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 .
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
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.
A broad range or limitation together with a narrow range or limitation that falls within the broad range or limitation (in the same claim) may be considered indefinite if the resulting claim does not clearly set forth the metes and bounds of the patent protection desired. See MPEP § 2173.05(c). In the present instance, claims 25 - 26 recites a broad recitation 1 – 400% / 0.1 – 6%, and the claim also recites 30 – 300% / 0.5 – 4 % which is the narrower statement of the range/limitation. The claim(s) are considered indefinite because there is a question or doubt as to whether the feature introduced by such narrower language is (a) merely exemplary of the remainder of the claim, and therefore not required, or (b) a required feature of the claims.
Claim 18 is 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 18 it is unclear what units are used to express the number average molecular mass.
Claim Rejections - 35 USC § 102
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 –
(a)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention.
Claim(s) 11, 13, 14, 16 – 18, 20 and 26 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by EP 3745205 A1 to Tabata et al. hereinafter “Tabata”.
Tabata is directed to flexographic printing original plate and a method for producing a flexographic printing plate [0001].
Regarding claims 11, 13, 18 and 26, Tabata teaches a (photosensitive) resin composition which comprises, by mass, 55 parts of SBS-E (A: star structured styrene-butadiene-styrene triblock copolymer) , 36 parts of polybutadiene (B: linear 1,2 vinyl containing olefin resin) that is 90% by mass 1,2 ethylene bonds, MW = 2000), 6 parts of 1,9 – nonane diol diacrylate (C: a small molecule compound substituted with 2 acrylic groups), 2 parts by mass of a photoinitiator (2,2-dimethoxy-1,2-diphenylethan-one / carbon radical initiator) and 1 part by mass of antioxidant. See Table 3, comparative example 3. The SBS-E is a four arm SBS (styrene – butadiene – styrene) prepared by using tetramethoxysilane as the coupling agent. The coupling agent is used to covalently link living styrene-butadiene-styrene (SBS) diblock copolymer chains to form the final linear or radial thermoplastic elastomer structure. When multifunctional coupling agents (functionality >2) are used, they react with multiple living chain ends to create radial or star-shaped SBS structures. Tetramethoxysilane is quad functional. See paragraphs [0138 – 0150].
Upon normalization to 100%, the mass percentage of SBS-E is about 56%, polybutadiene 36%, 1,9 - nonane diol diacrylate is about 6%, photoinitiator is 2% and antioxidant is 1%.
As to claim 14, 1,9 - nonane diol diacrylate satisfies the structural requirements for the structure where R1 = H where the wavy line links a C9 chain to another acrylate group.
Regarding claims 16 – 17, Tabata discloses at [0113] the photosensitive resin composition is applied to a support (reinforcing material) and then cured in two stages (prepreg) [0113 – 0115].
As to claim 20, 1,9 - nonane diol diacrylate is a C9 linear alkane diacrylate.
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.
Claim(s) 15, 21 – 23, 25, 27 - 28 and 29 are rejected under 35 U.S.C. 103 as being unpatentable over EP 3745205 A1 to Tabata et al. hereinafter “Tabata”.
For the limitations of the independent claim refer to paragraphs 8 – 10 supra.
Regarding claims 15 and 21, Tabata teaches the use of a number of photopolymerizable monomers for use as component B. These include dimethylol tricyclodecane di(meth)acrylate [0076]. Dimethylol tricyclodecane di(meth)acrylate satisfies the structural requirements for the structure
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253
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where A = dimethylol tricyclodecane di(meth)acrylate (the structure reproduced above) and R3 = H or CH3. Tabata discloses that one of these monomers may be used singly, or two or more may be used in combination in an amount of 1 to 20 parts by mass [0077 - 0078]. Therefore, it would have been obvious for someone of ordinary skill to incorporate dimethylol tricyclodecane di(meth)acrylate into Example 3 at 1 to 20 parts (approximately 1 – 20%) as this is directly taught by Tabata.
