DETAILED ACTION
Summary
This is a non-final office action for application 18/570,750 filed on 15 December 2023. The preliminary amendment filed on the same dated is acknowledged.
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 .
Claim Rejections - 35 USC § 112
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.
Claims 12-13 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.
Claim 12 recites a sealant “using” the radically polymerizable resin according to Claim 1. The term “using” implies a process, but without reciting any steps. It is unclear whether the sealant is or contains the resin composition or if it is used or made in conjunction with it. Claim 13 is also rejected because it depends upon, and therefore includes, Claim 12.
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.
Claims 1-12 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by TAKENAKA (US-20130015416-A1).
Regarding Claim 1, TAKENAKA teaches a curable composition containing 70-100 parts of polymerizable monomers having 2-4 (meth)acrylic groups and 0-30 parts by mass of (meth)acrylic monomers having one (meth)acrylic group. TAKENAKA teaches and exemplifies several oligomeric monomers which can be interpreted as forming resin-forming compounds such as BPE100, BP500 and A-BPE which have a polyethyleneoxy structure ([0161], [0163])), polyethylene glycol dimethacrylate ([0161]), UA-500 urethane acrylate ([0164]), MePEGMA methyl ether polyethylene glycol methacrylate ([0168]). TAKENAKA teaches that its composition may contain a hindered phenol antioxidant ([0132]). TAKENAKA further teaches that its composition may contain a hindered amine light stabilizer ([0130]). TAKENAKA teaches in Example 1 a composition containing 100 parts of (meth)acrylic monomers including the oligomeric BPE500 ([0175], [0161]), 5 parts of LS765 bis(1,2,2,6,6-pentamethyl-4-piperidyl)sebacate hindered amine light stabilizer ([0175], [0174]) and 3 parts of IRGANOX245 ethylenebis( oxyethylene )bis[3,5-tert-butyl-4-hydroxy-m-toluoyl]propionate] hindered phenol antioxidant ([0175], [0174]).
Regarding Claim 2, TAKENAKA teaches the invention of Claim 1 where TAKENAWA teaches polymerizable (meth)acrylate monomers (Abstract). TAKENAKA teaches other examples (Examples 2-13) containing different polymerizable monomers which using the same operation as Example 1 ([0179]), which are interpreted as containing the same amount of LS765 hindered amine and IRGANOX245 hindered phenol as example 1. TAKENAKA teaches in Example 10 (Table 3) a composition containing UA-500 which is a urethane acrylate ([0164]).
Regarding Claim 3, TAKENAKA teaches the invention of Claim 1. TAKENAKA generally teaches hindered phenol antioxidants in an amount of 0.001-20 parts per 100 parts of (meth)acrylic monomers and when used as a coating, it teaches 0.1-10 parts, preferably 1-10 parts by mass per 100 parts of monomers ([0132]). This encompasses the recited range. TAKENAKA teaches in Example 1, 3 parts of IRGANOX245 hindered phenol antioxidant out of 100 parts monomers ([0175]) which is within the 0.05-5 parts per 100 parts (A) and (B) recited by the claim. TAKENAKA generally teaches 0.001-20 parts of hindered amine light stabilizers ([0130]) which encompasses the recited range. TAKENAKA exemplifies 5 parts LS765 light stabilizer per 100 parts monomers ([0175]) which is within the recited range of 0.05-5 parts per 100 parts (A) and (B).
Regarding Claim 4, TAKENAKA teaches the invention of Claim 1. TAKENAKA generally teaches that its polyfunctional monomer may contain alkyoxy repeat units between its (meth)acrylate groups ([0041]) and exemplifies BPE100 and BP500 which have recurring ethyleneoxy groups ([0161]). TAKENAKA also exemplifies MePEGMA methyl ether polyethylene glycol methacrylate (Table 2). TAKENAKA also exemplifies 9G, 9GA and 14G (Tables 1-3) which are all polyethylene glycol di(meth)acrylates ([0161], [0163]).
Regarding Claim 5, TAKENAKA teaches the invention of Claim 1. TAKENAKA teaches specific hindered phenols including bis, mono, and tetrakis hindered phenols ([0132]). TAKENAKA exemplifies ethylenebis( oxyethylene )bis[3,5-tert-butyl-4-hydroxy-m-toluoyl]propionate] ([0174]) which is a bis hindered phenol.
Regarding Claim 6, TAKENAKA teaches the invention of Claim 1. TAKENAKA teaches several hindered amines ([0131]) and exemplifies bis(1,2,2,6,6-pentamethyl-4-piperidyl)sebacate ([0174]) which is a bis hindered amine.
