DETAILED ACTION
This Office Action is responsive to the amendment filed on 6/12/2026.
The objections and rejections not addressed below are deemed withdrawn.
The text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office Action.
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.
Claim Rejections - 35 USC § 112
Claims 11-12 are 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.
Regarding claim 11: Claim 11 depends from claim 1 and states that during the mixing a composition is present which contains 20 to 85 wt% of monomer composition and 10 to 40 wt% of polymer composition. It is unclear whether the monomer composition and polymer composition recited in claim 11 are intended to refer back to the monomer component and polymer component recited in independent claim 1, or if they are intended to be separate components. As such, how many different components are required to be present during the mixing step of claim 11. Is the claim intended to recite a process wherein the mixing is performed using a combination of a first component which is the polymer component of claim 1, a second component which is the monomer component of claim 1, and a third component which the composition of claim 11? Or is the claimed invention a process wherein the mixing step is performed using a composition containing the components recited in claim 11?
Alternatively, as amended the phrase “further comprising mixing” could be interpreted to reciting a step of creating composition that is entirely separate from the product of the mixing step recited in independent claim 1-i.e., the claimed process requires a step of making a first composition via mixing the components recited in the independent claim and a step of making a second, separate composition by mixing the components recited in claim 11. The scope of the claim is therefore unclear.
Regarding claim 12: Claim 12 depends from claim 11 and does not correct the deficiency discussed in the previous paragraph. Claim 12 is therefore rejected per the same rationale as claim 11.
Claims 8 and 9 are rejected under 35 U.S.C. 112(d) or pre-AIA 35 U.S.C. 112, 4th paragraph, as being of improper dependent form for failing to further limit the subject matter of the claim upon which it depends, or for failing to include all the limitations of the claim upon which it depends.
Regarding claim 8: Claim 8 depends from claim 1 and states that the gas phase includes at least 90% by volume of nitrogen. As written, independent claim 1 states that the gas phase is required to include a minimum of 3% by volume of oxygen (see lines 6 to 7). This limitation implicitly restricts the amount(s) of any other component(s) of the gas phase to an upper limit of 97% by volume. In contrast, the limitation “at least 90% by volume” as recited in claim 8 reads on all values greater than or equal to 90% and therefore includes values greater than 97% by volume. Claim 8 therefore does not require all of the limitations of the parent claim, as it broadens the scope of the invention to read on processes wherein the amount of nitrogen is greater than 97% by volume.
Regarding claim 9: Claim 9 depends from claim 1 and states that the gas phase includes at least 12% by volume of argon and/or carbon dioxide. Per the same rationale as outlined in the previous paragraph, claim 9 does not require all of the limitations of the parent claim as the limitation “at least 12% by volume” broadens the scope of the invention to read on processes wherein the amount of argon and/or carbon dioxide is greater than 97% by volume.
Applicant may cancel the claim(s), amend the claim(s) to place the claim(s) in proper dependent form, rewrite the claim(s) in independent form, or present a sufficient showing that the dependent claim(s) complies with the statutory requirements.
Claim Rejections - 35 USC § 103
Claim(s) 1-3, 5-8 and 10-12 are rejected under 35 U.S.C. 103 as being unpatentable over Tokuda et al, WO2008/123358.
A machine translation of Tokuda was used to prepare this Action.
Tokuda discloses a curable composition comprising a monomer (A) having a polymerizable double bond, a polymer (B) , and a photopolymerization initiator (C), corresponding to the claimed auxiliary (for claim 7) (Page 6: line 11 to page 7: line 2).
Regarding the claimed polymer component: Tokuda teaches that the polymer (B) is preferably a (meth)acrylic polymer (page 19: lines 11-12), corresponding to the claimed polymer component which is a poly(meth)acrylate (for claims 1, 3), and can be obtained via suspension polymerization (for claim 1) (page 24: lines 6-12). Further note that Tokuda teaches that polymer (B) may be polymerized using an azo compound as the initiator (page 25: lines 9-11).
Regarding the claimed monomer: As noted above, the prior art composition comprises a monomer (A). As said monomer (A), Tokuda discloses the use of (meth)acrylate esters containing an aromatic ring (page 7: line 13 to page 8: line 9), corresponding to the claimed monomer component (for claim 1) which is a (meth)acrylate (for claim 6).
