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 .
Applicant’s preliminary amendment dated 11 August 2023 is acknowledged. Claims 1-17 as amended are pending.
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, 2, 9, and 16 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by JP 2013-018842 A (“Motofuji”).
As to claims 1, 2, and 9, Motofuji teaches a composition comprising a bifunctional (meth)acrylate having a polyoxyalkylene chain (abstract). Motofuji teaches a polyethylene glycol diacrylate, which meets Formula 1 where R11 and R12 are hydrogen, and R12 is a divalent polyoxyalkylene group, specifically polyoxyethylene as required by claim 2, and acryoylmorpholine, which meets Formula 2 where R23 is hydrogen, and R21 and R22 are bonded to each other to form a ring as required by claims 1 and 9 (para. 0198).
As to claim 16, Motofuji teaches cured product of the composition (para. 0126).
Claim 8 is rejected under 35 U.S.C. 102(a)(1) as being anticipated by JP 2013-018842 A (“Motofuji”) as evidenced by JP 2009-265640 A (“Makino”).
The additional reference is used to show that a recited limitation is inherent. See MPEP 2131.01.
A partial machine translation of JP 2009-265640 A is enclosed.
As to claim 8, Motofuji does not discuss the viscosity. However, Motofuji teaches the use of PE-400 diacrylate, which as evidenced by Makino, para. 0033, as having viscosity in the recited range.
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 3, 6, 7, 11, 15 and 17 are rejected under 35 U.S.C. 103 as being unpatentable over JP 2013-018842 A (“Motofuji”).
The discussion of Motofuji with respect to claim 1 is incorporated by reference.
As to claim 3, while not exemplified, Motofuji teaches that the polyoxyalikylene compound may have oxypropylene groups (para. 0015), and thus is an obvious modification suggested by Motofuji.
As to claim 6, while not exemplified, Motofuji teaches the bifunctional polyoxyalkylene diacrylate may have number average molecular weight ranging from preferably 400 to 10000 (para. 0011), which includes compounds having weight average molecular weight of 5000 or more (since weight average molecular weight always equals or exceeds number average molecular weight). As such, the use of bifunctional polyoxyalkylene methacrylate in the recited range is an obvious modification suggested by Motofuji.
As to claim 7, while the recited number of oxyalkylene groups is not exemplified, Motofuji teaches the bifunctional polyoxyalkylene diacrylate may have number average molecular weight ranging from preferably 400 to 10000 (para. 0011), which range includes compounds having 100 or more oxyethylene, oxypropylene, oxybutylene groups, and as such, bifunctional polyoxyalkylene (meth)acrylates having the recited number of groups is an obvious modification implicitly suggested by Motofuji.
As to claims 11 and 15, while not exemplified, Motofuji teaches the composition may include pigments, including graphite, and alumina (para. 0078), which are thermally conductive as required by claims 11 and 15, and as such, the use of pigment (filler) that is thermally conductive is an obvious modification suggested by Motofuji.
As to claim 17, while not exemplified, Motofuji teaches the cured coating can be applied to flat panel displays for electronics, and electronic components (paras. 0001, 0002), all of which generate heat in operation; as such, an article with a heat source and cured product in contact is an obvious modification suggested by Motofuji.
Claims 12-14 are rejected under 35 U.S.C. 103 as being unpatentable over JP 2013-018842 A (“Motofuji”) as applied to claim 11, further in view of JP 2004-231913 A (“Terakawa”).
A partial machine translation of JP 2004-231913 A is enclosed.
As to claims 12-14, Motofuji teaches the use of fillers such as alumina, and the use of adhesion (coupling) agents (para. 0091), but does not discuss chemical adsorption of a coupling agent to thermally conductive filler. Terakawa teaches photopolymerizable compositions, including inorganic filler, including heat conductive fillers such as alumina, (para. 0049), and teaches that fillers are preferentially hydrophobized with a surface treatement agent such as methacryloxypropyltrimethoxysilane as required by claims 13 and 14. As such, the surface modification of fillers, including heat conductive fillers, in photocurable compositions is known in the art from Terakawa.
Claim(s) 1-5, 9, 10, and 16 are rejected under 35 U.S.C. 103 as being unpatentable over JP 2018-172565 A (“Watanabe”).
As to claims 1 and 2, Watanabe teaches a composition comprising a compound having an alkylene oxide chain and two or more radical polymerizing groups (para. 0010). As one example, Watanabe exemplifies di(meth)acrylate of ethylene oxide adduct of bisphenol A, which meets Chemical Formula 1 with R13 being a divalent group having a polyoxyalkylene chain, specifically oxyethylene as required by claim 2, and R11 and R12 being hydrogen or methyl.
Though the recited compound of Chemical Formula 2 is not exemplified, Watanabe teaches the use of a monomer (A), which may include dimethyl (meth)acrylamide, (meth)acryloyl morpholine, isopropyl (meth)acrylamide and others (para. 0024), which meet Chemical Formula 2 where R23 is hydrogen or methyl, and R1 and R22 are hydrogen, monovalent organic group, or bound to form a ring.
As such, the use of a compound of Chemical Formula 2 in the composition of Watanabe is an obvious modification suggested by Watanabe.
As to claim 3, while not exemplified, Watanabe teaches the alkylene oxide chain may include oxypropylene (propylene oxide) units (para. 0038), and thus the same is an obvious modification suggested by Watanabe.
As to claims 4 and 5, Watanabe teaches the use of ethylene oxide (oxyethylene) and propylene oxide (oxypropylene) as monomers, and teaches copolymers, including random copolymers (para. 0038), and thus the recited species are an obvious modification suggested by Watanabe.
As to claim 9, Watanabe teaches the composition may include (meth)acryloyl morpholine (para. 0024), which meets Formula (2) wehre R21 and R22 form a ring.
As to claim 10, Watanabe teaches the composition includes a poly (meth)acrylate with one or more radical polymerizing functional groups (abstract). Specifically, Watanabe prefers polyacrylates with acryloyl groups at both ends of the molecule (para. 0060), which meets Chemical Formual 2 where R21 and R31 are hydrogen, and R33 is a divalent group having a polyacrylate chain.
As to claim 16, Watanabe teaches curing the composition (para. 0055).
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. 18/546,187 (reference application). Copending claim 10 recites a composition of Chemical Formula 1, Chemical Formula 2, and Chemical Formula 3, which are identical to Chemical Formula 1, Chemical Formula 3, and Chemical Formula 2 of pending clam 10, respectively. This is a provisional statutory double patenting rejection since the claims directed to the same invention have not in fact been patented.
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 and 9 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 10 and 11 of copending Application No. 18/546,187 (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other because copending claim 10 recites a compound comprising a compound of Chemical Formula 1 and Chemical Formula 3, which correspond to Chemical Formula 1 and Chemical Formula 2 of pending claim 1. Copending claim 11 include the additional limitation of pending claim 9.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to KREGG T BROOKS whose telephone number is (313)446-4888. The examiner can normally be reached Monday to Friday 9 am to 5:30 pm.
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/KREGG T BROOKS/Primary Examiner, Art Unit 1764