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
Objected claims indicated in the last office action is withdrawn due to new ground of rejection.
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.
The following is a quotation of 35 U.S.C. 112 (pre-AIA ), second paragraph:
The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.
Claims 1-4 and 6-20 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.
Claim 1 recites that a silicone urethane (meth)acrylate has at least three (meth)acrylate groups, but the recited Formula (A) of claim 1 comprises two (meth)acrylate groups when q is 1 which is confusing.
Claim 3 recites that p include an integer of 1 and thus the recited Formula (B) would be X-Y. Y is defined as a monovalent organic radical having at least one urethane group and at least one (meth)acrylate group opposed to claim 1 reciting “at least three (meth)acrylate group”. Thus, claim 3 would improperly broaden scope of claim 1.
The recited Formula (C) of claim 4 includes Y1SiO3/2 when a+b is 1. The Y is defined as a monovalent organic radical having at least one urethane group and at least one (meth)acrylate group opposed to claim 1 reciting “at least three (meth)acrylate group”. Thus, claim 4 would improperly broaden scope of claim 1.
Claim 6 recites “m1+m2+m3 is at least 2” and “m2+d2 is at least 1.
The recited subscripts include an integer of 0 except d1 being defined being an integer of 1 to 1000.
M with the m1 of Formula (F) comprises R3 which comprises at least one urethane group and at least one (meth)acrylate group or Formula (I) comprising two urethane groups and one (meth)acrylate group.
MUA with the m2 of Formula (F) comprises R2 which comprises a hydrogen, or R3 comprising at least one urethane group and at least one (meth)acrylate group or Formula (I) comprising two urethane groups and one (meth)acrylate group.at least one urethane group and at least one (meth)acrylate group or Formula (I) comprising two urethane groups and one (meth)acrylate group.
MA with the m3 of Formula (F) comprises R2 which comprises a hydrogen, or R3 comprising at least one urethane group and at least one (meth)acrylate group or Formula (I) comprising two urethane groups and one (meth)acrylate group or RA comprising no urethane and (meth)acrylate group.
Thus, some combinations of the recited definitions would not yield the recited silicone urethane (meth)acrylate Formula (A) of claim 1 and claim 6 would improperly broaden scope of claim 1.
For example, the recited “m1+m2+m3 is at least 2” and “m2+d2 is at least 1” would encompass the m2 being 2 and d2 being 1 which would yield MUA comprising the hydrogen and DUA comprising R (e.g., organic radical not having any urethane groups or (meth)acrylate groups) and RUA (e.g., R3 being monovalent organic radical least one urethane group and at least one (meth)acrylate group or Formula (i). Such limitation would not yield the recited silicone urethane (meth)acrylate of claim 1 requiring at least three (meth)acrylate groups.
The recited Y of claim 7 would lack antecedent basis in claim 6. Also, the recited Formulae (M), (N), (O) and (P) would yield two (meth)acrylate groups when the m2 is 2 and d2 is 1 discussed above, not the recited silicone urethane (meth)acrylate of claim 1 requiring at least three (meth)acrylate groups.
The claim 8 would not yield the recited silicone urethane (meth)acrylate of claim 1 requiring at least three (meth)acrylate groups when silicone (meth)acrylate has one hydroxy functionality. The same reason would apply to claim 9.
The recited Formula (Q) of claim 12 does not comprise R and thus the recited definition of R is confusing.
Other claims depend from the indefinite claim would be also indefinite.
EXAMINER’S COMMENT
Claims 1-4 and 6-20 would be allowable if rewritten or amended to overcome the rejection(s) under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), 2nd paragraph, set forth in this Office action.
Careful amendments to claims would be needed for an allowance.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to TAE H YOON whose telephone number is (571)272-1128. The examiner can normally be reached Mon-Fri.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Robert Jones can be reached at (571)270-7733. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/TAE H YOON/ Primary Examiner, Art Unit 1762
Prosecution Insights