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 (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.
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 1-10 and 13-14 are rejected under 35 U.S.C. 103 as being unpatentable over Kuwana (JP2011213790; reference made to include English translation).
Kuwana exemplifies in Example 20 (Table 5) composition including various amount of one and two ethylenically unsaturated compounds. The actual compounds are found above and below the Tables 1-6.
Relevant to the claim, B-4 and B-6 are compounds which closely read over Formula 1 as claimed. See below.
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Wherein the F provides the recited asymmetry in R2, R3 and R4.
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The methyl group on the last benzene ring provides the recited asymmetry in R2, R3, R4.
In both case the -O-(CH2)-O- group reads the Sp1 group claimed of Claim 1 as the alkylene substituted with O. See Applicant’s examples which have the same structure of Sp1 but for 4 carbons rather than 6.
These compounds do not have an alkoxy of 1 to 10 carbon atoms for R1 as claimed in Claim 1. These compounds have alkyl groups in that position (last phenyl ring left to right).
Kuwana teaches these B compounds in ¶[0072] listing a large number of different B compounds afterwards and detailing in this listing a number of potential substituents for the R1 position as claimed (alkyl exemplified by Kuwana). Specifically, Kuwana teaches for B-1, B-8, B-9, B-10, B-11, B-19, B-21, B-26, B-28, B-32 the end group (R1 position as claimed) is a alkyoxy group with 0 to 10 carbon atoms (¶[0107]). Additionally, one of ordinary skill in the art is a reasonably aware through comparison of the above compounds the difference between these compounds is the -O- substitution. In other words, -(CH2)2CH3 has an alkoxy version of -O-(CH2)2CH3.
It would have been obvious to a person having ordinary skill in the art at the time the invention was filed to practice the invention of Kuwana, in particular that of Example 20, by using alkoxy end capped versions of B-4 and/or B-6 because Kuwana reasonably suggests alkoxy versions of these substituents in these areas as discussed above.
The -O-(CH2)2CH3 version reads over R1 = C3 alkoxy of Claim 1.
The -O-CH3 version reads over R1 = C1 alkoxy of Claim 1.
D-2 reads over the chiral compound of Claim 1, Claim 6, Claim 7, Claim 8 (-CH=CH-COO-), Claim 9 (isosorbide) and Claim 10.
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Claim 7 and 8 recite L3 - L6 as the entities to be limited, in light of the §112 above and the symmetry in L3-L6 recited by Formula (2) (L3 is symmetrical with L4 and L6 is symmetrical with L5), the claim language above is interpreted to limit L3, L4, L5, L6.
Kuwana exemplifies films which reads over Claim 13.
In Example 20, A-2, C-1, C-2 and D-2 all have 2 ethylenically unsaturated groups (C=C) and B-1 to B-6 have only 1. No other compounds have C=C groups. The total of A-D compounds in Example 20 is 95.4. The total of B-1 to B-6 compounds is 70.6. Therefore, the amount of 1 (C=C) compounds vs the total of all C=C compounds as claimed is 70.6/95.4= 74 wt% which is close to the 75 % limitation of Claim 1. Note the claims do not limit the 60% limitation to only of the 1 (C=C) compounds which meet Formula (1).
In Kuwana, the LCP B is taught as alterative versions in ¶[0072], ¶[0105] (Formula 2), ¶[0131] (Formula 3). Formula 2 and Formula 3 appears to be more specific variations of those taught in ¶[0072]+. All these compounds are the one ethylenically unsaturated LCP of Kuwana.
In ¶[00112], Kuwana teaches the Formula 2 can be used in an amount of 5 to 80 wt%. Kuwana does not teach amounts of the ¶[0072] versions or Formula 3 versions. However, as Formula 2 is part of the Component B category of Kuwana and is reasonably suggested to be a more specific version of this category rather than a completely different type of Component B, one of ordinary skill in the art is reasonably suggested the amounts of 5 to 80 wt% apply to Component B rather than specifically to only Formula 2 especially in light of Kuwana being specifically silent on the amounts of the ¶[0072]+ and Formula 3 compounds.
