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
Applicant’s election with traverse of Group I, claims 1-15, in the reply filed on 11/24/2025 is acknowledged. The traversal is on the grounds that the claims are sufficiently related to each other such that an undue burden would not be placed upon the Examiner, that the subject matter is not independent and distinct, and that different classifications are not adequate grounds for restriction (see Applicant’s Remarks at pg. 1). However, this is not found to be persuasive as the two inventions are related to different categories of invention that would require a different field of search (e.g., employing different search strategies or search queries IN ADDITION to searching different classes/subclasses or electronic resources), thereby resulting in a serious burden. Further, Applicants have provided no specific reason why the subject matter is not independent or distinct as previously outlined in the Restriction Requirement. Therefore, the restriction/election requirement is still deemed proper and is made final.
Claim Objections
Claims 1, 3, 8, 10, and 11 are objected to because of the following informalities:
• In claim 1, the term “CH2,O, S” should be amended to: “CH2, O, S” (i.e., a space should be present between “CH2” and “O”).
• In claim 8, the term “acrylate groups” should be amended to: “acrylate group.”
• In claim 10, the term “multi-functional vinyl monomer” should be amended to: “multi-functional aromatic vinyl monomer.”
• In claim 11, the term “multi-functional vinyl monomer” should be amended to: “multi-functional aromatic vinyl monomer.”
• In claim 3, the following two compounds appear to be the same compound, resulting in redundancy; to correct, the Examiner suggests deleting one of them:
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Claim Interpretation
For the purposes of examination, the term “vinyl group” as used throughout the claims (see claim 8) will be interpreted to include methacrylate and/or acrylate groups. Such an interpretation is supported by the prior art, see Yang et al. (US-20060029882-A1) (hereinafter referred to as “Yang”) at para. 0068. For example, a compound that contains two acrylate groups necessarily contains both a “vinyl group” and an “acrylate group” (i.e., one of the acrylate groups reads on the “vinyl group,” while the other of the acrylate groups reads on the “acrylate group”).
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.
Claims 3 and 9 are 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.
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In claim 3, the claim claims the following compound:
However, nowhere in the claim is “n” defined. It is unclear what “n” actually entails – is it a defined range or any integer? For the purposes of examination, the Examiner is interpreting “n” to be any integer. To correct, the Examiner suggests deleting the compound from the claim.
In claim 9, a multitude of the listed compounds lack an acrylate group, despite claim 9 being dependent on claim 8 and claim 8 requiring the monomer to have an acrylate group. Consequently, confusion arises as to whether an acrylate group is really required to meet claim 9. For the purposes of examination, the Examiner is treating any of the compounds listed in claim 9 to read on the claim. To correct, the Examiner suggests amending claim 9 to be dependent on claim 1 instead of claim 8.
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, 4, 5, 7, 8, and 15 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Akimoto et al. (JP-2016155901-A), with reference to the included machine translation (hereinafter referred to as “Akimoto”), with evidence from Adeka (“Antioxidants: ADK STAB AO Series (Hindered Phenol Antioxidants).” Adeka, www.adeka.co.jp/en/chemical/products/plastic/pro111c.html) (hereinafter referred to as “Adeka Phenol”) as to the rejection of claims 1, 4, 5, 7, 8, and 15, and with evidence from Millipore Sigma (“Bisphenol A Ethoxylate Diacrylate.” Millipore Sigma, www.sigmaaldrich.com/US/en/product/aldrich/412090?msockid=2f42eb7ad8416d8e0504fdc8d9d76c34) (hereinafter referred to as “Millipore Sigma”) as to the rejection of claim 8 only.
Regarding claims 1 and 5, Akimoto teaches a photocurable composition (see Akimoto at pg. 1, para. 1; pg. 2, para. 5; and pg. 60, para. 7, teaching a curable (resin) composition which may be cured by ultraviolet rays) comprising:
• a polymerizable material (see Akimoto at pg. 2, para. 5, teaching the composition as containing (B) a compound having at least two ethylenically unsaturated groups; also see Akimoto at pg. 18, para. 3, teaching the ethylenically unsaturated group as having radical reactivity, i.e., as being curable/polymerizable);
• a hindered stabilizer, wherein the hindered stabilizer is a hindered phenol of formula (2) (see Akimoto at pg. 53, para. 3-4, teaching the composition may contain an antioxidant, such as a phenolic antioxidant; also see Akimoto at pg. 56, para. 3, teaching the phenolic antioxidant may be ADK STAB AO-330, i.e., ADEKASTAB AO-330; ADEKASTAB AO-330 has the following structure, as evidenced by Adeka Phenol at pg. 3-4:
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ADEKASTAB AO-330 is a hindered phenol of formula (2), see claim 5 as well); and
• a photoinitiator (see Akimoto at pg. 49, para. 4, teaching the composition may contain a photo radical initiator); wherein
• the polymerizable material comprises at least one multi-functional aromatic vinyl monomer (see Akimoto at pg. 19, para. 13, teaching the compound (B) having two or more ethylenically unsaturated groups may be a bifunctional or higher vinyl compound; also see Akimoto at pg. 24, para. 3, teaching the bifunctional or higher vinyl compound as the component (B) may include trivinylbenzene; trivinylbenzene is a multi-functional aromatic vinyl monomer).
