DETAILED ACTION
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 . 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 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.
Election/Restrictions
Applicant's election with traverse of Group II (claims 9-12 and 14-19) and the species of monomer in the reply filed on 06 July 2026 is acknowledged. The traversal is on the ground(s) that there is a special technical feature, as the invention relates to a method of manufacturing with a specific step. This is not found persuasive because the shared feature is not the method of manufacturing, as the claims drawn to the monomer composition itself do not include this feature. The requirement is still deemed proper and is therefore made FINAL.
Claims 1-8, 13, and 20 are withdrawn from further consideration pursuant to 37 CFR 1.142(b), as being drawn to a nonelected invention, there being no allowable generic or linking claim.
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, 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.
Claims 9-12, 14, and 16-19 are rejected under 35 U.S.C. 103 as being unpatentable over Akabane et al. (US Patent Application Publication 2017/0101423) in view of Sugiyama et al. (Japanese Patent Publication 08-310979 – machine translation provided).
Akabane et al. discloses mono-functional branched organosiloxane compounds (abstract). Examples of such compounds include the one with the formula I-8 (paragraph [67]), which has a polymerizable acrylate functionality linker to the siloxane moiety. This structure reads upon the radical polymerizable monomer recited by independent instant claim 9.
Akabane et al. does not disclose whether or not there are polymerization inhibitors present, but since they are not disclosed as present, the amount present would read upon the range recited by instant claim 9.
Instant claim 9 further recites the step of contacting a liquid containing the monomer with an absorbent material such as alumina. Akabane et al. does not suggest this step with the liquid composition prepared (example 7), but does state that purification treatments may be performed (paragraph [50]).
Sugiyama et al. discloses methods of purifying vinyl-based monomers (paragraph [4]), in particular acrylate-based monomers (paragraph [1]). The method involves using alumina, which is used to treat the monomer (paragraph [5] and claim 1). The monomer may be passed through a pack column of the adsorbing medium (paragraph [11]).
Therefore, it would have been prima facie obvious to one of ordinary skill in the art at the time of filing to have purified the monomeric composition disclosed by Akabane et al. using the purification method disclosed by Sugiyama et al. Generally, it is prima facie obvious to select a known element for incorporation into a method, based on its recognized suitability for its intended use. See MPEP 2144.07.
Instant claims 10 and 11 recite that the process involves continuous supplying of the monomer over the absorbent material While Sugiyama et al. does not state the method as a continuous method, developing a batch method into one that is continuous is generally considered to be prima facie obvious in the absence of documented unexpectedly beneficial results. See MPEP 2144.04 and specifically the citation to In re Dilnot, 319 F.2d 188, 138 USPQ 248 (CCPA 1963) (Claim directed to a method of producing a cementitious structure wherein a stable air foam is introduced into a slurry of cementitious material differed from the prior art only in requiring the addition of the foam to be continuous. The court held the claimed continuous operation would have been obvious in light of the batch process of the prior art.).
Instant claim 12 recites the additional step of adding a polymerization inhibitor. Sugiyama indicates that many commercially available acrylic monomers are formulated with 30 to 200 pp, of a polymerization inhibitor to prevent their polymerization during storage (paragraph [2]). These include alcohol-substituted phenols. Thus, it would have been prima facie obvious to one of ordinary skill in the art to have included such an amount of polymerization inhibitor in the monomer composition disclosed by Akabane et al.
Instant claims 14 and 16 further limit the monomer. The above cited structure reads upon the limitations recited by instant claims 14 and 16.
Instant claims 17-19 further limit the polymerization inhibitor present. If none is present (as taught by Akabane et al.) then these limitations are read upon.
Nonstatutory Double Patenting
The nonstatutory double patenting rejection is based on a judicially created doctrine grounded in public policy (a policy reflected in the statute) so as to prevent the unjustified or improper timewise extension of the “right to exclude” granted by a patent and to prevent possible harassment by multiple assignees. A nonstatutory double patenting rejection is appropriate where the conflicting claims are not identical, but at least one examined application claim is not patentably distinct from the reference claim(s) because the examined application claim is either anticipated by, or would have been obvious over, the reference claim(s). See, e.g., In re Berg, 140 F.3d 1428, 46 USPQ2d 1226 (Fed. Cir. 1998); In re Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993); In re Longi, 759 F.2d 887, 225 USPQ 645 (Fed. Cir. 1985); In re Van Ornum, 686 F.2d 937, 214 USPQ 761 (CCPA 1982); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Thorington, 418 F.2d 528, 163 USPQ 644 (CCPA 1969).
A timely filed terminal disclaimer in compliance with 37 CFR 1.321(c) or 1.321(d) may be used to overcome an actual or provisional rejection based on nonstatutory double patenting provided the reference application or patent either is shown to be commonly owned with the examined application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. See MPEP § 717.02 for applications subject to examination under the first inventor to file provisions of the AIA as explained in MPEP § 2159. See MPEP § 2146 et seq. for applications not subject to examination under the first inventor to file provisions of the AIA . A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
The filing of a terminal disclaimer by itself is not a complete reply to a nonstatutory double patenting (NSDP) rejection. A complete reply requires that the terminal disclaimer be accompanied by a reply requesting reconsideration of the prior Office action. Even where the NSDP rejection is provisional the reply must be complete. See MPEP § 804, subsection I.B.1. For a reply to a non-final Office action, see 37 CFR 1.111(a). For a reply to final Office action, see 37 CFR 1.113(c). A request for reconsideration while not provided for in 37 CFR 1.113(c) may be filed after final for consideration. See MPEP §§ 706.07(e) and 714.13.
The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The actual filing date of the application in which the form is filed determines what form (e.g., PTO/SB/25, PTO/SB/26, PTO/AIA /25, or PTO/AIA /26) should be used. A web-based eTerminal Disclaimer may be filled out completely online using web-screens. An eTerminal Disclaimer that meets all requirements is auto-processed and approved immediately upon submission. For more information about eTerminal Disclaimers, refer to www.uspto.gov/patents/apply/applying-online/eterminal-disclaimer.
Claims 9-12 and 14-19 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 8-11 and 13-18 of copending Application No. 18/267,805 (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other because the copending claims recite an additional limitation to the composition (specifically, that it has another radical polymerizable monomer). However, the instant claims are read upon by the method recited by the copending claims, as such an element is within the scope of the instant claims.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Allowable Subject Matter
The following is a statement of reasons for the indication of allowable subject matter. The subject matter recited by instant claim 14 (which encompasses the elected species of monomer) is considered free of the prior art. While branched silicone-containing monomers are known (such as disclosed by above cited Akabane et al.) the specific monomer in a method as recited by instant claim 15 is not suggested by the prior art.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Brian Gulledge whose telephone number is (571) 270-5756. The examiner can normally be reached Monday - Friday 7am - 4pm.
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/Brian Gulledge/Primary Examiner, Art Unit 1699
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