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 .
Response to Arguments
1. Applicant’s arguments, see page 4, line 10, filed 15 December 2025, with respect to the rejection of Claims 1-3 under 35 U.S.C. 102(a)(1) as being anticipated by Nakayama et al. (Japanese Patent Publication No. JP 2017-096017 A), hereinafter Nakayama; have been fully considered but they are not persuasive. Applicant argues that by amending the preamble of Claim 1 to further describe the photocurable composition with the added words of “an optical imprint lithography” before “photocurable composition.” MPEP § 2111.02(II) states: “If the body of a claim fully and intrinsically sets forth all of the limitations of the claimed invention, and the preamble merely states, for example, the purpose or intended use of the invention, rather than any distinct definition of any of the claimed invention’s limitations, then the preamble is not considered a limitation and is of no significance to claim construction. Shoes by Firebug LLC v. Stride Rite Children’s Grp., LLC, 962 F.3d 1362, 2020 USPQ2d 10701 (Fed. Cir. 2020)” This amended limitation to the preamble merely states the intended use of the composition and does not itself further limit Claim 1 of the present application. Thus, said amendment is not further limiting and the rejection of record is maintained.
2. Applicant’s arguments, see page 4, line 20, filed 15 December 2025, with respect to the rejection of Claims 1-6 under 35 U.S.C. 103 as being unpatentable by Sakida et al. (Japanese Patent Publication No. JP 2008-202022 A), hereinafter Sakida; have been fully considered but they are not persuasive. Applicant argues that the teaching by Sakida of a content of the metal oxide nanoparticles 0.1-50 mass % with respect to the total mass of the composition and 35-99 mass % of the photopolymerizable compound with respect to the total mass of the composition. Thus, with respect to the content of the metal oxide nanoparticles by mass with respect to 100 parts by mass of the total content of the metal oxide nanoparticle and the photopolymerizable compound is as much as 58.8 mass %, i.e. (50)/(35+50). Applicant argues that Sakita teaches away from having a content of the metal oxide nanoparticle of greater than 50%. But that is not the only way to achieve a greater content of the metal oxide nanoparticles by mass with respect to 100 parts by mass of the total content of the metal oxide nanoparticle and the photopolymerizable compound. Alternatively reducing the amount of photopolymerizable compound would achieve the same thing. Sakita does not teach away from a content of less than 35 mass % of photopolymerizable compound with respect to the total mass of the composition and 58.8 mass % is merely close to the claimed 60 mass % of metal oxide nanoparticles with respect to 100 parts by mass of the total content of the metal oxide nanoparticle and the photopolymerizable compound. MPEP § 2144.05(I) states: “a prima facie case of obviousness exists where the claimed ranges or amounts do not overlap with the prior art but are merely close. Titanium Metals Corp. of America v. Banner, 778 F.2d 775, 783, 227 USPQ 773, 779 (Fed. Cir. 1985).” Herein the content of metal oxide nanoparticles with respect to the total content of metal oxide nanoparticles and photopolymerizable compound is very close to the teaching of the prior art Sakita that a person having ordinary skill in the art would expect composition having 58.8 mass % versus 60 mass % of metal oxide nanoparticles with respect to the total content of metal oxide nanoparticles and photopolymerizable compound to have the same properties. Thus, Applicant’s arguments are not persuasive and the rejection of record is maintained.
Claim Rejections - 35 USC § 102
3. 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.
4. 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.
5. Claims 1-2 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Nakayama et al. (Japanese Patent Publication No. JP 2017-096017 A), hereinafter Nakayama.
6. Regarding Claims 1-2, Nakayama teaches (Paragraphs [0050-0059], Table 1) a photocurable composition. Nakayama teaches (Paragraphs [0050-0059], Table 1) metal oxide nanoparticles. Nakayama teaches (Paragraphs [0050-0059], Table 1) a photopolymerizable compound. Nakayama teaches (Paragraphs [0050-0059], Table 1) a photoradical polymerization initiator. Nakayama teaches (Paragraphs [0050-0059], Table 1) the content of the photoradical polymerization initiator is 10 parts by mass or more with respect to 100 parts by mass of the total content of the metal oxide nanoparticles and the photopolymerizable compound. Nakayama teaches (Paragraphs [0050-0059], Table 1) the metal oxide nanoparticles have a volume-average primary particle diameter of 100 nm or less. Nakayama teaches (Paragraphs [0050-0059], Table 1) the content of the metal oxide nanoparticles is 60 to 90 parts by mass and the content of the photopolymerizable compound is 10 to 40 parts by mass, with respect to 100 parts by mass of the total content of the metal oxide nanoparticle and the photopolymerizable compound.
