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 .
This Office action is in response to the amendment filed 6/18/2026. Claims 1 and 7 are amended; claims 5-6 are cancelled; and claims 9-12 are withdrawn from consideration as being drawn to non-elected invention. Accordingly, claims 1-4 and 7-12 are currently pending in the application.
Examiner acknowledges applicant’s current intent to not respond to the outstanding Office action in application no. 18/546,848, and the obviousness-type double patenting rejection being rendered moot as of September 12,2026. However, the rejection will be maintained as set forth in paragraph 4 below until such time that applicant addresses the obviousness-type double patenting rejection and the arguments are either persuasive, reference application is abandoned, or a terminal disclaimer is filed.
Double Patenting
Claims 1-4 and 6-8 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-13 of copending Application No. 18/546,848 (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other because both are drawn to photocurable liquid composition including a photopolymerizable monomer comprising a polyfunctional monomer having 3 or more ethylenicaly unsaturated, photopolymerization initiator and metal oxide nanoparticles. The species of photopolymerizable monomer A1 and bifunctional monomer A2 are similar and metal oxide nanoparticles are modified with an ethylenically unsaturated double-bond containing group.
Copending claims are silent with respect to the amount of polyfunctional monomer A1.
However, Applicant’s attention is drawn to MPEP 804 where it is disclosed that “the specification can always be used as a dictionary to learn the meaning of a term in a patent claim.” Toro Co. v. White Consul. Indus., Inc., 199 F.3d 1295, 1299, 53 USPQ2d 1065, 1067 (Fed. Cir. 1999). Further, those portions of the specification which provide support for the patent claims may also be examined and considered when addressing the issue of whether a claim in an application defines an obvious variation of an invention claimed in the patent. (underlining added by examiner for emphasis) In re Vogel, 422 F.2d 438,164 USPQ 619,622 (CCPA 1970).
Consistent with the above underlined portion of the MPEP citation, attention is drawn to general disclosure of copending application wherein it teaches that mass of polyfunctional monomer relative to the photopolymerizable monomer A is not particularly limited as long as the desired effect such as dispersibility of the metal oxide nanoparticles is not impaired. The polyfunctional monomer is included in a ratio of 20 mass% or more and 70 mass% or less relative to the photopolymerizable monomer (paragraph 0031). Therefore, it would have been obvious to one skilled in art to include the polyfunctional monomer in the photocurable composition, of copending application to arrive at the present claims, in amounts of 20 to 70% by mass as long as the dispersibility of the metal oxide nanoparticles is not impaired.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Claim Rejections - 35 USC § 112
The following is a quotation of 35 U.S.C. 112(d):
(d) REFERENCE IN DEPENDENT FORMS.—Subject to subsection (e), a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
The following is a quotation of pre-AIA 35 U.S.C. 112, fourth paragraph:
Subject to the following paragraph [i.e., the fifth paragraph of pre-AIA 35 U.S.C. 112], a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
Claim 3 is rejected under 35 U.S.C. 112(d) or pre-AIA 35 U.S.C. 112, 4th paragraph, as being of improper dependent form for failing to further limit the subject matter of the claim upon which it depends, or for failing to include all the limitations of the claim upon which it depends. Claim 3 recites “wherein the polyfunctional monomer (A1) is an aliphatic compound having no aromatic group” (lines 2-3) and fails to further limit the scope of independent claim 1 on which this claim is dependent. Specifically, polyfunctional monomer A1 in claim 1 includes aliphatic groups having a specific number of carbon atoms and does not include any aromatic groups. Applicant may cancel the claim(s), amend the claim(s) to place the claim(s) in proper dependent form, rewrite the claim(s) in independent form, or present a sufficient showing that the dependent claim(s) complies with the statutory requirements.
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.
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 1-4 and 8 are rejected under 35 U.S.C. 103 as being unpatentable over Yashiro et al (US 2003/0105189 A1).
Regarding claim 1, Yashiro et al disclose a liquid curable resin composition (i.e., reads on the curable liquid composition in present claim 1) comprising (A) polyfunctional (meth)acrylic compound having at least three (meth)acryloyl groups in the molecule, metal oxide particles (i.e., reads on metal oxide particles in present claim 1) and radiation polymerization initiator (abstract) which reads on photopolymerization initiator in present claim 1. The resin composition is photocurable is implicit in the utilization of radiation polymerization initiator and reads on present claim 1. See example 1, wherein the composition comprises dipentaerythritol hexacrylate and dispersion of ZrO particles (Table 1) having a particle size of 0.01 microns (paragraph 0079) which is equivalent to 10 nm (i.e., reads on metal oxide nanoparticles in present claim 1). It is noted that dipentaerythritol hexacrylate is represented by formula:
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(i.e., reads on polyfunctional monomer (A1) in present claim 1, having 3 or more ethylenically unsaturated double bonds, wherein Ra2 = -X-(Ra1-O)na1-MA, na2 = 1, na1 = 0, and X = oxygen atom. The composition can comprise polymerizable monomers having a vinyl group or (meth)acryloyl group other than the compound A (paragraph 0069).
