CTNF 18/546,848 CTNF 89281 DETAILED ACTION Notice of Pre-AIA or AIA Status 07-03-aia AIA 15-10-aia 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 08-33 AIA 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. The following claims are rejected on the ground of nonstatutory double patenting as being unpatentable over the corresponding claims of U.S. Patent No. 11,926,681. Current invention claim Patent claim 1 1 4 2 13 3 14 4 15 6 Although the claims at issue are not identical, they are not patentably distinct from each other because the patent claim 1 does not include the nitrogen compound of the present invention claim 1. However, the patent adds said nitrogen compound and teaches the motivation for adding said compound to be because it eaisyl suppresses localization of the metal oxide nanoparticles (0156 of PGPub US 2023/0002520). Claim Rejections - 35 USC § 112 07-30-02 AIA The following is a quotation of 35 U.S.C. 112(b): (b) CONCLUSION.—The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the inventor or a joint inventor regards as the invention. The following is a quotation of 35 U.S.C. 112 (pre-AIA), second paragraph: The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention. 07-34-01 Claims 9 and 15 are rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor (or for applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention. With regards to claim 9 , Claim 9 recites the term “-MA (in which X is the same as above)”, wherein, the inclusion of a term within parentheses renders the claim indefinite because it is unclear whether the included term is part of the claimed invention. With regards to claim 15 , the claims states that the method includes “exposing” the shaped composition but does not specify what the composition is being exposed to. Claim Rejections - 35 USC § 102 07-07-aia AIA 07-07 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 – 07-08-aia AIA (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. 07-12-aia AIA (a)(2) the claimed invention was described in a patent issued under section 151, or in an application for patent published or deemed published under section 122(b), in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention. 07-15 AIA Claim s 1-3, 6-8, and 14-15 are rejected under 35 U.S.C. 102( a)(1 ) as being anticipated by Hayashi et al (US 2008/0161444) . With regards to claims 1-3 , Hayashi teaches a composition that contains an acrylic monomer, metal oxide fine particles, an amine compound, and a photoinitiator (abstract). Hayashi teaches the amine compound to include aniline (0063 example 1) reading on formula d1 wherein two of R d1 , R d2 , and R d3 are hydrogen atoms and one is an aromatic group. With regards to claims 6, 8, and 9 , Hayashi teaches the monomer to include pentaerythritol triacrylate (0063 example 1) reading on a polyfunctional monomer having 3 functional groups. With regards to claim 7 , Hayashi teaches the monomer to include pentaerythritol triacrylate (0063 example 1) reading on a polyfunctional monomer not containing an aromatic group. With regards to claim 14 , Hayashi teaches the composition to be cured by exposure to ultraviolet radiation (0091) and used for an optical element (reading on a product) (0042). With regards to claim 15 , Hayashi teaches a method for producing the cured product to include shaping the composition (0112) and exposing to radiation to cure (0042) . 07-15-03-aia AIA Claim s 1-15 are rejected under 35 U.S.C. 102(a)(2) as being anticipated by Chisaka et al (US 2023/0002520) . 07-15-02-aia The applied reference has a common assignee with the instant application. Based upon the earlier effectively filed date of the reference, it constitutes prior art under 35 U.S.C. 102(a)(2). This rejection under 35 U.S.C. 102(a)(2) might be overcome by: (1) a showing under 37 CFR 1.130(a) that the subject matter disclosed in the reference was obtained directly or indirectly from the inventor or a joint inventor of this application and is thus not prior art in accordance with 35 U.S.C. 102(b)(2)(A); (2) a showing under 37 CFR 1.130(b) of a prior public disclosure under 35 U.S.C. 102(b)(2)(B) if the same invention is not being claimed; or (3) a statement pursuant to 35 U.S.C. 102(b)(2)(C) establishing that, not later than the effective filing date of the claimed invention, the subject matter disclosed in the reference and the claimed invention were either owned by the same person or subject to an obligation of assignment to the same person or subject to a joint research agreement. With regards to claim 1 , Chisaka teaches a curable composition (title) that contains a photopolymerizable monomer, metal oxide nanoparticles, a photopolymerization initiating agent (abstract), and a nitrogen containing compound (0156). Chisaka teaches the amine compound to have one of the following structures: PNG media_image1.png 19 82 media_image1.png Greyscale (0156) wherein PNG media_image2.png 26 262 media_image2.png Greyscale (0156) or PNG media_image3.png 18 73 media_image3.png Greyscale (0156) wherein PNG media_image4.png 26 260 media_image4.png Greyscale (0156). With regards to claim 2 , Chisaka teaches at least one of R e1 , R e2 , or R e3 to be an aromatic group-containing group (0164) or R e4 is Ar e1 -CH 2 (0165). With regards to claim 3 , Chisaka teaches at least one of R e1 , R e2 , or R e3 to be Ar e1 -CH 2 (0164) and R e4 to Ar e1 -CH 2 (0165) wherein Ar e1 is an aromatic group which may have a substituent (0165). With regards to claim 4 , Chisaka teaches the metal oxide nanoparticles to have its surface modified with an ethylenically unsaturated double bond-containing group (0054). With regards to claim 5 , Chisaka teaches the amount of the metal oxide nanoparticle to be present in a concentration of 5 to 25% by mass (0062). With regards to claim 6 , Chisaka teaches the monomer to be trifunctional or higher (0031). With regards to claims 7-9 , Chisaka