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 .
This communication is responsive to the Claim set filed on 09/21/2023 and Response to Restriction filed on 05/20/2026. Claims 1-19 are currently pending. The elected claims 1-14 and 18-19 are currently pending. The non-elected claims 15-17 are withdrawn.
Claims 1-14 and 18-19 are rejected for the reasons set forth below.
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.
Election/Restrictions
Applicant’s election of Group I, Claims 1-14 and 18-19 in the reply filed on 05/20/2026 is acknowledged. Because applicant did not distinctly and specifically point out the supposed errors in the restriction requirement, the election has been treated as an election without traverse (MPEP § 818.01(a)).
Drawings
The drawings are objected to because the numbers in the figures and tables and words in the tables are not clearly presented. Corrected drawing sheets in compliance with 37 CFR 1.121 (d) are required in reply to the Office action to avoid abandonment of the application. Any amended replacement drawing sheet should include all of the figures appearing on the immediate prior version of the sheet, even if only one figure is being amended. The figure or figure number of an amended drawing should not be labeled as "amended." If a drawing figure is to be canceled, the appropriate figure must be removed from the replacement sheet, and where necessary, the remaining figures must be renumbered and appropriate changes made to the brief description of the several views of the drawings for consistency. Additional replacement sheets may be necessary to show the renumbering of the remaining figures. Each drawing sheet submitted after the filing date of an application must be labeled in the top margin as either "Replacement Sheet" or "New Sheet" pursuant to 37 CFR 1.121 (d). If the changes are not accepted by the examiner, the applicant will be notified and informed of any required corrective action in the next Office action. The objection to the drawings will not be held in abeyance.
Claim Objections
Claim 11 is objected to because of the following informalities: line 2; “polyisocyante” should read – polyisocyanate --
Appropriate correction is required.
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.
(a)(2) the claimed invention was described in a patent issued under section 151, or in an application for patent published or deemed published under section 122(b), in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention.
Claims 1-5, 7-14 and 19 are rejected under 35 U.S.C. 102 (a) (1) as being anticipated by Mori et al. (US2021/0198413 A1).
Regarding Claims 1-4, Mori teaches a composition comprising a polyol, a polyisocyanate, and an inorganic filler (Claim 1), wherein the polyisocyanate is the curing agent for the composition ([0094]). Therefore, the composition reads on a curable composition. Attention is drawn to Table 2 and Table 4, wherein each of the exemplary compositions contains a polyol and a filler.
The Office realizes that all of the claimed effects or physical properties are not positively stated by the Mori. However, Mori teaches all of the claimed ingredients. The original specification does not identify a feature that results in the claimed effect or physical property outside of the presence of the claimed components in the claimed amount. Therefore, the claimed effects and physical properties, i.e. a curvature radius, adhesion force to aluminum, adhesion force to a polyester surface and a shore 00 hardness would naturally arise and be achieved by a composition with all the claimed ingredients. "Products of identical chemical composition cannot have mutually exclusive properties." In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990). A chemical composition and its properties are inseparable. Therefore, if the prior art teaches the identical chemical structure, the properties applicant discloses and/or claims are necessarily present. See MPEP § 2112.01. If it is the applicant’s position that this would not be the case: (1) evidence would need to be provided to support the applicant’s position; and (2) it would be the Office’s position that the application contains inadequate disclosure that there is no teaching as to how to obtain the claimed properties with only the claimed ingredients.
Regarding Claim 5, the preferred the polyol includes a-1 and a-2 which are adduct of propylene oxide with glycerol, a-4 which is a random adduct of propylene oxide ethylene with pentaerythritol and a’-1 which is polytetramethylene ether glycol. The aforementioned polyol compounds contain at least one linear or branched hydrocarbon group having 3 or more carbon atoms at its terminals.
Regarding Claims 7-8, each of the polyols a-1 and a-2, a-4 and a’-1 has a polyether skeleton and a polyalkylene skeleton.
Regarding claim 9, Mori discloses the polyols a-1 and a-2, and a’-1 have a Mn of 1500, 3000 and 2000, respectively. To those small molecular weight polyols, it would be reasonable to infer that the PDI is close to 1, therefore, the weight average molecular weights are from 1500 to 3000.
Regarding Claim 10, Mori discloses that the compositions contain a surfactant which is an adduct of alkylene oxide (C3-C4) with butanol, octanol or dodecanol ([0063]), such surfactants contain a hydrocarbon group having 3 or more carbon atoms, and one hydroxy.
Regarding Claim 11, the exemplary compositions contain a polyisocyanate.
Regarding Claims 12-13, the exemplary compositions contain a plasticizer. Although not used in the examples, Mori teaches the plasticizer can be an adipate-based plasticizer, a fatty acid-based plasticizer, or a phosphoric acid-based plasticizer ([0079]).
Regarding Claim 14, alumina is used in the examples.
Regarding Claim 19, the polyol a-1 and a-2 has
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repeating units, each repeating unit has a mw of 58.08 g/mol, glycerol has a mw about 92 g/mol, for SANNIX GP-1500, each chain has about 8 repeating units; for SANNIX GP-3000, each chain has about 16 repeating units.
