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 U.S.C. § 112(b)
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 13, 17, and 20 are rejected under 35 U.S.C. § 112(b) as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor regards as the invention.
As to claims 13 and 17: The claims recite a composition in which “a release force reduction of the photocurable composition is at least 50%”.
The claims do not set forth what the change in release force is relative to. The claims therefore do not set forth the scope of the recited reduction in release force with reasonable clarity.
As to claim 20: The claim recites a chemical formula (2) that includes a moiety X. The claim subsequently recites that “X is benzol or CH2”. The term “benzol” is not defined in the claims or specification, and to the examiner’s knowledge, it is not a recognized term of art in English chemical language. There are several chemical terms that bear some similarity to “benzol”, but the application does not set forth which of these may or may not be intended by the recited term “benzol”. The claim does not set forth the meaning of the recited term “benzol” with reasonable clarity.
Claim Rejections – 35 U.S.C § 112
The following is a quotation of 35 U.S.C. § 112(a):
(a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
Claims 1-20 are rejected under 35 U.S.C. § 112(a) because the specification does not reasonably provide enablement for compositions including compounds according to chemical formula (2) in which X is CH2. The specification does not enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the invention commensurate in scope with these claims.
Case law holds that applicant's specification must be "commensurately enabling [regarding the scope of the claims]" Ex parte Kung, 17 USPQ2d 1545, 1547 (Bd. Pat. App. Inter. 1989) otherwise undue experimentation would be involved in determining how to practice and use applicant's invention. Although the statute itself does not use the phrase "undue experimentation", it has been interpreted to require that the claimed invention be enabled so that any person skilled in the art can make and use the invention without undue experimentation as stated in Ex parte Forman, 230 USPQ 546, 547 (Bd. Pat. App. Inter. 1986) and in In re Wands, 8 USPQ2d 1400, 1404 (Fed. Cir. 1988).
Specifically, in In re Wands the Court set forth a non-exhaustive list of factors to be considered in determining whether undue experimentation would be involved in making and/or using the claimed invention. These factors include, but are not limited to : (a) the breadth of the claims; (b) the nature of the invention; (c) the state of the prior art; (d) the level of one of ordinary skill; (e) the level of predictability in the art; (f) the amount of direction provided by the inventor; (g) the existence of working examples; and (h) the quantity of experimentation needed to make or use the invention based on the content of the disclosure.
Applying these factors to independent claims 1, 16, and 20: The claims (factor (a)) recite a chemical formula (2) that includes a moiety X. The moiety X is substituted by (1) an alkyl moiety to the left, (2) a polyalkylene oxide to the right, and (3) a moiety R1 to the bottom. The claim subsequently recites that X may be “CH2” and that R1 is “H or C1-C10-alkyl”. For formulas in which X is taken as CH2, the moiety X is a carbon atom that is substituted by five substituents – the alkyl moiety (1), the polyalkylene oxide moiety (2), the moiety R1, and two hydrogen atoms.
The present invention (factor (b)) is drawn to compositions including certain surfactants, but it is not drawn to the manner of making such surfactants, to per se novel surfactants, or to compounds including pentavalent carbon atoms. The prior art (factors (c)-(e)) does not, to the examiner’s knowledge, include a disclosure of or any direction regarding making compounds according to the presently recited chemical formula (2) in which X is CH2. The present application (factors (f)-(g)) does not include a disclosure of or any direction regarding making compounds according to the presently recited chemical formula (2) in which X is CH2.
It is concluded that an undue amount of experimentation would be required to make and use the claimed invention including compounds according to the presently recited chemical formula (2) in which X is CH2.
Claims 2-15 and 17-19 are ultimately dependent upon independent claims 1 or 16, and they fail to comply with the enablement requirement for the same reason.
Claim Rejections – 35 U.S.C. § 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 of this title, 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.
Claims 1, 3, 5, 7-8, 10-17, and 19 are rejected under 35 U.S.C. § 103 as being unpatentable over US 2024/0191088 A1 (herein “Ito”).