It would have been obvious to a person having ordinary skill in the art at the time the invention was filed to practice the invention of Kuwana, in particular that of Example 20, such the amount of Component B (the one ethylenically unsaturated LCP monomer) is present in an amount of from 5 to 80 wt% because Kuwana reasonably suggests this range as discussed above.
Kuwana does to exactly state what the weight percent is with respect to.
This sets up several reasonable variations in how the weight percent teaching is interpreted; total composition (including solvent), solids only (i.e. no solvent) and only with respect to the ethylenically unsaturated component.
These various interpretations of Kuwana for Example 20 are presented below.
Example 20
Total Comp
No Solvent
Only C=C
A-2
2
1.25%
2.00%
2.10%
B-2
22.1
13.83%
22.13%
23.17%
B-3
8.8
5.51%
8.81%
9.22%
B-4
22.1
13.83%
22.13%
23.17%
B-5
8.8
5.51%
8.81%
9.22%
B-6
8.8
5.51%
8.81%
9.22%
C-1
8.8
5.51%
8.81%
9.22%
C-2
8.8
5.51%
8.81%
9.22%
D-2
5.2
3.25%
5.21%
5.45%
E-1
4
2.50%
4.01%
E-3
0.3
0.19%
0.30%
F-1
20
12.51%
F-3
40
25.02%
G-2
0.1
0.06%
0.10%
H-2
0.05
0.03%
0.05%
159.85
99.85
95.4
1 C=C
44%
70.71%
74.00%
All C=C
60%
95.54%
100.00%
1 / All
74%
74%
74%
Component F is the solvent and Components E, G and H are auxillary non-ethylenically unsaturated compounds in Kuwana. The percentage values are the percents of that component with respect to the total of the column. (44 wt% = 44 wt% total composition including solvent and 60 wt% is 60 wt% of the total comp).
Therefore, Example 20 appears have the amount of 1 C=C Component B in the range of 5 to 80 wt% regardless of what the weight percent is with respect to.
As Kuwana teaches in ¶[0204] ratios of the solvents to the total amount of solids one of ordinary skill in the art is reasonably suggested the amount of Component B are with respect to either of the No Solvent or the Only C=C because the solids teachings in Kuwana. Additionally, Only C=C is reasonably suggested as the amount of auxiliary components is small relative to the total weight of solids. One of ordinary skill in the art would be motivated to keep the same amounts of all C=C the same as this is the total reacted amount responsible for making the LCP.
This leads one of ordinary skill in the art to up to 80 wt% / 95.54 % = ~83.7 % mass of 1 C=C to All C=C with Example 20 based on the teachings of Kuwana. In other words, 74 % to 83.7 % according to the claimed ratio (Example 20 original to max 80 wt% 1 C=C).
The Only C=C consideration with respect to the weight percent teaching would lead to 80 wt% / 100 wt % or simply 80 % the recited limitation. In other words, a range of 74 to 80 % according to the recited limitation.
Both overlap the claimed range of Claim 1 thereby rendering it obvious.
Alternatively, the 74 wt% of Example 20 of Kuwata is considered close enough to the range of instant claim. As Kuwata teaches a range of 1 C=C compounds in the compositions and the above analysis demonstrates the 75 wt% or more claimed is achievable by Kuwata, one of ordinary skill in the art is reasonably suggested the 74 wt% of 1 C=C compounds would have the same or similar properties as 75 wt% 1 C=C compounds rendering the claimed range of Claim 1 obvious.
A prima facie case of obviousness is established when the claimed range and the prior art range do not overlap but are close enough such that one skilled in the art would have expected them to have the same [or similar] properties. In re Peterson, 315 F.3d at 1329, citing Titanium Metals Corp. v. Banner, 778 F.2d at 783.
Kuwana does not exemplify compound such as those in B-1 to B-6 which have substituents as claimed in Claims 2-4 and the combination of L and R3 of Claim 5.
