DETAILED ACTION
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
Claims 16-31 are pending. Claims 1-15 have been canceled.
The foreign priority document No. EP21156660.9 filed on February 11, 2021 has been received and it is acknowledged.
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 16-18, 21-23, and 26-31 are rejected under 35 U.S.C. 103 as being unpatentable over Knocke (US 2010/0112458) in view of MacLachlan (US Patent 3,390,996).
With regard to claims 16-18, Knocke teaches a photopolymerizable composition comprising:
(a) ethylenically unsaturated monomer or monomer mixture of different ethylenically unsaturated monomers;
(b) a triglyceride or mixture of different triglycerides; and
(c) a photoinitiator system which activates the polymerization of the ethylenically unsaturated monomer (a) upon exposure to actinic radiation (abstract).
The photopolymerizable composition is a liquid mixture at 20oC (abstract). It is assumed that the pressure is standard pressure, so the liquid photopolymerizable composition meets the limitations of claim 18.
Knocke further teaches that the composition may include hydrogen donors/chain transfer agents, such as the aldehydes taught in column 12, lines 18-58 of MacLachlan (US Patent 3,390,996)(par.0048 and par.0051).
Knocke fails to specifically teach aromatic or aliphatic aldehydes.
MacLachlan teaches that the aldehydes may be benzaldehyde, m-chlorobenzaldehyde, and terephthaldehyde (column 12, lines 45-48).
It would have been obvious to one of ordinary skill in the art before the filing date of the claimed to use benzaldehyde, m-chlorobenzaldehyde, or terephthaldehyde as hydrogen donors in the photopolymerizable composition of Knocke.
Benzaldehyde, m-chlorobenzaldehyde, and terephthaldehyde are “aromatic aldehydes” in claims 16-18.
Knocke further teaches that the photopolymerizable composition may comprise polyethyleneglycol (par.0057), which is a “polyether” in claims 17 and 18.
Therefore, the photopolymerizable composition of Knoche modified by MacLachlan is equivalent to the photopolymerizable composition in claims 16-18.
With regard to claims 21-23, and 31, Knocke teaches that the photopolymerizable composition is used to manufacture optical elements such holograms (par.0060, par.0066). The hologram is obtained by exposure to radiation having a wavelength of 532 nm (claim 33, par.0080).
Radiation with a wavelength of 532 nm is VIS radiation in claim 31.
Knocke further teaches that a hologram may comprise transparent regions, as evidenced in claim 4 of Motoi et al. (US 2014/0054882). This meets the limitations of claim 22.
A hologram is obtained by exposing the photopolymerizable composition to modulating radiation carrying holographic information (claim 34).
With regard to claims 26 and 27, Knocke teaches that the photopolymerizable composition may be used for obtaining head up displays, color filters, beam splitters (par.0067-0068).
With regard to claim 28, Knocke teaches a method of forming a light-resistant hologram in a photopolymerizable layer on a substrate surface comprising exposure of a layer of photopolymerizable composition to modulated radiation carrying holographic information (claim 34).
With regard to claim 29, Knocke teaches that the exposure to modulated radiation is carried out in a contact copying process (claim 35).
With regard to claim 30, Knocke teaches that the photopolymerizable composition may be exposed immediately after application on a substrate (par.0013).
Claims 19 and 20 are rejected under 35 U.S.C. 103 as being unpatentable over Knocke (US 2010/0112458) in view of MacLachlan (US Patent 3,390,996) as applied to claim 16 above, and further in view of Monroe et al. (US Patent 5,098,803).
With regard to claims 19 and 20, Knocke modified by MacLachlan teach the composition of claim 16 (see paragraph 5 above).
Knocke further teaches that the photopolymerizable composition comprises:
-75-99% by weight of the ethylenically unsaturated monomer or monomers mixture;
-0.5-25% by weight of a triglyceride or triglyceride mixture;
-0.1-10% by weight of the photoinitiator system (abstract, par.0009).
Knocke further teaches that the composition may comprise an additive in an amount of 0.01 to 10% by weight (par.0045), and the additive may be an aldehyde hydrogen donor as taught by MacLachlan (US Patent 3,390,996) (par.0048 and par.0051).
The amounts of ethylenically unsaturated monomer, triglyceride, photoinitiator, and aldehyde additive overlap the ranges in claim 20.
Knocke further teaches that the photopolymerizable composition may comprise polyethyleneglycol (par.0057), which is a polyether.
