DETAILED ACTION
This Office Action is in response to the Amendment filed on 6/24/2026.
Claim(s) 1-7 are pending in the application.
Claim Rejections - 35 USC § 103
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.
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.
Claim(s) 1-7 are rejected under 35 U.S.C. 103 as being unpatentable over US2018/0241056 to Soga et al. (as found on the IDS dated 10/4/2023) in view of US2021/0054251 to Yoshida et al.
Regarding Claim(s) 1-2, Soga teaches a cured product obtained by photocuring the photo-curable sealing agent for a fuel cell [0031] (i.e., radical-curable sealing member for fuel cells) comprising ingredient (A) [0053] that is a polymer shown as formula (1) that comprises an (meth)acryloyl group [0054] (i.e., radical curable functional group and an ester linkage); at least one (meth)acrylate monomers [0068] such as methacrylates and dimethacrylates [0069] (i.e., monofunctional component (C) and polyfunctional component (D)), and a photo-radical polymerization initiator [0063] (i.e., component (E)). Additionally, Soga teaches polythiols as optional ingredients [0072] and therefore the radical curable composition does not contain sulfur.
Soga is silent regarding any amount of instantly claimed component (B).
However, Yoshida teaches a photocurable sealing material [title] comprising a carbodiimide compound [Yoshida, 0093] such as Elastostab H01 [0101] preferably in an amount of 1-10 parts by mass [0102]. Elastostab H01 is the same commercially available product used in the instant specification [instant specification, 0074] and therefore is reasonably expected to have at least one functional group selected from a group consisting of ether groups, aliphatic hydrocarbon groups that have at least 3 carbons, and alicyclic hydrocarbon groups. Yoshida and Soga are analogous art as they are from the same field of endeavor, namely photocurable sealing materials.
Before the effective filing date of the instantly clamed invention, it would have been obvious to a person of ordinary skill in the art to add 1-10 parts of Yoshida’s carbodiimide component to Soga’s photocurable sealing agent thereby reading on the instantly claimed invention.
The motivation would have been that when then carbodiimide compound is added, the photocurable sealing material is stable for 6 months or longer and has excellent storage stability [Yoshida, 0102].
Soga in view of Yoshida does explicitly teach the radical curable composition is crosslinked. However, Soga in view of Yoshida, when modified in the manner proposed above, teaches a product prepared from all of the claimed ingredients in the claimed amounts by a substantially similar process. Therefore, the claimed effects and physical properties - i.e. a crosslinked product of a radical-curable composition - would implicitly be achieved in a product prepared from all of the claimed ingredients in the claimed amounts by a substantially similar process. See In Re Spada, 911, F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990) and MPEP 2111.01 (I)(II). If it is applicant’s position that this would not be the case: (1) evidence would need to be provided to support the applicant’s position and (2) it would be the Office’s position that the application contains inadequate disclosure as to how to obtain the claimed properties in a product prepared from all of the claimed ingredients in the claimed amounts by a substantially similar process.
Regarding Claim(s) 2-7, Soga teaches the radical-curing sealing member of claim 1, wherein formula 1 comprises a (meth)acryloyl group at the molecular chain end [0054] (thereby reading on claims 2-3 and 5) and has a polyisobutylene backbone [0054] (thereby reading on a main chain of component (A) is polyolefin of claims 4, and 6-7).
Response to Arguments
Applicant’s arguments, see pages 4-5 of remarks, filed 6/24/2026, with respect to the rejection(s) of claim(s) 1-7 under 35 U.S.C. 103 have been fully considered and are persuasive. Applicant states that Yoshida does not anticipate the newly amended claim 1 limitation requiring the radical-curable composition does not contain sulfur because Yoshida requires a polythiol compound that structurally and inherently contains a sulfur element.
In response, Examiner agrees Yoshida requires a polythiol compound and therefore does not teach the newly amended limitation. Therefore, the rejection has been withdrawn. However, upon further consideration, a new ground(s) of rejection is made in view of Soga. Attention is specifically drawn to the 35 U.S.C. 103 rejection set forth above in view of Soga wherein polythiols are an optional ingredient [Soga, 0072].
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 DEVIN MITCHELL DARLING whose telephone number is (703)756-5411. The examiner can normally be reached Monday - Friday 7:30am - 5:00pm.
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/DEVIN MITCHELL DARLING/Examiner, Art Unit 1764
/MELISSA A RIOJA/Primary Examiner, Art Unit 1764
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