DETAILED ACTION
Notice of Pre-AIA or AIA Status
1. The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
Response to Amendment
2. The amendment filed by Applicant on December 19, 2025 has been fully considered. In light of the amendment, all previous rejections are maintained for the reasons set forth in “Response to Arguments” section below. The new grounds of rejections of the newly added claim 21 are set forth below. Thus, the following action is properly made final.
Election/Restrictions
3. Applicant's election with traverse of Group I, claims 1-13 in the reply filed on December 19, 2025 is acknowledged. The traversal is on the ground(s) that the Requirement does not provide the unity-of-invention analysis and there is no articulation of how examining the claims together would create a search or examination burden This is not found persuasive because 1) the unity-of-invention analysis is provided on pages 4-9 of an Office action mailed on October 8, 2025 and is incorporated here by reference; 2) the search and examination burden analysis is not required for restrictions based on unity of invention under PCT Rule 13.1 for applications filed under 35 USC 371.
The requirement is still deemed proper and is therefore made FINAL.
Claims 14-20 are withdrawn from further consideration pursuant to 37 CFR 1.142(b), as being drawn to nonelected inventions, there being no allowable generic or linking claim. Applicant timely traversed the restriction (election) requirement in the reply filed on December 19, 2025.
Claim Rejections - 35 USC § 112
The following is a quotation of 35 U.S.C. 112(b):
(b) CONCLUSION.—The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the inventor or a joint inventor regards as the invention.
The following is a quotation of 35 U.S.C. 112 (pre-AIA ), second paragraph:
The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.
4. Claim 21 is rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor (or for applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention.
5. Claim 21, which is dependent on claim 1, refers to “liquid composition Y” and “liquid composition X”, but there are no prepositions “the” or “said” in front of those terms. Therefore, it is not if “liquid composition Y” and “liquid composition X” of instant claim 21 are the same or difference from those cited in claim 1.
Further, there is a lack of antecedent basis for a limitation of “diffusion of liquid composition X into a porous substrate”, since claim 1 is silent with respect to any substrate, including a porous substrate, and a possible diffusion of liquid composition X into any substrate.
The following is a quotation of the first paragraph of 35 U.S.C. 112(a):
(a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
The following is a quotation of the first paragraph of pre-AIA 35 U.S.C. 112:
The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention.
6. Claim 21 is rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the written description requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for applications subject to pre-AIA 35 U.S.C. 112, the inventor(s), at the time the application was filed, had possession of the claimed invention.
Thus, the newly added claim 21 recites the limitation of:
“…wherein liquid composition Y and liquid composition X form a porous resin when brought into contact…”. However, instant specification does not provide a support for that limitation. Instant specification in paragraph [0033] recites that the porous resin is formed from the liquid composition X only, wherein liquid composition Y only suppresses diffusion of liquid composition Y into a substrate, but does not participate in forming the porous resin.
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.
7. Claims 1-12, 21 are rejected under 35 U.S.C. 103 as being unpatentable over Ohkimoto et al (US 2019/0288259) in view of Katano et al (US 2014/0340443), as evidenced by Takauji et al (JP2020-084096, based on machine translation, submitted in IDS on 04/09/25) and Hansen Solubility Parameters, Accu Dyne Test flyer.
In certain circumstances, references cited to show a universal fact need not be available as prior art before applicant’s filing date. In re Wilson, 311 F.2d 266, 135 USPQ 442 (CCPA 1962). Such facts include the characteristics and properties of a material or a scientific truism. See MPEP § 2124.
8. The rejection is adequately set forth on pages 10-18 of an Office action mailed on
October 8, 2025 and is incorporated here by reference.
