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
All the references cited in the International Search Report have been considered. None is anticipatory or meet the elected claims. The most pertinent of these references have been applied below.
Election/Restrictions
The applicant has elected Species IC (claims 1-2, 5, and 8) without traverse.
This restriction is made FINAL. See previous action for the reasons of applying restriction.
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.
Claim(s) 1-2, 5, and 8 (is)are rejected under 35 U.S.C. 112(b) as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor, or for pre-AIA the applicant regards as the invention.
Claim 1 appears to exclude C1-7 linear or branched saturated hydrocarbon group without substituents on compound A, but claim 1 also claims compound has one (meth)acrylolyl group. The dlaimed (meth)acrylolyl group contains a C1 hydrocarbon group (methyl) group, which contradicts the exclusion. Claims 2, 5, and 8 depend upon claim 1 and fail to rectify the issue in claim 1. See MPEP § 2173.05(d).
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 of this title, 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.
Claim(s) 1-2, 5, and 8 is (are) rejected under 35 U.S.C. 103(a) as being unpatentable over Motohashi et al. (US 2014035659, listed on IDS and ISR) in view of Futami et al. (US 20050261392).
As to claims 1-2, 5, and 8, Motohashi (abs., claims, examples, tables) discloses a UV curable resin as an optical base material (1) comprising radical initiators (220- 233), a solely (100 parts) urethane methacrylate produced from polyols, polyisocyanates, and hydroxyl methacrylates (101, 146, 151, the same component A resin of instant [0101-102]), and 0.005-5 wt% (61, 70, 101) of absorbent, such as 2,5-thiophenediylbis(5-ter-butyl-1,3-benzoazole (the same fluorescent agent of instant [0179]), which would inherently be a fluorescent agent and emits visible light with a maximum at 400-500 nm for having the same structure and having a loading of 0.001-5.2 parts per 100 parts of urethane methacrylate.
Motohashi is silent on the claimed trivalent phosphorous reducing agent.
In the same are of endeavor of producing optical parts (1) using urethane methacrylate polymer (abs.), Futami (abs., claims, examples) discloses adding triphenylphosphine (a species of trivalent phosphorous compound in instant pgpub [0216]) at a loading of 0.2-5 wt% or 2 wt% (a loading of 0.002-5.2 or 2 parts per 100 parts of the methacrylate polymer) to improve adhesion and optimize modulus (49, Ex.1). Triphenylphosphine
Therefore, as to claims 1-2, 5, and 8, it would have been obvious to one of ordinary skill in the art to have modified the composition disclosed by Motohashi and added triphenylphosphine at the disclosed loading in view of Futami, because the resultant composition would yield the claimed composition with improved adhesion and optimized modulus. Triphenylphosphine would inherently be capable performing the intended use of being a reducing agent for meeting the claimed structures of instant claims 1 and 5. Case law holds that a recitation of the intended use of the claimed invention must result in a structural difference between the claimed invention and the prior art in order to patentably distinguish the claimed invention from the prior art. If the prior art structure is capable of performing the intended use, then it meets the claim. See MPEP 2111.02, In re Casey, 152 USPQ 235 (CCPA 1967) and In re Otto, 136 USPQ 458,459 (CCPA 1963). In this particular case, no compositional difference between the claimed and disclosed composition, and the disclosed composition would inherently be capable of performed the claimed intended use.
The references are silent on the claimed property of dark part curability of claim 8. Accordingly, the examiner recognizes that not all of the claimed effects or physical properties are positively stated by the references. However, the references teach a composition containing the claimed components in the claimed amounts prepared by substantially similar components and loadings thereof. Therefore, one of ordinary skill would have a reasonable expectation that the claimed effects and physical properties, i.e. dark part curability, would necessarily flow from a composition containing all of the claimed components in the claimed amounts prepared by a substantially similar process. 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. See In re Best, 562 F.2d 1252, 1255, 195 USPQ 430, 433 (CCPA 1977); In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990); see also MPEP § 2112.01(I)-(II). If it is the applicant’s position that this would not be the case: (1) applicant must provide evidence to support the applicant’s position, and (2) it would be the examiner’s position that the application contains inadequate disclosure on how to obtain the claimed effects or properties with only the claimed components in the claimed amounts by the disclosed or claimed process.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to SHANE FANG whose telephone number is (571)270-7378. The examiner can normally be reached on Mon-Thurs. 8am-6pm. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Randy Gulakowski can be reached on 571.572.1302. Information regarding the status of an application may be obtained from the Patent Application Information Retrieval (PAIR) system. Status information for published applications may be obtained from either Private PAIR or Public PAIR. Status information for unpublished applications is available through Private PAIR only. For more information about the PAIR system, see http://pair-direct.uspto.gov. Should you have questions on access to the Private PAIR system, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative or access to the automated information system, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/SHANE FANG/Primary Examiner, Art Unit 1766
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