Regarding the claimed step of mixing: Tokuda teaches that the prior art polymer composition is made via a process comprising the step of dissolving the (meth)acrylic polymer in monomer (A), to obtain a solution of polymer (B) and monomer (A) (page 27: lines 12-16). Further note that Tokuda exemplifies mixing the polymer with the monomer (A) under a atmosphere comprising 7% oxygen (for claim 1), and teaches that the mixing results in a homogeneous solution (Examples 2 and 3- page 39: lines 8-12 and page 40: lines 10-14).
[I]n considering the disclosure of a reference, it is proper to take into account not only specific teachings of the reference but also the inferences which one skilled in the art would reasonably be expected to draw therefrom." In re Preda, 401 F.2d 825, 826, 159 USPQ 342, 344 (CCPA 1968) (MPEP 2144.01). As noted above, Tokuda teaches that the mixing results in a homogeneous solution of polymer and monomer. As the prior art refers to this mixture as a homogeneous solution, it is reasonably inferred that the polymer is 100% dissolved (for claim 1).
Regarding the claimed residual peroxide content: Note that the claimed range for residual peroxide content of at most 0.375 mmol per kilogram reads on all values less than 0.375 mmol, including 0 mmol per kg. As noted above, Tokuda teaches that polymer (B) of the prior art composition can be prepared using an azo compound as the initiator. As the prior art does not require the inclusion of a peroxide during the preparation of polymer (B), Tokuda renders obvious the use of a polymer (B) which has a residual peroxide content of 0 mmol per kilogram (for claims 1, 2)
Regarding claim 5: As noted above, the prior art polymer (B) corresponds to the claimed polymer component wherein the residual peroxide content is 0 mmol per kilogram. The prior art polymer (B) therefore corresponds to the claimed polymer initiated with lauryl peroxide and having a residual peroxide content of 0.
Regarding claim 8: As noted above, Tokuda teaches that the prior art mixing is performed under a atmosphere comprising 7% oxygen; said atmosphere was made by combining 2 parts pure nitrogen with 1 part air (Examples 2 and 3- page 39: lines 8-12 and page 40: lines 10-14). As air has a nitrogen content of about 78%, this would result in a final atmosphere comprising about 2.78 parts nitrogen per 3 parts gas-i.e., the nitrogen content is about 92.7%.
Regarding claim 10: The prior art reads on the use of methacrylic monomers only for both monomer (A) and polymer (B). Tokuda therefore renders obvious a composition comprising 0 wt% acrylate units.
Regarding claim 11: The prior art composition is not required to comprise a crosslinker, a urethane (meth)acrylate, or an accelerator, corresponding to the claimed invention wherein the amount of each of these components is 0 wt% (for claim 11). Furthermore, Tokuda teaches that
The prior art composition comprises 0.5 to 20 parts of initiator (C) per 100 parts composition (page 31: lines 1-6), corresponding to the claimed additive (for claim 11); and
the ratio of polymer (B) to monomer (A) is in the range of 97/3 to 55/45 (page 7: lines 1-2).
Based on the first point, an ordinary artisan will recognize that the prior art composition can contain from 80 to 99.5% by weight of the combination of polymer (B) and monomer (A); see In re Preda cited above. Furthermore, based on the second point, it can be calculated that the prior art composition comprises about 0.5 to 36% of the monomer (A), overlapping the claimed range (for claim 11), and 44 to 96.5 parts of the polymer component (B) (for claim 11).
It has been held that in the case where the claimed ranges overlap or lie inside ranges disclosed in 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). The normal desire of scientists or artisans to improve upon what is already generally known provides the motivation to determine where in a disclosed set of percentage ranges is the optimum combination of percentages; see In re Peterson, 315 F.3d at 1330, 65 USPQ2d at 1382. It has been held that a prima facie case of obviousness exists where the claimed ranges and the prior art ranges do not overlap but are close enough that one skilled in the art would have expected them to have the same properties, see Titanium Metals Corp. of America v. Banner 778 F.2d 775, 227 USPQ 773 (Fed. Cir. 1985) (MPEP § 2144.05).
The prior art range for the amount of monomer (A) overlaps the claimed range. Furthermore, because the difference between the claimed upper limit and the prior art lower limit is small, it is reasonably expected that the properties of the prior art composition comprising 44 parts of polymer B would not be materially different from those of the claimed composition. It therefore would have been obvious prior to the effective filing date to prepare a composition comprising the claimed amounts of monomer and polymer in view of the teachings of Tokuda.