9. With respect to newly added claim 21, since the composition C) of Ohkimoto et al in view of Katano et al is essentially or substantially the same as the liquid composition set claimed in instant invention, i.e. comprising the same tricyclodecane dimethanol diacrylate as polymerizable compound X as claimed and exemplified in instant invention, the same ethylene glycol monobutyl ether as the solvent X claimed and exemplified in instant invention, and ethanol or 1,3-butanediol as the solvent Y claimed and exemplified in instant invention, therefore, the composition C) of Ohkimoto et al in view of Katano et al will intrinsically and necessarily comprise the same properties as claimed in instant invention, or the properties having values in the ranges overlapping with those as claimed in instant invention, including, at least partially forming a porous resin by contacting the composition X and the solvent Y (especially since ethylene glycol monobutyl ether as the solvent X is specifically cited by Ohkimoto et al as being acting as a porogen and tricyclodecane dimethanol diacrylate is a polymerizable compound), with the solvent Y at least partially suppressing diffusion of the composition X into a porous substrate if applied to said porous substrate as well (especially since ethanol or 1,3-butanediol, i.e. corresponding to solvent Y, are specifically cited by Katano et al to increase viscosity, thereby suppressing occurrence of bleeding ([0029] of Katano et al), i.e. spreading the composition around and, as would be reasonably expected, inside the substrate as well. Where the claimed and prior art products are identical or substantially identical in structure or composition, or are produced by identical or substantially identical processes, a prima facie case of either anticipation or obviousness has been established. In re Best, 562 F.2d 1252, 1255, 195 USPQ 430, 433 (CCPA 1977). MPEP 2112.01(I). Since PTO cannot conduct experiments the proof of burden is shifted to the applicants to establish an unobviousness difference, see In re Best, 562 F.2d 1252, 195 USPQ 430 (CCPA 1977). See MPEP § 2112.01.
10. Claims 1-13, 21 are rejected under 35 U.S.C. 103 as being unpatentable over Ohkimoto et al (US 2019/0288259) in view of Katano et al (US 2014/0340443), as evidenced by Takauji et al (JP2020-084096, based on machine translation, submitted in IDS on 04/09/25) and Hansen Solubility Parameters, Accu Dyne Test flyer, in further view of Peled et al (US 2019/0006122).
In certain circumstances, references cited to show a universal fact need not be available as prior art before applicant’s filing date. In re Wilson, 311 F.2d 266, 135 USPQ 442 (CCPA 1962). Such facts include the characteristics and properties of a material or a scientific truism. See MPEP § 2124.
11. The rejection is adequately set forth on pages 18-20 of an Office action mailed on
October 8, 2025 and is incorporated here by reference.
12. With respect to newly added claim 21, since the composition C) of Ohkimoto et al in view of Katano et al and Peled et al is essentially or substantially the same as the liquid composition set claimed in instant invention, i.e. comprising the same tricyclodecane dimethanol diacrylate as polymerizable compound X as claimed and exemplified in instant invention, the same ethylene glycol monobutyl ether as the solvent X claimed and exemplified in instant invention, and ethanol or 1,3-butanediol as the solvent Y claimed and exemplified in instant invention, therefore, the composition C) of Ohkimoto et al in view of Katano et al and Peled et al will intrinsically and necessarily comprise the same properties as claimed in instant invention, or the properties having values in the ranges overlapping with those as claimed in instant invention, including, at least partially forming a porous resin by contacting the composition X and the solvent Y (especially since ethylene glycol monobutyl ether as the solvent X is specifically cited by Ohkimoto et al as being acting as a porogen and tricyclodecane dimethanol diacrylate is a polymerizable compound), with the solvent Y at least partially suppressing diffusion of the composition X into a porous substrate if applied to said porous substrate as well (especially since ethanol or 1,3-butanediol, i.e. corresponding to solvent Y, are specifically cited by Katano et al to increase viscosity, thereby suppressing occurrence of bleeding ([0029] of Katano et al), i.e. spreading the composition around and, as would be reasonably expected, inside the substrate as well. Where the claimed and prior art products are identical or substantially identical in structure or composition, or are produced by identical or substantially identical processes, a prima facie case of either anticipation or obviousness has been established. In re Best, 562 F.2d 1252, 1255, 195 USPQ 430, 433 (CCPA 1977). MPEP 2112.01(I). Since PTO cannot conduct experiments the proof of burden is shifted to the applicants to establish an unobviousness difference, see In re Best, 562 F.2d 1252, 195 USPQ 430 (CCPA 1977). See MPEP § 2112.01.
13. Claims 1-12, 21 are rejected under 35 U.S.C. 103 as being unpatentable over Katano et al (US 2014/0340443) in view of Ohkimoto et al (US 2019/0288259), as evidenced by Takauji et al (JP2020-084096, based on machine translation, submitted in IDS on 04/09/25) and Hansen Solubility Parameters, Accu Dyne Test flyer.
