The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
DETAILED ACTION
Response to Amendment
The text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action.
The previous restriction and 103 rejections have been maintained and repeated.
Claim Rejections - 35 USC § 103
Claim(s) 1-6 and 8-10 is (are) rejected under 35 U.S.C. 103(a) as being unpatentable over Allen et al. (US 20110230580, listed on ISR and IDS) in view of Blilodeau et al. (US 6545064).
As to claims 1-4 and 8-9, Allen (abs., claims, examples) discloses a composition (353-359) for coatings (266) comprising a polyethylene carbonate diol (claims 95-107) having Mn of 400-20k, methacrylic monomers (multifunctional) at least 20 wt%, and a free-radical catalyst (implied). The composition may comprise vinyl monomers. The wt% of polyethylene carbonate diol would be ≤80%. The disclosed loadings of polyethylene carbonate diol and methacrylic monomers overlap with the claimed ranges of instant claims 8-9. It has been found that where claimed ranges overlap ranges disclosed by the prior art, a prima facie case of obviousness exists - see MPEP 2144.05.
Allen is silent on the claimed small onium salt and catalyst loading of claims 1, 5-6, and 10.
In the same area of endeavor of producing coating (1:6-10) comprising methacrylic monomers, Blilodeau (abs., claims, examples) discloses a composition comprising a 3-5 wt% thermal initiator (free radical catalyst, 6:35-40) of the total methacrylic/vinyl composition and a latent acid catalyst (8:5-30), such as onium salt (claims 7-9), that improves storage stability. The thermal curing at 65-200 °C of the methacrylic/vinyl composition via the free radical catalyst at such loading is well known in the art (12:10-17).
Therefore, as to claims 1-6 and 8-10, it would have been obvious to one of ordinary skill in the art to have modified the composition disclosed by Allen and added the onium salt as a co-catalyst and added a free radical catalyst at the loading in view of Blilodeau, because the resultant process would yield improved storage stability and the loading is well known to one of ordinary skill in the art. Since Allen’s methacrylic monomers is at least 20 wt%, and Blilodeau’s loading of free radical catalyst is 3-5 wt% of the total methacrylic/vinyl composition, one of ordinary skill in the art would obviously recognize the free radical catalyst loading by modifying Allens’ composition with Blilodeau’s loading would be ≥0.6 wt% by calculation, overlap with the claimed ranges of instant claim 10. It has been found that where claimed ranges overlap ranges disclosed by the prior art, a prima facie case of obviousness exists - see MPEP 2144.05.
Allen and Blilodeau are silent on the intended use of "investment casting” and “aids thermal decomposition…”of claim 1 and “photoacid generator” of claims 5-6. Case law holds that a recitation of the intended use of the claimed invention must result in a structural difference between the claimed invention and the prior art in order to patentably distinguish the claimed invention from the prior art. If the prior art structure is capable of performing the intended use, then it meets the claim. See MPEP 2111.02, In re Casey, 152 USPQ 235 (CCPA 1967) and In re Otto, 136 USPQ 458,459 (CCPA 1963). In this particular case, no compositional difference between the claimed and disclosed composition; no structural difference between the claimed and disclosed onium salt; and the disclosed composition and onium salt would be expected to be capable of performed the claimed intended uses.
Response to Arguments
The argument for allowance of amended claims has been fully considered but not persuasive.
Applicant's argument (pg.2) of unexpected results is unpersuasive and insufficient to defeat the rejection based on intended use rationale. Evidence of unexpected results must be factually supported by an appropriate affidavit of declaration. See MPEP § 716.01(c). Unexpected results must, in actuality, be unexpected. Unexpected results must be compared with the closest art, in this particular case, Allen. Unexpected results must be commensurate in scope with the claims. The applicant must show unexpected results over the entire claimed range to support unexpected results for the entire range and generic structures. Therefore, Applicant should compare several compositions containing claimed components of A, B, and C in amounts at several data points over the claimed range to several compositions containing the same claimed components of A, B, and C in amounts at several data points outside of the claimed range, including data points close to and far from the claimed range.
Applicant’s attack (pg.3-4) on Allen for not teaching the claimed intended use is unpersuasive. The examiner asserts a prima facie case of obviousness has been established, because Blilodeau and Allen teaches the claimed compositions. Applicant’s attack on Blilodeau and Allen (4:1) because of the alleged excessive thermal expansion appears merely argumentative. Since the PTO does not have proper means to conduct experiments, the burden of proof is now shifted to applicants to show otherwise. A case indicating that the burden of proof can be shifted to the applicant to show that the subject matter of the prior art does not possess the characteristic relied on whether the rejection is based on inherency under 35 U.S.C. 102 or obviousness under 35 U.S.C. 103. See MPEP § 2184. In re Fitzgerald, 619 F.2d 67, 205 USPQ 594 (CCPA 1980). The applicant provides no evidence showing combining Blilodeau and Allen would not yield a composition capable of performing the claimed intended uses.
Therefore, as to claims 1-6 and 8-10, it would have been obvious to one of ordinary skill in the art to have modified the composition disclosed by Allen and added the onium salt as a co-catalyst and added a free radical catalyst at the loading in view of Blilodeau, because the resultant process would yield improved storage stability and the loading is well known to one of ordinary skill in the art. Since Allen’s methacrylic monomers is at least 20 wt%, and Blilodeau’s loading of free radical catalyst is 3-5 wt% of the total methacrylic/vinyl composition, one of ordinary skill in the art would obviously recognize the free radical catalyst loading by modifying Allens’ composition with Blilodeau’s loading would be ≥0.6 wt% by calculation, overlap with the claimed ranges of instant claim 10.
Therefore, the previous restriction and 103 rejections have been maintained and repeated.
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 extension fee 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 date of this final action.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to SHANE FANG whose telephone number is (571)270-7378. The examiner can normally be reached on Mon-Thurs. 8am-6pm.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Randy Gulakowski can be reached on 571.572.1302. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/SHANE FANG/Primary Examiner, Art Unit 1766
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