Regarding claim 12: Claim 12 depends from claim 11 and states that the accelerator is chosen from the recited species. Note, however, that the instant claim does not include any language requiring the accelerator to be present. The prior art composition therefore corresponds to the claimed invention wherein the amount of accelerator is 0% as noted above with respect to claim 11.
Tokuda does not specifically disclose the use of a polymer having a peroxide content of at most 0.375 mmol per kilogram.
It has been held that the selection of a known material based on its suitability for its intended is prima facie obvious; see Sinclair & Carroll Co. v. Interchemical Corp., 325 U.S. 327, 65 USPQ 297 (1945) (MPEP 2144.07). As noted earlier in this Action, Tokuda specifically teaches that the polymer (B) may be prepared using a non-peroxide initiator such as an azo compound. The use of such initiators will result in the production of a polymer having a residual peroxide content of 0 mmol per kilogram. Barring a showing of evidence demonstrating unexpected results, it therefore would have been obvious prior to the effective filing date to prepare a composition wherein the polymer (B) has a residual peroxide content in the required range in view of the teachings of Tokuda (for claim 1).
Response to Arguments
Applicant's arguments filed 6/12/2026 have been fully considered but they are not persuasive.
Regarding the rejection of claims 11-12 under 35 U.S.C. 112(b): Applicant’s argument that the phrase “further comprising” renders the claims definite is not persuasive. The scope of claims 11 and 12 is not clear per the rationale outlined earlier in this Action.
Regarding the rejection of claims 8 and 9 under 35 U.S.C. 112(d): Applicant argues that claims have been amended to state that a composition “further comprising” the gas phase comprising the recited components and therefore properly further limit the parent claim. This is not persuasive. As discussed above and in the previous Office Action, claims 8 and 9 are not rejected because they recite additional components present in the gas phase. Rather, they are rejected for failure to properly limit the parent claim because the ranges recited in claims 8 and 9 for these additional components broaden the range implicitly allowed by the independent claim.
As currently written, independent claim 1 states that the gas phase is required to contain between 3 and 8 vol% oxygen. Given that the gas phase is required to contain a minimum of 3 vol% oxygen, one of ordinary skill in the art will recognize that the independent claim implicitly limits the sum of the amount(s) of any other component(s) of the gas phase to a maximum value of 100-3= 97 vol%. Claim 8, however, states that the gas phase further comprises at least 90 vol% nitrogen; the recited range “at least 90 vol%” reads on all values greater than 90 vol%, including those values that are greater than 97 vol%. Similarly, the range “at least 12 vol%” recited in claim 9 includes values that are greater than 97 vol%. Claims 8 and 9 therefore impermissibly broaden the scope of the parent claim to read on processes wherein the amount of additional components in the gas phase exceed 97 vol%.
It is suggested that applicant amend claims 8 and 9 incorporate the upper limit implicitly required by independent claim 1- e.g., claim 8 could be amended to state that the gas phase further comprises at least 90 up to 97 vol% nitrogen.
Regarding the rejection over Tokuda et al, WO2008/123358: Applicant argues that the prior art does not render the claimed invention obvious because the rejection of record chooses elements from non-preferred embodiments and broad lists.
It has been held that "a reference may be relied upon for all that it would have reasonably suggested to one having ordinary skill in the art, including non-preferred embodiments," Merck & Co. v. Biocraft Laboratories, 874 F.2d 804, 10 USPQ2d 1843 (Fed. Cir.). "Disclosed examples and preferred embodiments do not constitute a teaching away from a broader disclosure or non-preferred embodiments,” In re Susi 440 F.2d 442, 169 USPQ 423 (CCPA 1971). (MPEP § 2123 [R-5]). As discussed earlier in this Action, the prior art renders obvious all of the claimed elements. Contrary to applicant’s arguments, Tokuda’s preferences do not teach away from its broader disclosure that renders the claimed invention obvious.
Furthermore, note that the claimed invention only recites a step of mixing a polymer component with a monomer component under specified conditions; the claimed invention does not recite any limitations that restrict what can be done with/done to the product obtained by said mixing step. The mere fact that Tokuda goes on to perform a polymerization reaction in a mold or produce optical lenses does not teach away from the fact that it renders obvious the step of dissolving a polymer in a monomer under the required conditions.
In response to applicant's argument that the examiner's conclusion of obviousness is based upon improper hindsight reasoning, it must be recognized that any judgment on obviousness is in a sense necessarily a reconstruction based upon hindsight reasoning. But so long as it takes into account only knowledge which was within the level of ordinary skill at the time the claimed invention was made, and does not include knowledge gleaned only from the applicant's disclosure, such a reconstruction is proper. See In re McLaughlin, 443 F.2d 1392, 170 USPQ 209 (CCPA 1971).