As to claims 1, 3: Ito describes photocurable compositions comprising a polymerizable material and a photopolymerization initiator (see the abstract). Ito further discloses that the polymerizable compound (a) may include compounds (a-1) (see ¶ [0020]) which are multifunctional aromatic vinyl monomers, and the proportion of compounds (a-1) is preferably 90 wt% or more because the heat resistance increases as the proportion of the compounds (a-1) increases (see ¶ [0044]).
Ito further discloses that the compositions may include an internal mold release agent for the purpose of reducing the interface bonding force between a mold and the curable composition, that is, reducing the mold release force in a mold release step (see ¶ [0134]). Ito discloses hydrocarbon-based surfactants (id.) such as polyalkylene oxides (see ¶ [0144]-[0148]) such as Blaunon SA-50/50 1000R and SA-30/70 2000R (see ¶ [0147]). The present application (Table 2) discloses that the surfactants Blaunon SA3070 (compound A1) and Blaunon SA5050 (compound A11) are according to the presently recited chemical formula (1).
Ito further discloses that the viscosity of the curable composition at 23° C is preferably 5 mPa·s or more and 15 mPa·s or less (see ¶ [0170]).
Ito does not specifically disclose an embodiment of a composition that includes the aforementioned multifunctional aromatic vinyl monomers and the surfactants Blaunon SA-50/50 1000R or SA-30/70 2000R.
In light of Ito’s disclosure that the composition may include a mold release agent to reduce the mold release force in a mold release step, one of ordinary skill in the art would have been motivated to make Ito’s compositions including such a mold release agent. In light of Ito’s disclosure that the surfactants Blaunon SA-50/50 1000R and SA-30/70 2000R are examples of a mold release agent, one of ordinary skill in the art would have been motivated to make Ito’s compositions including the surfactants Blaunon SA-50/50 1000R or SA-30/70 2000R in order to reduce the mold release force in a mold release step. It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have made compositions according to Ito that include the aforementioned multifunctional aromatic vinyl monomers and the surfactants Blaunon SA-50/50 1000R or SA-30/70 2000R.
As to claims 5: Ito discloses the presently recited tetravinylbiphenyl monomer (see ¶ [0020]).
As to claims 7-8: Ito further discloses amounts of the polymerizable compounds within the presently recited ranges (see ¶ [0112]).
As to claim 10: Ito does not require any fluorine-containing surfactant, and therefore Ito suggests compositions that are free of a fluorine-containing surfactant on the ground set forth above with respect to base claim 1.
As to claims 11-13: Because Ito describes several multifunctional aromatic vinyl monomers that are the same as presently disclosed monomer, and because Ito describes the surfactants Blaunon SA-50/50 1000R or SA-30/70 2000R which have the chemical structures within the scope of the presently recited chemical formula (1), there is a reasonable basis to conclude that the compositions of Ito would have the same physical properties as the presently recited compositions, including the same surface tension, contact angle properties, and release force.
As to claims 14 and 16: Ito further discloses the application of the composition onto a substrate (see ¶¶ [0188]-[0192]), bringing the composition into contact with a mold (see ¶¶ [0200]-[0207]), curing with light (¶¶ [0208]-[0209]), and removing the mold (see ¶¶ [0210]-[0211]).
As to claims 15, 17, and 19: Because Ito describes several multifunctional aromatic vinyl monomers that are the same as presently disclosed monomer, and because Ito describes the surfactants Blaunon SA-50/50 1000R or SA-30/70 2000R which have the chemical structures within the scope of the presently recited chemical formula (1), there is a reasonable basis to conclude that the compositions of Ito would have the same physical properties as the presently recited compositions, including the same degradation and release force properties.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to RICHARD A. HUHN whose telephone number is (571)270-7345. The examiner can normally be reached Monday through Friday, 9 AM to 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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/RICHARD A. HUHN/Primary Examiner, Art Unit 1764
