CTNF 18/277,992 CTNF 88600 DETAILED ACTION This communication responds to the application and amended claim set filed August 20, 2023. Claims 1-20 are currently pending. Claims 1-6, 8, and 14-18 are REJECTED for the reasons set forth below. Claims 9-13, 19, and 20 are REJECTED under 35 USC 112, but otherwise contain allowable subject matter. Claim 7 is OBJECTED TO as depending from a rejected claim, but otherwise contains allowable subject matter. Notice of Pre-AIA or AIA Status 07-03-aia AIA 15-10-aia The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA. Priority This application is the national stage entry of PCT/JP2022/005091, filed February 9, 2022, which claims priority to JP 2021-030838, filed February 26, 2021. Receipt is acknowledged of certified copies of papers required by 37 CFR 1.55. 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. Claim 9-14, 19, and 20 are rejected under 35 U.S.C. 112(b) as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor regards as the invention. Regarding claims 9 and 19 , the phrase “a polymerizable compound (a) containing a compound (a1)” is confusing because it is unclear how a compound can contain a compound. Regarding claim 10 , the phrase “the compound (a1) contains a compound including a hydroxyl group” is confusing because it is unclear how a compound can contain a compound. Regarding claim 11 , the phrase “the compound (a1) contains a compound (a12)” is confusing because it is unclear how a compound can contain a compound. Regarding claims 12 and 20 , the phrase “the polymerizable compound (a) further contains a compound (a2)” is confusing because it is unclear how a compound can contain a compound. Regarding claim 13 , the phrase “the compound (a2) contains a compound (a21)” is confusing because it is unclear how a compound can contain a compound. Regarding claim 14 , it is not clear how the film material of claim 1 is “used” for lamination. Claim Rejections - 35 USC § 102 07-06 AIA 15-10-15 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. 07-07-aia AIA 07-07 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 – 07-08-aia AIA (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. 07-15 AIA Claim s 1-6 and 8 are rejected under 35 U.S.C. 102( a)(1 ) as being anticipated by Niu et al., “Using Zn 2+ Ionomer to Catalyze Transesterification Reaction in Epoxy Vitrimer,” Ind. Eng. Chem. Res. , 2019, 58, 5698-5706 Regarding claims 1-6 and 8 , Niu teaches an epoxy resin vitrimer in which the reversible bond is an ester bond in a Zn/carboxylate compound. The nature of the reversible bond is shown below: PNG media_image1.png 123 480 media_image1.png Greyscale (Scheme 1(c).) Niu further teaches a number of Zn-PAM/ER vitrimers, all of which have a T above 40°C. (Table 1.) At both T + 100°C and T + 50°C, the storage modulus of each of the Zn-PAM/ER vitrimers ranges between 1 and 10 MPa ( see Fig. 1(b)), which are within the claimed ranges Claim Rejections - 35 USC § 103 07-20-aia AIA 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. 07-23-aia AIA 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. 07-20-02-aia AIA 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. 07-22-aia AIA Claim s 14-18 are rejected under 35 U.S.C. 103 as being unpatentable over Niu et al . as applied to claim above, and further in view of Atsushi et al. (JP 2019-116614) The examiner will rely on the translation of Atsushi provided by Applicant. Regarding claims 14-18 , Niu teaches all of the limitations of claim 1. ( See paragraph 18 above, which is incorporated by reference herein.) The difference between Niu and claim 14 is that Niu does not teach that the material is used for lamination. However, thermoset materials such as the epoxy resin vitrimer of Niu are known to be good coating materials for thermoplastics. ( See Atsushi, paras. [0001]-[0002].) It would have been obvious to use the epoxy resin of Niu as a thermoplastic coating to take advantage of the known benefits of epoxy resins, such as solvent resistance. ( See MPEP 2143(I)(A).) Allowable Subject Matter 12-151-08 AIA 07-43 12-51-08 Claim 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. 13-03-01 AIA The following is a statement of reasons for the indication of allowable subject matter: The reversible bond is integrated into the Zn-PAM compound; the ester reversible bond is derived from the methacrylate group. Thus, the molar ratio of Zn to methacrylate is 1, which is well outside the claimed range 07-43-02 Claims 9-13, 19, and 20 would be allowable if rewritten to overcome the rejections under 35 U.S.C. 112(b) set forth in this Office action and to include all of the limitations of the base claim and any intervening claims. 13-03-01 AIA The following is a statement of reasons for the indication of allowable subject matter: Niu does not teach or fairly suggest a polymer which is obtained from a polymerizable compound containing an ester group and an ethylenically unsaturated bond. Rather, as discussed above, compound containing an ester group in the polymer of Niu is Zn-PAM, which does not include an ethylenically unsaturated bond Conclusion Any inquiry concerning this communication or earlier communications from the examiner should be directed to CATHERINE S BRANCH whose telephone number is (571)270-3539. The examiner can normally be reached Monday through Friday. 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, Joseph Del Sole can be reached at 571-272-1130. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300. Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000. CATHERINE S. BRANCH Primary Examiner Art Unit 1763 /CATHERINE S BRANCH/ Primary Examiner, Art Unit 1763 Application/Control Number: 18/277,992 Page 2 Art Unit: 1763 Application/Control Number: 18/277,992 Page 4 Art Unit: 1763
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