DETAILED ACTION
This application is now being examined by primary examiner Vu A. Nguyen, Ph.D., in Art Unit 1762.
Election/Restrictions
Applicant’s election without traverse of group I, claims 1-8 and 12, in the reply filed on 10/22/2025 is acknowledged.
Claims 9-11 and 13-16 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to nonelected inventions, there being no allowable generic or linking claim.
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 1-4 and 12 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. It is unclear as to what is encompassed by the term “derivative”. This term is not described with sufficient specificity and its metes and bounds are arbitrary. For instance, if the polymerization initiator has more than one functional groups, does the derivative have to have all these functional groups or just one of them? An example would be a phenone initiator that also contains a (meth)acryl group: is it representative of the derivative, the polymerizable compound, or both?
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.
Claims 1-5, 8 and 12 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by US 2013/0052431 A1 to Enomoto et al.
Regarding claim 1, Enomoto et al. discloses a photocurable composition for an imprint pattern comprising a polymerizable compound (A), a photopolymerization initiator (B) and a non-polymerizable compound (C), wherein the initiator (B) can be a 1-to-1 mixture of Darocur 1173 and Irgacure 184 (see example 37),
PNG
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150
216
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170
262
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Darocur 1173 Irgacure 184
These two initiators are derivatives of each other and claims 1-2, 4-5, 8 and 12 are therefore anticipated. The features of claim 3 are also disclosed in example 37.
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.
Claims 6-7 are rejected under 35 U.S.C. 103 as being unpatentable over US 2013/0052431 A1 to Enomoto et al.
Regarding claims 6-7, the composition of claim 1 is disclosed by Enomoto et al. as explained above. The reference teaches that the initiator can be a mixture of two compounds selected from the group of initiators P-1 to P-12 (see [0255]), wherein the pair of P-1 and P-4 is cited above, P-2 and P-6 are the pair recited in claim 7, and P-10 and P-11 are the pair recited in claim 6. While an example employing a mixture of P-2 and P-6, or P-10 and P-11, is not given, it would have been obvious to a person of ordinary skill in the art at the time the instant invention was filed to make and use such a composition and expect a favorable outcome. See MPEP § 2143(I)(A)&(B).
Other Prior Art of Record
The composition of claim 1 is also disclosed by US 6,251,963 B1 to Köhler et al.
Contact Information
Any inquiry concerning this communication or earlier communications from the examiner should be directed to VU ANH NGUYEN whose telephone number is (571)270-5454. The examiner can normally be reached M-F 8:00 AM-5:00 PM.
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, ROBERT JONES can be reached at (571) 270-7733. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/VU A NGUYEN/Primary Examiner, Art Unit 1762
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