However, in ¶[0134] specifically teaches Y3, Y4, Y5 can be a carboxy group (COOX). And makes mention in ¶[0132] and ¶[0134] carboxy groups may have an alkyl group having 1to 10 carbon atoms. This teaching of Y3, Y4, Y5 also discusses F substitution which is exemplified in the B compounds above on the center benzene ring.
Therefore, it would have been obvious to a person having ordinary skill in the art at the time the invention was filed to practice the invention of Kuwana, in particular that of Example 20, in which the F substituent on the middle benzene ring in B-4 is substituted with COO because Kuwana teaches in ¶[0134] these two substituents are functionally equivalent, as in serving the same function in the invention. One of ordinary skill in the art would have been motivated to choose this COO group to have an alkyl group of 1 to 10 carbon atoms because Kuwana teaches this for other similarly used COO substituents in ¶[0132] and ¶[0151].
The above reads over the limitations of Claim 2, Claim 3, and Claim 4.
With respect to Claim 5, Kuwana specifically teaches Z1/Z2 (the groups between the phenylene/benzene groups) can be COO, OCO, or C≡C. ¶[0009] COO and OCO structures for the middle benzene ring are exemplified in various compounds such as in ¶[0085] Chemical Formula 68.
It would have been obvious to a person having ordinary skill in the art at the time the invention was filed to practice the invention of Kuwana, such as the modified (B-4) above such that the C≡C was substituted with OCO as this is also a carboxylic group such as in the COO substituent on the benzene ring and Kuwana teaches COO, OCO and C≡C can all be used for this linkage. This combination of COO on the middle ring as a substituent and COO, OCO linkages between phenylene / benzene rings reads over the formula of Claim 5.
Claim 14 is read over as it is a combination of Claim 1 and Claim 5. Therefore, it is read over the same reasons as put forth in these rejections.
Applicant presents no examples which compare the type or ordering on any substituent on the benzene rings of compounds of Formula 1 nor the specific combination of Claim 5 leads to any unexpected benefits over the prior art structures. Applicant’s examples appear to only consider amounts of the variously required components and not the structures of these components outside of the number of single C=C groups per compound and amount of said compound in relation to all C=C compounds.
Claims 11-12 are rejected under 35 U.S.C. 103 as being unpatentable over Kuwana (JP2011213790; reference made to include English translation) in view of Takasago (WO2019142707; reference made to included English translation).
Kuwana is applied as above under §102.
Kuwana does not teach or suggest the specific structure of the recited isosorbide chiral agent recited.
Kuwana is not limited to the chiral agents exemplified, however.
Takasago, working in the field of polymerizable liquid crystal composition using chiral agents, teaches in ¶[0045-0047] isosorbide chiral agents which can change the alignment structure such as helical pitch of the cholesteric liquid crystalline phase according to the amount of light at the time of irradiation.
The exemplified chiral compound is below:
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It would have been obvious to a person having ordinary skill in the art at the time the invention was filed to practice the invention of Kuwana, in particular that of Example 20, such that the chiral compound D is the chiral compound of Takasago discussed above for the advantage of using a chiral compound that change the alignment of the cholesteric liquid crystalline phase according to the amount of light at the time of irradiation as taught by Takasago. One of ordinary skill in the art would have been motivated to choose the above Chemical Formula 8 of Takasago for the above substitution because it is exemplified.
The above formula reads over Claim 11 and Claim 12.
Applicant’s comparative examples do not compare different chiral compounds; therefore, the evidence of record does not suggest the choice of chiral compound reasonably suggests unexpected benefits not otherwise realized practicing Kuwana.
Claim 14 is rejected under 35 U.S.C. 103 as being unpatentable over Kuwana (JP2011213790; reference made to include English translation).
Kuwana exemplifies in Example 20 (Table 5) composition including various amount of one and two ethylenically unsaturated compounds. The actual compounds are found above and below the Tables 1-6.