Yashiro et al fail to disclose as in present claims a composition comprising 20 to 70 mass% of polyfunctional monomer A1 relative to mass of photopolymerizable monomer A.
However, Yashiro et al in the general disclosure teach that (meth)acrylic compound having at least 3 (meth)acryloyl groups in the molecule are present in the composition in an amount of 1 to 99% by mass (paragraph 0022). The reaction product used as component B is obtained by the reaction of an organosilicon compound having a polymerizable unsaturated group and alkoxysilyl group in the molecule and metal oxide particles. The proportion of the reaction product contained in the composition as component B is preferably 1 to 99% by weight (paragraph 0029). The proportion of organosilicon compounds in the raw material composition to produce component B is preferably 30 wt% or more (paragraph 0030). The particles of component B comprise a radiation-curable group linked by a silyl group to the metal (paragraph 0023) (i.e., a photopolymerizable monomer). Therefore, in light of the teachings in general disclosure, of Yashiro et al, it would have been obvious to one skilled in art prior to the filing of present application to include (meth)acrylic compound having at least 3 (meth)acryloyl groups in the molecule in overlapping amounts of 20 to 70 mass% based on the amount of photopolymerizable monomer A, in the curable composition, absent evidence to the contrary. Case law holds that when the range of instant claims and that disclosed in prior art overlap, a prima facie case of obviousness exists. See In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976). See MPEP § 2144.05.
Regarding claim 2, Yashiro et al teach that particles of component B comprises a radiation curable group linked by a silyl group to a metal (paragraph 0023). The reaction product used as component B is obtained by the reaction of an organosilicon compound having a polymerizable unsaturated group and alkoxysilyl group in the molecule and metal oxide particles (paragraph 0029). Preferably the organosilicon compound possesses a polymerizable unsaturated group such as acrylic group, vinyl group and styryl group (paragraph 0031) which reads on metal oxides are modified with an ethylenically unsaturated double bond-containing group in present claim 2.
Regarding claims 3-4, see example 1, of Yashiro et al, wherein the composition comprises dipentaerythritol hexacrylate (Table 1). It is noted that dipentaerythritol hexacrylate is represented by formula:
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(i.e., reads on polyfunctional monomer (A1) is an aliphatic compound having no aromatic group in present claim 3; and polyfunctional monomer (A1) has 6 ethylenically unsaturated double bonds in present claim 4.
Regarding claim 8, examples of radiation polymerization initiators include bis-(2,6-dimethoxybenzoyl)-2,4,4-trimethylphenyl phosphine oxide (paragraph 0065).
Claim 7 is rejected under 35 U.S.C. 103 as being unpatentable over Yashiro et al (US 2003/0105189 A1) in view of Henry et al (US 20190233556 A1).
The discussion with respect to Yashiro et al in paragraph 11 above is incorporated here by reference.
Yashiro et al are silent with respect to compound of formula a-1.
However, Henry et al in the same field of endeavor teach curable composition comprising sulfated compounds that are useful as high refractive index monomers . They are liquid at room temperature and exhibit good miscibility with other monomers. The high-refractive index curable compositions are suitable for producing optical articles (abstract). Since the sulfated compound is branched, it can act as a crosslinking agent and increase rigidity of the resulting polymer (paragraph 0044). Examples of high refractive index monomer include
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(paragraph 0055). which reads on monomer a-1 in present claim 7, wherein R1 and R2 = methyl group, p and q = 0. Therefore, in light of the teaching in Henry et al in the same field of endeavor, it would have been obvious to one skilled in art prior to the filing of present application to include the sulfated compound, of Henry et al, in the liquid curable composition, of Yashiro et al, for above mentioned advantages.
Response to Arguments
The objections, and rejections under 35 U.S.C. 112(b) and 102a)(1) as set forth in paragraphs 20-21 and 24-25, of Office action mailed 3/23/2026, are withdrawn in view of amendments and/or applicant arguments and/or new grounds of rejection set forth in this Office action, necessitated by amendment.
It is noted that while amendment, filed 6/18/2026, alludes to new claim 13, no such claim is included in claim listing of the amendment.
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.
Contact Information
Any inquiry concerning this communication or earlier communications from the examiner should be directed to KARUNA P REDDY whose telephone number is (571)272-6566. The examiner can normally be reached 8:30 AM to 5:00 PM M-F.
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, Arrie (Lanee) Reuther can be reached at 571-270-7026. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/KARUNA P REDDY/Primary Examiner, Art Unit 1764
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