DETAILED ACTION
The text of those sections of Title 35, U.S. Code not included in this action can be found in a prior office action.
All outstanding objections and rejections made in the previous Office Action, and not repeated below, are hereby withdrawn.
The new grounds of rejection set forth below are necessitated by applicant’s amendment filed on 9/2/26. In particular, claim 1 has been amended to further limit the onium salt.
The newly introduced limitations and/or the new claims were not present at the time of the preceding action. For this reason, the present action is properly made final.
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 § 103
Claim(s) 1-3, 7 and 9-12 is/are rejected under 35 U.S.C. 103 as being unpatentable over JP 2011-043620 (herein Rumiko) optionally in view of US 2005/0113474 (herein Kropp) and US 2011/210407 (herein Katayama).
In setting forth the instant rejection, a machine translation has been relied upon.
As to claims 1-3, Rumiko discloses in example 2 a curable composition comprising [4- (1-methylethyl) phenyl] iodonium tetrakis (pentafluorophenyl) borate (reading on the claimed quaternary boron-containing onium salt, wherein the onion salt is iodonium), along with (from example 1) Aluminum complex (reading on claimed aluminum chelate), triphenylsilanol (reading on claimed silanol compound) and 2-vinylnaphthalene (reading on the claimed polymerizable monomer).
Also note the broader disclosure teaching a curable (pages 4-5) composition comprising polymerizable monomer (see (meth)acrylates and vinyl compounds with carbon-carbon double bonds on page 5), aluminum complex (aluminum chelate) such as aluminum ethylacetoacetate (page 4), a silanol (see page 4), and a quaternary boron-containing onium salt (see page 6 listing photoinitiators).
Rumiko discloses that the quaternary boron containing onium salt is [4- (1-methylethyl) phenyl] iodonium tetrakis (pentafluorophenyl) borate (page 6 and examples) reads on the claimed formula, wherein R1=R2=R3=R4=substituted phenyl and X=iodonium cation. Further, page 6 specifically discloses that the onium cation may be sulfonium.
Nevertheless, Rumiko is silent on the salt having the combination of the borate and sulfonium, etc.
Further, Kropp teaches similar onium salts as photoinitiators/accelerators for cationic polymerization. See abstract, paragraph 39-42 and examples. Kropp teaches that the onium comprises an cation such as sulfonium (paragraph 41, specifically stating that triarylsulfonium is preferred) and an anion such a borate (paragraph 45) such as tetraphenyl borate (paragraph 48).
Further, Katayama teaches similar photoacids as accelerators and specifically teaches tetraphenylphosphonium tetraphenylborate (4P4B) as a preferred curing accelerator. See paragraph 128 and examples.
In light of the discussion above, it would have been obvious at the time of the invention to modify the cation(X+) of Rumiko by replacing iodonium with sulfonium as suggested by Rumiko because Rumiko teaches that the two are interchangeable. Moreover, one would substitute iodonium with sulfonium because Kropp teaches sulfonium is preferred in similar onium salts. Lastly, it would have been obvious at the time of the invention to have utilized tetraphenylphosphonium tetraphenylborate (4P4B)
As to claim 7, the silanol compound is triphenylsilanol (page 4 and examples), which reads on the claimed formula wherein Ar=phenyl (aryl), m=3 and n=1.
As to claim 11, the boron compound is added in about in 0.05 g to an amount of about 5.5, thus the amount is about 0.9 mass%, which is within the claimed range. See example 2.
As to claim 12, a cured product is disclosed by heating the composition. See pages 2-3 and examples.
As to claims 9-10, the aluminum chelate and silanol are present in 1 to 30 wt% (page 5). It is well settled that where the prior art describes the components of a claimed compound or compositions in concentrations within or overlapping the claimed concentrations a prima facie case of obviousness is established. See In re Harris, 409 F.3d 1339, 1343, 74 USPQ2d 1951, 1953 (Fed. Cir 2005); In re Peterson, 315 F.3d 1325, 1329, 65 USPQ 2d 1379, 1382 (Fed. Cir. 1997); In re Woodruff, 919 F.2d 1575, 1578 16 USPQ2d 1934, 1936-37 (CCPA 1990); In re Malagari, 499 F.2d 1297, 1303, 182 USPQ 549, 553 (CCPA 1974). Also see MPEP 2144.05 stating that when there is overlap with the claimed ranges and the prior art, a prima facie case of obviousness exists. Therefore, it would have been obvious to one of ordinary skill in the art at the time the invention was filed to select any amount within the disclosed ranges, including amounts within the scope of the instant claims. Further teaching that when the amount is too low, sufficient archival life cannot be obtained and when it is too high, errors occur. See page 5.
Claim(s) 1-5 and 7-12 is/are rejected under 35 U.S.C. 103 as being unpatentable over WO 2019/240044 (herein Kamiya) in view of US 2020/0095422 (herein Nishtani).
In setting forth the instant rejection, the US equivalent, US 2021/10214489, is utilized as the English translation of Kamiya.
As to claim 1-6, Kamiya discloses a curable composition (see abstract) that comprises a polymerizable monomer such as (meth)acrylates (see paragraph 83-92), an aluminum chelate (see paragraphs 54-65), which are on porous particles of polyurea resin (paragraph 65-71 and 97-99), a silanol compound (paragraph 26 and 121-122) and a polymerization initiator (see paragraph 93-94).
However, Kamiya is silent on a quaternary boron containing onium salt.
Nishtani discloses similar curable. See examples. Nishtani discloses that the polymerization initiator is tetraphenylphosphonium tetraphenylborate (see paragraph 42), thus reading on the claimed quaternary boron containing onium salt and claimed formula of claim 6, wherein R1=R2=R3=R4= phenyl and X=phosphonium cation. The onium salt is taught to improve the curing speed. See paragraph 42.
It would have been obvious at the time of the invention to have modified the composition of Kamiya with the specific quaternary boron containing onium salt of Nishtani because one would want to improve the curing speed. See paragraph 42 of Nishtani.
As to claim 7, the silanol generated is triphenylsilanol (see examples), which reads on the claimed formula wherein Ar=phenyl (aryl), m=3 and n=1.
As to claim 8, the amount of monomer is exemplified as 92 mass%. See table 1.
As to claim 9, the aluminum chelate is present in 2 mass%. See table 1.
As to claim 10, the silanol produced is about 6 wt%. See table 1.
As to claim 11, the initiator present in Kamiya in 0.1 to 10 mass%. See paragraph 94.
As to claim 12, cured products by heating are taught. See abstract, paragraph 321 and examples.
Response to Arguments
Applicant’s arguments with respect have been considered but are moot because the new ground of rejection. Specifically, the rejections have been amended to address the new limitation limiting the X+ group.
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.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to MARK S KAUCHER whose telephone number is (571)270-7340. The examiner can normally be reached M-F 8-6 PM EST.
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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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/MARK S KAUCHER/Primary Examiner, Art Unit 1764
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