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 1-14, in the reply filed on 11 February 2026 is acknowledged. The traversal is on the ground(s) that the examination of all of the claims is not believed to create an undue burden on the USPTO and that the subject matter among the groups is not independent and distinct. This is not found persuasive because the inventions are directed to different classes of inventions, thus having acquired a separate status in the art in view of their different classification, the inventions require a different field of search, and the prior art applicable to one invention would not likely be applicable to another invention.
The requirement is still deemed proper and is therefore made FINAL.
Claims 18-20 are withdrawn from further consideration pursuant to 37 CFR 1.142(b), as being drawn to a nonelected invention, there being no allowable generic or linking claim.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 11 February 2026.
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.
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 1-17 is/are rejected under 35 U.S.C. 103 as being obvious over Wan et al. (US Serial No. 2024/0199816), in view of Prokopowicz et al. (US Serial No. 2007/0072112).
The applied reference has a common inventor with the instant application. Based upon the earlier effectively filed date of the reference, it constitutes prior art under 35 U.S.C. 102(a)(2).
Regarding claims 1-4; Wan et al. teaches a photocurable composition comprising a silicon-containing monomer having a structure of formula (1) below [0026].
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Wan et al. fails to teach the composition further comprising a release agent that includes an acetylenic diol. Prokopowicz et al. teaches coating compositions of high silicon content, suitable for use in lithography, comprising nonionic surfactants that are acetylenic diol derivatives having the following Formulae IV (instant claim 3) and V (instant claim 4) below [0090].
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Wan et al. and Prokopowicz et al. are analogous art because they are both concerned with the same field of endeavor, namely coating compositions suitable for use in lithography. At the time of filing, a person of ordinary skill in the art would have found it obvious to add the acetylenic diol, as taught by Prokopowicz et al., to the composition of Wan et al., and would have been motivated to do so in order to promote formation of a substantially uniform coating layer, as suggested by Prokopowicz et al. [0089].
Regarding claim 5; Wan et al. teaches the amount of silicon in the photocurable composition can be at least 20 wt% based on the total weight of the photocurable composition [0028].
Regarding claims 6-7 and 10; Wan et al. teaches the molecular weight of the silicon containing monomer is 100 g/mol-800 g/mol and is at least 95 wt% based on the total weight of the polymerizable material [0029].
Regarding claims 8-9; Wan et al. teaches the composition further comprises a release agent that is not an acetylenic diol and has a viscosity of 7.0 mPa·s [0057].
Regarding claims 11-12; Wan et al. teaches the at least one silicon-containing monomer can include at least two different silicon-containing monomers and is selected from the group of methacryloxymethyl tris(trimethylsiloxane) silane, 1,3-bis(3-methacryloxypropyl) tetrakis(trimethylsiloxy) disiloxane, 3-acryloxypropyl tris(trimethylsiloxy) silane, (methacryloxymethyl) bis(trimethylsiloxy)methylsilane, 3-methacryloxypropyl bis(trimethylsiloxy) methylsilane, (3-acryloxypropyl) methylbis (trimethylsiloxy) silane, methacryloxypropyl tris(trimethylsiloxy) silane, acryloxymethyl trimethylsilane, acryloxymethyl tris(trimethylsiloxy) silane, 1,3-bis[(acryloxymethyl)phenethyl] tetramethyldisiloxane, or any combination thereof [0011-0012].
Regarding claim 13; the references fail to teach employing the release agent in an amount of at least 2 wt.%. However, the experimental modification of this prior art in order to ascertain optimum operating conditions fails to render applicants’ claims patentable in the absence of unexpected results. See In re Aller, 105 USPQ 233; see MPEP §2144.05. At the time of the invention a person having ordinary skill in the art would have found it obvious to optimize the amount of release agent, and would have been motivated to do so in order to achieve a substantially uniform coating layer.
Regarding claim 14; the references fail to teach the claimed stability factor. The Office realizes that all the claimed effects or physical properties are not positively stated by the reference. However, the reference teaches all of the claimed reagents, claimed amounts, and substantially similar processes. Therefore, the claimed effects and physical properties, i.e. stability factor, would necessarily be present in composition with all the claimed ingredients. If it is the applicants' position that this wouldn’t be the case: (1) evidence would need to be presented to support applicants' position; and (2) it would be the Offices' position that the application contains inadequate disclosure that there is no teaching as to how to obtain the claimed properties and effects with only the claimed ingredients, claimed amounts, and substantially similar processes. See In re Spada, MPEP §2112.01, I and II.
Regarding claims 15-17; the photocurable composition can comprise at least one polymerizable monomer not containing silicon, such as an acrylate, in an amount of at least 25 wt% [0034-0035].
This rejection under 35 U.S.C. 103 might be overcome by: (1) a showing under 37 CFR 1.130(a) that the subject matter disclosed in the reference was obtained directly or indirectly from the inventor or a joint inventor of this application and is thus not prior art in accordance with 35 U.S.C.102(b)(2)(A); (2) a showing under 37 CFR 1.130(b) of a prior public disclosure under 35 U.S.C. 102(b)(2)(B); or (3) a statement pursuant to 35 U.S.C. 102(b)(2)(C) establishing that, not later than the effective filing date of the claimed invention, the subject matter disclosed and the claimed invention were either owned by the same person or subject to an obligation of assignment to the same person or subject to a joint research agreement. See generally MPEP § 717.02.
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 1-17 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-14 of copending Application No. 18/062374 in view of Prokopowicz et al. (US Serial No. 2007/0072112). Although the conflicting claims 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 photocurable composition comprising a silicon-containing monomer. The essential difference between the instant application and the copending application is that the copending application further requires a non-fluorine containing release agent including an acetylenic diol. Prokopowicz et al. teaches coating compositions of high silicon content, suitable for use in lithography, comprising nonionic surfactants that are acetylenic diol derivatives having the following Formulae IV (instant claim 4) and V (instant claim 5) below [0090].
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At the time of filing, a person of ordinary skill in the art would have found it obvious to add the acetylenic diol, as taught by Prokopowicz et al., to the composition of the instant claims, and would have been motivated to do so in order to promote formation of a substantially uniform coating layer, as suggested by Prokopowicz et al. [0089].
This is a provisional nonstatutory double patenting rejection.
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.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
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
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