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
Election/Restrictions
Applicant's election of Species I and Sub-species I1, claims 1-16 in the reply filed on 05/31/2024 is acknowledged. Because applicant did not distinctly and specifically point out the supposed errors in the restriction requirement, the election has been treated as an election without traverse and made final (MPEP § 818.03(a)). Accordingly, claims 17 and 19 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to nonelected inventions, there being no allowable generic or linking claim. Claims 1-16 and 18 are currently under examination on the merits.
Claim Objections
Claim 5 is objected to because of the following informalities: “[Formula 1] should be deleted. Appropriate correction is required.
Drawings
The drawings are objected to because the numbers in the figures and tables are not clearly presented. Corrected drawing sheets in compliance with 37 CFR 1.121(d) are required in reply to the Office action to avoid abandonment of the application. Any amended replacement drawing sheet should include all of the figures appearing on the immediate prior version of the sheet, even if only one figure is being amended. The figure or figure number of an amended drawing should not be labeled as “amended.” If a drawing figure is to be canceled, the appropriate figure must be removed from the replacement sheet, and where necessary, the remaining figures must be renumbered and appropriate changes made to the brief description of the several views of the drawings for consistency. Additional replacement sheets may be necessary to show the renumbering of the remaining figures. Each drawing sheet submitted after the filing date of an application must be labeled in the top margin as either “Replacement Sheet” or “New Sheet” pursuant to 37 CFR 1.121(d). If the changes are not accepted by the examiner, the applicant will be notified and informed of any required corrective action in the next Office action. The objection to the drawings will not be held in abeyance.
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 USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The 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/process/file/efs/guidance/eTD-info-I.jsp.
Claims 1-16 and 19 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over the combined subject matter of claims 1-16 and 18 of copending Application No.18/276352. Although the claims at issue are not identical, they are not patentably distinct from each other because the combined subject matter of the conflicting claims form the subject matter recited in the presently examined claims. Specifically, a curable composition comprising a polyol compound and a filler which is capable of forming a cured body having adhesion force as claimed.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Claims 1-16 and 19 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over the combined subject matter of claims 1-17 and 19 of copending Application No.18/283574. Although the claims at issue are not identical, they are not patentably distinct from each other because the combined subject matter of the conflicting claims form the subject matter recited in the presently examined claims. Specifically, a curable composition comprising a polyol compound and a filler which is capable of forming a cured body having adhesion force as claimed.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Claims 1-16 and 18 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over the combined subject matter of claims 1-16 and 18 of copending Application No.18/276352. Although the claims at issue are not identical, they are not patentably distinct from each other because the combined subject matter of the conflicting claims form the subject matter recited in the presently examined claims. Specifically, a curable composition comprising a polyol compound and a filler which is capable of forming a cured body having adhesion force as claimed.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Claims 1-16 and 18 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over the combined subject matter of claims 1-13 and 15 of copending Application No.18/283113. Although the claims at issue are not identical, they are not patentably distinct from each other because the combined subject matter of the conflicting claims form the subject matter recited in the presently examined claims. Specifically, a curable composition comprising a polyol compound and a filler which is capable of forming a cured body having adhesion force as claimed.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
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 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 –
(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 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.
The factual inquiries set forth in Graham v. John Deere Co., 383 U.S. 1, 148 USPQ 459 (1966), that are applied 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.
This application currently names joint inventors. In considering patentability of the claims the examiner presumes that the subject matter of the various claims was commonly owned as of the effective filing date of the claimed invention(s) absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and effective filing dates of each claim that was not commonly owned as of the effective filing date of the later invention in order for the examiner to consider the applicability of 35 U.S.C. 102(b)(2)(C) for any potential 35 U.S.C. 102(a)(2) prior art against the later invention.
Claims 1-14 are rejected under 35 U.S.C. 102(a)(1) as anticipated by or, in the alternative, under 35 U.S.C. 103 as obvious over Ercole et al (US 2012/0252967, of record, ‘967 hereafter).
Regarding claims 1-14, ‘967 discloses a curable polyurethane composition comprising a polyol having a substituent satisfying Formula 1 as in present claim 5, which also satisfying present claims 4 and 6-9 (see chemical formula in Fig. 2, [0008]-[0010], [0028]-[0036], [0069]-[0074], [0124], [0127]) and filler or pigment ([0104]). The composition also comprises a polyol having no linear or branched hydrocarbon group having 3 or more carbon atoms satisfying present claims 10-13 ([0075]), and a polyisocyanate satisfying present claim 14 ([0101]-[0103], Examples). ‘967 does not expressly set for that the curable composition is capable of forming a cured body having adhesin force and shore hardness as presently claimed, however, since ‘967 discloses a curable composition being substantially identical to the curable composition as presently claimed, it is reasonable to expect that the curable composition of ‘967 would have possessed the same properties including presently claimed adhesion strength and shore hardness, in absence of an objective showing to the contrary (See MPEP 2112).
Claims 15-16 and 18 are rejected under 35 U.S.C. 35 U.S.C. 103 as obvious over Ercole et al (US 2012/0252967, of record, ‘967 hereafter) in view of Fujimoto et al (JP 5535529B2, ‘529 hereafter).
Regarding claims 15-16 and 18, ‘967 teaches all the limitations of claim 1, but ‘967 does not discloses that the curable composition includes a plasticizer and a specific filler as recited in the present claim16, However, in the same filed of endeavor, ‘529 discloses a curable polyurethane composition comprising a of a polyol and a polyisocyanate ([0015]-[0028]) and a filler being alumina, aluminum nitride, boron nitride or the like to provide heat dissipation ([0029]) and a plasticizer to adjust viscosity of the composition ([0041]-[0042]. In light of these teachings, one of ordinary skill in the art would have been motivated to use the filler and plasticizer as taught by ‘529, to modify the curable polyurethane composition of ‘967, in order to render the polyurethane composition having desired heat dissipation properties and lower viscosity to facilitate its application on a substrate. ‘529 also discloses that the curable polyurethane composition can be used to produce a product having heat generating component ([0051]).
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to RUIYUN ZHANG whose telephone number is (571)270-7934. The examiner can normally be reached on 8:00-5:00 PM.
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, Arron Austin can be reached on 571-272-8935. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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.
/RUIYUN ZHANG/Primary Examiner, Art Unit 1782
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