DETAILED ACTION
This communication responds to the application and claim set filed May 30, 2023, and the Response to Restriction Requirement filed July 20, 2026. Claims 1-20 are currently pending.
Non-elected claims 11-16 are WITHDRAWN.
Claims 1-10 and 17-20 are REJECTED for the reasons set forth below.
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
In its July 20 Response to Restriction, Applicant identified Group II for examination, but also identified those claims as 1-10 and 17-20. The examiner believes that the Applicant intended to elect Group I, given that the specific claims were enumerated. Thus, Applicant’s election without traverse of Group I, claims 1-10 and 17-20, is acknowledged. Claims 1-10 and 17-20 are under examination.
Priority
This application claims priority to US 63/347,345, filed May 31, 2022.
Claim Objections
Claim 2 is objected to because of the following informality:
Regarding claim 2, “G2” should be identified as a Grubbs second generation catalyst. Appropriate correction is required.
Claim Rejections - 35 USC § 102
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.
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.
Claims 1, 3-6, 7-10, 17, and 19 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Johnson et al. (US 2021/0147598).
Regarding claims 1, 3-6, 8, 10 and 19, Johnson teaches the following:
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(para. [0643].) The amount of DHF added is 20 mol%, relative to the amount of DCPD. The working life of the composition prior to cure is two hours, which is within the claimed range.
Regarding claims 8 and 17 specifically, Johnson is silent as to tuning the working or pot life based on the amount of DHF. However, given that Johnson teaches ranges of DHF relative to DCPD (see, e.g., para. [0467]), such an effect is necessarily present.
Regarding claim 9, Johnson teaches that the composition may be contained in a syringe (see para. [0391]), implicitly disclosing extruding the composition upon application.
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 2, 18, and 20 are rejected under 35 U.S.C. 103 as being unpatentable over Johnson et al. (US 2021/0147598) as applied to claims 1, 17, and 19 above, and further in view of Moore et al. (US 2018/0327531).
Regarding claims 2, 18, and 20, Johnson teaches all of the limitations of claims 1, 17, and 19. (See paragraph 12 above, which is incorporated by reference herein.)
The difference between Johnson and the present claims is that Johnson does not teach the presence of a rheological modifier. However, the presence of rheological modifiers in thermosets comprising DCPD is known in the art. For example, Moore teaches a thermoset composition comprising DCPD, a Grubbs catalyst, and a rheological modifier. (paras. [0062]-[0065].) It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have added a rheological modifier to the thermoset composition of Johnson to produce the desired flow behavior or viscosity of the composition. (See Moore, para. [0057].)
Claim 7 is rejected under 35 U.S.C. 103 as being unpatentable over Johnson et al. (US 2021/0147598).
Regarding claim 7, Johnson teaches all of the limitations of claim 1. (See paragraph 12 above, which is incorporated by reference herein.)
The difference between the teachings of Johnson discussed above and claim 7 is that Johnson’s example includes DHF in the amount of 20 mol%, which is outside the claimed range. However, Johnson more generally teaches that the ratio of first monomer (DCPD) to second monomer (DHF) ranges from 5 to 35:1 (see para. [0467]), or 2.86 to 20 mol%, which overlaps the claimed range. In the case where the claimed ranges “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).) It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have selected the overlapping portion of the range taught by Johnson.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to CATHERINE S BRANCH whose telephone number is (571)270-3539. The examiner can normally be reached Monday through Friday.
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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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CATHERINE S. BRANCH
Primary Examiner
Art Unit 1763
/CATHERINE S BRANCH/Primary Examiner, Art Unit 1763
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