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 .
Claim Rejections - 35 USC § 102
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.
Claim(s) 1-3, 6-7 and 11-12 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by JP 2011-043620 (herein Rumiko).
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 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) compositio 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).
As to claim 6, 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.
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.
Claim Rejections - 35 USC § 103
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) 9-10 is/are rejected under 35 U.S.C. 103 as being unpatentable over JP 2011-043620 (herein Rumiko).
The discussion with respect to Rumiko set-forth above is incorporated herein by reference.
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) 1-12 is/are rejected under 35 U.S.C. 103 as being unpatentable over WO 2019/240044 (herein Kamiya) in view of JP 2011-043620 (herein Rumiko).
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.
Rumiko discloses similar curable compositions comprising the claimed components. See examples. Rumiko discloses that the polymerization initiator is a photoinitiator such as phenyl] iodonium tetrakis (pentafluorophenyl) borate (see page 6 and examples), thus reading on the claimed quaternary boron containing onium salt and claimed formula of claim 6, wherein R1=R2=R3=R4=substituted phenyl and X=iodonium cation. The compounds are said to improve volume shrinkage. See page 6.
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 Rumiko because one would want to improve volume shrinkage (page 6 of Rumiko).
As to claim 7, the silanol generated is 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. Moreover, Rumiko teaches that 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 of Rumiko.
As to claim 12, cured products by heating are taught. See abstract, paragraph 321 and examples.
Conclusion
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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