimed ranges.
Conclusion
Any inquiry concerning this communication or earlier communications from the
examiner should be directed to Satya Sastri at (571) 272 1112. The examiner can be reached Monday-Friday, 9AM-5.30PM (EST). If attempts to reach the examiner by telephone
are unsuccessful, the examiner's supervisor, Mr. Robert Jones can be reached at (571)-270-
7733. The fax phone number for the organization where this application or proceeding is
assigned is (571) 273 8300.
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/Satya B Sastri/
Primary Examiner, Art Unit 1762