teaches the monomer to have the following structure: PNG media_image5.png 205 440 media_image5.png Greyscale (0032) wherein PNG media_image6.png 103 268 media_image6.png Greyscale (0032). With regards to claims 10-12 , Chisaka teaches the following monomer: PNG media_image7.png 114 275 media_image7.png Greyscale (0037) wherein PNG media_image8.png 263 270 media_image8.png Greyscale (0037-0040). With regards to claim 13 , Chisaka teaches the photopolymerization initiating agent (0063) to include a phosphine oxide (0064). With regards to claim 14 , Chisaka teaches the curable composition to be used to make a cured product (title). With regards to claim 15 , Chisaka teaches a method for producing a cured product that includes molding the curable composition followed by exposing the composition to light (0173). Claim Rejections - 35 USC § 103 07-20-aia AIA 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. 07-21-aia AIA Claim s 10-12 and 13 are rejected under 35 U.S.C. 103 as being unpatentable over Hayashi et al (US 2008/0161444) in view of Chisholm et al (US 2004/0242720) . The disclosure of Hayashi is adequately set forth in paragraph 8 above and is herein incorporated by reference. With regards to claims 10-12 , Hayashi does not teach the addition of sulfur containing monomer . Chisholm teaches a curable (meth)acrylate composition (title) that contains a multifunctional (meth)acrylate and an arylether (meth)acrylate having the following structure: PNG media_image9.png 64 152 media_image9.png Greyscale (0013) wherein PNG media_image10.png 116 264 media_image10.png Greyscale (0014). Chisholm teaches the motivation for adding this compound to the multifunctional (meth)acrylate to be because it provides a composition having excellent RI and improved brightness when cured (0021). Hayashi and Chisholm are analogous in the art of curable compositions. In light of the benefit above, it would have been obvious to one skilled in the art prior to the effective filing date of the present invention to add the monomer of Chisholm to the composition of Chisholm, thereby obtaining the present invention. With regards to claim 13 , Hayashi does not teach the photopolymerization initiator to be a phosphine oxide . Chisholm teaches a curable (meth)acrylate composition (title) that includes a polymerization initiator that includes phosphine oxide photoinitiators (0040) and teaches the motivation for adding this initiator to be because it promotes polymerization of the (meth)acrylate compounds (0040). Hayashi and Chisholm are analogous in the art of curable compositions. In light of the benefit above, it would have been obvious to one skilled in the art prior to the effective filing date of the present invention to add the monomer of Chisholm to the composition of Chisholm, thereby obtaining the present invention . 07-21-aia AIA Claim s 4-5 are rejected under 35 U.S.C. 103 as being unpatentable over Hayashi et al (US 2008/0161444) in view of Chisaka et al (US 2023/0002520) . The disclosure of Hayashi is adequately set forth in paragraph 8 above and is herein incorporated by reference. The disclosure of Chisaka is adequately set forth in paragraph 9 above and is herein incorporated by reference. With regards to claim 4 , Hayashi does not teach the metal oxide particles to be surface treated. Chisaka teaches the metal oxide nanoparticles to be include surface modification with an ethylenically unsaturated double bond-containing group (0054). Chisaka teaches the motivation for surface treating the metal oxide nanoparticles to be because it allows for the metal oxide nanoparticles are easily fixed in a matrix of the cured product which prevents the aggregation of the metal oxide nanoparticles from occurring (0054). Hayashi and Chisaka are analogous in the art of curable compositions. In light of the benefit above, it would have been obvious to one skilled in the art prior to the effective filing date of the present invention to surface threat the nanoparticles as done in Chisaka to the nanoparticles of Hayashi, thereby obtaining the present invention. With regards to claim 5 , Hayashi does not teach the amount of the nitrogen compound to be as claimed. Chisaka teaches the amine compound to be present in a concentration of 5% by mass or more and 25% by mass or less (0168). Chisaka teaches the motivation for using this amount of amine compound to be because it does not impare the desired effect the amine compound has on the composition. Hayashi and Chisaka are analogous in the art of curable compositions. In light of the benefit above, it would have been obvious to one skilled in the art prior to the effective filing date of the present invention to surface threat the nanoparticles as done in Chisaka to the nanoparticles of Hayashi, thereby obtaining the present invention. Conclusion Any inquiry concerning this communication or earlier communications from the examiner should be directed to JESSICA WHITELEY whose telephone number is (571)272-5203. The examiner can normally be reached 8 - 5:00. 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, Joseph Del Sole can be reached at 5712721130. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300. Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000. /JESSICA WHITELEY/ Primary Examiner, Art Unit 1763 Application/Control Number: 18/546,848 Page 2 Art Unit: 1763 Application/Control Number: 18/546,848 Page 3 Art Unit: 1763 Application/Control Number: 18/546,848 Page 4 Art Unit: 1763 Application/Control Number: 18/546,848 Page 5 Art Unit: 1763 Application/Control Number: 18/546,848 Page 6 Art Unit: 1763 Application/Control Number: 18/546,848 Page 7 Art Unit: 1763 Application/Control Number: 18/546,848 Page 8 Art Unit: 1763 Application/Control Number: 18/546,848 Page 9 Art Unit: 1763 Application/Control Number: 18/546,848 Page 10 Art Unit: 1763 Application/Control Number: 18/546,848 Page 11 Art Unit: 1763