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 .
Election/Restrictions
Applicant's election with traverse of Group I, claims 1-16 and 20, in the reply filed on 04 March 2026 is acknowledged. The traversal is on the ground(s) that the subject matter among the groups is not independent and distinct as required by statue. This is not found persuasive because the inventions are different classes of invention (e.g. composition, cured product, method) and have acquired a separate status in the art in view of their different classification, the inventions require a different field of search, and the prior art applicable to one invention would not likely be applicable to another invention. Applicants argue different classifications as recited by the USPTO are not independent adequate grounds for restriction since the USPTO has historically examined applications containing multiple sets of claims. While the Examiner does not comment on the validity of previously examined patent applications, it is not whether the application contains multiple sets of claims, but rather the claims are directed to independent and distinct inventions that make the application subject to restriction.
The requirement is still deemed proper and is therefore made FINAL.
Claims 17-19 are withdrawn from further consideration pursuant to 37 CFR 1.142(b), as being drawn to a nonelected invention, there being no allowable generic or linking claim. Applicant timely traversed the restriction (election) requirement in the reply filed on 04 March 2026.
Claim Rejections - 35 USC § 103
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.
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.
This application currently names joint inventors. In considering patentability of the claims the examiner presumes that the subject matter of the various claims was commonly owned as of the effective filing date of the claimed invention(s) absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and effective filing dates of each claim that was not commonly owned as of the effective filing date of the later invention in order for the examiner to consider the applicability of 35 U.S.C. 102(b)(2)(C) for any potential 35 U.S.C. 102(a)(2) prior art against the later invention.
Claim(s) 1-16 is/are rejected under 35 U.S.C. 103 as being unpatentable over Marques et al. (US Serial No. 2014/0361211).
Regarding claims 1, 3-13, 15, and 16; Marques et al. teaches an electrolyte solution composition comprising an ionic compound [0024], polymerizable monomers, such as trimethylolpropane triacrylate [0026], a photoinitiator [0031], and of a polar solvent such as acetonitrile [0033].
Wherein only trimethylolpropane triacrylate (bp at 1atm of at least 250°C) is employed in the electrolyte solution composition, it constitutes 100% w/w (at least 80 wt %) of the composition.
Marques et al. teaches the polar solvent (e.g. acetonitrile; bp at 1 atm of not greater than 200°C) is employe in an amount of 40-75% w/w of the solution [0034]. 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 In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990), see MPEP §2144.05. At the time of filing, a person of ordinary skill in the art would have found it obvious to employ the acetonitrile polar solvent in an amount of 40 wt%, as taught by Marques et al., and would have been motivated to do so since Marques et al. teaches employing the polar solvent in an amount as low as 40% w/w suitable for achieving the present invention. Cheng et al. teaches all of the above required components, however fails to explicitly disclose each in a preferred embodiment. A reference may be relied upon for all that it would have reasonably suggested to one having ordinary skill the art, including the non-preferred embodiments. See Merck & Co. v. Biocraft Laboratories, 874 F.2d 804, 10 USPQ2d 1843 (Fed. Cir.); MPEP §2123.
Marques et al. teaches the solution has a viscosity between 10 and 20 cPs (mPa·s) [0038].
Marques et al. does not explicitly disclose a vapor pressure of the evaporative diluent is at least five times grater than a vapor pressure of the at least one polymerizable monomer nor a difference in surface tension of the evaporative diluent to a surface tension of the photocurable composition is not greater than 5 mN/m. The Examiner takes the position that since the prior art teaches employing the same compounds in the same amounts (trimethylolpropane and acetonitrile), the claimed difference in vapor pressure and surface tension would be necessarily present in the invention of Marques et al. The courts have held that “a compound and all its properties are mutually inseparable”, In re Papesch, 315F.2d 381, 137 USPQ 42, 51 (CCPA 1963). Further, attention is drawn to MPEP 2112.01, which states that “products of identical chemical composition cannot have mutually exclusive properties. A chemical composition and its properties are inseparable. Therefore, if the prior art teaches the identical chemical structure, the properties applicant discloses and/or claims are necessarily present.”, In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990).
Regarding claim 2; Marques et al. does not explicitly teach a contact angle of the photocurable composition on the claimed substrate. The Office realizes that all the claimed effects or physical properties are not positively stated by the reference. However, the reference teaches all of the claimed reagents, claimed amounts, and substantially similar processes. Therefore, the claimed effects and physical properties, i.e. contact angle, would necessarily be present in a composition with all the claimed ingredients. If it is the applicants' position that this wouldn’t be the case: (1) evidence would need to be presented to support applicants' position; and (2) it would be the Offices' position that the application contains inadequate disclosure that there is no teaching as to how to obtain the claimed properties and effects with only the claimed ingredients, claimed amounts, and substantially similar processes. See In re Spada, MPEP §2112.01, I and II.
Regarding claim 14; Marques et al. teaches the solution includes polar solvents, not limited to alkylene carbonates (e.g. ethylene carbonate, propylene carbonate, butylene carbonate) and their mixtures, dimethyl carbonate, alkyl acetates (e.g., ethyl acetate), acetonitrile, tetrahydrofuran, 1,4-dioxane, and mixtures thereof [0033], in an amount of 40 to 75% w/w of the solution [0034]. Thus, in the instance a 40% w/w 1:1 mixture of ethylene carbonate and acetonitrile is employed in the present invention, acetonitrile would be present in an amount of 20 wt% (as calculated by Examiner). When faced with a mixture, one of ordinary skill in the art would be motivated to select a 1:1 ratio, absent evidence of unexpected or surprising results. Case law holds that "[h]aving established that this knowledge was in the art, the examiner could then properly rely... on a conclusion of obviousness, 'from common knowledge and common sense of the person of ordinary skill in the art within any specific hint or suggestion in a particular reference.'" In re Bozek, 416 F.2d 1385, 1390, 163 USPQ 545, 549 (CCPA 1969). Given the recitation of “and mixtures thereof” in Marques et al., one of ordinary skill in the art would at once envisage a 1:1 ratio, since a 1:1 ratio is the most common starting point when mixing two components.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
Kuta et al. (US Patent No. 4683171) teaches a composition comprising 1200 parts neopentyl glycol diacrylate, 60 parts benzophenone, 1800 parts acetonitrile, and 15 parts defoaming agent [Ex2]. Kuta et al. fails to teach the amount of the evaporative diluent to be 5 to 40 wt%, as required by the claims.
Correspondence
Any inquiry concerning this communication or earlier communications from the examiner should be directed to JESSICA ROSWELL whose telephone number is (571)270-5453. The examiner can normally be reached M-F 8:00 am to 5:00 pm.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Mark Eashoo can be reached at 571-272-1197. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/JESSICA M ROSWELL/Primary Examiner, Art Unit 1767