Regarding claim 4, see Akimoto at pg. 56, para. 3, teaching the phenolic antioxidant may be ADK STAB AO-330, i.e., ADEKASTAB AO-330; ADEKASTAB AO-330 has a molecular weight of 775, as evidenced by Adeka Phenol at pg. 3-4.
Regarding claim 7, see Akimoto at pg. 24, para. 3, teaching the bifunctional or higher vinyl compound as the component (B) may include trivinylbenzene; trivinylbenzene is a trivinylphenyl monomer.
Regarding claim 8, see Akimoto at pg. 19, para. 13, teaching the compound (B) may include a bifunctional or higher (meth)acrylate; also see Akimoto at pg. 20, para. 7, teaching ethoxylated bisphenol A di(meth)acrylate as a suitable bifunctional or higher (meth)acrylate; ethoxylated bisphenol A diacrylate has the following structure, as evidenced by Millipore Sigma at pg. 1:
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Ethoxylated bisphenol A diacrylate thus contains a “vinyl group” (i.e., the vinyl group on the left) and an “acrylate group” (i.e., the acrylate group on the right); also see the “Claim Interpretation” section above, setting forth the term “vinyl group” to include acrylate groups. Further, ethoxylated bisphenol A diacrylate is a multifunctional aromatic vinyl monomer. Note that for the claim 8 rejection, ethoxylated bisphenol A diacrylate is used as the compound (B) rather than the trivinylbenzene relied upon in claim 1.
Regarding claim 15, Akimoto does not necessitate the presence of a solvent in their composition; thus, Akimoto necessarily teaches embodiments where the composition lacks a solvent.
Claims 1-4, 8, 10, 13, and 15 are rejected under 35 U.S.C. 102(a)(2) as being anticipated by Miyazaki et al. (US-20230242808-A1) (hereinafter referred to as “Miyazaki”), with evidence from Adeka (“ADK STAB LA Series (Hindered Amine Light Stabilizers).” Adeka, www.adeka.co.jp/en/chemical/products/plastic/pro116c.html) (hereinafter referred to as “Adeka HALS”) with respect to claims 1-4, 8, 10, 13, and 15, and with evidence from ChemicalBook (“Bisphenol A Diacrylate.” ChemicalBook, www.chemicalbook.com/ChemicalProductProperty_EN_CB6202473.htm) (hereinafter referred to as “ChemicalBook”) as to the rejection of claim 8 only.
Regarding claims 1-3, Miyazaki teaches a photocurable composition (see Miyazaki at para. 0103 and 0350, teaching a photochromic curable composition which may be cured by active energy rays) comprising:
• a polymerizable material (see Miyazaki at para. 0272 and 0277, teaching the curable composition to contain a polymerizable compound, such as a radically polymerizable compound);
• a hindered stabilizer, wherein the hindered stabilizer is a hindered amine of formula (1), wherein X is Y-Z, with Z comprising at least one reactive C=C group (see Miyazaki at para. 0339-0342, teaching the curable composition may contain an ultraviolet stabilizer, such as ADKSTAB LA-82; ADKSTAB LA-82, i.e., ADEKASTAB LA-82, has the following structure, as evidenced by Adeka HALS at pg. 4:
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ADEKASTAB LA-82 is a hindered amine of formula (1), see claim 3 as well; moreover, ADEKASTAB LA-82 has a carbon-carbon double bond in the molecule); and
• a photoinitiator (see Miyazaki at para. 0353, suggesting their composition may contain a photopolymerization initiator; also see Miyazaki at para. 0407 and 0415, teaching an example composition containing a photopolymerization initiator; accordingly, Miyazaki reasonably teaches via their example embodiments the use of a photoinitiator in their curable composition); wherein
• the polymerizable material comprises at least one multi-functional aromatic vinyl monomer (see Miyazaki at para. 0310, teaching divinylbenzene as a suitable radically polymerizable compound that may be used in their composition; divinylbenzene reads on the claimed multi-functional aromatic vinyl monomer).
