DETAILED ACTION
Status of Application
This action is responsive to national-stage application filed 08/11/2023. Following entry of the concurrently filed preliminary amendment, claims 1-18 are currently pending and under examination herein.
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(s)
The information disclosure statement(s) (IDS) filed on 08/22/2023, 08/05/2025, 08/07/2025, 12/02/2025, 12/16/2025, 01/12/2026, 01/27/2026, and 03/11/2026 are in compliance with the provisions of 37 CFR 1.97, 1.98 and MPEP § 609, and therefore the information referred to therein has been considered as to the merits. Initialed copies of the IDS are included with the mailing/transmittal of this Office action.
Foreign Priority
Receipt is acknowledged of certified copies of papers required by 37 CFR 1.55.
Claim Rejections – Statutory Double Patenting
A rejection based on double patenting of the “same invention” type finds its support in the language of 35 U.S.C. 101 which states that “whoever invents or discovers any new and useful process... may obtain a patent therefor...” (Emphasis added). Thus, the term “same invention,” in this context, means an invention drawn to identical subject matter. See Miller v. Eagle Mfg. Co., 151 U.S. 186 (1894); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Ockert, 245 F.2d 467, 114 USPQ 330 (CCPA 1957).
A statutory type (35 U.S.C. 101) double patenting rejection can be overcome by canceling or amending the claims that are directed to the same invention so they are no longer coextensive in scope. The filing of a terminal disclaimer cannot overcome a double patenting rejection based upon 35 U.S.C. 101.
Claim 10 is provisionally rejected under 35 U.S.C. 101 as claiming the same invention as that of claim 10 of copending Application No. 18/546,197 (reference application; published as US 2024/0132646 A1).
Pending claim 10/1 recites a composition of Chemical Formula 1, Chemical Formula 2, and Chemical Formula 3, which correspond identically to Chemical Formula 1, Chemical Formula 3, and Chemical Formula 2, respectively, of copending clam 10.
This is a provisional statutory double patenting rejection since the claims directed to the same invention have not in fact been patented.
Claim Rejections – Nonstatutory 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.
Claim 11 is provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claim 10 of copending Application No. 18/546,197 (reference application; published as US 2024/0132646 A1).
Although the claims at issue are not identical, they are not patentably distinct from each other because of the substantial overlap in the mutually claimed subject matter. That is, pending claim 11 recites a composition of Chemical Formula 1, Chemical Formula 2, and Chemical Formula 3, wherein R31 and R32 in the Formula (3) are bonded to each other to form a ring. Chemical Formula 3 thus expresses a subgenus of compounds embraced by Chemical Formula 2 of copending claim 10/1, while Chemical Formula 1 and Chemical Formula 2 correspond identically to Chemical Formula 1 and Chemical Formula 3, respectively, of copending claim 10.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Common Ownership Notice
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.
Claim Rejections – 35 U.S.C. 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, 2, 9, and 17 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by JP 2018-172565A (‘Watanabe’).
Regarding Claims 1-2, Watanabe discloses a composition comprising a compound having an alkylene oxide chain and two or more radical polymerizing groups (para 0010) and a poly(meth)acrylate with one or more radical polymerizing functional groups (Abs.). In exemplified embodiments, Watanabe describes compositions comprising Miramer M2301 (ethoxylated bisphenol A dimethacrylate, average number of moles of ethylene oxide added n = 30) or NK Ester 14G (polyethylene glycol dimethacrylate, average number of moles of ethylene oxide added n = 14) and RC100C (polyacrylate having acryloyl groups at both ends of the molecule, number average molecular weight 5,000 to 40,000) (paras 0057, 0061 and Tables [1] and [4] of original document). Miramer M2301 and NK Ester 14G each meet Chemical Formula 1 with R11 and R12 each being methyl and R13 being a divalent group having a polyoxyalkylene chain, specifically oxyethylene as required by claim 2; and RC100C meets Chemical Formula 2 with R21 and R22 each being hydrogen and R23 being a divalent group having a polyacrylate chain.
Regarding Claim 9, Watanabe in at least Examples 1-5 describes compositions comprising Miramer M2301 and RC100C in proportions equating to a mass ratio of 1 or more, specifically a 2:1 mass ratio of the compound represented by the Formula (1) to the compound represented by the Formula (2).
Regarding Claim 17, Watanabe further disclose curing the composition (para 0055).
Claim 8 is rejected under 35 U.S.C. 102(a)(1) as being anticipated by JP 2018-172565A (‘Watanabe’) as evidenced by NK Ester List Products (‘NK’).
Regarding Claim 8, Watanabe discloses the composition according to claim 1 as discussed above. Though silent as to viscosity of the compound represented by the Formula (1), Watanabe exemplifies compositions comprising NK Ester 14G (see Table [4] of original document). As noted, NK Ester 14G meets Chemical Formula 1 and, further, it is known to have a viscosity of 64 mPa · s/25oC, or 0.064 Pa · s, as evidenced by NK (see page 7, penult. entry). As such, NK establishes that the claimed viscosity limitation is an inherent property of the 14G ester component of the Watanabe composition.
