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 § 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.
Claim(s) 1-5, 12, 14, 17 and 25-27 is/are rejected under 35 U.S.C. 103 as being unpatentable over JP 2018-095696 (herein Ayano) in view of JP 2020139108 (herein Fushi).
In setting forth the instant rejection, the machine translation of Ayano and Fushi are relied upon, which were supplied by applicant with the IDS filed 9/21/23.
As to claims 1-3, 12, 14, and 17, Ayano discloses a UV curable (paragraph 34 and examples) composition. The composition comprises a compound having an acryloxy group (acrylate) reading on component A. 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) reading on component B. Thus, reading on component S2Component 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.
Ayano is silent on the UV absorbing compound, the curing and the transmittance of the coating. However, Ayano discloses that the composition is cured with UV light (paragraph 34 and 53, thus a UV range within the claimed range) with an intensity of 1500 mJ/cm2 (paragraph 53, thus 1.5 J/cm2, and thus would cure with an intensity within the claimed range). Further, Ayano teaches that the composition may comprise UV absorbing compounds. See paragraph 38 teaching UV absorbers.
Fushi teaches similar compositions for UV curing. See abstract and paragraph 12 and examples. Fushi teaches that the composition should comprise a UV absorber to yield a composition with a transmittance at 380 nm of less than 10% and a light transmittance of at least 85% at 450 nm. See paragraph 12. When the light admittance at 380 nm is too high, the coating deteriorates due to UV light. See paragraph 3, 6, 33 and examples. Tinuvin 384-2 (same UV absorbing compound as utilized in the examples of the instant invention) is taught as advantageous. See paragraph 101. One would want to keep the light transmittance at 450 nm of the coating as high as possible for optical transparency. See paragraph 133-135. The UV absorber (component C) is utilized in 0.1 to 5 parts with the rest being the curable component (e.g. S2 of Ayano), thus reading on the claimed range.
Therefore, it would have been obvious at the time of the invention to have modified the composition of Ayano with the UV absorber of Fushi in the claimed amounts because one would want to utilize a UV absorber taught to protect the coating against degradation due to UV light, while also maintaining transparency.
Further, given that the material is identical with the same component S2 and same component C, one would expect identical properties as the light transmittance to naturally flow from the same composition.
As to claims 4-5, since the UV absorber is identical (e.g. Tinuvin 384-2, see paragraph 101), it is reasonable to take the position that the composition would also have the lowest light transmittance at 385-400 nm, since the UV absorber is identical.
As to claims 25-27, 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.
Claim(s) 1-14, 17, 20 and 25-27 is/are rejected under 35 U.S.C. 103 as being unpatentable over WO 2020/090346 (herein Takuya) in view of JP 2020139108 (herein Fushi).
In setting forth the instant rejection, the machine translation of Takuya and Fushi are relied upon, which were supplied by applicant with the IDS filed 9/21/23.
As to claim 1-2, 4-5, and Takuya discloses a UV curable composition comprising organosiloxane and/or organosiloxane having a UV curable group such as epoxy and a polysilsequioxane having a caged like molecular structure, wherein component A is at least 40% and organic solvent is less than 10%. See paragraph 29-30, 34, 11 and examples.
Takuya is silent on the UV absorbing compound, the curing and the transmittance of the coating.
Fushi teaches similar compositions for UV curing. See abstract and paragraph 12 and examples. Fushi teaches that the composition should comprise a UV absorber to yield a composition with a transmittance at 380 nm of less than 10% and a light transmittance of at least 85% at 450 nm. See paragraph 12. When the light admittance at 380 nm is too high, the coating deteriorates due to UV light. See paragraph 3, 6, 33 and examples. Tinuvin 384-2 (same UV absorbing compound as utilized in the examples of the instant invention) is taught as advantageous. See paragraph 101. One would want to keep the light transmittance at 450 nm of the coating as high as possible for optical transparency. See paragraph 133-135. The UV absorber (component C) is utilized in 0.1 to 5 parts with the rest being the curable component (e.g. S2 of Ayano), thus reading on the claimed range.
Therefore, it would have been obvious at the time of the invention to have modified the composition of Takuya with the UV absorber of Fushi in the claimed amounts because one would want to utilize a UV absorber taught to protect the coating against degradation due to UV light, while also maintaining transparency.
Further, given that the material is identical with the same component S2 and same component C, one would expect identical properties as the light transmittance to naturally flow from the same composition.
As to claim 3, the viscosity is taught as 5 to 1000 mPas (paragraph 38) and exemplified within the claimed range.
As to claim 6-9, see paragraph 14, 33-42 and examples, which describe formula reading on formula 1, 2, 3, and 3’ substantially identically.
As to claim 10, two UV curable functional groups per molecule are taught. See paragraph 11 and examples.
As to claim 11, Takuya teaches organopolsiloxanes having one UV curable functional group in a molecule. See paragraph 46.
As to claims 12-13 and 20, the UV curable functional group is epoxy that are on polyorganosiloxanes. See paragraph 30 and examples.
As to claims 14, 17 and 25-27, component A may be present comprising an organopolysiloxane having an alkenyl group. See paragraph 86 and examples within the claim limitations.
Claim(s) 1-14 is/are rejected under 35 U.S.C. 103 as being unpatentable over CN 110894361 (herein Wang) in view of JP 2020139108 (herein Fushi).
