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 .
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 1-14 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claim 1-14 of copending Application No. 19/056,195 (App. No. 19/056,195).
Although the claims at issue are not identical, they are not patentably distinct from each other because App. No. 19/056,195 teaches each and every component and reads upon the claims in an anticipatory manner.
Regarding claims 1-14, App. No. 19/056,195 teaches a dual curing composition comprising 20-90 wt% of an epoxy methacrylate groups and 10-80 wt% of a polythiol compound, the composition has a molar ratio of thiol groups to (meth)acrylate groups in the range from 0.5:1 to 1:1 (Claim 1), and 0-50 wt% of an ethylenically unsaturated monomer, (claim 2), the epoxy methacrylate is an adduct of methacrylic acid and a polyepoxide compound with an eew of 100-700 g/eq (claims 3 and 4), the polyepoxide is a bisphenol A diglycidyl ether (claim 6) the polythiol is a pentaerythritol teramercaptoacetate (claims 7-10), the ethylenically unsaturated monomer is (meth)acrylate monomers (claim 12), and the composition is free of thermal free-radical initiators.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Claim Rejections - 35 USC § 102
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 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.
Claim(s) 1-14 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by WO 2009/028271 A1 to Saito et al. (hereinafter Saito).
Regarding claims 1-14, Saito teaches an epoxy acrylate obtained from a reaction of a 35 parts (0.730 eq) of bisphenol A epoxy resin (eew 185 g/eq), with 40 parts (0.556 eq) of acrylic acid (page 4, Manufacturing example 1). Saito further teaches a composition comprising 100 parts (73.5 wt%) of the epoxy acrylate, 25 parts (18.4 wt%) of a tetrathiol (QX30), 10 parts of an imidazole (1B2MZ), (See Table 1), wherein the tetrathiol is specifically pentaerythritol tris-thioglycolate, or pentaerythritol tetrathiolpriopionate (MW 488.6 g/mol), (page 2). The above may further include an isobornyl acrylate (IBX-A), (Example 5), which meets the claimed nonionic monomer. The above correlates to an epoxy acrylate wherein all of the epoxy groups are reacted with the acrylic acid, i.e. an acrylate eq. wt. of 185 g/eq, and using pentaerythritol tetrathiolpriopionate (thiol eq. weight of 163 g/eq), the above 100 parts of epoxy acrylate and 25 parts of tetrathiol correlates to 0.54 acrylate groups and 0.153 thiol groups, or 0.28:1 thiol groups:acrylate groups. Saito further teaches the radical photoinitiator “may” be added (page 2), suggesting that it is optional and the composition does not require it, which meets claims 13 and 14. This is further exemplified by Saito teaching using a very small amount of radical photoinitiator is preferred since too much impairs storage stability. (page 1-2).
Claim(s) 1-12 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by KR 20210052344 A to Masaru (hereinafter Masaru).
Regarding claims 1-12, Masaru teaches a composition of 50 parts (33 wt%) of polypropylene diacrylate (APG-700, 404 g/acrylate eq), 50 parts (31 wt%) of an bisphenol A epoxy acrylate (Ebcryl 600, 250 g/acrylate eq), 1 part of phosphate-modified methyacrylate, (Ebecryl 168, 180 g/acrylate eq), 39 parts (25 wt%) of pentaerythritol tetrakis(3-mercaptopropionate) (PEMP, 122.3 g/thiol eq), 1 part of a photoradical generator (Irgacure 1173), 10 parts of a potential hardener (PN-23). (See Table 1), and the above correlates to 0.329 acrylate groups and 0.318 thiol groups, or 0.97:1 thiol groups:acrylate groups.
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.
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.
Claim(s) 1-10, 12-14, is/are rejected under 35 U.S.C. 103 as being unpatentable over EP 2878613 A1 to Boogaerts et al. (hereinafter Boogaerts).
Regarding claims 1-10, 12-14, Boogaerts teaches a composition comprising an inhibitor system (i), a thiol compound (v) and a (meth)acrylated compound (vi), (See abstract and para 54). Specifically, in Table 3, the composition comprises 75 (75 wt%) parts of a trifunctional acrylate (Ebecryl leo 10501, MW 470 g/mol, 157 g/acrylate eq, 25 parts (25 wt%) of pentaerythritol tetrakis(3-mercaptopropionate) (488.6 g/mol, 163 g/thiol eq), and 0.1 parts of stabilizer/radical scavenger, triphenyl phosphite (Table 3, page 9), which is free of radical initiators and meets claims 13-14, and correlates to 0.48 eq of acrylate groups and 0.153 eq of thiol groups, or 0.32 thiol groups:acrylate groups and meets the ratio of claim 1. Boogaerts further teaches specific examples of suitable (meth)acrylated compounds include epoxy(meth)acrylated oligomers (para 66) such as di(meth)acrylated of diglycidyl ether of bisphenol A (Ebecryl 600 or 3701), (para 75), which demonstrates that the Ebecryl 600 or 3701 are suitable (meth)acrylated compounds for the composition. (“The selection of a known material based on its suitability for its intended use supported a prima facie obviousness determination.” See MPEP 2144.07).
It would have been obvious to one ordinarily skilled in the art before the effective date of the claimed invention to use the Ebecryl 600 or 3701 for the Examples in Boogaerts because Boogaerts further teaches specific examples of suitable (meth)acrylated compounds include epoxy(meth)acrylated oligomers (para 66) such as di(meth)acrylated of diglycidyl ether of bisphenol A (Ebecryl 600 or 3701), (para 75), which demonstrates that the Ebecryl 600 or 3701 are suitable (meth)acrylated compounds for the composition. (“The selection of a known material based on its suitability for its intended use supported a prima facie obviousness determination.” See MPEP 2144.07).
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to HA S NGUYEN whose telephone number is (571)270-7395. The examiner can normally be reached Mon-Fri, Flex schedule 7:30am-4:00pm.
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/HA S NGUYEN/Primary Examiner, Art Unit 1766
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