In certain circumstances, references cited to show a universal fact need not be available as prior art before applicant’s filing date. In re Wilson, 311 F.2d 266, 135 USPQ 442 (CCPA 1962). Such facts include the characteristics and properties of a material or a scientific truism. See MPEP § 2124.
14. The rejection is adequately set forth on pages 20-28 of an Office action mailed on
October 8, 2025 and is incorporated here by reference.
15. With respect to newly added claim 21, since the composition D) of Katano et al in view of Ohkimoto et al is essentially or substantially the same as the liquid composition set claimed in instant invention, i.e. comprising the same tricyclodecane dimethanol diacrylate as polymerizable compound X as claimed and exemplified in instant invention, the same ethylene glycol monobutyl ether as the solvent X claimed and exemplified in instant invention, and ethanol or 1,3-butanediol as the solvent Y claimed and exemplified in instant invention, therefore, the composition D) of Katano et al in view of Ohkimoto et al will intrinsically and necessarily comprise the same properties as claimed in instant invention, or the properties having values in the ranges overlapping with those as claimed in instant invention, including, at least partially forming a porous resin by contacting the composition X and the solvent Y (especially since ethylene glycol monobutyl ether as the solvent X is specifically cited by Ohkimoto et al as being acting as a porogen and tricyclodecane dimethanol diacrylate is a polymerizable compound), with the solvent Y at least partially suppressing diffusion of the composition X into a porous substrate if applied to said porous substrate as well (especially since ethanol or 1,3-butanediol, i.e. corresponding to solvent Y, are specifically cited by Katano et al to increase viscosity, thereby suppressing occurrence of bleeding ([0029] of Katano et al), i.e. spreading the composition around and, as would be reasonably expected, inside the substrate as well. Where the claimed and prior art products are identical or substantially identical in structure or composition, or are produced by identical or substantially identical processes, a prima facie case of either anticipation or obviousness has been established. In re Best, 562 F.2d 1252, 1255, 195 USPQ 430, 433 (CCPA 1977). MPEP 2112.01(I). Since PTO cannot conduct experiments the proof of burden is shifted to the applicants to establish an unobviousness difference, see In re Best, 562 F.2d 1252, 195 USPQ 430 (CCPA 1977). See MPEP § 2112.01.
16. Claims 1-13, 21 are rejected under 35 U.S.C. 103 as being unpatentable over Katano et al (US 2014/0340443) in view of Ohkimoto et al (US 2019/0288259), as evidenced by Takauji et al (JP2020-084096, based on machine translation, submitted in IDS on 04/09/25) and Hansen Solubility Parameters, Accu Dyne Test flyer, in further view of Peled et al (US 2019/0006122).
In certain circumstances, references cited to show a universal fact need not be available as prior art before applicant’s filing date. In re Wilson, 311 F.2d 266, 135 USPQ 442 (CCPA 1962). Such facts include the characteristics and properties of a material or a scientific truism. See MPEP § 2124.
17. The rejection is adequately set forth on pages 28-30 of an Office action mailed on
October 8, 2025 and is incorporated here by reference.
18. With respect to newly added claim 21, since the composition D) of Katano et al in view of Ohkimoto et al and Peled et al is essentially or substantially the same as the liquid composition set claimed in instant invention, i.e. comprising the same tricyclodecane dimethanol diacrylate as polymerizable compound X as claimed and exemplified in instant invention, the same ethylene glycol monobutyl ether as the solvent X claimed and exemplified in instant invention, and ethanol or 1,3-butanediol as the solvent Y claimed and exemplified in instant invention, therefore, the composition D) of Katano et al in view of Ohkimoto et al and Peled et al will intrinsically and necessarily comprise the same properties as claimed in instant invention, or the properties having values in the ranges overlapping with those as claimed in instant invention, including, at least partially forming a porous resin by contacting the composition X and the solvent Y (especially since ethylene glycol monobutyl ether as the solvent X is specifically cited by Ohkimoto et al as being acting as a porogen and tricyclodecane dimethanol diacrylate is a polymerizable compound), with the solvent Y at least partially suppressing diffusion of the composition X into a porous substrate if applied to said porous substrate as well (especially since ethanol or 1,3-butanediol, i.e. corresponding to solvent Y, are specifically cited by Katano et al to increase viscosity, thereby suppressing occurrence of bleeding ([0029] of Katano et al), i.e. spreading the composition around and, as would be reasonably expected, inside the substrate as well. Where the claimed and prior art products are identical or substantially identical in structure or composition, or are produced by identical or substantially identical processes, a prima facie case of either anticipation or obviousness has been established. In re Best, 562 F.2d 1252, 1255, 195 USPQ 430, 433 (CCPA 1977). MPEP 2112.01(I). Since PTO cannot conduct experiments the proof of burden is shifted to the applicants to establish an unobviousness difference, see In re Best, 562 F.2d 1252, 195 USPQ 430 (CCPA 1977). See MPEP § 2112.01.
