Prosecution Insights
Last updated: August 18, 2026
Application No. 18/687,336

COMPOSITION

Non-Final OA §103
Filed
Feb 28, 2024
Priority
Aug 31, 2021 — EU 21193975.6 +2 more
Examiner
MURATA, AUSTIN
Art Unit
1712
Tech Center
1700 — Chemical & Materials Engineering
Assignee
Merck Patent GmbH
OA Round
3 (Non-Final)
61%
Grant Probability
Moderate
3-4
OA Rounds
10m
Est. Remaining
81%
With Interview

Examiner Intelligence

Grants 61% of resolved cases
61%
Career Allowance Rate
447 granted / 738 resolved
-4.4% vs TC avg
Strong +21% interview lift
Without
With
+20.8%
Interview Lift
resolved cases with interview
Typical timeline
3y 3m
Avg Prosecution
32 currently pending
Career history
780
Total Applications
across all art units

Statute-Specific Performance

§101
1.0%
-39.0% vs TC avg
§103
60.8%
+20.8% vs TC avg
§102
11.1%
-28.9% vs TC avg
§112
24.4%
-15.6% vs TC avg
Black line = Tech Center average estimate • Based on career data from 738 resolved cases

Office Action

§103
DETAILED ACTION Continued Examination Under 37 CFR 1.114 A request for continued examination under 37 CFR 1.114, including the fee set forth in 37 CFR 1.17(e), was filed in this application after final rejection. Since this application is eligible for continued examination under 37 CFR 1.114, and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114. Applicant's submission filed on 6/23/2026 has been entered. Election/Restrictions Claims 31-38 are withdrawn from further consideration pursuant to 37 CFR 1.142(b), as being drawn to a nonelected Group, there being no allowable generic or linking claim. Applicant timely traversed the restriction (election) requirement in the reply filed on 8/22/2025. Response to Amendment The amendment filed 6/23/2026 is entered and fully considered. In view of the amendment the previous rejections are removed and new rejections are made with new prior art. Claim Objections The amendment to claim 20 results in “wherein the (d) absorber compound is represented by a formula formula (d-1)”. Claim Rejections - 35 USC § 103 The text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action. Claim(s) 20-23, 25-30 and 39 is/are rejected under 35 U.S.C. 103 as being unpatentable over BURTOVYY et al. (US 2020/0199391) in view of LORENZETTI et al. (US 2010/0222471). Regarding claims 20, 25, and 26, BURTOVYY teaches a composition that includes a monomer according to formula (I): PNG media_image1.png 126 178 media_image1.png Greyscale In the formula the m is 0, 1, or 2, and the R groups are for example hydrogen, halogen, alkyl and alkoxy groups [0011]-[0015]. The R groups can also be a -Z-Aryl which is the same as applicant’s [0015]-[0020]. In addition to the monomer, the composition includes a latent organo-transition metal catalyst and a compound capable of releasing Bronsted acid when subject to photolytic conditions abstract. The reference does not teach including an absorber compound corresponding to the claimed formula (d-2). However, LORENZETTI teaches using UV-absorbers with polymers where the polymer can be a norbornene [0018]. The monomer in BURTOVYY is a norbornene polymer. The UV-absorber has a formula in [0049]: PNG media_image2.png 124 286 media_image2.png Greyscale The R1 can be a C1-24 alkyl and R2 can be C1-18 alkyl [0049] which corresponds to claimed R23 and R24. The R3 (with adjacent hydrogen) can be another hydrogen or C1-4 alkyl [0049] which corresponds to claimed R21 and R22. There is one OH group which makes m21=1. At the time of filing the invention it would have been prima facie obvious to one of ordinary skill in the art to use the UV absorber of LORENZETTI to stabilize the polymer in BURTOVYY. Regarding claim 21 and 22, As described in the rejection to parent claim 20, the composition is taught in modified BURTOVYY to improve stability. The same composition will have the same properties of a substantially transparent layer. Regarding claim 23, The references teach using a compound that falls within the claimed generic structure for absorber material. The compound within the generic structure is expected to perform the same function when used in the same composition. Regarding claim 27, BURTOVYY also teaches an organo-ruthenium or osmium latent catalyst [0132]-[0141] where the X can be halogen or an anionic ligand. The generic formula correspond to applicant’s generic formulas [0132]. Y can be O or S [0135]. Y’ and L are the same as claimed Y’ and L [0136]-[0137], and a ligand can be formed X-L [0138]. The remaining R groups, Ar groups and substituents are all the same [0139]-[0142]. Regarding claim 28, BURTOVYY teaches a compound: PNG media_image3.png 126 198 media_image3.png Greyscale In the compound Y is a halogen and R30-31 are hydrogen, alkyl, or alkoxy [0150]. Regarding claim 29, BURTOVYY teaches the ratios of compounds used is a result effective variable and can be employed in any amount to bring the intended result [0160]. At the time of filing the invention it would have been prima facie obvious to one of ordinary skill in the art to change the relative loadings of components to obtain a desired result, MPEP 2144.05.II. Regarding claim 30, BURTOVYY teaches viscosity can be 8-12 cP (mPas) at 40°C [0098] which falls within the