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 .
Response to Amendment
All outstanding rejections, except for those maintained below, are withdrawn in light of applicant’s amendment filed on 3/10/2026.
The text of those sections of Title 35, U.S. Code not included in this action can be found in a prior office action.
The new grounds of rejection set forth below are necessitated by applicant’s amendment filed on 3/10/2026. In particular, claim 1 has been amended to include in component a polymer having an unsubstituted alkyl (meth)acrylate or a monomer having an alkoxysilyl group. This combination of limitations was not present in the original claims. Thus, the following action is properly made final.
Claim Rejections - 35 USC § 103
Claims 1-8 are rejected under 35 U.S.C. 103 as being unpatentable over Morooka (WO 2019/044863, citations below directed to US English-language equivalent US 2020/0199095) in view of JP ‘191 (JP 2012-107191, machine translation).
With respect to claims 1-6, Morooka discloses a curable resin composition comprising a compound which is identical to claimed General Formula (1) (abstract) including claimed General Formulae 2-1, 2-2, 2-3, and 2-4. (paragraph 0011). Morooka also discloses adding a (co)polymer having a radically polymerizable group in an amount of 5-100 mass % but more preferably 20-80 mass % (paragraphs 0132-0134). In a plurality of embodiments, the polymer is polymerized from radically polymerizable
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; non-polar aromatic monomers (claimed b1 unit)
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, and
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; and polar comonomer (claimed b2 unit)
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(page 21, whole page).
Morooka teaches a preferred amount of radically polymerizable groups of 20-80 mass % of the copolymer but fails to disclose the relative amounts of aromatic unit b1 or hydrogen bonding unit b2,
Even so, based on this amount, the remaining amount for both aromatic unit b1 and hydrogen unit b2 is 20-80 mass %. One can readily envisage amounts that overlap with the claimed ranges of 10 mass % or more and 3 mass % or more, respectively, given that they monomers would present in a significant amount.
Therefore, it would have been obvious to one of ordinary skill in the art to prepare a curable resin composition comprising component (A) of general formula (1) and component (B) polymer comprising aromatic units b1 and hydrogen bonding units b2 in amount overlapping with the claimed amounts—absent a showing of unexpected or surprising results.
Marooka fails to explicitly disclose adding alkyl(meth)acrylate but teaches that the curable composition may contain a (meth)acrylate monomer such as those described in paragraphs 0037-0046 of JP 2012-107191 (paragraph 0126).
JP ‘191 discloses in paragraph 0038 a (meth)acrylate monomer having an alicyclic structure of formula (3)
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, wherein L1 is preferably a single bond and B1 an alicyclic group having 5-15 carbon atoms with no double bond. JP ‘191 also teaches in paragraph 0042 that suitable monofunctional (meth)acrylate monomers include ethyl (meth)acrylate, isobutyl (meth)acrylate, and octyl (meth)acrylate.
Given that Marooka refers to JP ‘191 as teaching suitable (meth)acrylate comonomers and further given that JP ‘191 discloses adding alkyl (meth)acrylate comonomers, it would have been obvious to one of ordinary skill in the art to utilize an alkyl (meth)acrylate comonomer in the curable composition of Marooka.
With respect to claims 7 and 8, Morooka teaches that the cured product is used as an adhesive in a laminated glass lens substrate (paragraphs 0191-0192).
Response to Arguments
Applicant's arguments filed 3/10/2026 have been fully considered but they are not persuasive. Specifically, applicant argues that Marooka does not disclose a polymer (b) having a structure unit that is an unsubstituted alkyl (meth)acrylate.
Marooka teaches that the curable composition may contain a (meth)acrylate monomer such as those described in paragraphs 0037-0046 of JP 2012-107191 (paragraph 0126). JP ‘191 discloses in paragraph 0038 a (meth)acrylate monomer having an alicyclic structure of formula (3)
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, wherein L1 is preferably a single bond and B1 an alicyclic group having 5-15 carbon atoms with no double bond. JP ‘191 also teaches in paragraph 0042 that suitable monofunctional (meth)acrylate monomers include ethyl (meth)acrylate, isobutyl (meth)acrylate, and octyl (meth)acrylate. Therefore, Marooka fairly discloses and suggests adding unsubstituted alkyl (meth)acrylate comonomer.
Applicant also argues that the data of the specification as originally filed shows that adding unsubstituted alkyl (meth)acrylates provides for considerably improved adhesive force, moisture-heat resistance, and transmittance.
The data has been fully considered, however, it is insufficient to establish unexpected results for two reasons. First, the comparative examples are not representative of prior art Marooka. Specifically, the comparative examples do not include a component (B) but Marooka discloses claimed component (B). Case law holds that comparative showings must compare the claimed subject matter with the closest prior art to be effective. See In re Burckel, 592 F.2d 1175, 1179, 201 USPQ 67, 71 (CCPA 1979).
Second, the data is not reasonably commensurate in scope with the scope of the claims. Case law holds that evidence is insufficient to rebut a prima facie case if not commensurate in scope with the claimed invention. In re Grasselli, 713 F.2d 731, 741, 218 USPQ 769, 777 (Fed. Cir. 1983). Specifically, the examples only include a component (B) which is synthesized from benzyl methacrylate, t-butyl methacrylate, and N-(2-hydroxyethyl)acrylamide) (P-1 to P-15) or 2-hydroxyethyl methacrylate (P-21), wherein t-butyl methacrylate is not representative of claimed unsubstituted alkyl (meth)acrylate.
Conclusion
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). 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 nonprovisional extension fee (37 CFR 1.17(a)) 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.
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/VICKEY NERANGIS/Primary Examiner, Art Unit 1763
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