Double Patenting
The nonstatutory double patenting rejection is based on a judicially created doctrine grounded in public policy (a policy reflected in the statute) so as to prevent the unjustified or improper timewise extension of the “right to exclude” granted by a patent and to prevent possible harassment by multiple assignees. A nonstatutory obviousness-type double patenting rejection is appropriate where the conflicting claims are not identical, but at least one examined application claim is not patentably distinct from the reference claim(s) because the examined application claim is either anticipated by, or would have been obvious over, the reference claim(s). See, e.g., In re Berg, 140 F.3d 1428, 46 USPQ2d 1226 (Fed. Cir. 1998); In re Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993); In re Longi, 759 F.2d 887, 225 USPQ 645 (Fed. Cir. 1985); In re Van Ornum, 686 F.2d 937, 214 USPQ 761 (CCPA 1982); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); and In re Thorington, 418 F.2d 528, 163 USPQ 644 (CCPA 1969).
A timely filed terminal disclaimer in compliance with 37 CFR 1.321(c) or 1.321(d) may be used to overcome an actual or provisional rejection based on a nonstatutory double patenting ground provided the conflicting application or patent either is shown to be commonly owned with this application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement.
Effective January 1, 1994, a registered attorney or agent of record may sign a terminal disclaimer. A terminal disclaimer signed by the assignee must fully comply with 37 CFR 3.73(b).
19. Claims 1-13, 21 are provisionally rejected on the ground of nonstatutory obviousness-type double patenting as being unpatentable over claims 1-17 of a application 17/454,065 (now issued as US 12,509,567).
20. The rejection is adequately set forth on pages 30-32 of an Office action mailed on October 8, 2025 and is incorporated here by reference.
21. As to newly added claim 21, since the composition of the application 17/454,065 (now issued as US 12,509,567) is essentially or substantially the same as the liquid composition set claimed in instant invention, therefore, the composition the application 17/454,065 (now issued as US 12,509,567) will intrinsically and necessarily comprise the same properties as claimed in instant invention, or the properties having values in the ranges overlapping with those as claimed in instant invention, including, at least partially forming a porous resin by contacting the solvent X and the solvent Y, with the solvent Y at least partially suppressing diffusion of the solvent X into a porous substrate if applied to said porous substrate as well. Where the claimed and prior art products are identical or substantially identical in structure or composition, or are produced by identical or substantially identical processes, a prima facie case of either anticipation or obviousness has been established. In re Best, 562 F.2d 1252, 1255, 195 USPQ 430, 433 (CCPA 1977). MPEP 2112.01(I). Since PTO cannot conduct experiments the proof of burden is shifted to the applicants to establish an unobviousness difference, see In re Best, 562 F.2d 1252, 195 USPQ 430 (CCPA 1977). See MPEP § 2112.01.