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Regarding claim 4, see Miyazaki at para. 0342, teaching ADKSTAB LA-52 as a suitable ultraviolet stabilizer; ADKSTAB LA-52 has the following structure, as evidenced by Adeka HALS at pg. 2:
ADEKASTAB LA-52 reads on the claimed hindered amine of formula (1), where R1 is a CH3 group and X is Y-Z, where Y is O and Z is an organic substituent; ADEKASTAB LA-52 has a molecular weight of 847 g/mol, as evidenced by Adeka HALS at pg. 2; accordingly, ADEKASTAB LA-52 meets the claimed limitation; note that for the claim 4 rejection, ADEKASTAB LA-52 is used as the hindered amine light stabilizer rather than ADEKASTAB LA-82 relied upon in claim 1.
Regarding claim 8, see Miyazaki at para. 0293, teaching the radically polymerizable compound may include bisphenol A di(meth)acrylate. Bisphenol A diacrylate has the following structure, as evidenced by ChemicalBook at pg. 1:
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Bisphenol A diacrylate thus contains a “vinyl group” (i.e., the vinyl group on the left) and an “acrylate group” (i.e., the acrylate group on the right); also see the “Claim Interpretation” section above, setting forth the term “vinyl group” to include acrylate groups. Further, bisphenol A diacrylate is a multifunctional aromatic vinyl monomer. Note that for the claim 8 rejection, bisphenol A diacrylate is used as the polymerizable compound rather than the divinylbenzene relied upon in claim 1.
Regarding claim 10, see Miyazaki at para. 0285, teaching the radically polymerizable compound may be a polyfunctional radically polymerizable compound; also see Miyazaki at para. 0286, teaching the polyfunctional radically polymerizable compound may include a first polyfunctional radically polymerizable compound having 2 to 10 radically polymerizable substituents; also see Miyazaki at para. 0287 and 0310, teaching divinylbenzene as an example of the first polyfunctional radically polymerizable compound; also see Miyazaki at para. 0338, teaching the first polyfunctional radically polymerizable compound may range from 80 to 100 parts by mass relative to 100 parts by mass of the total of the radically polymerizable compounds; accordingly, Miyazaki teaches divinylbenzene may be present in an amount of 80 to 100% by mass in the radically polymerizable component; this range falls completely within the claim 10 range.
Regarding claim 13, see Miyazaki at para. 0287 and 0310, teaching divinylbenzene as an example of a radically polymerizable compound; also see Miyazaki at para. 0285 and 0338, teaching the radically polymerizable compound can be used alone; accordingly, Miyazaki reasonably teaches the radically polymerizable compound may contain only divinylbenzene; thus, in such a case where the radically polymerizable compound contains only divinylbenzene, the carbon content is 92.2% (divinylbenzene has a molecular formula of C10H10 and a molar mass of 130.190 g/mol; the carbon contribution of divinylbenzene is 120 g/mol (10 carbons • 12 g/mol per carbon = 120 g/mol total carbon); thus, the carbon content is 120/130.190 • 100, or 92.2%); this value of 92.2% falls within the claimed range.
Regarding claim 15, Miyazaki does not necessitate the presence of a solvent in their composition; Miyazaki merely teaches a solvent as something that “may be blended,” i.e., as optional in their composition (see Miyazaki at para. 0339). Thus, Miyazaki necessarily teaches embodiments where the composition lacks a solvent.
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 6 and 14 are rejected under 35 U.S.C. 103 as being unpatentable over Akimoto.
Regarding claim 6, see Akimoto at pg. 53, para. 6, teaching the content of the antioxidant in the composition may range from 0.1 to 5% by mass, which overlaps the claimed range, establishing a prima facie case of obviousness, see MPEP § 2144.05.
Regarding claim 14, see Akimoto at pg. 47, para. 8-9, teaching the pot life viscosity of the curable (resin) composition to range from 100 Pa-s or less; this range overlaps the claimed range, establishing a prima facie case of obviousness, see MPEP § 2144.05; alternatively, see Akimoto at pg. 36, para. 13.
