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 § 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.
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 1 and 3-8 are rejected under 35 U.S.C. 103 as being unpatentable over Soga (WO 2019/124252). Note: US 2020/0350602 is being used as an English language equivalent of WO 2019/124252.
Considering Claim 1: Soga teaches a photocurable composition comprising a polyisobutylene compound having a methacryloyl group in the molecule (¶0019); a monomer that contains an alicyclic structure and a methacryloyl group (¶0016); an additional methacryloyl monomer that does not include a alicyclic structure (¶0070); a urethane methacrylate oligomer (¶0072); and a photoinitiator (¶0048).
Soga teaches the amount of the alicyclic monomer as being 3 to 100 parts and the amount of the additional monomer as being 10 to 100 parts based on 100 parts of the polyisobutylene compound (¶0067; 0071). Soga teaches that the amount of the alicyclic compound controls the surface curability and moisture permeability of the cured composition (¶0067). It would have been obvious to a person of ordinary skill in the art to have optimized the amount alicyclic monomer through routine experimentation, and the motivation to do so would have been, Soga suggests, to control the surface curability and moisture permeability of the cured composition (¶0067).
Considering Claims 3 and 4: Soga teaches the alicyclic monomer as being a dicyclopentenyl group (¶0108).
Considering Claim 5: Soga teaches that the curing reaction is cured by light irradiation (¶0084).
Considering Claim 6: The Office realizes that all of the claimed effects or physical properties are not positively stated by the reference(s). However, the reference(s) teaches all of the claimed ingredients, in the claimed amounts, and teaches the composition as being made by a substantially similar process. The original specification does not provide any disclosure on how to obtain the claimed properties outside the components of the composition itself. Therefore, the claimed effects and physical properties, i.e. the peak top temperature of tan, would necessarily arise from a composition with all the claimed ingredients in the claimed amounts. "Products of identical chemical composition can not have mutually exclusive properties." In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990). A chemical composition and its properties are inseparable. Therefore, if the prior art teaches the identical chemical structure, the properties applicant discloses and/or claims are necessarily present. If it is the applicant’s position that this would not be the case: (1) evidence would need to be provided to support the applicant’s position; and (2) it would be the Office’s position that the application contains inadequate disclosure that there is no teaching enabling a person of ordinary skill in the art to obtain the claimed properties with only the claimed ingredients, absent undue experimentation.
Considering Claim 7: Soga teaches a curing agent comprising the composition (¶0086).
Considering Claim 8: Soga does not teach the claimed intended use. However, 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). See MPEP § 2111.02.
Claim 2 is rejected under 35 U.S.C. 103 as being unpatentable over Soga (WO 2019/124252) as applied to claim 1 above, and further in view of Kurata et al. (US 2015/0368388).
Considering Claim 2: Soga teaches the composition of claim 1 as shown above. Soga teaches the amount of the alicyclic monomer as being 3 to 100 parts and the amount of the additional monomer as being 10 to 100 parts based on 100 parts of the polyisobutylene compound (¶0067; 0071) and thus the combined amount of the monomers is 13 to 200 parts.
Soga is silent towards the amount of the urethane methacrylate. However, Kurata et al. teaches a composition comprising 50 parts of urethane acrylate oligomer per 100 parts of polyisobutylene (Table 1). Soga and Kurata et al. are analogous art as they are concerned with the same field of endeavor, namely polyisobutylene sealants. It would have been obvious to a person of ordinary skill in the art to have used the urethane oligomer acrylate of Soga in the amount of Kurata et al., and the motivation to do so would have been, as Kurata et al. suggests, provide excellent softness and barrier property (¶0062).
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. Abe et al. (WO 2020/196479) teaches a photocurable composition comprising a polyisobutylene, a urethane methacrylate in an amount of 1 to 30 parts per 100 parts of polyisobutylene, and a photoinitiator.
Correspondence
Any inquiry concerning this communication or earlier communications from the examiner should be directed to LIAM J HEINCER whose telephone number is (571)270-3297. The examiner can normally be reached M-F 7:30-5:00.
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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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/LIAM J HEINCER/Primary Examiner, Art Unit 1767
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