Response to Arguments
22. Applicant's arguments filed on December 19, 2025 have been fully considered.
23. With respect to Applicant’s arguments regarding the rejections of Claims 1-12 under 35 U.S.C. 103 as being unpatentable over Ohkimoto et al (US 2019/0288259) in view of Katano et al (US 2014/0340443), as evidenced by Takauji et al (JP2020-084096, based on machine translation, submitted in IDS on 04/09/25) and Hansen Solubility Parameters, Accu Dyne Test flyer; Claims 1-13 under 35 U.S.C. 103 as being unpatentable over Ohkimoto et al (US 2019/0288259) in view of Katano et al (US 2014/0340443), as evidenced by Takauji et al (JP2020-084096, based on machine translation, submitted in IDS on 04/09/25) and Hansen Solubility Parameters, Accu Dyne Test flyer, in further view of Peled et al (US 2019/0006122); Claims 1-12 under 35 U.S.C. 103 as being unpatentable over Katano et al (US 2014/0340443) in view of Ohkimoto et al (US 2019/0288259), as evidenced by Takauji et al (JP2020-084096, based on machine translation, submitted in IDS on 04/09/25) and Hansen Solubility Parameters, Accu Dyne Test flyer and Claims 1-13 under 35 U.S.C. 103 as being unpatentable over Katano et al (US 2014/0340443) in view of Ohkimoto et al (US 2019/0288259), as evidenced by Takauji et al (JP2020-084096, based on machine translation, submitted in IDS on 04/09/25) and Hansen Solubility Parameters, Accu Dyne Test flyer, in further view of Peled et al (US 2019/0006122), it is noted that:
1) The above rejections are based on the combination of references. One cannot show nonobviousness by attacking references individually where the rejections are based on combinations of references. In re Keller, 642 F.2d 413, 208 USPQ 871 (CCPA 1981); In re Merck & Co., Inc., 800 F.2d 1091, 231 USPQ 375 (Fed. Cir. 1986).
2) Ohkimoto et al discloses a composition C) comprising ([0082]-[0084]):
A) a coating liquid for manufacturing a porous insulator (as to instant claim 1), wherein the liquid comprises a polymerizable compound (corresponding to a polymerizable compound X of instant claim 1) and a liquid substance capable of dissolving the polymerizable compound and acting as a porogen (corresponding to a solvent X of instant claim 1), wherein the coating liquid A) is cited as being coated on an electrode substrate by various printing methods including inkjet printing ([0090]).
3) Though Ohkimoto et al does not teach the use of an additional liquid/solvent B) as part of the composition, wherein the liquid B) being deposited on the substrate before the coating liquid A), the secondary reference of Katano et al was applied for the teachings of that. Katano et al is a secondary reference which was applied for the specific teachings. Secondary reference does not need to teach all limitations. “It is not necessary to be able to bodily incorporate the secondary reference into the primary reference in order to make the combination.” In re Nievelt, 179 USPQ 224 (CCPA 1973).
4) Katano et al discloses a combination of two solvent/liquid compositions (component D) for application of those on a substrate using an inkjet method, comprising: i) the first solvent which is applied first on the substrate and
ii) an ink-jet composition comprising a second solvent and a resin, to be attached to the first solvent applied on the substrate (Abstract, [0007], [0029], Fig. 6, 8),
wherein after application of the ink-jet composition ii) onto the first solvent i) deposited on the substrate, the second solvent of the ink-jet composition ii) diffuses into the first solvent i), the first solvent and the second solvent are admixed to produce an ink-jet composition with an increased viscosity, thereby suppressing occurrence of bleeding ([0029]).
Thus, the secondary reference of Katano et al was applied for the teachings of the use of a different “first” solvent deposited onto the substrate before adding the ink-jet composition to suppress the occurrence of bleeding and thus diffusion/spreading of the deposited ink-jet composition over the substrate.
5) It is noted that both Katano et al and Ohkimoto et al, and further instant specification, recite ink-jet printing as the method for depositing compositions on substrate (see [0090] of Ohkimoto et al, Abstract of Katano et al and [0065] of instant specification). The original claim 20 of instant invention recites the composition being deposited using ink-jet method. Thus, ink-jet printing is the technique known in the art as a method for depositing coating compositions on substates, and not only as an image producing method. It is further noted that, as evidenced by Takauji et al, the composition comprising a polymerizable compound and a solvent, is also referred to as “ink” in the process of ink-jet printing (see [0028]-[0029] of Takauji et al).
6) In response to Applicant’s argument that there is no teaching, suggestion, or motivation to combine the references, the examiner recognizes that obviousness may be established by combining or modifying the teachings of the prior art to produce the claimed invention where there is some teaching, suggestion, or motivation to do so found either in the references themselves or in the knowledge generally available to one of ordinary skill in the art. See In re Fine, 837 F.2d 1071, 5 USPQ2d 1596 (Fed. Cir. 1988), In re Jones, 958 F.2d 347, 21 USPQ2d 1941 (Fed. Cir. 1992), and KSR International Co. v. Teleflex, Inc., 550 U.S. 398, 82 USPQ2d 1385 (2007).
