DETAILED ACTION
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 5/4/26, claims 1, 3-7 are currently pending in the application.
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 so as to maintain the heat resistance, 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 of 30 to 99% by wt., and said cured product having the claimed elongation at break at 23oC of 50% or more.
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 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 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.
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, Iwabuchi 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 5/4/26, the rejections set forth in the office action dated 10/26/25 are withdrawn, and modified 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.
Referring to the data in Table 1 of the disclosure, Applicant notes that Examples 1-10 which meet the claimed characteristics show good results, in contrast to Comp. Examples 1-4 which do not meet the claimed characteristics and show poor results.
In response, it is noted that the compositions of inventive Examples 1-10 show in Table 1 show an elongation at break (at normal temperature) of 50% or more, while those of Comparative examples 1-4 have lower values of elongation at break. Although Iwabuchi teaches in exemplified compositions comprising a mixture of dicyclopentadiene and tricyclopentadiene compounds, at 90:10 relative mass parts, the general disclosure is open to including a monocyclic olefin monomers at 40 wt.% or less, based on the total amount of the cyclo olefin monomer, wherein said upper limit does not negatively impact the heat resistance. Thus, a skilled artisan would have found it obvious to modify compositions of the disclosed examples comprising a mixture of dicyclopentadiene and tricyclopentadiene (90:10 mass ratio), by replacing up to 40 wt.% of the mixture with any of the disclosed monocyclic monomers, and reasonably the compositions of overlapping scope to having the claimed elongation at break, absent evidence to the contrary.
Applicant further argues that Iwabuchi teaches a content of monocycloolefin monomers in cyclic olefin monomers as preferably 40 mass or less, and this does not necessarily provide a cured product having the claimed elongation at break, and that Iwabuchi teaches the content of monocyclic olefin monomers as affecting the heat resistance but not the elongation at break, and that the results provided by the present invention are unexpected over Iwabuchi.
In response, claims are directed to a composition of matter, which is rendered obvious for reasons stated in the rejection of record and herein above. As for the claimed elongation at break, a skilled artisan would recognize the feature to be a natural result of the combination of prior art elements that fall within the scope of the claimed invention. Products of identical chemical compositions cannot have mutually exclusive properties. Where the claimed and prior art products are identical or substantially identical in structure or composition, a prima facie case of obviousness has been established. Inherency may meet a missing claim limitation when the limitation is the natural result of the combination of prior art elements. "[T]he discovery of a previously unappreciated property of a prior art composition, or of a scientific explanation for the prior art's functioning, does not render the old composition patentably new to the discoverer." Atlas Powder Co. V. IRECO Inc., 190 F.3d 1342, 1347, 51 USPQ2d 1943, 1947 (Fed. Cir. 1999). Thus, the claiming of a new use, new function or unknown property which is inherently present in the prior art does not necessarily make the claim patentable. In re Best, 562 F.2d 1252, 1254, 195 USPQ 430, 433 (CCPA 1977). See MPEP 2112.1 and 2112.01.
Even so, the data in Table 1 on asserted unexpected property would be limited to compositions comprising RIM monomer, comprising a mixture of dicyclopentadiene and tricyclopentadiene (90:10 mass ratio), and a monocylic olefin (1,5-cyclooctadiene or cyclohexene or cyclooctene), in an amount, at best ranging from 30-90 % by wt. of entire cycloolefin monomer. It is not clear why the limited data on such specific compositions would be reasonably representative of claim 1, that is open to any tricyclic compound and pentacyclic compound, at a mass ratio of 65:35 to 95:5, and to a content of monocyclic olefin over a broader range than that in Table 1.
In light of above, Examiner maintains that Iwabuchi obviates the claimed cured product, absent evidence of unexpected results that are reasonably commensurate in scope with the claimed invention.
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.
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
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