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 .
Election/Restriction
Restriction to one of the following inventions is required under 35 U.S.C. 121:
I. Claims 1-6, drawn to a curable composition, classified in 522/114.
II. Claim 7, drawn to a method of producing a cured product, classified in 520/1.
III. Claim 8, drawn to an apparatus for producing a cured product, classified in 523.
The inventions are independent or distinct, each from the other because:
Inventions of Group I and Group II are related as product and process of use. The inventions can be shown to be distinct if either or both of the following can be shown: (1) the process for using the product as claimed can be practiced with another materially different product or (2) the product as claimed can be used in a materially different process of using that product. See MPEP § 806.05(h). In the instant case the process of claim 7 could be performed with a different composition such as a dual curable composition.
Inventions of Group I and Group III are directed to related products. The related inventions are distinct if: (1) the inventions as claimed are either not capable of use together or can have a materially different design, mode of operation, function, or effect; (2) the inventions do not overlap in scope, i.e., are mutually exclusive; and (3) the inventions as claimed are not obvious variants. See MPEP § 806.05(j). In the instant case, the inventions as claimed have a materially different design as one is a composition and the other an apparatus for curing a composition. Furthermore, the inventions as claimed do not encompass overlapping subject matter and there is nothing of record to show them to be obvious variants.
Inventions of Group II and Group III are unrelated. Inventions are unrelated if it can be shown that they are not disclosed as capable of use together and they have different designs, modes of operation, and effects (MPEP § 802.01 and § 806.06). In the instant case, the different inventions are not disclosed as capable of use together and have a different design as one is an apparatus for curing a composition and the other is a process of curing a composition.
Restriction for examination purposes as indicated is proper because all the inventions listed in this action are independent or distinct for the reasons given above and there would be a serious search and/or examination burden if restriction were not required because one or more of the following reasons apply:
(a) the inventions have acquired a separate status in the art in view of their different classification;
(b) the inventions have acquired a separate status in the art due to their recognized divergent subject matter;
(c) the inventions require a different field of search (for example, searching different class/subclasses or electronic resources, or employing different search queries);
(d) the prior art applicable to one invention would not likely be applicable to another invention;
(e) the inventions are likely to raise different non-prior art issues under 35 U.S.C. 101 and/or 35 U.S.C 112, first paragraph.
Applicant is advised that the reply to this requirement to be complete must include (i) an election of an invention to be examined even though the requirement may be traversed (37 CFR 1.143) and (ii) identification of the claims encompassing the elected invention.
The election of an invention may be made with or without traverse. To reserve a right to petition, the election must be made with traverse. If the reply does not distinctly and specifically point out supposed errors in the restriction requirement, the election shall be treated as an election without traverse. Traversal must be presented at the time of election in order to be considered timely. Failure to timely traverse the requirement will result in the loss of right to petition under 37 CFR 1.144. If claims are added after the election, applicant must indicate which of these claims are readable upon the elected invention.
Should applicant traverse on the ground that the inventions are not patentably distinct, applicant should submit evidence or identify such evidence now of record showing the inventions to be obvious variants or clearly admit on the record that this is the case. In either instance, if the examiner finds one of the inventions unpatentable over the prior art, the evidence or admission may be used in a rejection under 35 U.S.C. 103 or pre-AIA 35 U.S.C. 103(a) of the other invention.
During a telephone conversation between Pegah Parvini and Richard Chinn on April 27, 2026 a provisional election was made with traverse to prosecute the invention of Group I, claims 1-6. Affirmation of this election must be made by applicant in replying to this Office action. Claims 7 and 8 are withdrawn from further consideration by the examiner, 37 CFR 1.142(b), as being drawn to a non-elected invention.
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.
Claim 1 is 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. Claims 2-6 depend on claim 1 and, therefore, are also rejected.
Claim 1 states that the polyalkylene glycol has a molecular weight but does not specify if the molecular weight is a number average or weight average molecular weight.
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.
(a)(2) the claimed invention was described in a patent issued under section 151, or in an application for patent published or deemed published under section 122(b), in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention.
Claims 1-16 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Kito et al (WO 2018143303).
With regards to claims 1-4, Kito teaches a curable composition that includes a monofunctional ethylene-unsaturated monomer (A), a multifunctional ethylene-unsaturated monomer (B), and an oligomer (0011). Kito further teches the composition to include a PEG-type nonionic surfactant (0049) having a number average molecular weight from 264 to 5000 (0049) and at a concentration of 3 parts by weight or less per 100 parts by weight of the entire composition (0049).
With regards to claim 5, Kito teaches the oligomer to be a urethane (meth)acrylate oligomer, an epoxy (meth)acrylate oligomer, or a polyester (meth)acrylate oligomer (0041).
With regards to claim 6, Kito teaches the composition to be used to form a cured product (0003).
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.
Claims 1-6 are rejected under 35 U.S.C. 103 as being unpatentable over Doita et al (JP 2005/338240).
With regards to claim 1, Doita teaches a curable resin composition (page 3) that contains a compound having a polyoxyalkylene structure (pages 6-7) that includes polypropylene glycol (page 7), a radically polymerizable compound that includes urethane acrylate oligomers (0043), monofunctional (meth)acrylate compounds (0047), and a polyfunctional (meth)acrylate compounds (0048-0049) in combination (0050). Doita teaches the amount of the polyoxyalkylene compound to be 5 parts per 100 parts of composition (0090).
Doita is silent on the molecular weight of the polyoxyalkylene compound.
However, where the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation. In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 124 (CCPA 1955). In this case, one skilled in the art prior to the effective filing date of the present invention would know to alter the molecular weight in order to control the mesh size, swelling behavior, and medical stiffnes of the resulting compound.
With regards to claims 2-4, Doita teaches the addition of a polyoxyalkylene compound (pages 6-7) that includes polypropylene glycol (page 7).
With regards to claim 5, Doita teaches the oligomer to include urethane acrylate oligomers (0042-0043).
With regards to claim 6, Doita teaches the preparation of a cured coating using said composition (0081).
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. The following references teach the composition of claim 1: Kim et al (US 11,427,669), Araki et al (US 2013/0295342), and Imai et al (US 2014/0241687).
Any inquiry concerning this communication or earlier communications from the examiner should be directed to JESSICA WHITELEY whose telephone number is (571)272-5203. The examiner can normally be reached 8 - 5:00.
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, Joseph Del Sole can be reached at 5712721130. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/JESSICA WHITELEY/ Primary Examiner, Art Unit 1763
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