Regarding Claim 7, TAKENAKA teaches the invention of Claim 1. TAKENAKA teaches and exemplifies IRGANOX245 ethylenebis( oxyethylene )bis[3,5-tert-butyl-4-hydroxy-m-toluoyl]propionate] ([0174]) which has a molecular weight of 586.76 which is within the recited range of 300-3000 g/mol.
Regarding Claim 8, TAKENAKA teaches the invention of Claim 1. TAKENAKA teaches and exemplifies LS 765 bis(1,2,2,6,6-pentamethyl-4-piperidyl)sebacate ([0174]) which has a molecular weight of 508.78 g/mol which is within the recited range of 100-3000 g/mol.
Regarding Claims 9-10, TAKENAKA teaches the invention of Claim 1. TAKENAKA teaches that it is extremely preferred to add a polymerization initiator to cure the curable composition ([0128]). TAKENAKA teaches using a radical polymerization initiator ([0138]) such as a photopolymerization initiator ([0141]). TAKENAKA exemplifies CGI1800 ([0175]) which is a mixture of 1-hydroxycyclohexylphenyl ketone and bis(2,6-dimethoxybenzoyl-2,4,4-trimethyl-pentylphosphine
oxide) ([0172]) which it characterizes as photopolymerization initiators ([0141]). The photopolymerization initiator satisfies the requirement of Claim 10 and its use as an agent to cure the composition satisfies Claim 9.
Regarding Claim 11, TAKENAKA teaches the invention of Claim 1. TAKENAKA teaches that its composition can be used as a coating material (Abstract) for coating a substrate such as an optical substrate ([0145]), but TAKENAKA does not teach that its composition is for sealing electrical and electronic components. The recitation “for sealing electrical and electronic components” is an intended use. Case law holds that a recitation of the intended use of the claimed invention must result in a structural difference between the claimed invention and the prior art in order to patentably distinguish the claimed invention from the prior art. If the prior art structure is capable of performing the intended use, then it meets the claim. See In re Casey, 152 USPQ 235 (CCPA 1967) and In re Otto, 136 USPQ 458, 459 (CCPA 1963). The composition taught by TAKENAKA for coating substrates such as optical substrates is presumed suitable for the intended use of sealing electrical and electronic parts.
Regarding Claim 12, TAKENAKA teaches the invention of Claim 1. TAKENAKA teaches that its composition can be used as a coating material (Abstract) for coating a substrate such as an optical substrate ([0145]), but TAKENAKA does not teach that its composition is a sealant. Claim 12 is rejected above under 35 USC 112(b) for the indefinite use of the term “using”. For the purposes of the prior art rejection, “sealant” Is interpreted as an intended use for the resin composition of Claim 1. Case law holds that a recitation of the intended use of the claimed invention must result in a structural difference between the claimed invention and the prior art in order to patentably distinguish the claimed invention from the prior art. If the prior art structure is capable of performing the intended use, then it meets the claim. See In re Casey, 152 USPQ 235 (CCPA 1967) and In re Otto, 136 USPQ 458, 459 (CCPA 1963). The composition taught by TAKENAKA for coating substrates such as optical substrates is presumed suitable for the intended use of a sealant.
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 13 is rejected under 35 U.S.C. 103 as being unpatentable over TAKENAKA (US-20130015416-A1) in view of TAMAI (JP-2008150502-A).
Regarding Claim 13, TAKENAKA teaches the invention of Claim 12 above. TAKENAKA teaches that its composition can be used for coating a substrate such as an optical substrate ([0145]) but does not teach that it is used as a sealant for electrical or electronic parts. TAMAI, in an invention of a curable composition containing two polymerizable vinyl polymers and a reactive oligomer and with a polymerizable functional group (Abstract) where the oligomer can be a urethane acrylate ([0021]) and its components can be cured using photoradical polymerization initiator ([0106]) and contains hindered phenol antioxidants ([0191]) and hindered amine light stabilizers ([0198]) which can be used in combination ([0200]), teaches that its curable resins can be used as a coating ([0211]), a multilayer glass sealing agent ([0211]), as well as in electric and electronic component materials such as solar cell backside sealants ([0211]) and sealing materials such as potting agents for electrical and electronic use ([0211]). TAMAI teaches that when its hindered amine light stabilizers are used in combination with its hindered phenol antioxidants, its effect is further exhibited and its weather resistance is improved ([0200]). It would be obvious to one of ordinary skill in the art at the time of the effective filing date of the current invention to modify the invention of TAKENAKA with the teachings of TAMAI and use its coating composition as a sealant for electrical or electronic parts for the purpose of improved weather resistance.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to DAVID R FOSS whose telephone number is (571)272-4821. The examiner can normally be reached Monday - Friday 8:00 - 5:00.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, ARRIE L 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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/D.R.F./Examiner, Art Unit 1764
/KREGG T BROOKS/Primary Examiner, Art Unit 1764
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