Claim 9 is rejected under 35 U.S.C. 103 as being unpatentable over Akimoto, as applied to claim 8 above, and further in view of Kawabe (US-20060177666-A1) (hereinafter referred to as “Kawabe”).
Regarding claim 9, while Akimoto teaches the composition according to claim 8 outlined above, Akimoto fails to explicitly teach the multi-functional aromatic vinyl monomer as being selected from the listed group of compounds (the “trivinylbenzene” taught by Akimoto is vague with respect to the exact isomer).
However, Kawabe teaches a curable resin composition (see Kawabe at para. 0007). Kawabe further teaches 1,3,5-trivinylbenzene as a suitable trivinyl aromatic compound (see Kawabe at para. 0038).
Akimoto teaches their compound (B) may include trivinylbenzene (see Akimoto at pg. 24, para. 3).
In general, 1,3,5-trivinylbenzene is a well-known trivinylbenzene suitable for use in a curable resin composition (see Kawabe at para. 0038), and thus its use as the trivinylbenzene in Akimoto would yield a reasonable expectation of success.
Therefore, it would have been obvious for one of ordinary skill in the art before the effective filing date of the claimed invention to use 1,3,5-trivinylbenzene as the trivinylbenzene in Akimoto, as the selection of a known material, which is based upon its suitability for the intended use, is within the ambit of one of ordinary skill in the art. See In re Leshin, 125 USPQ 416 (CCPA 1960), Sinclair & Carroll Co. v. Interchemical Corp., 325 U.S. 327, 65 USPQ 297 (1945), and MPEP § 2144.07.
1,3,5-trivinylbenzene is represented by the first listed structure in claim 9. Also see the interpretation set forth in the 112(b) rejection of claim 8 above.
Claims 11-12 are rejected under 35 U.S.C. 103 as being unpatentable over Miyazaki.
Regarding claim 11, see claim 10 rejection above; the range of 80 to 100% by mass overlaps the claim 11 range, establishing a prima facie case of obviousness, see MPEP § 2144.05.
Regarding claim 12, while Miyazaki teaches the photocurable composition according to claim 1 outlined above, Miyazaki fails to explicitly teach an amount of the polymerizable material to be at least 90 wt% based on the total weight of the photocurable composition.
However, Miyazaki does teach an example, Example 9, containing 100 parts of radically polymerizable monomers, 0.3 parts of photoinitiator, and 4 parts of ultraviolet stabilizer (1 part + 3 parts = 4 parts total) (see Miyazaki at para. 0407-0419).
Therefore, it would have been obvious for one of ordinary skill in the art before the effective filing date of the claimed invention to set the content of the radically polymerizable monomer, the photoinitiator, and the ultraviolet stabilizer to be 100 parts, 0.3 parts, and 4 parts, respectively, in the curable composition of Miyazaki, as Miyazaki teaches an example as such.
Moreover, Miyazaki teaches the content of the photochromic compound in their curable composition to range from 0.001 to 10 parts by mass per 100 parts of the polymerizable compound (see Miyazaki at para. 0273). Thus, following the above modification, the curable composition of Miyazaki contains:
• 0.001 to 10 parts of photochromic compound
• 100 parts of radically polymerizable monomer (divinylbenzene)
• 0.3 parts of photoinitiator
• 4 parts of ultraviolet stabilizer (ADEKASTAB LA-82).
Consequently, the content of the polymerizable monomer (divinylbenzene) in Miyazaki ranges from 87.5% to 95.9% (100 parts polymerizable monomer/(10 parts photochromic compound maximum + 100 parts polymerizable monomer + 0.3 parts photoinitiator + 4 parts ultraviolet stabilizer) • 100 = 87.5% content polymerizable monomer minimum in ink; 100 parts polymerizable monomer/(0.001 parts photochromic compound minimum + 100 parts polymerizable monomer + 0.3 parts photoinitiator + 4 parts ultraviolet stabilizer) • 100 = 95.9% content polymerizable monomer maximum in ink). This range of 87.5% to 95.9% overlaps the claimed range, establishing a prima facie case of obviousness, see MPEP § 2144.05.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure:
Yang et al. (US-20060029882-A1) teach a photo-imageable composition precursor (see Yang at Abstract).
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Jeffrey E Barzach whose telephone number is (571)272-8735. The examiner can normally be reached Monday - Friday; 8 am - 5 pm.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Amber R Orlando can be reached on 571-270-3149. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/J.E.B./Examiner, Art Unit 1731
/AMBER R ORLANDO/Supervisory Patent Examiner, Art Unit 1731