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 .
Election/Restrictions
Claims 5 and 7-16 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected invention, there being no allowable generic or linking claim. Election was made without traverse in the reply filed on 12/19/2025.
Claim Rejections - 35 USC § 103
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.
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 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 1-4 and 6 are rejected under 35 U.S.C. 103 as being unpatentable over De Mondt US 20150124032 A1 in view of Burrows, R., et al., (Multifunctional photoinitiators (MFPls): A new concept, Surface Coatings International Part B: Coatings Transactions Vol.87, B2, 71-148, June 2004).
Regarding claim 1-3, De Mondt teaches a curable composition comprising a methacrylated silicone surfactant (Abstract). De Mondt teaches the silicone surfactant has a structure of
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(Paragraph [0081]). This reads on the claimed organopolysiloxane having at least one methacrylate group. De Mondt teaches the composition can be cured with a photoinitiator (Paragraph [0114]). De Mondt teaches the photoinitiator can be an Irgacure initiator (Paragraph [0114]). De Mondt is silent on the composition having a structure of formula (1).
De Mondt is silent on the photoinitiator having the structure of formula (1). However, Burrows teaches that unreacted UV cured initiators can leak out of UV cured printing inks which is a concern in food applications (Page 123). De Mondt teaches that the curable printer ink is used in food packaging application (Abstract). Burrows teaches that Irgacure printer ink has significantly more photoinitiator present after 2 rounds of extraction in air, than acetoxy modified Irgacure (Figure 15, Page 132). Burrows teaches this acetoxy modified Irgacure has a structure of:
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(Figure 13, Page 131).
This reads on the structure of Formula (1), specifically, the compound of Formula (3) where R10 is a C1 alkyl group.
It would have been obvious to one of ordinary skill in the art at the time of filing to use the photoinitiator taught by Burrows Figure 13, as the photoinitiator of De Mondt instead an Irgacure initiator for the advantage of less unreacted initiators leaking from the packaging. Therefore, DeMondt in view of Burrows reads on the limitations of claims 1-3.
Regarding claim 4, De Mondt teaches that the silicone surfactant has a structure of
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(Paragraph [0081]). De Mondt teaches that R1 is an alkyl group or ethoxy group or polyethoxy group, a propoxy group or polypropoxy group (Paragraph [0084]). De Mondt teaches R2 is a methyl or hydrogen (Paragraph [0085]). This reads on the structure of formula IV, where R is a C1 alkyl group, R1 is a C1 alkyl group or a polyalkylene or oxyalkylene group, Y’ is a alkenylcarbonyloxygroup. a is 1 , b is 1, and n is 1. Therefore, this reads on the limitations of claim 4.
Regarding claim 6, De Mondt is silent on the resulting cured composition being an elastomer. The Specification shows that a composition formed from a methacrylate-functional polysiloxane similar in structure to De Mondt’s surfactant, combined with a photoinitiator having the same structure as that of Burrows, combined with a curable monomer (C) like tetrahydrofurfuryl acrylate (Specification p. 13, [76] and De Mondt Paragraph [0104]) leads to an elastomeric product.
Where the claimed and prior art products are identical or substantially identical in structure or composition, a prima facie case of obviousness has been established. See MPEP 2112.01.
Although not expressly disclosed, the product resulting from modification of De Mondt in view of Burrows will necessarily be elastomeric as claimed.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to LILY K SLOAN whose telephone number is (703)756-5875. The examiner can normally be reached Monday-Friday 9:00-5:30 ET.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Robert Jones can be reached at (571) 270-7733. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/LILY K SLOAN/Examiner, Art Unit 1762
/ROBERT S JONES JR/Supervisory Patent Examiner, Art Unit 1762
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