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 .
Information Disclosure Statement
Receipt is acknowledged of the Information Disclosure Statement filed 27 July 2023 and 21 December 2023. The Examiner has considered the reference cited therein to the extent that each is a proper citation. Please see the attached USPTO Form.
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 1-5 and 7-14 are rejected under 35 U.S.C. 103 as being unpatentable over Ohkimoto (US-20200207881-A1) in view of “EBECRY 4396” Allnex et al. and further in view of “DURANOL T5652” Asahi Kasei et al.
With regard to claim 1, Ohkimoto teaches a liquid composition that contains a polymerizable compound and a solvent (referred to as a porogen hereinafter), configured to form a porous resin. This composition exhibits a light transmittance of at least 30% at a wavelength of 550nm during stirring. Ohkimoto further teaches that the haze value of element containing the composition increases by at least 1% upon curing (Abstract), thereby reading on the general composition and properties. The term “solvent/porogen” as utilized in the prior art functionally satisfies the structural limitation of a “liquid” as recited in the instant claims.
Ohkimoto further teaches that the polymerization compounds can be used alone or in combination. When utilizing two or more compounds, the formulation remains unrestricted and can be precisely tailored to satisfy the precise demands of a given application. Furthermore, Ohkimoto teaches the preferential integration of a urethane acrylate resin a primary component, blended with other resins to impart enhanced flexibility (para [0024]).
However, Ohkimoto does not teach the polymerizable compound having a functional group capable of forming a covalent bond with a hydroxyl group.
In the same field of endeavor, Allnex et al. teaches the use of an isocyanate aliphatic functional urethane acrylate (EBECRYL 4396 hereinafter, Introduction), which may be combined with hydroxyl functional resins to formulate coatings that cure via polymerization (Suggested Application). This compound reads on a polymerizable compound having a functional group capable of forming a covalent bond with a hydroxyl group, a urethane, and includes an isocyanate group. Allnex et al. further teaches that this compound yields desirable adhesion, mechanical, chemical resistance, and excellent compatibility (with esters, ketones and aromatic hydrocarbons, and mixtures thereof ) (Formulating).
With regard to the polymerizable compound, it would have been obvious to one of ordinary skill in the art before the effective filling date of the claimed invention to formulate Ohkimoto’s liquid composition to comprise a polymerizable compound having a functional group capable of forming a covalent bond with a hydroxyl group to achieve the claimed invention. For doing so, a person having ordinary skill in the art would be motivated to combine these known elements, with a reasonable expectation of success, to achieve a composition that will exhibit the desirable adhesion, mechanical, and chemical resistance established in Allnex et al.
With regard to claim 2, Ohkimoto teaches a liquid composition comprising a porous resin, explicitly disclosing its utility as an insulating layer for either a power storage element or a power generation element (para [0141]).
With regard to claim 3, Ohkimoto teaches a polymerizable compound comprising a meth(acryloyl) group and vinyl group (para [0024]).
With regard to claims 4-5, Ohkimoto does not teach the functional group capable of forming a covalent bond with a hydroxyl group.
As stated above, Ohkimoto in combination of Allnex et al. teaches the claimed limitation of an isocyanate group.
With regard to claim 7, Ohkimoto teaches that the liquid composition preferably comprises a polymerizable compound content ranging from 10 to 50 mass% (para [0030]) and a porogen content ranging from 50 to 90 mass% (para [0039]).
With regard to claim 8, Ohkimoto teaches a porogen having a boiling point between 50 to 250° C (para [0033]).
With regard to claim 9, Ohkimoto teaches that the polymerization reaction is initiated by either heat or light (para [0032]).
With regard to claim 10, Ohkimoto teaches that the liquid composition exhibits a viscosity ranging from 1.0 to 150.0 mPa·s at 25° C (para [0108]).
With regard to claim 11, Ohkimoto teaches a preferred liquid composition exhibiting a viscosity ranging from 1 to 25 mPa·s at 25° C (para [0108]).
With regard to claim 12, Ohkimoto teaches a porous resin exhibiting a pore size of 0.01 to 10 μm (para [0322]).
With regard to claim 13, Ohkimoto teaches a porous resin exhibiting a porosity of 30% or greater (para [0138]).
With regard to claim 14, Ohkimoto teaches that the formed resin comprises a co-continuous structure characterized by a plurality of continuously connected pores (para [0322]). The term “connected” as utilized in the prior art functionally satisfies the structural limitation of being “coupled” as recited in the instant claims.
Claim 6 is rejected under 35 U.S.C. 103 as being unpatentable over Ohkimoto (US-20200207881-A1) in view of “EBECRY 4396” Allnex et al. as applied to claims 1-5 and 7-14 above, and further in view of “DURANOL T5652” Asahi Kasei et al.
