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 .
Claim Rejections - 35 USC § 102
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 the appropriate paragraphs of 35 U.S.C. 102 that form the basis for the rejections under this section made in this Office action:
A person shall be entitled to a patent unless –
Claims 1-5 and 8-10 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Murakami (JP 2017179201 A, hereinafter referring to the attached ESPACENET translation).
Regarding claim 1, Murakami teaches an energy ray-curable composition containing a metal oxide dispersion ([0001]), comprising a polyfunctional (meth)acrylate, a polymerization initiator, and a chemically modified metal oxide ([0006]). The chemically modified metal oxide is indicated as being chemically bonded to the modifying group ([0006]). Furthermore, the chemically modified metal oxide is not indicated as requiring additional, non-bonded organic groups. Therefore, the organic components within the chemically modified metal oxide are 100% chemically adsorbed thereon, which falls within and therefore anticipates the claimed range of “more than 70% by mass.”
Regarding claim 2, Murakami teaches that the metal oxide is modified by a polyfunctional (meth)acrylate ([0006]), which reads on “methacryloyl group” from the claimed list.
Regarding claims 3 and 8, Murakami teaches that the particle size of the chemically modified metal oxide ranges from 10 to 100 nm ([0006]), which falls within and therefore anticipates the claimed range of “100 nm or less.”
Regarding claims 4 and 9-10, Murakami teaches an inventive example comprising 35 parts of chemically modified metal oxide, 65 parts of polyfunctional methacrylate, 3 parts of a polymerization initiator, and 3 parts of a leveling agent ([0072], [0079]). This composition therefore contains 35 parts of modified metal oxide out of 106 total parts of resin composition, equal to about 33 wt%, which falls within and therefore anticipates the claimed range of “1% by mass or more and 60% by mass or less.”
Regarding claim 5, Murakami teaches the formation of a cured film using the inventive composition ([0091]), therefore, the formulation of Murakami reads on the claimed “coating material.”
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.
The factual inquiries for establishing a background for determining obviousness under 35 U.S.C. 103 are summarized as follows:
1. Determining the scope and contents of the prior art.
2. Ascertaining the differences between the prior art and the claims at issue.
3. Resolving the level of ordinary skill in the pertinent art.
4. Considering objective evidence present in the application indicating obviousness or nonobviousness.
Claims 6-7 are rejected under 35 U.S.C. 103 as being unpatentable over Murakami (JP 2017179201 A, hereinafter referring to the attached ESPACENET translation) in view of Hamakubo (WO 2019116967 A1, hereinafter referring to US 2021/0181410 A1 as the English language equivalent).
Regarding claim 6, Murakami teaches all of the limitations of claim 1, as described above. Murakami differs from claim 6 because it is silent with regard to an optical fiber comprising the claimed components and the resin composition, as claimed.
In the same field of endeavor, Hamakubo teaches a resin composition containing a methacrylate resin, a polymerization initiator, and an inorganic metal oxide (Abstract), and an optical fiber comprising a core and cladding, a primary resin layer in contact with the glass fiber, and a secondary resin layer comprising a cured product of the resin composition ([0015]). It is prima facie obvious to substitute equivalents known in the art as suitable for the same purpose (See MPEP 2144.07), Murakami and Hamakubo have formulations which are substantially similar to one another, and Murakami specifies that the inventive composition is suitable for the formation of cured films ([0091]). Therefore, it would have been obvious to one having ordinary skill in the art at the time of filing to utilize the resin composition of Murakami as the secondary coating within Hamakubo. In so doing, the optical fiber of Murakami as modified by Hamakubo meets all of the claimed compositional limitations of the claimed optical fiber.
Regarding claim 7, Hamakubo teaches that the inventive secondary layer is applied as a cured coating ([0012] and [0015]), which reads on the claimed application step. Hamakubo further specifies that the curing step involves ultraviolet irradiation ([0012]).
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to JOSHUA CALEB BLEDSOE whose telephone number is (703)756-5376. The examiner can normally be reached Monday-Friday 8:00 a.m. - 5:00 p.m. EST.
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/JOSHUA CALEB BLEDSOE/ Examiner, Art Unit 1762
/ROBERT S JONES JR/ Supervisory Patent Examiner, Art Unit 1762