Claim Rejections - 35 USC § 103
7. 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:
8. 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.
9. Claims 1-2 and 4-5 are rejected under 35 U.S.C. 103 as being unpatentable by Sakida et al. (Japanese Patent Publication No. JP 2008-202022 A), hereinafter Sakida.
10. Regarding Claims 1-2 and 4-5, Sakida teaches (Paragraphs [0034-0035]) a photocurable composition, therein a curable composition. Sakida teaches (Paragraphs [0034-0035]) metal oxide nanoparticles, therein inorganic oxide fine particles. Sakida teaches (Paragraphs [0034-0035]) a photopolymerizable compound, therein a polymerizable unsaturated monomer. Sakida teaches (Paragraphs [0034-0035]) a photoradical polymerization initiator. Sakida teaches (Paragraphs [0034-0035]) the content of the photoradical polymerization initiator is 10 parts by mass or more with respect to 100 parts by mass of the total content of the metal oxide nanoparticles and the photopolymerizable compound. Sakida teaches (Paragraph [0106]) the metal oxide nanoparticles have a volume-average primary particle diameter of 100 nm or less. Sakida teaches (Paragraphs [0034-0035]) the content of the metal oxide nanoparticles is 58.8 parts by mass and the content of the photopolymerizable compound is 10 to 40 parts by mass, with respect to 100 parts by mass of the total content of the metal oxide nanoparticle and the photopolymerizable compound. Sakida teaches (Paragraphs [0034-0035]) a cured film formed of the photocurable composition has a refractive index of 1.70 or more at a wavelength of 530 nm. Sakida teaches (Paragraph [0106]) a cured film having a film thickness of 600 nm, which is formed of the photocurable composition, has a haze value of 0.4% or less as measured in accordance with ASTM D100. Sakida teaches (Paragraphs [0034-0035]) the photocurable composition is used for optical imprint lithography.
11. Herein, Sakita does not teach away from a content of less than 35 mass % of photopolymerizable compound with respect to the total mass of the composition and 58.8 mass % is merely close to the claimed 60 mass % of metal oxide nanoparticles with respect to 100 parts by mass of the total content of the metal oxide nanoparticle and the photopolymerizable compound. MPEP § 2144.05(I) states: “a prima facie case of obviousness exists where the claimed ranges or amounts do not overlap with the prior art but are merely close. Titanium Metals Corp. of America v. Banner, 778 F.2d 775, 783, 227 USPQ 773, 779 (Fed. Cir. 1985).” Herein the content of metal oxide nanoparticles with respect to the total content of metal oxide nanoparticles and photopolymerizable compound is very close to the teaching of the prior art Sakita that a person having ordinary skill in the art would expect composition having 58.8 mass % versus 60 mass % of metal oxide nanoparticles with respect to the total content of metal oxide nanoparticles and photopolymerizable compound to have the same properties. Furthermore, the limitations of Claim 1 of the present application are not found in a single experimental example of the prior art. That said, the specification of Sakida teach each limitation and it would have been obvious to a person having ordinary skill in the art to combine the prior art elements taught by Sakida according to known methods taught by Sakida to yield predictable results.
12. Also, Claims 4-5 of the present application have material property limitations, i.e. refractive index and haze value. MPEP § 2112.01(II) states: "Products of identical chemical composition cannot have mutually exclusive properties." In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990). Herein, the prior art teaches all material and composition limitations of the claims and thus the material property limitations are also met.
Conclusion
13. 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).
14. 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 extension fee 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 date of this final action.
15. Any inquiry concerning this communication should be directed to RICHARD D CHAMPION at telephone number (571) 272-0750. The examiner can normally be reached on 8 a.m. - 5 p.m. Mon-Fri EST.
16. If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, MARK F HUFF can be reached at (571) 272-1385. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/R.D.C./Examiner, Art Unit 1737
/MARK F. HUFF/Supervisory Patent Examiner, Art Unit 1737