Relevant to the claim B-4 and B6 reads over the compound of Formula 1 as claimed. See below.
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Wherein the F provides the recited asymmetry in R2, R3 and R4.
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The methyl group on the last benzene ring provides the recited asymmetry in R2, R3, R4.
In both case the -O-(CH2)-O- group reads over the Sp1 group claimed of Claim 1 as the alkylene substituted with O. See Applicant’s examples which have the same structure of Sp1 but for 4 carbons rather than 6.
D-2 reads over the chiral compound of Claim 14.
In Example 20, A-2, C-1, C-2 and D-2 all have 2 ethylenically unsaturated groups (C=C) and B-2 to B-6 have only 1. No other compounds have C=C groups. The total of A-D compounds in Example 20 is 95.4. The total of B-2 to B-6 compounds is 70.6. Therefore, the amount of 1 (C=C) compounds vs the total of all C=C compounds as claimed is 70.6/95.4= 74 wt% which reads over the 60 % limitation of Claim 1. Note the claims do not limit the 60% limitation to only those 1 (C=C) compounds which meet Formula (1).
Kuwana does not exemplify compound such as those in B-1 to B-6 which have substituents as claimed (COOX) nor the COO / OCO structure of Claim 14.
However, in ¶[0134] specifically teaches Y3, Y4, Y5 can be a carboxy group (COOX). And makes mention in ¶[0132] and ¶[0134] carboxy groups may have an alkyl group having 1to 10 carbon atoms. This teaching of Y3, Y4, Y5 also discusses F substitution which is exemplified in the B compounds above on the center benzene ring.
Therefore, it would have been obvious to a person having ordinary skill in the art at the time the invention was filed to practice the invention of Kuwana, in particular that of Example 20, in which the F substituent on the middle benzene ring in B-4 is substituted with COO because Kuwana teaches in ¶[0134] these two substituents are functionally equivalent, as in serving the same function in the invention. One of ordinary skill in the art would have been motivated to choose this COO group to have an alkyl group of 1 to 10 carbon atoms because Kuwana teaches this for other similarly used COO substituents in ¶[0132] and ¶[0151].
The above reads over the limitations of Claim 2, Claim 3, and Claim 4.
With respect to COO/OCO, Kuwana specifically teaches Z1/Z2 (the groups between the phenylene/benzene groups) can be COO, OCO, or C≡C. ¶[0009] COO and OCO structures for the middle benzene ring are exemplified in various compounds such as in ¶[0085] Chemical Formula 68.
It would have been obvious to a person having ordinary skill in the art at the time the invention was filed to practice the invention of Kuwana, such as the modified (B-4) above such that the C≡C was substituted with OCO as this is also a carboxylic group such as in the COO substituent on the benzene ring and Kuwana teaches COO, OCO and C≡C can all be used for this linkage. This combination of COO on the middle ring as a substituent and COO, OCO linkages between phenylene / benzene rings reads over the formula of Claim 5.
Applicant presents no examples which compare the type or ordering on any substituent on the benzene rings of compounds of Formula 1 nor the specific combination of Claim 5 leads to any unexpected benefits over the prior art structures. Applicant’s examples appear to only consider amounts of the variously required components and not the structures of these components outside of the number of single C=C groups per compound and amount of said compound in relation to all C=C compounds.
Response to Arguments
Applicant’s remarks and claim amendments filed April 1, 2026 have been fully considered but are not sufficient to move the application to allowance. Claim 14 is introduced as a new claim and represents a combination of previous Claim 1 and previous Claim 5. It does not have the change in amount of 1 C=C group (60 % to 75 %) nor the change in R1 that is in current Claim 1. The previous rejections over Kuwana have been applied to Claim 14 under the 60 % limitation and the modified grounds of rejection with the 75% limitation as Kuwata reads on both. The rejection of Kuwana under §102 is withdrawn and reapplied under §103 and is necessitated by Applicant’s claim amendments.
Applicant’s remarks filed April 1, 2026 have been fully considered but are not persuasive.
