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 .
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.
Priority
3. This application is a 371 of PCT/JP2021/028643 08/02/2021.
Acknowledgment is made of applicant’s claim for foreign priority under 35 U.S.C. 119 (a)-(d). The certified copy has been filed in parent JAPAN 2020-168496 10/05/2020
JAPAN 2020-168494 10/05/2020 filed on 03/14/23.
Information Disclosure Statement
The information disclosure statement (IDS), filed on 03/27/23, 03/27/24, 10/10/24 have been considered. Please refer to Applicant's copy of the 1449 submitted herewith.
Election/Restrictions
Applicant’s election of claims 1-9 and species: a mixture of a urethane oligomer having a (meth)acrylamide group at one end of a urethane bond and a urethane oligomer having (meth)acrylamide groups at both ends of a urethane bond in the reply filed on 03/20/26 is acknowledged. Because applicant did not distinctly and specifically point out the supposed errors in the restriction requirement, the election has been treated as an election without traverse (MPEP § 818.01(a)).
Claims 1-11 are pending. Claims 10-11 are directed to a non-elected invention and claims 3-4 are directed to a non-elected species. Accordingly, claims 3-4, 10-11 are withdrawn from further consideration by the examiner, 37 C.F.R. §1.142(b), as being drawn to a non-elected invention/species. Claims 1-2, 5-9 are examined in this Office action.
Claim Rejections - 35 USC § 102
The following is a quotation of the appropriate paragraphs of 35 U.S.C. 102 that form the basis for the rejections under this section made in this Office action:
A person shall be entitled to a patent unless –
(a)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention.
Claims 1-2, 5, 7-9 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Bishop (US 4844604).
Regarding claims 1-2, Bishop discloses a resin composition for coating of an optical fiber (column 1, lines 7-10), wherein the resin composition comprising: a photopolymerizable compound including a urethane (meth)acrylamide; and a photopolymerization initiator, wherein the urethane (meth)acrylamide includes a urethane oligomer having a (meth)acrylamide group at one end of a urethane bond, a urethane oligomer having (meth)acrylamide groups at both ends of a urethane bond, or a mixture of the urethane oligomers (column 2, lines 25-44, column 4, lines 49-68, column 5, lines 30-, column 7, lines -35), meeting the requirements of claims 1-2.
Regarding claim 5, Bishop discloses the content of urethane (meth)acrylamide is 20 to 85 wt% (column 7, lines 35-39), fall into claimed range of 10 parts by mass to 90 parts by mass based on 100 parts by mass of a total amount of the resin composition.
Regarding claim 7, Bishop discloses (meth)acrylic acid ester such as 2-hydroxyethyl (meth)acrylate or 2-hydroxypropyl (meth)acrylate (column 3, lines 30-32).
Regarding claim 8, Bishop discloses N-vinyl compound such as N-vinylpyrrolidone or N-vinylcaprolactam (column 3, lines 38-39).
Regarding claim 9, Bishop discloses (meth)acrylamide (column 39-40).
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.
The factual inquiries for establishing a background for determining obviousness under 35 U.S.C. 103 are summarized as follows:
1. Determining the scope and contents of the prior art.
2. Ascertaining the differences between the prior art and the claims at issue.
3. Resolving the level of ordinary skill in the pertinent art.
4. Considering objective evidence present in the application indicating obviousness or nonobviousness.
Claim 6 is rejected under 35 U.S.C. 103 as being unpatentable over Bishop as applied to claim 1 above.
Bishop includes the features of claim 1 above.
Regarding claim 6, Bishop discloses the number average molecular weight of 1,000 to 10,000 (column 3, lines 25-28), overlapping at end point the claimed range of 10,000 to 37,000.
The examiner takes note of the fact that the prior art range of number average molecular weight of 1,000 to 10,000 overlaps the claimed range of 10,000 to 37,000 at an end point. Absent any additional and more specific information in the prior art, a prima facie case of obviousness exists. In re Peterson, 315 F.3d 1325, 1330, 65 USPQ2d 1379 (Fed. Cir. 2003). MPEP 2144.05.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to KUMAR R BHUSHAN whose telephone number is (313)446-4807. The examiner can normally be reached 9.00 AM to 5.50 PM (EST).
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, RANDY P GULAKOWSKI can be reached at (571)272-1302. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/KUMAR R BHUSHAN/Primary Examiner, Art Unit 1766
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