With regard to claim 6, Ohkimoto does not teach the polymerizable compound having a hydroxyl group.
In the same field of endeavor, Asahi Kasei et al. teaches a polyalkylene carbonate diol (DURANOL T5652 hereinafter, Type), which satisfies the polymerizable compound having a hydroxyl group. This compound is well-suited for combination with polyurethane resin and ingredients for plastic coating agents (Applications), and is known to exhibit superior stability and solubility in ketones, esters, amides and aromatic hydrocarbons (Features and Solubility). Furthermore, this compound is specifically utilized in Example 3-4 [located in instant specification page 64, line 34 and page 65, line 18].
With regard to the polymerizable compound, it would have been obvious to one of ordinary skill in the art before the effective filling date of the claimed invention to formulate Ohkimoto’s liquid composition to comprise a polymerizable compound with a hydroxyl group to achieve the claimed invention. For doing so, a person having ordinary skill in the art would be motivated to combine these known elements, with a reasonable expectation of success, to achieve a composition that will exhibit excellent compatibility with other components while strengthening the overall stability of the composition established in Asahi Kasei et al.
Double Patenting
The nonstatutory double patenting rejection is based on a judicially created doctrine grounded in public policy (a policy reflected in the statute) so as to prevent the unjustified or improper timewise extension of the “right to exclude” granted by a patent and to prevent possible harassment by multiple assignees. A nonstatutory double patenting rejection is appropriate where the conflicting claims are not identical, but at least one examined application claim is not patentably distinct from the reference claim(s) because the examined application claim is either anticipated by, or would have been obvious over, the reference claim(s). See, e.g., In re Berg, 140 F.3d 1428, 46 USPQ2d 1226 (Fed. Cir. 1998); In re Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993); In re Longi, 759 F.2d 887, 225 USPQ 645 (Fed. Cir. 1985); In re Van Ornum, 686 F.2d 937, 214 USPQ 761 (CCPA 1982); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Thorington, 418 F.2d 528, 163 USPQ 644 (CCPA 1969).
A timely filed terminal disclaimer in compliance with 37 CFR 1.321(c) or 1.321(d) may be used to overcome an actual or provisional rejection based on nonstatutory double patenting provided the reference application or patent either is shown to be commonly owned with the examined application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. See MPEP § 717.02 for applications subject to examination under the first inventor to file provisions of the AIA as explained in MPEP § 2159. See MPEP § 2146 et seq. for applications not subject to examination under the first inventor to file provisions of the AIA . A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
The filing of a terminal disclaimer by itself is not a complete reply to a nonstatutory double patenting (NSDP) rejection. A complete reply requires that the terminal disclaimer be accompanied by a reply requesting reconsideration of the prior Office action. Even where the NSDP rejection is provisional the reply must be complete. See MPEP § 804, subsection I.B.1. For a reply to a non-final Office action, see 37 CFR 1.111(a). For a reply to final Office action, see 37 CFR 1.113(c). A request for reconsideration while not provided for in 37 CFR 1.113(c) may be filed after final for consideration. See MPEP §§ 706.07(e) and 714.13.
The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The actual filing date of the application in which the form is filed determines what form (e.g., PTO/SB/25, PTO/SB/26, PTO/AIA /25, or PTO/AIA /26) should be used. A web-based eTerminal Disclaimer may be filled out completely online using web-screens. An eTerminal Disclaimer that meets all requirements is auto-processed and approved immediately upon submission. For more information about eTerminal Disclaimers, refer to www.uspto.gov/patents/apply/applying-online/eterminal-disclaimer.
Claims 1, 3, 7, 10, 11, and 13 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1, 4, 5, 6, 7, and 8 of U.S. Patent No. 11,053,327 B2. Although the claims at issue are not identical, they are not patentably distinct from each other because of the reasons listed below.
It is clear that all elements of US 18/360411 claims (1, 3, 7, 10, 11, and 13) are to be found in US 11,053,327 B2 claims (1, 4, 5, 6, 7, and 8). US 11,053,327 B2 claims a liquid composition comprising a polymerizable compound and a solvent (e.g. liquid) with a light transmittance of 30% at a wavelength of 55nm; and a haze value increasing rate of 1% (Abstract). US18/044078 claims overlap in components, viscosity range, temperature range, and porosity. The difference between US 11,053,327 B2 lies in the fact that ‘0411 claims includes more elements such as a specific polymerizable compound and is thus more much specific. A person having ordinary skill in the art would conclude that the invention described in the instant claims would have been an obvious variation.
Conclusion
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/A.A.W./Examiner, Art Unit 1761
/ANGELA C BROWN-PETTIGREW/Supervisory Patent Examiner, Art Unit 1761
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