Claims 1, 3, 12, and 17 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by JP 2017-122139A (‘Atsushi’).
Regarding Claims 1 and 3, Atsushi discloses a photocurable composition comprising (A) a polymer having a photo-radically polymerizable vinyl group, (B) a vinyl-based monomer having a propylene glycol skeleton, and (C) a photoinitiator (para 0007). In exemplified embodiments, Atsushi describes compositions comprising, as component (A), RC100C (an acrylic copolymer having (meth)acrylic groups at the two ends in each molecule, and having a number average molecular weight of 20000) and MM110C (an acrylic copolymer having (meth)acrylic groups at one end in each molecule, and having a number average molecular weight of 10000; and as component (B), APG-700 (propylene glycol (#700) diacrylate) (paras 0090-0092). APG-700 meets Chemical Formula 1 with R11 and R12 each being hydrogen and R13 being a divalent group having a polyoxyalkylene chain, specifically oxypropylene as required by claim 3; and RC100C meets Chemical Formula 2 with R21 and R22 each being hydrogen and R23 being a divalent group having a polyacrylate chain.
Regarding Claim 17, Atsushi further teaches irradiating the composition to obtain a cured sample (para 0094).
Claim Rejections – 35 U.S.C. 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 3-5, 7, and 10-12 are rejected under 35 U.S.C. 103 as being unpatentable over JP 2018-172565A (‘Watanabe’).
Regarding Claim 3, Watanabe discloses the composition according to claim 1 as discussed above. Further, while not exemplified, Watanabe teaches the alkylene oxide chain may include oxypropylene (propylene oxide) units (para 0038), and thus selection of such chain units would have been an obvious modification to one of ordinary skill in the art given the overall teachings of Watanabe.
Regarding Claims 4-5, Watanabe discloses the composition according to claim 1 as discussed above. Watanabe further teaches the use of ethylene oxide (oxyethylene) and propylene
oxide (oxypropylene) as monomers, as well as copolymers, including random copolymers (para.
0038), and thus the recited species would have been an obvious modification to one of ordinary skill in the art given the overall teachings of Watanabe.
Regarding Claim 7, Watanabe discloses the composition according to claim 1 as discussed above. Further, while a polyoxyalkylene chain that comprises 100 or more oxyalkylene groups is not directly disclosed, Watanabe does teach that “from the viewpoint of peel adhesion strength, the alkylene oxide chain preferably has a per-molecule average number of added alkylene oxide moles n of 10 or more” (para 0038). As such, Watanabe recognizes the number of alkylene oxide units in the alkylene oxide chain is a result-effective variable affecting peel adhesion strength. Accordingly, those of ordinary skill in the art would have been led to optimize the number of moles of alkylene oxide units in the polyoxyalkylene oxide chain in consideration of the desired peel adhesion strength of the disclosed composition. Where the general conditions of a claim are disclosed in the prior art, discovering the optimum or workable ranges involves only routine skill in the art, see In re Aller, 220 F2d 454, 456, 105 USPQ 233, 235 (CCPA 1955). This is especially the case in the absence of objective evidence of criticality in operating within the claimed range (of oxyalkylene groups).
Regarding Claims 10-11, Watanabe discloses the composition according to claim 1 as discussed above. Watanbe further teaches the composition may include (meth)acryloyl morpholine (para 0024), which compound meets Formula (3) where R21 and R22 form a ring.
Regarding Claim 12, Watanabe discloses the composition according to claim 1 as discussed above. Watanbe further teaches the composition may include other known components in adhesives, including fillers (para 0051). As examples of various fillers, Watanabe teaches the Aerosil series of fumed silica (para 0054). Fumed silica is a specific species of silicon dioxide, which is listed herein as an example of thermally conductive fillers (cf., Spec., [0090]). Thus, though not directly disclosed, Watanabe is considered to implicitly teach a thermally conductive filler species, as claimed, and the inclusion of a fumed silica in the disclosed composition would have been an obvious modification to one of ordinary skill in the art given the overall teachings of Watanabe.
Claims 12-15 are rejected under 35 U.S.C. 103 as being unpatentable over JP 2017-122139A (‘Atsushi’) as applied to claim 1, alone, or in view of JP 2004-231913A (‘Terakawa’).
Regarding Claim 12, Atsushi discloses the composition according to claim 1 as discussed above. Atsushi further teaches the photocurable composition contains (D) silica, preferably fumed silica (paras 0051-0053). Fumed silica is a specific species of silicon dioxide, which is listed herein as an example of thermally conductive fillers (cf., Spec., [0090]). Thus, though not directly disclosed, Atsushi is considered to implicitly teach a thermally conductive filler species, as claimed, and the inclusion of a fumed silica in the disclosed composition would have been an obvious modification to one of ordinary skill in the art given the overall teachings of Atsushi.
