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 .
Election/Restrictions
Applicant's election with traverse of Group I, claims 14-26, in the reply filed on 31 July 2025 is acknowledged. The traversal is on the ground(s) that the Examiner’s conclusory statement is insufficient to provide a basis for this restriction requirement. This is not found persuasive because the prior art teaches the special technical feature, thus the Groups I-III lack unity (i.e. the same or corresponding technical feature).
The requirement is still deemed proper and is therefore made FINAL.
Claims 23-26 are withdrawn from further consideration pursuant to 37 CFR 1.142(b), as being drawn to a nonelected invention, there being no allowable generic or linking claim. Applicant timely traversed the restriction (election) requirement in the reply filed on 31 July 2025.
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.
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.
Claims 15 and 21 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.
Independent claim 14 requires at least one “urethane component” while dependent claim 15 requires “wherein the at least one urethane component comprises a polyisocyanate…”. One of ordinary skill in the art understands that a urethane linkage comprises a reacted isocyanate (compound with –OH functionalization reacts with a compound of -NCO functionalization, thus producing a urethane linkage), thus the term “urethane component” indicates a reaction product of a polyisocyanate and an OH containing compound. It is unclear if the “polyisocyanate” required by claim 15 is intended to be an additional polyisocyanate compound added to the urethane component of claim 14 or if the urethane component of claim 15, is prepared from a polyisocyanate listed in the group of claim 15. For purpose of further Examination, the Examiner is interpreting the urethane component is prepared from a polyisocyanate compound listed in claim 15.
Claim 21 recites the limitation "wherein the at least one multifunctional reactive diluent" in lines 1-2. There is insufficient antecedent basis for this limitation in the claim.
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 20 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. Independent claim 14 requires “wherein the amine-functional (meth)acrylate monomer is not an amide” while dependent claim 20 requires “wherein the at least one amine-functional (meth)acrylate monomer… is selected from the group consisting of… N-[3-(dimethaylamino)propyl]methacrylamide”. Furthermore, N-[3-(dimethaylamino)propyl]methacrylamide is a compound that falls outside the scope of formula (I), required by independent claim 14. 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.
Claim(s) 14-22 is/are rejected under 35 U.S.C. 103 as being unpatentable over Kudo et al. (JP 2015-028607), wherein the machine English translation is used for citation.
Regarding claims 14-18, and 20; Kudo et al. teaches a photopolymerizable composition comprising, in a preferred embodiment, 40 wt% of a urethane component (urethane acrylamide oligomer prepared from a trimer of hexamethylene diisocyanate) [T2, Ex17; 0103]. Kudo et al. teaches the composition further comprises 1 to 40 wt% of a monofunctional (meth)acrylate, such as 2-ethylhexyl (meth) acrylate isobornyl and (meth)acrylate [045-046], 0.1 to 30 wt% of a polymerizable tertiary amine, such as diethylaminoethyl (meth)acrylate [050-053], and 0.5 to 5 wt% of a photopolymerization initiator, such as bisacylphospine oxides [078-080]. In the case where the claimed ranges “overlap or lie inside ranges disclosed by the prior art” a prima facie case of obviousness exists. See In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990), see MPEP §2144.05. The Examiner makes note that instant components e) and f) are optional, and thus not explicitly required by the claims.
Kudo et al. teaches all of the above required components, however fails to explicitly disclose each in a preferred embodiment. A reference may be relied upon for all that it would have reasonably suggested to one having ordinary skill the art, including the non-preferred embodiments. See Merck & Co. v. Biocraft Laboratories, 874 F.2d 804, 10 USPQ2d 1843 (Fed. Cir.); MPEP §2123. Kudo et al. does not specifically disclose an embodiment containing at least one urethane component, at least one monofunctional reactive diluent, at least one initiator, and at least one amine-functional (meth)acrylate monomer. However, at the time of invention a person of ordinary skill in the art would have found it obvious to prepare a composition containing at least one urethane component, at least one monofunctional reactive diluent, at least one initiator, and at least one amine-functional (meth)acrylate monomer based on the invention of Kudo et al., and would have been motivated to do so since Kudo et al. suggests that the composition can contain at least one urethane component [T2, Ex17; 0103], at least one monofunctional reactive diluent [045-046], at least one initiator [078-080], and at least one amine-functional (meth)acrylate monomer[050-053]. Additionally, “It is prima facie obvious to combine two compositions each of which is taught by the prior art to be useful for the same purpose, in order to form a third composition to be used for the very same purpose.... [T]he idea of combining them flows logically from their having been individually taught in the prior art.” In re Kerkhoven, 626 F.2d 846, 850, 205 USPQ 1069, 1072 (CCPA 1980) (citations omitted) [see MPEP 2144.06].
Regarding claims 19, 21, and 22; the limitations of the claims merely further define optional limitations of the independent claim and thus are encompassed by the rejection.
Double Patenting
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 14-22 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-8 of U.S. Patent No. 11891469. Although the claims at issue are not identical, they are not patentably distinct from each other because they are both drawn to the same art specific subject matter, namely a photopolymerizable composition. The essential difference between the instant application and the patent is that the instant application require the at least one amine-functional (meth)acrylate monomer of formula (I) is not an amide. However, the patent claims amine-functional (meth)acrylate monomers falling within the scope of instant formula (I), thus the instant claims and patented claims substantially overlap in scope.
Correspondence
Any inquiry concerning this communication or earlier communications from the examiner should be directed to JESSICA ROSWELL whose telephone number is (571)270-5453. The examiner can normally be reached M-F 8:00 am to 5:00 pm.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Mark Eashoo can be reached at 571-272-1197. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/JESSICA M ROSWELL/Primary Examiner, Art Unit 1767