Detailed Office 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 .
Examiner’s Comment
2. Acknowledgment is made of applicant's claim for foreign priority based on an application filed in Japan on 27 July 2022. It is noted, however, that applicant has not filed a certified copy of the JP 2022-119766 application as required by 37 CFR 1.55. On 26 January 2026, the Office again attempted to electronically retrieve the priority document, but the attempt failed.
Regarding the Information Disclosure Statement of 18 February 2026
3. Non-Patent Literature Document Cite Number 7 has not been considered, because it is not in compliance with 37 CFR 1.98(a)(3). Neither a translation nor concise explanation of the relevance of the document has been provided.
Prior Art Rejection
4. 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.
5. Claims 1, 2, and 4-13 are rejected under 35 U.S.C. 103 as being unpatentable over JP 2019-8301 A in view of TW 201512237 A.
JP 2019-8301 A discloses a curable composition (thermoset) suitable for producing a wafer lens having a refractive index (paragraph [0097] of the translation of JP 2019-8301 A) meeting that of claim 5, wherein the composition comprises an alicyclic epoxy compound, corresponding to applicants’ claimed component (A), and a cationically polymerizable aromatic compound, which may be monofunctional, corresponding to applicants’ component (C). See abstract and paragraphs [0012], [0016], [0017], [0037], [0056], [0057], [0069], and [0097] within the translation of JP 2019-8301 A. Regarding the refractive index limitation of claim 6, since disclosed components (A) and (B) correspond to applicants’ components (A) and (C) and since the disclosed refractive index corresponds to that of claim 5, the position is taken that one would have reasonably expected the disclosed composition to possess the refractive index of claim 6.
6. Though the primary reference fails to disclose the instantly claimed cationically polymerizable compound (B) having a binaphthyl group, the use of such binaphthyl group containing compounds in the production of epoxy resins having low viscosity, high heat resistance, and excellent handleability was known at the time of invention. See the next to last paragraph within page 5 of the translation of TW 201512237 A. Furthermore, within the last paragraph of page 5 of the translation of TW 201512237 A, it is disclosed this epoxy resin may be used in combination with other epoxy resins. Accordingly, the position is taken that it would have been obvious to incorporate the binaphthyl group containing compound of the secondary reference within the epoxy resin composition of the primary reference in the claimed amount (claim 7), corresponding to the teachings within paragraph [0069] of the primary reference, to produce epoxy resin compositions having such improved properties as lowered viscosity, improved heat resistance, and improved handleability.
7. Applicants’ amendment and arguments have been considered; however, the response is insufficient to overcome the prior art rejection for the following reasons. Applicants’ argument concerning their characterization of the disclosed cationically polymerizable compound (B) of the primary reference and their argument concerning the use of additives in an amount not exceeding 5% by weight are not well taken. Specifically, it is clear from a reading of paragraphs [0052], [0053], and [0056]-[0058] of the primary reference that instant claimed component (B) is encompassed by the cationically polymerizable compound (B) of the primary reference. As is clear from these paragraphs, disclosed cationically polymerizable compound (B) is not limited to a monofunctional compound and the presence of epoxy groups and naphthalene groups is specifically disclosed. Accordingly, applicants’ position that the teachings within the reference pertaining to additives are the operative or pertinent teachings with respect to instant compound (B) are misplaced. Furthermore, given the teachings within both the primary and secondary references concerning the improved properties possessed by the disclosed compositions, including reduced viscosity and improved refractive index, the position is taken that the applicants’ argued results do not rise to the level of being unexpected.
Allowable Subject Matter
8. Claim 3 is allowed. The prior art of record fails to disclose the claimed content of component (C).
Conclusion
9. THIS ACTION IS MADE FINAL. 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.
10. Any inquiry concerning this communication or earlier communications from the examiner should be directed to Rabon A Sergent whose telephone number is (571)272-1079. The examiner can normally be reached on Monday through Friday from 9:00 AM until 5:00 PM, ET.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Heidi Riviere Kelley, can be reached at telephone number (571)270-1831. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/RABON A SERGENT/Primary Examiner, Art Unit 1765
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