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.
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 1-9, 11 and 14 are rejected under 35 U.S.C. 103 as being unpatentable over Park et al.
(US2020/0220124 A1).
Regarding Claims 1-6, Park discloses a curable composition comprising a polyol compound represented by the formula 1 or 2:
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(para 0070-78); wherein
Y is a unit derived from a polyol such as a propylene glycol-derived unit, a 1,2-butylene glycol derived unit, a 2,3-butylene glycol-derived unit, a 1,3-propanediol-derived unit, a 1,6-hexanediol-derived unit, etc. ([0083]); therefore, both the terminals of Formula 1 and Formula 2 of Park read on the structure of the instant Claim 6; and a filler (para 0035, 0091-92). Although the reference does not disclose the curable composition with sufficient specificity to anticipate the above listed claims, it would have nonetheless been obvious because a person of ordinary skill in the art would be motivated to select the disclosed polyol and filler to arrive the instantly claimed curable composition with desirable heat dissipation characters.
The Office realizes that all of the claimed effects or physical properties are not positively stated by the Park. However, Park teaches all of the claimed ingredients. The original specification does not identify a feature that results in the claimed effect or physical property outside of the presence of the claimed components in the claimed amount. Therefore, the claimed effects and physical properties, i.e. a curvature radius, adhesion force to aluminum, adhesion force to a polyester surface and a shore 00 hardness would naturally arise and be achieved by a composition with all the claimed ingredients. "Products of identical chemical composition cannot have mutually exclusive properties." In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990). A chemical composition and its properties are inseparable. Therefore, if the prior art teaches the identical chemical structure, the properties applicant discloses and/or claims are necessarily present. See MPEP § 2112.01. If it is the applicant’s position that this would not be the case: (1) evidence would need to be provided to support the applicant’s position; and (2) it would be the Office’s position that the application contains inadequate disclosure that there is no teaching as to how to obtain the claimed properties with only the claimed ingredients.
Regarding Claims 7-8, the above Formula 1 and Formula 2 have a polyester skeleton and a polycaprolactone skeleton.
Regarding claim 9, Park discloses the polyol compound comprises a polyol compound having a
weight average molecular weight in a range of 100 g/mol to 3000 g/mol (para 0087), overlapping the claimed 100 g/mol to 5000 g/mol.
Regarding Claim 11, Park discloses the curable composition further comprising a polyisocyanate (para 0071, 0089).
Regarding claim 14, Park discloses the curable composition wherein the filler is aluminum
hydroxide, magnesium hydroxide, calcium hydroxide, hydromagnesite, magnesia, alumina, aluminum
nitride, boron nitride, silicon nitride, silicon carbide, zinc oxide or beryllium oxide (para 0092).
Regarding Claim 18, the Formula 1 of Park:
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has X in between of oxygen atom and a single bond, wherein X is derived from phthalic acid, succinic acid, etc.([0082]), therefore X reads on an alkylene group having 1 to 20 carbon atoms. Park further teaches n is a number about 2 to 10 (0084]).
Claims 1-5, 7-9, 11-14 and 19 are rejected under 35 U.S.C.103as being unpatentable over Narutaki et al. (WO2020121993). US Publication 2022/0089922 is relied upon below as an English-equivalent for the rejection purposes.
Regarding claims 1-5, Narutaki discloses a curable composition comprising a polyoxyalkylene polyol compound having a hydroxypropyl group at a molecular end (claim 2) and a filler (para 0114); wherein the hydroxypropyl group has a structure:
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or
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([0043]). The a polyoxyalkylene polyol compound reads on a polyol compound containing at least one branched hydrocarbon group hydrocarbon group having 3 carbon atoms at its terminal. Although the reference does not disclose the curable composition with sufficient specificity to anticipate the above listed claims, it would have nonetheless been obvious because a person of ordinary skill in the art would be motivated to select the disclosed polyol and filler to arrive the instant Claimed curable composition with a reasonable expectation of success for providing a cured film having excellent physical properties.
The Office realizes that all of the claimed effects or physical properties are not positively stated by the Narutaki. However, Narutaki teaches all of the claimed ingredients in the claimed amounts. The original specification does not identify a feature that results in the claimed effect or physical property outside of the presence of the claimed components in the claimed amount. Therefore, the claimed effects and physical properties, i.e. a curvature radius, adhesion force to aluminum, adhesion force to a polyester surface and a shore 00 hardness would naturally arise and be achieved by a composition with all the claimed ingredients. "Products of identical chemical composition cannot have mutually exclusive properties." In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990). A chemical composition and its properties are inseparable. Therefore, if the prior art teaches the identical chemical structure, the properties applicant discloses and/or claims are necessarily present. See MPEP § 2112.01. If it is the applicant’s position that this would not be the case: (1) evidence would need to be provided to support the applicant’s position; and (2) it would be the Office’s position that the application contains inadequate disclosure that there is no teaching as to how to obtain the claimed properties with only the claimed ingredients.
Regarding Claim 7, the polyoxyalkylene polyol is a polyether polyol.
