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 .
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 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.
Claims 11, 14, 17, 23 are pending. Applicant’s previous election of Group II, claims 11, 14, 17 and the following species still applies and claims 23 remain withdrawn.
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Continued Examination Under 37 CFR 1.114
A request for continued examination under 37 CFR 1.114, including the fee set forth in 37 CFR 1.17(e), was filed in this application after final rejection. Since this application is eligible for continued examination under 37 CFR 1.114, and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114. Applicant's submission filed on 03/18/26 has been entered.
All claims are drawn to the same invention claimed in the application prior to the entry of the submission under 37 CFR 1.114 and could have been finally rejected on the grounds and art of record in the next Office action if they had been entered in the application prior to entry under 37 CFR 1.114.
Accordingly, THIS ACTION IS MADE FINAL even though it is a first action after the filing of a request for continued examination and the submission under 37 CFR 1.114. See MPEP § 706.07(b).
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 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.
If 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.
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 set forth in Graham v. John Deere Co., 383 U.S. 1, 148 USPQ 459 (1966), that are applied for establishing a background for determining obviousness under 35 U.S.C. 103 are summarized as follows:
Determining the scope and contents of the prior art.
Ascertaining the differences between the prior art and the claims at issue.
Resolving the level of ordinary skill in the pertinent art.
Considering objective evidence present in the application indicating obviousness or nonobviousness.
When something is indicated as being “obvious” this should be taken as shorthand for “prima facie obvious to one having ordinary skill in the art to which the claimed invention pertains before the effective filing date of the invention”.
When a range is indicated as overlapping a claimed range, unless otherwise noted, this should be taken as short hand to indicate that the claimed range is obvious in view of the overlapping range in the prior art as set forth in MPEP 2144.05, in the case where the claimed range “overlap or lie inside ranges disclosed by the prior art”, a prima facie case of obviousness exists, In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990).
Claim(s) 11, 14, 17 is/are rejected under 35 U.S.C. 103 as being unpatentable over Akiike (U.S. 2011/0105700) in view of Shiba (U.S. 2008/0008971).
Regarding claims 11, 14, 17, Akiike teaches a composition comprising a crosslinker as in claim 17 ([0104]) and a compound formed by reacting an epoxy functional polysiloxane with a cinnamic acid derivative to produce a compound overlapping the elected species (see abstract, [0010], [0015]-[0019], disclosing that the epoxy siloxane starting ingredient may be formed by hydrolyzing and condensing silane monomers with a epoxycyclohexyl ethyl group as X1, a methyl group as Y1, and two hydrolyzable groups, e.g., dimethoxysilane, resulting in a monomer MW of about 230, which, when combined with the disclosed overall molecular weight range for the polysiloxane, corresponds to a number of repeating units in the epoxy polysiloxane overlapping the number, 4, in the elected species, and with the cyclic structure of the elected species being taught in Akiike via the lack of terminal silane repeating units in formula 1 and via the suggestion of using only silane monomers with two hydrolyzable groups, such that when these monomers are condensed to form the polysiloxane, the polymer chain would have to loop back on itself to finish the condensation reaction, [0041], formula 2-2 matching the trans-4-methoxycinnamic acid used in the present specification to form the elected species when reacted with the cyclic epoxy siloxane having 4 silane repeating units discussed above). The resulting compound matching the elected species inherently has the claimed light absorbing property and a structure within claimed scope.
Akiike does not disclose the claimed catalyst compounds but calls for cationic catalyst for epoxy curing ([0108]) and Shiba is also directed towards epoxy curable compositions and teaches that such catalysts as claimed provide the cationic curing catalysis desired by Akiike such that it would have been obvious to have included such compounds in Akiike to provides the desired cationic catalysis as taught by Shiba (see abstract, [0032]).
The recitation of a forming a release layer as part of a laminate, and all the recitations related to the laminate, are not given patentable weight (i.e., are merely an intended use) because the claims are directed to a composition, not a cured release layer or a laminate. The compound discussed above is also inherently capable of absorbing the light and contributing to facilitating the release as claimed and the composition overall is inherently capable of forming a release layer.
“During examination, statements in the preamble reciting the purpose or intended use of the claimed invention must be evaluated to determine whether the recited purpose or intended use results in a structural difference (or, in the case of process claims, manipulative difference) between the claimed invention and the prior art. If so, the recitation serves to limit the claim. If a prior art structure is capable of performing the intended use as recited in the preamble, then it meets the claim.”
See MPEP 2111.02 II.
Response to Arguments
Applicant’s remarks are not persuasive.
Applicant argues that the scope of the claims has been narrowed with respect to the R105 group however this group is not required since there are many other formula/structures within the claimed scope that do not include the R105 group (in particular, the elected species does not use an R105 group).
With respect to the elected species, Applicant argues that Akiike does not disclose the claimed cyclohexyl groups in [0042] with respect to the R8 group, but that citation includes non-limiting examples of alicyclic groups and is limited to formula 3 in Akiike, which is not even required (formula 2 is an alternative option in Akiike from which formula 2-2, see below, is a species). Furthermore, as explained in the rejection, the cyclohexyl group in the elected species is not formed from R8 being a cyclohexyl group, but rather is formed from the COOH group in formula 2-2 of Akiike (4-methoxy cinnamic acid) reacting with the epoxycyclohexyl group from [0015]-[0019] of Akiike to open the epoxide ring but leave the cyclohexyl group intact, which is the same mechanism in [0568] of the present PGPub which forms the elected species. Accordingly, the previous rejection is unchanged and maintained and this action is final.
Conclusion
All claims are drawn to the same invention claimed in the application prior to the entry of the submission under 37 CFR 1.114 and could have been finally rejected on the grounds and art of record in the next Office action if they had been entered in the application prior to entry under 37 CFR 1.114. Accordingly, THIS ACTION IS MADE FINAL even though it is a first action after the filing of a request for continued examination and the submission under 37 CFR 1.114. See MPEP § 706.07(b). Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any extension fee pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the mailing date of this final action.
References cited in any corresponding foreign applications have been considered but would be cumulative to the above. Any inquiry concerning this communication or earlier communications from the examiner should be directed to MICHAEL B NELSON whose direct telephone number is (571)272-9886 and whose direct fax number is (571)273-9886 and whose email address is Michael.Nelson@USPTO.GOV. The examiner can normally be reached on Mon-Sat, 7am - 7pm.
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, Callie Shosho can be reached on 571-272-1123. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300 (faxes sent to this number will take longer to reach the examiner than faxes sent to the direct fax number above).
Information regarding the status of an application may be obtained from the Patent Application Information Retrieval (PAIR) system. Status information for published applications may be obtained from either Private PAIR or Public PAIR. Status information for unpublished applications is available through Private PAIR only. For more information about the PAIR system, see http://pair-direct.uspto.gov. Should you have questions on access to the Private PAIR system, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative or access to the automated information system, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/MICHAEL B NELSON/
Primary Examiner, Art Unit 1787
Prosecution Insights