Knocke and MacLachlan fail to teach the amount of polyethyleneglycol.
Monroe et al. teach a photopolymerizable composition useful in preparing optical elements, and especially holograms (abstract). The photopolymerizable composition may comprise a plasticizer, such as poly(ethylene glycol) in an amount of preferably 5 to 15% by weight. The plasticizer enhances the refractive index modulation of the imaged composition (column 13, lines 10-22).
Therefore, it would have been obvious to one of ordinary skill in the art before the filing date of the claimed invention to include polyethyleneglycol in an amount of 5-15% by weight in the photopolymerizable composition of Knocke modified by MacLachlan.
The amount of polyethyleneglycol (a polyether) is within the ranges in claims 19 and 20.
Generally, differences in concentration or temperature will not support the patentability of subject matter encompassed by the prior art unless there is evidence indicating such concentration or temperature is critical. "[W]here the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation." In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955) (Claimed process which was performed at a temperature between 40°C and 80°C and an acid concentration between 25% and 70% was held to be prima facie obvious over a reference process which differed from the claims only in that the reference process was performed at a temperature of 100°C and an acid concentration of 10%.); see also Peterson, 315 F.3d at 1330, 65 USPQ2d at 1382 ("The normal desire of scientists or artisans to improve upon what is already generally known provides the motivation to determine where in a disclosed set of percentage ranges is the optimum combination of percentages.") (MPEP 214.05.II.A. Optimization Within Prior Art Conditions or Through Routine Experimentation)
Claim 24 is rejected under 35 U.S.C. 103 as being unpatentable over Knocke (US 2010/0112458) in view of MacLachlan (US Patent 3,390,996) as applied to claim 23 above, and further in view of Saburi et al. (US Patent 5,313,317).
With regard to claim 24, Knocke modified by MacLachlan teach the element of claim 23 (see paragraph 5 above), but fail to teach a sealing layer.
Saburi et al. teach a hologram (abstract), and further teach that a hologram may be provided with a sealing layer to protect it from moisture in the atmosphere (column 4, lines 66-67).
Therefore, it would have been obvious to one of ordinary skill in the art before the filing date of the claimed invention to provide the hologram of Knocke modified by MacLachlan with a sealing layer in order to protect it from moisture in the atmosphere.
Claim 25 is rejected under 35 U.S.C. 103 as being unpatentable over Knocke (US 2010/0112458) in view of MacLachlan (US Patent 3,390,996) and Saburi et al. (US Patent 5,313,317) as applied to claim 24 above, and further in view of Wooton et al. (EP 0 516 461 A1).
With regard to claim 25, Knocke modified by MacLachlan and Saburi teach the element of claim 24 (see paragraph 7 above), but fail to teach a swelling agent applied to the sealing layer.
However, it is well-known that seal swell agents may be applied to a seal in order to improve the seal performance (see page 31 of Wooton et al.).
Therefore, it would have been obvious to one of ordinary skill in the art before the filing date of the claimed invention to apply a seal swell agent to the sealing layer of Knocke modified by MacLachlan and Saburi, in order to increase the seal performance.
Response to Arguments
Applicant's arguments filed on June 16, 2026 have been fully considered but they are not persuasive.
On page 2 of the Remarks the applicant argues that the Office Action treats the claimed aldehydes as hydrogen donors/chain transfer agents while in the claimed invention the aromatic aldehydes act as compatibilizers between the ethylenically unsaturated monomer phase and the triglyceride phase in a liquid holographic photopolymer system. An aromatic aldehyde improves monomer/triglyceride compatibility, enabling higher triglyceride loading and improving holographic refractive index modulation and diffraction efficiency,
The examiner would like to note that Knocke (US 2010/0112458) teaches a photopolymerizable composition comprising: (a) ethylenically unsaturated monomer or monomer mixture of different ethylenically unsaturated monomers; (b) a triglyceride or mixture of different triglycerides; and (c) a photoinitiator system which activates the polymerization of the ethylenically unsaturated monomer (a) upon exposure to actinic radiation (abstract).
Knocke teaches the use of aldehydes as chain transfer agents (par.0051), and points to column 12, lines 18-58 of MacLachlan (US Patent 3,390,996).
MacLachlan teaches that the aldehydes may be benzaldehyde, m-chlorobenzaldehyde, and terephthaldehyde (column 12, lines 45-48), so one of ordinary skill would have been motivated to use benzaldehyde, m-chlorobenzaldehyde, and/or terephthaldehyde as chain transfer agents in the photopolymerizable composition of Knocke.