Regarding the limitations of a suspension polymer and residual peroxide content of at most 0.375 mmol per kg: It has been held that the 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 U.S. 327, 65 USPQ 297 (1945). As noted earlier in this Action, Tokuda teaches a process which includes the step of dissolving a polymer in a monomer; Tokuda specifically teaches that said polymer may be obtained via suspension polymerization (page 24: lines 10-11)-i.e., the polymer may be a suspension polymer.
Similarly, Tokuda specifically teaches that the polymer may be obtained via polymerization using an azo compound as the initiator (page 25: lines 9-11). One of ordinary skill in the art will recognize that, because no peroxide is used/present during the polymerization reaction, a polymer obtained using an azo initiator will have a residual peroxide content of 0 mmol per kg; note that this value is within the claimed range.
Both suspension polymerization and azo initiators are specifically taught by Tokuda as being suitable for use in the process of WO2008/123358. Barring a showing of evidence demonstrating unexpected results, it therefore would have been obvious to one of ordinary skill in the art to perform the prior art process using a suspension polymer having the required peroxide content; see Sinclair & Carroll Co. v. Interchemical Corp cited above. Contrary to applicant’s arguments, impermissible hindsight is not required to use compounds/polymerization methods taught by Tokuda for the purpose Tokuda teaches they can be used.
Applicant argues that Tokuda requires solution polymerization and the use of a peroxide initiator because those elements are used in the examples. This is not persuasive because, as noted in the previous paragraphs, the broad disclosure of Tokuda teaches that the polymer may be made via suspension polymerization and with an azo initiator; see In re Susi cited earlier in this Action. Furthermore, when the reference relied on expressly anticipates or makes obvious all of the elements of the claimed invention, the reference is presumed to be operable. Once such a reference is found, the burden is on applicant to rebut the presumption of operability; see In re Sasse, 629 F.2d 675, 207 USPQ 107 (CCPA 1980) § (MPEP 2121(I)). As the prior art specifically teaches the use of suspension polymerization and non-peroxide initiators, applicant bears the burden of providing evidence that Tokuda is not operable with regards to these teachings. As such evidence has not been provided, applicant’s argument is not persuasive.
Regarding the claimed limitations of oxygen content and mixing: Applicant argues that the rejection “cherry picks” the claimed oxygen content from many examples in Tokuda. In response, as discussed earlier in this Action, Tokuda teaches a process wherein a (meth)acrylic polymer is dissolved in a polymerizable monomer having a double bond. Furthermore, Synthesis Example 1 of Tokuda merely discloses the production of a monomer and Example 1 is a curable resin; Synthesis Examples 2 to 4 are the only prior art examples which exemplify the prior art process step of dissolving a polymer in a monomer (see page 48: lines 6-8). Note that in each of Synthesis Examples 2 to 4, this step is done under an atmosphere containing 7% oxygen. See Synthesis Example 2 (page 39: lines8-12); Synthesis Example 3 (page 40: lines 10-14); Synthesis Example 4 (page 41: lines 11-14).
Furthermore, the dissolving step in the synthesis examples is done in a flask equipped with a stirrer. "[I]n considering the disclosure of a reference, it is proper to take into account not only specific teachings of the reference but also the inferences which one skilled in the art would reasonably be expected to draw therefrom"; In re Preda, 401 F.2d 825, 826, 159 USPQ 342, 344 (CCPA 1968). Given that the prior art dissolving step is performed in the presence of a stirrer-i.e., a means for mixing- and that the dissolving step is intended to result in a homogeneous solution, one of ordinary skill in the art would reasonably infer that the step of dissolving the polymer in the monomer is performed with stirring (i.e., mixing) in order to facilitate the dispersion of the polymer uniformly through the monomer liquid. Applicant’s arguments that the rejection allegedly cherry picks these conditions therefore is not persuasive, as the prior art consistently suggests in its examples that the step of dissolving the polymer in the monomer is performed with stirring under an atmosphere comprising 7% oxygen. The rejection is therefore maintained.
Conclusion
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.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to JEFFREY S LENIHAN whose telephone number is (571)270-5452. The examiner can normally be reached Mon.-Fri. 5:30-2:00PM.
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/JEFFREY S LENIHAN/Primary Examiner, Art Unit 1765
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