Applicant argues the amount of 1 C=C / C=C is incorrect in Example 20 and the correct value is 74% which does not read over Claim 1’s amended range. This argument is persuasive in that it is agreed Example 20’s recited amount of is 74%. However, this still reads over both ranges (Both the new range of Claim 1 and Claim 14’s range). Changing the amount does not impact the way Kuwana reads over the claimed range for Claim 14. For Claim 1, the 74 % is used as an alternative manner in rejecting the claimed range and, additionally, Kuwana’s rejection is modified to address how Kuwana’s Example 20 is not limited to the amount exemplified and can overlap the recited range.
Additionally, Kuwana has been modified to address the new R1 of Claim 1 contrary to Applicant’s remarks. Applicant makes no remarks to the new rejections of Claims 1-10 and 13 of Kuwana based on the new R1 and range of 1 C=C in Claim 1.
Applicant’s arguments to unexpected results have been fully considered but are not persuasive. Applicant simply points to their examples to state they have unexpected results. This argument is not persuasive.
As noted in the rejection of record (both in the non-final of February 18, 2026 and the current action), Applicant only compares different amounts of the components recited and does not have any data demonstrating there is some kind of unexpected effect in along or in combination with the range of 1 C=C with respect to all C=C as claimed.
Overcoming a §103 rejection based on unexpected results requires the combination of three different elements: the results must fairly compare with the prior art, the claims must be commensurate in scope and the results must truly be unexpected. (See MPEP §716.02) Applicant’s showing of allegedly unexpected results must satisfy ALL of these requirements. Additionally, MPEP §716.01(b) states a “nexus” between the claimed invention and the evidence of secondary considerations, such as unexpected results, must be present. The burden rests with Applicant to establish results are unexpected and significant. (MPEP §716.02(b)).
With respect to the fairly comparing, Applicant demonstration is not considered to be closest prior art with respect to multiple C=C groups in the polymerizable groups (1 and 2 C=C). Kuwana has multiple C=C groups which are closer prior art to Example 1-9 and is closer than Comparative Example 3. Note also the cited comparison is 100% of only one 1 C=C compound. (Example 10 vs Comp Example 2). Therefore, Applicant’s arguments may only be considered with respect claims where Formula 1 is the only 1 C=C compound and there is only 1 2 C=C compound as claimed.
With respect to the commensurate in scope requirement, the claims are not commensurate in scope with the showing of allegedly unexpected results. The amounts of LCP and chrial compounds are not limiting the broadest claim. The demonstrations only have substituents on the center phenylene group rather than any one phenylene group and alkoxy (C6 or C8) R1 groups as opposed to any other R1 group claimed. The chiral compounds are very specific to certain isosorbide compounds. In all, the demonstrations are not probative of the scope of the claimed inventions to create the required nexus between the demonstrations of allegedly unexpected results and the claimed invention. Furthermore, the difference between Example 10 and Comparative Example 2 is the number of carbon atoms on the alkoxy group and also substituent on the COOX group. Both are still within the scope claimed and therefore, the claims have claim scope which does not coincide with Applicant’s allegedly unexpected results. In other words, the claims are required to be claim compositions which have Applicant’s allegedly unexpected results but the claims currently recite compounds that meet the claim but are demonstrated to not have the allegedly unexpected results.
With respect to the truly unexpected requirement, Kuwana teaches a composition which has 74% of 1 C=C to all the C=C present (Example 20) and the demonstrations reasonably suggest such a composition would have the 2-6 defects according to Applicant’s scale as desired just untested. In other words, Applicant’s results do not appear to be truly unexpected.
For the above reasons, Applicant’s arguments are not persuasive and the rejections of record are updated and maintained against the newly presented set of claims.
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.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to CHRISTOPHER M RODD whose telephone number is (571)270-1299. The examiner can normally be reached 7 am - 3:30 pm (Pacific).
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/Christopher M Rodd/Primary Examiner, Art Unit 1766
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