claimed range. Regarding claim 39, The references do not expressly teach the amount of absorber compound that can be added to the composition. However, at the time of filing the invention it would have been prima facie obvious to one of ordinary skill in the art to discover a workable amount of stabilizer material to achieve the desired improvement in stability. Claim(s) 20-23, 25, 26, 28 and 30 is/are rejected under 35 U.S.C. 103 as being unpatentable over RHODES et al. (US 2021/0079133) in view of LORENZETTI et al. (US 2010/0222471). Regarding claims 20, 25, and 28, RHODES teaches a composition according to formula (I) [0030]-[0031]. Formula (I) corresponds to applicant’s formula (I) and is: PNG media_image4.png 163 284 media_image4.png Greyscale In formula (I) “m” is similarly 0, 1, or 2 [0033]. R1-4 has significant overlap with applicant’s R1-4 and can similarly be a -Z-aryl [0035]. The Z again has significant overlap with applicant’s Z [0037]-[0038]. Likewise, the R5-6 if used also corresponds to applicant’s R5-6 [0039]. The aryl can be phenyl with some of the same substitutions [0040]. RHODES also teaches a latent catalyst of organo-ruthenium carbide [0097] which corresponds to the latent organo-transition metal catalyst. RHODES teaches including a photoactive compound [0104] according to formula (V): PNG media_image5.png 118 206 media_image5.png Greyscale This photoactive compound corresponds to applicant’s compound capable of releasing a Bronsted acid in claim 28 when X is chlorine (a halogen) [0106] and the R30-31 contain overlapping substituent groups [0106]. The reference does not teach including an absorber compound corresponding to the claimed formula (d-2). However, LORENZETTI teaches using UV-absorbers with polymers where the polymer can be a norbornene [0018]. The monomer in RHODES is a norbornene polymer. The UV-absorber has a formula in [0049]: PNG media_image2.png 124 286 media_image2.png Greyscale The R1 can be a C1-24 alkyl and R2 can be C1-18 alkyl [0049] which corresponds to claimed R23 and R24. The R3 (with adjacent hydrogen) can be another hydrogen or C1-4 alkyl [0049] which corresponds to claimed R21 and R22. There is one OH group which makes m21=1. At the time of filing the invention it would have been prima facie obvious to one of ordinary skill in the art to use the UV absorber of LORENZETTI to stabilize the polymer in RHODES. Regarding claim 21 and 22, As described in the rejection to parent claim 20, the composition is taught in modified RHODES to improve stability. The same composition will have the same properties of a substantially transparent layer. Regarding claim 23, The references teach using a compound that falls within the claimed generic structure for absorber material. The compound within the generic structure is expected to perform the same function when used in the same composition. Regarding claim 26, RHODES teaches a generic formula (I) where the R groups can be hydrogen [0035]. The resulting structure is the claimed TD. When m is zero the resulting structure is claimed NB. The reference also teaches perfluoro substituents and various alkyl groups. Regarding claim 30, RHODES teaches the composition can be less than 8-12 cP (mPas) at 40°C [0077] which falls within the claimed range. Conclusion The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. MACLEAY et al. (US 4,868,246) also teaches a UV stabilizer using formula: PNG media_image6.png 108 270 media_image6.png Greyscale R6 can be C1-4 alkyl or chloride (similar to the chloro- in RAVICHANDRAN) column 4 line 21. This formula corresponds to the claimed formula where R21 and R22 are H and C1-4 alkyl. However, MACLEAY states that the stabilizers work for an array a polymers but do not teach polymers incorporating the claimed monomer used in BURTOVYY. Any inquiry concerning this communication or earlier communications from the examiner should be directed to AUSTIN MURATA whose telephone number is (571)270-5596. The examiner can normally be reached M-F 8:30-5. 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, MICHAEL CLEVELAND can be reached at 571272-1418. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300. Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000. /AUSTIN MURATA/Primary Examiner, Art Unit 1712
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Prosecution Timeline

Show 1 earlier event
Feb 28, 2024
Response after Non-Final Action
Oct 30, 2025
Non-Final Rejection mailed — §103
Jan 28, 2026
Response Filed
Mar 24, 2026
Final Rejection mailed — §103
May 21, 2026
Response after Non-Final Action
Jun 23, 2026
Request for Continued Examination
Jun 25, 2026
Response after Non-Final Action
Jul 14, 2026
Non-Final Rejection mailed — §103 (current)

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Study what changed to get past this examiner. Based on 5 most recent grants.

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Prosecution Projections

3-4
Expected OA Rounds
61%
Grant Probability
81%
With Interview (+20.8%)
3y 3m (~10m remaining)
Median Time to Grant
High
PTA Risk
Based on 738 resolved cases by this examiner. Grant probability derived from career allowance rate.

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