7) Given the composition of Ohkimoto et al in view of Katano et al is essentially or substantially the same as the liquid composition set claimed in instant invention, i.e. comprising the same tricyclodecane dimethanol diacrylate as polymerizable compound X as claimed and exemplified in instant invention, the same ethylene glycol monobutyl ether as the solvent X claimed and exemplified in instant invention, and ethanol or 1,3-butanediol as the solvent Y claimed and exemplified in instant invention, therefore, upon applying both i) ethanol or 1,3-butanediol and ii) tricyclodecane dimethanol diacrylate/ ethylene glycol monobutyl ether polymerizable composition on the substrate, said components i) and ii) will intrinsically and necessarily, at least partially mix, and will intrinsically and necessarily comprise the same properties as claimed in instant invention, said mixture comprising 10%mass of tricyclodecane dimethanol diacrylate/ ethylene glycol monobutyl ether polymerizable composition and 90%mass of ethanol or 1,3-butanediol having light transmittance of 30% or more; the haze increasing rate of a haze measuring element made from said composition Z being at least 1%, and further a relative energy difference calculated from Formulae (1) and (2) of instant claims 3 and 4. Where the claimed and prior art products are identical or substantially identical in structure or composition, or are produced by identical or substantially identical processes, a prima facie case of either anticipation or obviousness has been established. In re Best, 562 F.2d 1252, 1255, 195 USPQ 430, 433 (CCPA 1977). MPEP 2112.01(I). Since PTO cannot conduct experiments the proof of burden is shifted to the applicants to establish an unobviousness difference, see In re Best, 562 F.2d 1252, 195 USPQ 430 (CCPA 1977). See MPEP § 2112.01.
8) It is further noted that instant claim 1 does not recite that the liquid composition X and the liquid composition Y are mixed. Rather, the limitation of:
“…wherein a liquid composition Z comprising 10.0% by mass of the liquid composition X and 90.0% by mass of the liquid composition Y, has a light transmittance of 30% or more at a wavelength of 550 nm, the light transmittance measured while the liquid composition Z is being stirred, and wherein a haze measuring element produced from the liquid composition Z has a haze increasing rate of 1.0% or more”
refers to properties of a specific liquid composition that comprises specifically 10.0% by mass of the liquid composition X and specifically 90.0% by mass of the liquid composition Y.
9) Since the set of Ohkimoto et al in view of Katano et al is essentially or substantially the same as the liquid composition set claimed in instant invention, i.e. comprising the same tricyclodecane dimethanol diacrylate as polymerizable compound X as claimed and exemplified in instant invention, the same ethylene glycol monobutyl ether as the solvent X claimed and exemplified in instant invention, and ethanol or 1,3-butanediol as the solvent Y claimed and exemplified in instant invention, therefore, said components will intrinsically and necessarily be, or would be reasonably expective to be compatible enough to show light transmittance of a specific composition comprising:
as low as 10%mass of the combination of tricyclodecane dimethanol diacrylate and ethylene glycol monobutyl ether and
as high as 90%mass of ethanol or 1,3-butanol (i.e. the specific composition having as high as 90%mass of pure ethanol solvent), as that claimed in instant invention, i.e.
said the light transmission as low as 30%.
Where the claimed and prior art products are identical or substantially identical in structure or composition, or are produced by identical or substantially identical processes, a prima facie case of either anticipation or obviousness has been established. In re Best, 562 F.2d 1252, 1255, 195 USPQ 430, 433 (CCPA 1977). MPEP 2112.01(I). Since PTO cannot conduct experiments the proof of burden is shifted to the applicants to establish an unobviousness difference, see In re Best, 562 F.2d 1252, 195 USPQ 430 (CCPA 1977). See MPEP § 2112.01.
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 IRINA KRYLOVA whose telephone number is (571)270-7349. The examiner can normally be reached 9am-5pm EST M-F.
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/IRINA KRYLOVA/Primary Examiner, Art Unit 1764