Regarding Claims 13-15, Atsushi renders obvious the composition according to claim 12 as discussed above. Atsushi does not discuss chemical adsorption of a coupling agent to the thermally conductive filler; however, Atsushi does indicate preference for making the fumed silica by chemically treating hydrophilic fumed silica with silane, siloxane, etc. (para 0054). Terakawa similarly teaches photopolymerizable compositions, including inorganic filler, including heat conductive fillers such as silicon dioxide (para 0049), and further teaches that fillers are preferentially hydrophobized with a surface treatment agent such as methacryloxypropyltrimethoxysilane as required by claims 13-15 (para 0047). As such, the surface modification of fillers, including thermally conductive filler such as fumed silica, in a photocurable composition such as disclosed by Atsushi, would have been an obvious modification to one of ordinary skill in the art in light of the teachings of Terakawa.
Claims 1 and 17-18 are rejected under 35 U.S.C. 103 as being unpatentable over Ichiryu et al (US 2013/0165593 A1) (‘Ichiryu’).
Regarding Claim 1, Ichiryu is drawn to a curable composition for use as material for electrical or electronic parts, comprising (A) a vinyl polymer having, at a molecular terminal thereof, at least one (meth)acryloyl group per molecule of the polymer, (B) a vinyl monomer having a (meth)acryloyl group and (C) an initiator, wherein the component (B) is comprised in an amount of from 25% by weight or more to 45% by weight or less to the total 100% by weight of the components (A) and (B) (Abs. and para 0116). Ichiryu in Example 5 (para 0170, Table 1) describes a composition comprising, as components (A) and (B), Polymer 1 and V#250, respectively. According to Production Example 1 (paras 0165-0166), Polymer 1 is poly(n-butyl acrylate) having acryloyl groups at both terminals. Polymer 1 thus meets Chemical Formula 2 with R21 and R22 each being hydrogen and R23 being a divalent group having a polyacrylate chain. However, V#250 is 1,9-nonanediol diacrylate (para 0169), which differs from Chemical Formula 1 in that the divalent group is an alkylene chain rather than a polyoxyalkylene chain.
Nevertheless, as specific examples of the component (B), Ichiryu teaches not only vinyl monomers having two (meth)acryloyl groups and a chain aliphatic structure such as 1,9-nonanediol diacrylate, but also compounds represented by formulae including:
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27
277
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and
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38
251
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wherein n is an integer of 3 to 10 (para 0071). Said formulae each meet Chemical Formula 1 with R11 and R12 each being hydrogen and R13 being a divalent group having a polyoxyalkylene chain, specifically oxyethylene, and are represented in Ichiryu as viable alternatives to 1,9-nonanediol diacrylate as the component (B). As such, it would have been obvious to one of ordinary skill in the art to modify Ichiryu by substituting 1,9-nonanediol diacrylate in Example 5 by a compound corresponding to either of said formulae as these vinyl monomers are all considered to be equivalents known for the same purpose. Simple substitution of one known element for another to obtain predictable results, provides the rationale for a prima facie case of obviousness. See MPEP § 2143. Further, the resulting composition will meet all the requirements of claim 1.
As to Claim 17, Ichiryu renders obvious the composition according to claim 1 as discussed above. Ichiryu further teaches curing the curable composition to obtain a cured product (paras 0148-0151). In light of this teaching, it would have been obvious to one of ordinary skill in the art to subject the aforementioned modified composition of Ichiryu to curing conditions to obtain a cured product as claimed.
Regarding Claim 18, Ichiryu renders obvious the cured product according to claim 17 as discussed above. And while not exemplified, Ichiryu generally teaches the cured product can be applied to electrical wire or cable, a semiconductive component, a conductive component, a printed circuit, a diode, among other applications (paras 0153-0154). As all of these enumerated components generate heat during normal operation, it would have been obvious to one of ordinary skill in the art to thermally contact the cured product of Ichiryu with a heat source, with the predictable result of obtaining an article meeting the requirements of claim 18.
Potentially Allowable Subject Matter
Claims 6 and 16 are objected to as being dependent on a rejected base claim, but would be allowable if rewritten in independent form including all the limitations of the base claim and any intervening claim.
The closest prior art to Watanabe, Atsushi, and Ichiryu, discussed above, does not describe the inventions of instant claims 6 and 16, or provide proper rationale for modifying any of their respectively disclosed inventions into the invention of instant claim 6 or 16.
Correspondence
Any inquiry concerning this communication should be directed to Examiner F. M. Teskin whose telephone number is (571) 272-1116. The examiner can normally be reached on Monday through Friday from 9:00 AM - 5:30 PM.
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/FRED M TESKIN/Primary Examiner, Art Unit 1762
/FMTeskin/03-20-26