Benzaldehyde, m-chlorobenzaldehyde, and terephthaldehyde are the claimed “aromatic aldehydes”, so the photopolymerizable composition of Knocke modified by MacLahlan is equivalent to the claimed photopolymerizable composition of the instant application.
Additionally, the evidence in the specification does not prove that any aliphatic or aromatic aldehyde improves monomer/triglyceride compatibility, enabling higher triglyceride loading and improving holographic refractive index modulation and diffraction efficiency.
The specification of the instant application shows the compositions B, C, E, F comprising a specific monomer, castor oil, a specific photoinitiator, and 2,4-dihydroxybenzaldehyde (Table 2, pages 43-44, Table 3, page 45, Table 6 on page 47, Table 7 on page 47, Table 9 on page 39, and Table 10 on pages 9-10 of the specification). The compositions B, C, E, and F show improved results.
However, the claims of the instant application broadly recite compositions comprising at least one monomer M comprising at least one ethylenically unsaturated group, at least one triglyceride and/or a modified triglyceride, at least one photoinitiator, at least one aromatic and/or aliphatic aldehyde, and optional additives.
Pages 11-15 of the specification teach monomers M comprising at least one ethylenically unsaturated group.
Pages 15-16 of the specification show triglycerides and/or modified triglycerides.
Pages 17-23 of the specification teach various photoinitiators, and pages 24-25 of the specification teach aromatic aldehydes.
Therefore, the claimed polymerizable compositions may be encompassed by a very large number of combinations of at least one monomer M comprising at least one ethylenically unsaturated group, at least one triglyceride and/or a modified triglyceride, at least one photoinitiator, at least one aromatic and/or aliphatic aldehyde, and optional additives.
Therefore, the examples showing the improved results of compositions B, C, E, and F are not sufficient to show unexpected superior results of the claimed compositions.
Whether the unexpected results are the result of unexpectedly improved results or a property not taught by the prior art, the "objective evidence of nonobviousness must be commensurate in scope with the claims which the evidence is offered to support." In other words, the showing of unexpected results must be reviewed to see if the results occur over the entire claimed range. In re Clemens, 622 F.2d 1029, 1036, 206 USPQ 289, 296 (CCPA 1980) (Claims were directed to a process for removing corrosion at "elevated temperatures" using a certain ion exchange resin (with the exception of claim 8 which recited a temperature in excess of 100°C). Appellant demonstrated unexpected results via comparative tests with the prior art ion exchange resin at 110°C and 130°C. The court affirmed the rejection of claims 1-7 and 9-10 because the term "elevated temperatures" encompassed temperatures as low as 60°C where the prior art ion exchange resin was known to perform well. The rejection of claim 8, directed to a temperature in excess of 100°C, was reversed.). See also In re Peterson, 315 F.3d 1325, 1329-31, 65 USPQ2d 1379, 1382-85 (Fed. Cir. 2003) (data showing improved alloy strength with the addition of 2% rhenium did not evidence unexpected results for the entire claimed range of about 1-3% rhenium); In re Grasselli, 713 F.2d 731, 741, 218 USPQ 769, 777 (Fed. Cir. 1983) (Claims were directed to certain catalysts containing an alkali metal. Evidence presented to rebut an obviousness rejection compared catalysts containing sodium with the prior art. The court held this evidence insufficient to rebut the prima facie case because experiments limited to sodium were not commensurate in scope with the claims.). (MPEP 716.02(d) Unexpected Results Commensurate in Scope With Claimed Invention)
On page 3 of the Remarks the applicant argues that Knocke does not teach that the aldehyde amount can be used to increase the triglyceride content without turbidity or to improve Dn/diffraction efficiency beyond the performance of the original triglyceride system.
The examiner would like to note that the evidence provided in the specification does not show that the aldehyde amount can be used to increase the triglyceride content without turbidity or to improve Dn/diffraction efficiency beyond the performance of the original triglyceride system. The compositions B, C, E, and F in the specification show only specific amounts of 2,4-dihydroxybenzaldehyde, while the claims broadly recite “an aromatic aldehyde and/or aliphatic aldehyde”. Additionally, independent claims 16-19 do not recite any amounts of aldehydes.