As to claims 22 – 23 and 25, Tabata discloses the use of a crosslinker (E) comprising a maleimide group at a use level of 1 to 20 parts (approximately 1 – 20%) at [0072 – 0078] and the use of a silica filler (inorganic filler) at least at 17 % as an antiblocking agent at [0146, 0168]. Therefore, it would have been obvious for someone of ordinary skill to incorporate a crosslinker comprising a maleimide group at 1 to 20 parts (approximately 1 – 20%) and a filler at 17% into Example 3 as this is directly taught by Tabata.
Regarding claims 27 – 28, Tabata teaches the use of additive components in the composition at [0108]. Tabata is silent as to the specific use of flame retardants.
However, it would have been obvious to one of ordinary skill in the art at the time the invention was made to incorporate common additives such as flame retardants in view of the teachings of Tabata to produce applicant’s invention. A person of ordinary skill in the art would have been motivated to make this combination since Tabata suggests the use of other common additives such as UV absorbers, plasticizers and light stabilizers.
Additionally, the rationale to support a conclusion that the claim would have been obvious is that “a person of ordinary skill in the art would have been motivated to combine the prior art to achieve the claimed invention and that there would have been a reasonable expectation of success.” DyStar Textilfarben GmbH & Co. Deut-schland KG v. C.H. Patrick Co., 464 F.3d 1356, 1360, 80 USPQ2d 1641, 1645 (Fed. Cir. 2006). A reasonable expectation of success exists in the teachings of Tabata.
With regard to Applicant’s limitations regarding the concentrations of flame retardants, it is the position of the Examiner that one of ordinary skill in the art, at the time of the invention, would through routine and normal experimentation determine the optimization of these limitations to provide the best effective variable depending on the results desired. Because, Tabata already teaches the incorporation of additives into the composition, the Examiner asserts that the concentrations of flame retardants are art recognized result-effective variables. Thus it would be obvious in the optimization process to adjust the concentrations of flame retardants to achieve the desired properties. In addition, merely modifying the process conditions such as temperature and concentration is not a patentable modification absent a showing of criticality, since the applicant does not show any unusual and/or unexpected results for the limitation stated (In re Aller, 220 Fo2d 454, 456, 105 USPQ 233, 235 (CCPA 1955). Note that the prior art provides the same effect desired by the Applicant, the formation of a thermosetting resin composition.
As to claim 29, Tabata teaches the use of coupling agents at [0140 – 0147]. Tabata is silent as to the concentration of the coupling agent.
With regard to Applicant’s limitations regarding the coupling agent, it is the position of the Examiner that one of ordinary skill in the art, at the time of the invention, would through routine and normal experimentation determine the optimization of these limitations to provide the best effective variable depending on the results desired. Because, Tabata already teaches the incorporation of coupling agents in the synthesis of the SBS-E (A: star structured styrene-butadiene-styrene triblock copolymer), the Examiner asserts that the concentration of the coupling agent in the reaction to make the SBS-E (A: star structured styrene-butadiene-styrene triblock copolymer) is an art recognized result-effective variable. Thus it would be obvious in the optimization process to adjust the concentration of the coupling agent to achieve the desired addition of the SBS groups and therefore the structure of the resulting polymer. In addition, merely modifying the process conditions such as temperature and concentration is not a patentable modification absent a showing of criticality, since the applicant does not show any unusual and/or unexpected results for the limitation stated (In re Aller, 220 Fo2d 454, 456, 105 USPQ 233, 235 (CCPA 1955). Note that the prior art provides the same effect desired by the Applicant, the formation of a thermosetting resin composition.
Allowable Subject Matter
Claims 12, 19, 24 and 30 are objected to as being dependent upon a rejected base claim, but would be allowable if rewritten in independent form including all of the limitations of the base claim and any intervening claims.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to PETER A. SALAMON whose telephone number is 571-270-3018. The examiner can normally be reached M-F: 9AM - 6PM.
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PAS 4/15/26
/PETER A SALAMON/Primary Examiner, Art Unit 1759
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