Regarding Claim 8, polyoxyalkylene polyol contains a polyalkylene skeleton.
Regarding claim 9, Narutaki discloses the polyol compound comprises a polyol compound having
a weight average molecular weight in a range of 100 g/mol to 3000 g/mol (para 0013), overlapping the claimed 100 g/mol to 5000 g/mol.
Regarding Claim 11, Narutaki discloses the curable composition further comprising a
polyisocyanate (abstract, para 0009).
Regarding Claims 12-13, Narutaki discloses the curable composition further comprising a plasticizer (para 0114), wherein the examples of suitable plasticizers include adipic acid esters and fatty acid esters ([0117]).
Regarding claim 14, Narutaki discloses the curable composition wherein the filler is aluminum
hydroxide, magnesium hydroxide, calcium hydroxide, hydromagnesite, magnesia, alumina, aluminum
nitride, boron nitride, silicon nitride, silicon carbide, zinc oxide or beryllium oxide (para 0120).
Regarding Claim 19, Narutaki discloses the polyoxyalkylene polyol has a structure of
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(claim 2), wherein (A-O) can be ethylene oxide or 1,2-propylene oxide ([0041]). Therefore, the polyoxyalkylene polyol has a repeating unit of X4 and X5 each independently a single bond or an oxygen atom, L2 is an alkynene group having 2 carbon atoms. Narutaki further discloses p is an integer of 0 to 199, encompassing the claimed 1 to 25. The production examples of polyoxyalkylene polyol have number average molecular weight of 1,000 (production example 3), p is likely falling within 1 to 25.
Claims 10 and 13 are rejected under 35 U.S. C. 103 as being unpatentable over Park et al.
(US2020/0220124) in view of Mori et al. (US2021/0198413 A1).
Park discloses a curable composition as described above and incorporate herein by reference.
Park discloses a curable composition comprising a polyol and a filler. Park does not disclose the composition further comprising a surfactant and a plasticizer.
However, Mori discloses a curable composition comprising a polyol and a filler. Mori further teaches the composition comprising a surfactant
Both Park and Mori concern a urethane resin composition having excellent heat dissipation ([0119] of Park and abstract of Mori). Thus, one ordinary skilled artisan would have been motivated before the effective filing date of the instant application to incorporate the plasticizers and surfactants taught by Mori into the composition of Park. Mori discloses that the surfactant being a compound containing a hydrocarbon group having 3 or more carbon atoms and one hydroxy. Mori further discloses the composition comprising a plasticizer, such as an adipate-based plasticizer, a fatty acid-based plasticizer, or a phosphoric acid-based plasticizer (see discussion at para.8).
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 1-9, 11-12 and 14 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-8 and 11-12 of U.S. Patent No.12,359,013 (‘013). Although the claims at issue are not identical, they are not patentably distinct from each other because:
Regarding Claims 1-4 and 6, claims 1-4 claim the corresponding limitations of the instant Claims 1-4 and 6. Although claim 1 of ‘013 is silent on the curvature radius, since claim 1 of ‘013 claims a substantially identical curable composition to that of the instant Claim 1, it is reasonable to expect that the curable composition of '013 would form a cured product having a curvature radius of 20 mm or less, in absence of an objective showing to the contrary (See MPEP 2112).
Regarding Claim 5, both Claim 1 and Claim 8 of ‘013 read on the instant Claim 5 because Claim 1 of ‘013 claims R is a branched hydrocarbon group having 5 or more carbon atoms.
Regarding Claim 7, claim 5 of ‘013 claims the limitation.
Regarding Claim 8, claim 6 of ‘013 claims the limitation.
Regarding Claim 9, claim 7 of ‘013 claims the polyol compound comprises a polyol compound having a weight average molecular weight in a range of 100 g/mol to 3000 g/mol, overlapping the claimed 100 g/mol to 5000 g/mol.
Regarding Claim 11, claim 10 of ‘013 claims the limitation.
Regarding Claim 12, claim 11 of ‘013 claims the limitation.
Regarding Claim 14, claim 12 of ‘013 claims the limitation.
Claims 1-12 and 14 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-9 and 14-16 of copending Application No. 18/276,358 (‘358). Although the claims at issue are not identical, they are not patentably distinct from each other because:
Regarding Claims 1-10, claims 1-9 of ‘358 claim the corresponding limitations. Although claim 1 of ‘013 is silent on the curvature radius, since claim 1 of ‘013 claims a substantially identical curable composition to that of the instant Claim 1, it is reasonable to expect that the curable composition of '013 would form a cured product having a curvature radius of 20 mm or less, in absence of an objective showing to the contrary (See MPEP 2112).
Regarding Claim 11, claim 14 of ‘358 claims the limitation.
Regarding Claim 12, claim 15 of ‘358 claims the limitation.
Regarding Claim 14, claim 16 of ‘358 claims the limitation.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to HUIHONG QIAO whose telephone number is (571)272-8315. The examiner can normally be reached 9AM - 5PM.
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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.
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/HUIHONG QIAO/Examiner, Art Unit 1763
/JOSEPH S DEL SOLE/Supervisory Patent Examiner, Art Unit 1763
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