On page 3 of the Remarks the applicant argues that the combination of Knocke and MacLachlan does not offer a solution for the problem posed in the present application and addressed by the claimed invention.
The examiner would like to note that one of ordinary skill would be motivated by Knocke to include the aldehydes as chain transfer agents of MacLachlan in the photopolymerizable composition (see par.0051 of Knocke) and obtain the claimed compopsitions. It is known in the art that a chain transfer agent is added to a polymerizable composition to control the molecular weight, the size distribution, and the structure of the polymers formed by the polymerizable composition.
The reason or motivation to modify the reference may often suggest what the inventor has done, but for a different purpose or to solve a different problem. It is not necessary that the prior art suggest the combination to achieve the same advantage or result discovered by applicant. See, e.g., In re Kahn, 441 F.3d 977, 987, 78 USPQ2d 1329, 1336 (Fed. Cir. 2006) (motivation question arises in the context of the general problem confronting the inventor rather than the specific problem solved by the invention); Cross Med. Prods., Inc. v. Medtronic Sofamor Danek, Inc., 424 F.3d 1293, 1323, 76 USPQ2d 1662, 1685 (Fed. Cir. 2005) ("One of ordinary skill in the art need not see the identical problem addressed in a prior art reference to be motivated to apply its teachings."); In re Lintner, 458 F.2d 1013, 173 USPQ 560 (CCPA 1972) (discussed below); In re Dillon, 919 F.2d 688, 16 USPQ2d 1897 (Fed. Cir. 1990), cert. denied, 500 U.S. 904 (1991) (discussed below). (MPEP 2144. IV. RATIONALE DIFFERENT FROM APPLICANT’S IS PERMISSIBLE)
On page 3 of the Remarks the applicant argues that the previous office action has not established a reason why a person of ordinary skill would have selected the aromatic aldehydes of MacLachlan for the particular context of the claimed invention.
The examiner would like to point out that Knocke teaches that the aldehydes in column 12, lines 18-58 of MacLachlan may be used as chain transfer agents in the photopolymerizable composition (par.0051). MacLachlan teaches benzaldehyde, m-chlorobenzaldehyde, and terephthaldehyde (column 12, lines 45-48), so these three aldehydes may be included in the photopolymerizable composition of Knocke.
On pages 3-4 of the Remarks the applicant argues that the relevant inquiry is whether the cited art would provide a basis to use aromatic aldehydes in a triglyceride/monomer liquid holographic system as compatibilizers that improve phase behavior and holographic performance.
The examiner would like to note that Knocke teach the use of aldehydes as chain transfer agents. This use is different than the one of the applicant’s, but one of ordinary skill would still be motivated to obtain the compositions claimed in the instant application (see MPEP 2144. IV. RATIONALE DIFFERENT FROM APPLICANT’S IS PERMISSIBLE).
On page 4 of the Remarks the applicant shows a table wherein Dn and BWG are improved with the addition of 2,4-dihydroxybenzaldehyde and a mixture of 2,4-dihydroxybenzaldehyde and polyether.
However, compositions B and C show improvement when 2,4-dihydroxybenzaldehyde is used, while the claims broadly recite “aromatic and/or aliphatic aldehyde”. Therefore, the compositions B and C are not commensurate in scope with the claimed invention and are not sufficient to show that Dn and BWG are improved with the addition of an aromatic and/or aliphatic aldehyde (see MPEP 716.02(d) Unexpected Results Commensurate in Scope With Claimed Invention).
On page 5 the applicant argues that the prior art does not teach that a polyether lowers the exposure temperature and improves Dn, and does not only act as generic plasticizer.
The examiner would like to note that the evidence submitted in the specification shows the composition C and F comprising a specific poly (ethylene glycol)-block-poly(propylene glycol)-block-poly(ethylene glycol) (see Table 3 on page 45, Table 7 on pages 48, Table 10 on pages 49-50). However, claim 16 does not even include a polyether, and claims 17-20 broadly recite a polyether. Therefore, the evidence submitted in the specification is not commensurate in scope with the claimed invention and is not sufficient to show that a polyether lowers the exposure temperature and improves Dn (see MPEP 716.02(d) Unexpected Results Commensurate in Scope With Claimed Invention).
Conclusion
THIS ACTION IS MADE FINAL. Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any nonprovisional extension fee (37 CFR 1.17(a)) pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the mailing date of this final action.
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/ANCA EOFF/Primary Examiner, Art Unit 1722
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