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 .
DETAILED ACTION
EXAMINER’S COMMENT
Insertion of continuing data of PCT and Japanese Foreign Priority documents at beginning of the specification is suggested.
Claim Rejections - 35 USC § 102 and 35 USC § 103
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.
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, 4, 5, 6, 8, 9, 12, 15 and 16 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by WO 2007023669 A1 (March 1, 2007) with Machine translation.
Machine translated WO teaches curable compositions comprising a graft copolymer in abstract. Machine translated WO teaches that the graft copolymer is obtained from polymerized from a mixture of reactants comprising 49 parts by mass of double-ended macromer (2-1), 9.60 parts by mass of methyl methacrylate, 3.68 parts of butyl acrylate, 2.10 parts by mass of Ɣ-methacryloxypropyltrimethoxysilane, 8.40 parts by mass of Ɣ-mercaptopropyltrimethoxysilane and a mixture of reactants comprising 91 parts by mass of the macromonomer (2-1), 6.65 parts by maa of Ɣ-methyacrloxypropinoretrimmethoxysilane and 29-40 parts of Ɣ-mercaptopropyltrimethoxysilane in [0041-0042] of page 10.
The methyl methacrylate and butyl acrylate would meet the recited (meth)acrylic ester (b1).
The double-ended macromer (2-1) would meet the recited (met)acrylic ester polymer (b2).
The Ɣ-mercaptopropyltrimethoxysilane would meet the recited chain transfer agent (b3).
The Ɣ-methacryloxypropyltrimethoxysilane would meet the recited monomer (b4).
Thus claims 1, 9, 12, 15 and 16 would lack novelty.
Regarding claim 4, Machine translated WO teaches a number average molecular of 16,100 in the [0041].
Regarding claim 5, Machine translated WO teaches a weight average molecular of 1,490 in the [0042].
Regarding claim 6, although Machine translated WO does not specify a (poly)dispersity in [0040] and [0042], the graft copolymer is known to be highly branched inherently and thus the graft copolymer taught in [0040] and [0042] would be expected to have the recited (poly)dispersity.
Since PTO does not have equipment to conduct the test, it is fair to require applicant to shoulder the burden of proving that his material differs from those of ?????. See In re Best, 195 USPQ 430, 433 (CCPA 1977). Charles Pfizer & Co. v. FTC, 401 F.2d 574, 579 (6th Cir. 1968). Inherent anticipation does not require that a person of ordinary skill in the art would have recognized the inherent disclosure, Schering Corp. v. Geneva Pharms., Inc., 339 F.3d 1373 (Fed. Cir. 2002). See MPEP 2112.01.
Regarding claim 8, Machine translated WO teaches same polymerizable components claimed as discussed above and thus claim 8 would lack novelty.
Claims 1-12, 15 and 16 are rejected under 35 U.S.C. 103 as being unpatentable over WO 2007023669 A1 (March 1, 2007) with Machine translation.
Regarding claims 2, 3, 7, 10 and 11, when patentability is predicated upon a change in a condition of a prior art composition, such as a change in concentration or in temperature, or both, the burden is on Applicant to establish with objective evidence that the change is critical, i.e., it leads to a new unexpected result. It is not inventive to discover the optimum or workable ranges by routine experimentation when the general conditions of a claim are disclosed in the prior art. See In re Woodruff, 919 F.2d 1575, 1578 (Fed. Cir. 1990); In re Aller, 220 F.2d 454, 456 (CCPA 1955). MPEP 2144.05.
Machine translated WO teaches a fast curing speed and an excellent adhesive property in [0008] and the result after curing for 1 hour in [0046] (see table 1 of WO). Thus, modifications to amounts of polymerizable components in order to adjust/improve the curing speed would have been obvious.
Claims 13 and 14 are rejected under 35 U.S.C. 103 as being unpatentable over WO 2007023669 A1 (March 1, 2007) with Machine translation as applied to claims 1-12, 15 and 16 above, and further in view of Harumashi et al. (US 9.969,843).
Regarding an additional polyoxyalkylene polymer (A) of claims 13 and 14,
Harumashi et al. teach utilization of the instant polyoxyalkylene polymer in a curable composition claims 1-9.
Thus, it would have been obvious to one skilled in the art before the effective filing date of invention further to utilize the polyoxyalkylene polymer taught by in DE since Harumashi et al. teach utilization of the instant polyoxyalkylene polymer in a curable composition absent showing otherwise.
Selection of a known material based on its suitability for its intended use is prima facie obvious, see Sinclair & Carroll Co. v. Interchemical Corp., 325 US 327, 65 USPQ 297 (1945). MPEP 2144.07.
The combination of familiar elements according to known methods is likely to be obvious when it does no more than yield predictable results. KSR Co. v. Teleflex Inc., 550 U.S. 398, 416 (2007). MPEP 2141.
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 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); 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 nonstatutory double patenting provided the reference application or patent either is shown to be commonly owned with the examined application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. See MPEP § 717.02 for applications subject to examination under the first inventor to file provisions of the AIA as explained in MPEP § 2159. See MPEP § 2146 et seq. for applications not subject to examination under the first inventor to file provisions of the AIA . A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
The filing of a terminal disclaimer by itself is not a complete reply to a nonstatutory double patenting (NSDP) rejection. A complete reply requires that the terminal disclaimer be accompanied by a reply requesting reconsideration of the prior Office action. Even where the NSDP rejection is provisional the reply must be complete. See MPEP § 804, subsection I.B.1. For a reply to a non-final Office action, see 37 CFR 1.111(a). For a reply to final Office action, see 37 CFR 1.113(c). A request for reconsideration while not provided for in 37 CFR 1.113(c) may be filed after final for consideration. See MPEP §§ 706.07(e) and 714.13.
The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The actual filing date of the application in which the form is filed determines what form (e.g., PTO/SB/25, PTO/SB/26, PTO/AIA /25, or PTO/AIA /26) should be used. A web-based eTerminal Disclaimer may be filled out completely online using web-screens. An eTerminal Disclaimer that meets all requirements is auto-processed and approved immediately upon submission. For more information about eTerminal Disclaimers, refer to www.uspto.gov/patents/apply/applying-online/eterminal-disclaimer.
Claims 1-13 and 15-16 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-17 of copending Application No. 18/373,075 (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other because the instantly recited (meth)acrylic ester polymer (b2) having more than one (meth)acryloyl groups per molecule and having a number-average molecular weight of 500 to 50,000 of claims 1 and 4 would encompass a polyoxyalkylene polymer (a2) having more than one (meth)acryloyl groups per molecule and having a number-average molecular weight of 500 or more of the copending Application and because the recited molar ratio in claim 1 of the copending Application is recited in the instant claim 7. Other matching claims would be self-explanatory.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
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/TAE H YOON/Primary Examiner, Art Unit 1762
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