In setting forth the instant rejection, the machine translation of Takuya and Fushi are relied upon, which were supplied by applicant with the IDS filed 9/21/23.
As to claim 1-2 and 4-13, and Wang discloses a UV curable composition comprising a polyorganosiloxane having at least one UV curable group such as epoxy (note no solvent is required). See paragraph 2, 19-27, 50, 54 and examples.
Wang is silent on the UV absorbing compound, the curing and the transmittance of the coating.
Fushi teaches similar compositions for UV curing. See abstract and paragraph 12 and examples. Fushi teaches that the composition should comprise a UV absorber to yield a composition with a transmittance at 380 nm of less than 10% and a light transmittance of at least 85% at 450 nm. See paragraph 12. When the light admittance at 380 nm is too high, the coating deteriorates due to UV light. See paragraph 3, 6, 33 and examples. Tinuvin 384-2 (same UV absorbing compound as utilized in the examples of the instant invention) is taught as advantageous. See paragraph 101. One would want to keep the light transmittance at 450 nm of the coating as high as possible for optical transparency. See paragraph 133-135. The UV absorber (component C) is utilized in 0.1 to 5 parts with the rest being the curable component (e.g. S2 of Ayano), thus reading on the claimed range.
Therefore, it would have been obvious at the time of the invention to have modified the composition of Wang with the UV absorber of Fushi in the claimed amounts because one would want to utilize a UV absorber taught to protect the coating against degradation due to UV light, while also maintaining transparency.
Further, given that the material is identical with the same component S2 and same component C, one would expect identical properties as the light transmittance to naturally flow from the same composition.
As to claim 3, the viscosity is within the claimed range. See paragraph 30 and examples.6
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 1-5, 12, 14,17 and 25-27 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1 and 6-7 of copending Application No. 18/283,294 (reference application) in view of JP 2020139108 (herein Fushi).
In setting forth the instant rejection, the machine translation of Fushi are relied upon, which was supplied by applicant with the IDS filed 9/21/23.
Although the claims at issue are not identical, they are not patentably distinct from each other.
As to claims 1-5, 12, 14, and 17, copending claim 1 discloses a mixture (UV curable composition) comprising 5:95 to 95:5 of components A and B that reads on the instant claims.
The copending claims are silent on the UV absorbing compound, the curing and the transmittance of the coating.
Fushi teaches similar compositions for UV curing. See abstract and paragraph 12 and examples. Fushi teaches that the composition should comprise a UV absorber to yield a composition with a transmittance at 380 nm of less than 10% and a light transmittance of at least 85% at 450 nm. See paragraph 12. When the light admittance at 380 nm is too high, the coating deteriorates due to UV light. See paragraph 3, 6, 33 and examples. Tinuvin 384-2 (same UV absorbing compound as utilized in the examples of the instant invention) is taught as advantageous. See paragraph 101. One would want to keep the light transmittance at 450 nm of the coating as high as possible for optical transparency. See paragraph 133-135. The UV absorber (component C) is utilized in 0.1 to 5 parts with the rest being the curable component (e.g. S2 of Ayano), thus reading on the claimed range.
Therefore, it would have been obvious at the time of the invention to have modified the composition of the copending claims with the UV absorber of Fushi in the claimed amounts because one would want to utilize a UV absorber taught to protect the coating against degradation due to UV light, while also maintaining transparency.
Further, given that the material is identical with the same component S2 and same component C, one would expect identical properties as the light transmittance to naturally flow from the same composition.
As to claims 25-27, see copending claims 6-7 respectively.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Claims 1-14, 17, 20 and 21 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1 and 6-7 of copending Application No. 18/283,294 (reference application) in view of JP 2020139108 (herein Fushi).
In setting forth the instant rejection, the machine translation of Fushi are relied upon, which was supplied by applicant with the IDS filed 9/21/23.
Although the claims at issue are not identical, they are not patentably distinct from each other.
As to claims 1-5, 12, 14, and 17, copending claim 1 discloses a UV curable composition that reads on the instant claims with the proviso that it is silent on the UV absorbing compound, the curing and the transmittance of the coating.
Fushi teaches similar compositions for UV curing. See abstract and paragraph 12 and examples. Fushi teaches that the composition should comprise a UV absorber to yield a composition with a transmittance at 380 nm of less than 10% and a light transmittance of at least 85% at 450 nm. See paragraph 12. When the light admittance at 380 nm is too high, the coating deteriorates due to UV light. See paragraph 3, 6, 33 and examples. Tinuvin 384-2 (same UV absorbing compound as utilized in the examples of the instant invention) is taught as advantageous. See paragraph 101. One would want to keep the light transmittance at 450 nm of the coating as high as possible for optical transparency. See paragraph 133-135. The UV absorber (component C) is utilized in 0.1 to 5 parts with the rest being the curable component (e.g. S2 of Ayano), thus reading on the claimed range.
Therefore, it would have been obvious at the time of the invention to have modified the composition of the copending claims with the UV absorber of Fushi in the claimed amounts because one would want to utilize a UV absorber taught to protect the coating against degradation due to UV light, while also maintaining transparency.
As to claims 6-11, see copending claims 4-8.
As to claim 12, see copending claim 14.
As to claims 13, 20 and 21, see copending claim 16.
Conclusion
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.
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/MARK S KAUCHER/Primary Examiner, Art Unit 1764
Prosecution Insights