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 .
Claim Rejections - 35 USC § 101
35 U.S.C. 101 reads as follows:
Whoever invents or discovers any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof, may obtain a patent therefor, subject to the conditions and requirements of this title.
Claim 14 is rejected under 35 U.S.C. 101 because the claimed recitation of a use, without setting forth any steps involved in the process, results in an improper definition of a process, i.e., results in a claim which is not a proper process claim under 35 U.S.C. 101. See for example Ex parte Dunki, 153 USPQ 678 (Bd.App. 1967) and Clinical Products, Ltd. v. Brenner, 255 F. Supp. 131, 149 USPQ 475 (D.D.C. 1966). It is unclear what the steps. While the claim states a “method of using”, there are no steps, which leads to questions about whether it is a method claim. See MPEP 2173.05(q).
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.
Claim 14 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.
Claims 14 is provide for the method of using an insulated coating layer of a cured produce of the UV curable composition according to claim 1, but, since the claim does not set forth any steps involved in the method/process, it is unclear what method/process applicant is intending to encompass. A claim is indefinite where it merely recites a use without any active, positive steps delimiting how this use is actually practiced. Again, also see MPEP 2173.05(q) stating that an active, positive step is required for a process/method claim.
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) 1-6, 8 and 10-14 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by JP 2018-095696 (herein Ayano).
In setting forth the instant rejection, the machine translation of Ayano supplied by applicant is relied upon.
As to claims 1, 4, 8 and 10-11, Ayano discloses a UV curable (paragraph 34 and examples) composition. The composition comprises a compound having an acryloxy group (acrylate). See paragraph 13-14. The composition comprises 0.1 to 20 mass% an organopolysiloxane (silsequioxane, see paragraph 15-17 and examples) polymer with 8 vinyl groups (PSS-octavinyl substituted compound 275424, see paragraph 47). Component 275424 does not comprise UV curable functional groups.
See specifically examples 3, 6 and 9 in table 1 and comparative example 8 in table 8, which comprises 80 parts THFA (tetrahydrofuryl acrylate, see paragraph 45), 2 parts SR212 (1,3-butylene diacrylate, see paragraph 46) and 5 parts 475424, thus about 94 parts component A (SR212 and THFA) and 6 parts component B (475424).
No solvent is present (thus substantially free of organic solvents).
The viscosity of the composition at 25 oC is taught as 3 to 40 mPa·s measured using an E-type viscometer (cone-plate type rotational viscometer VISCOMETER TVE-22L) . See paragraph 40.
As to claim 2, THFA has one acrylate group. See examples and paragraph 45.
As to claim 3, THFA has one acrylate group and SR212 has two acrylate groups, thus reading the claimed mixture. See examples and paragraphs 45-46.
As to claims 5-6, the oranopolysiloxane of Ayano is PSS-octavinyl substituted compound 275424, see paragraph 47), wherein R is alkenyl and R’ is monovalent hydrocarbon group and a/b are within the claimed range. Also see paragraph 15-17, this also reads on the cyclic organopolysiloxanes of claim 6.
As to claims 12-14, Ayano discloses that the compositions are for insulating materials and coating materials and are prepared via curing the curable composition to yield a cured product/material (thus reading on the method as well).
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 filing of a terminal disclaimer by itself is not a complete reply to a nonstatutory double patenting (NSDP) rejection. A complete reply requires that the terminal disclaimer be accompanied by a reply requesting reconsideration of the prior Office action. Even where the NSDP rejection is provisional the reply must be complete. See MPEP § 804, subsection I.B.1. For a reply to a non-final Office action, see 37 CFR 1.111(a). For a reply to final Office action, see 37 CFR 1.113(c). A request for reconsideration while not provided for in 37 CFR 1.113(c) may be filed after final for consideration. See MPEP §§ 706.07(e) and 714.13.
The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The actual 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/apply/applying-online/eterminal-disclaimer.
Claims 1-15 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-3, 6-8, 17, 22-26, 29-32 and 35-38 of copending Application No. 18/283,294 (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other.
As to claim 1, copending claim 1 discloses a mixture (UV curable composition) comprising 5:95 to 95:5 of components A and B. Component A is a compound defined in dependent copending claim 17 as having an acryloxy group. Component B is defined identically as in the instant claim in copending claim 25. The composition is substantially free of organic solvents. See copending claim 2. The viscosity is identically claimed in copending claim 3.
Thus, all limitations are met via copending parent claim 1 and dependent copending claims 2-3, 17 and 25. Since all copending dependent claims depend upon claim 1, it would have been obvious to utilize all these features in the composition of claim 1.
As to claims 2-4, see copending claims 22-24 respectively.
As to claims 5-7, see copending claims 6-8 and 26.
As to claims 8-11, see copending claim 29-32 respectively.
As to claims 12-15, see copending claims 35-38 respectively.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
The art cited in the ISR, such as D1 JP 2010-073495 and D2 JP S48-102188 disclose similar compositions as the claimed invention and Ayano but is silent to the viscosity. The references would by cumulative to Ayano.
Prior art such as US 5,188,864 teach similar compositions, however the viscosity is significantly above the claimed viscosity.
WO 2011/056832 teaches similar compositions, however is silent to acrylates.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to MARK S KAUCHER whose telephone number is (571)270-7340. The examiner can normally be reached M-F 8-6 PM EST.
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, Arrie Lanee Reuther can be reached at (571) 270-7026. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/MARK S KAUCHER/Primary Examiner, Art Unit 1764
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