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 § 112
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.
The following is a quotation of 35 U.S.C. 112 (pre-AIA ), second paragraph:
The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.
Claims 2, 5-7, and 9 are rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor (or for applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention.
Regarding claims 2, 5-7 and 9-10 the phrase "preferably" renders the claim indefinite because it is unclear whether the limitations following the phrase are part of the claimed invention. See MPEP § 2173.05(d).
Regarding claims 9-10, the phrase "particularly preferably" renders the claim indefinite because it is unclear whether the limitations following the phrase are part of the claimed invention. See MPEP § 2173.05(d).
Regarding claim 7, because it is unclear whether the limitations following the phrase “preferably” in line 3, it is unclear whether the limitations following the phrase “as well as” are to be a part of the additional reactive resin composition or if they are intended to be present in the thermosetting resin composition. Clarification is requested.
Claim Interpretation
In claim 12, it is the understanding the limitation “the composition” in steps a)-e) are the same composition as set forth in claim 9. It is understood the limitation “the substrate composite” is what follows when step c) is applied, i.e. not optional.
In claim 2, it is understood the aliphatic group is intended to be optionally linear or branched.
The limitation thermosetting composition is given its full BRI is understood as a polymer that is obtained by irreversibly hardening/curing a soft solid or viscous liquid prepolymer (resin/composition), where the curing is induced by heat or suitable radiation.
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) 1-6 and 10-11 is/are rejected under 35 U.S.C. 103 as being unpatentable over Nakasuga et al (US11,673994) in view of Ota et al (US10,982,120).
Nakasuga sets forth energy-ray curable compositions including photosensitizers comprising graphene having a number average molecular weight (Mn) ranging from 500 to 1,000,000—see abstract.
Nakasuga teaches the graphene photosensitizer has a surface modified with a functional group—see col. 2, lines 26-28. Said functional group has a plurality of carbon-carbon double bonds—see col. 2., lines 37-39.
Nakasuga sets forth in an embodiment the active energy-curable composition comprises a compound having an active polymerizable group, a radical generator, and said graphene photosensitizer, wherein said polymerizable group a free radical polymerizable group, preferably a (meth)acryloyl group—col. 2, line 67 to col. 3, line 5. Said radical generator is a diaryliodonium salt-based compound and/or an organic peroxide—see col. 3, lines 7-9.
The active energy-curable composition may additionally comprise additives such as antioxidants, ultraviolet absorbers, metal harm inhibitors, flame retardants, inorganic fillers, antistatic agents, stabilizers, pigments, and dyes. Examples of the antioxidants include phenol-based, phosphorus-based, amine-based, and sulfur-based antioxidants—see col. 23, lines 43-48.
Regarding claims 1-2, and 4: Per example 4, Nakasuga sets forth a composition comprising 100 parts polypropylene glycol mono-acrylate’ 3 parts of benzoyl peroxide;1 part of a graphene photosensitizer having unsaturated bonds—see table 2. The primary differences between the instantly claimed invention and the active energy-curable composition set forth by Nakasuga is example 4 does not comprise a peroxodicarbonate initiator and the composition does not comprise at least one sterically hindered phenolic stabilizer.
However, it can be seen in the overall teachings of the reference set forth benzoyl peroxide thermal initiators are equivalent thermal initiators in said active energy-curable composition—see col. 22, lines 5-6. Thus, a skilled artisan would have found it obvious from the overall teachings of said reference to obtain an active energy-curable composition comprising a (meth) acrylate functional polymerization monomer, a graphene photosensitizer having grafted unsaturated bonds (carbon allotrope), and a peroxodicarbonate with a reasonable expectation of successfully providing a composition which has increased curing efficiency without the need for additionally thermal conditions to obtain a full cure in absence of evidence to the contrary and/or unexpected results—see col. 1, lines 10-30. Additionally, it would have been within the skill level of an ordinary artisan to add a sterically hindered phenolic stabilizer to active energy ray compositions. Nakasuga sets forth additional additives, such as phenolic stabilizers can be added (col, 23, lines 45-50). Also, the combination of peroxodicarbonates and sterically hinder phenolic antioxidants are known in the prior art, as evidenced by Ota et al. Ota sets forth curable compositions comprising (A) curable resins comprising polymerizable monomers, such as acrylate compounds; (B) curing agents, such as peroxodicarbonates, and (E) stabilizing agents—see abstract and col. 13, line 25 to col. 14, line 33. Ota teaches the addition of a stabilizers provide storage stability and curing efficiency—see col. 11, lines 28-35. Ota sets forth polymerizable compositions comprising peroxodicarbonate thermal initiators and sterically hindered phenolic stabilizers (BHT) in examples 1-10. Therefore, it would have been within the skill level of an ordinary artisan to add a sterically hindered phenolic stabilizers in combination with peroxodicarbonate initiators in the compositions, as set forth by Nakasuga with a reasonable expectation of successfully improving storage stability and cure efficiency as evidenced by Ota in absence of evidence to the contrary and/or unexpected results. The courts have upheld: An express suggestion to substitute one equivalent component or process for another is not necessary to render such substitution obvious. In re Fout, 675 F.2d 297, 213 USPQ 532 (CCPA 1982). It is prima facie obvious to use a known additive for its known functions in re Lindner 173 USPQ 356 and In re Dial 140 USPQ 244.
Regarding claim 3: As seen above the obvious and known stabilizer BHT (t-butylhydroxyl toluene) is a sterically hindered phenolic stabilizer having a single phenol group. Thus, claim 3 is obvious.
Regarding claim 5: Nakasuga sets forth additives, such as antioxidants, ultraviolet absorbers, metal harm inhibitors, flame retardants, inorganic fillers, antistatic agents, stabilizers, pigments, and dyes. Examples of the antioxidants include phenol-based, phosphorus-based, amine-based, and sulfur-based antioxidants—see col. 23, lines 43-48. Therefore, claim 5 is obvious.
Regarding claim 6: Nakasuga teaches the compound having an active polymerizable group is found in amounts from 100 % by weight or less; said radical generator is found in amounts from 0.5 parts to 10 parts by weight, and said graphene photosensitizer is found in amounts from 0.05 parts by weight to 5 parts by weight based on the total amounts of the composition—see col 21, lines 17-25; col. 22, lines 27-30 and lines 45-48. Nakasuga sets forth the additives are added in amounts that do not impair the effects of the active energy ray composition—see col. 23, lines 40-43. Thus, the overall teachings of the reference are deemed to render the instantly claimed invention obvious. The courts have upheld, “Where the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation.” In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955).
Regarding claim 10, Nakasuga sets forth curing at room temperature, therefore proviso one in claim 10 is meet—see col. 25, lines 30-31 and col. 1, line 55 to col. 2, line 3.
Regarding claim 11: Nakasuga sets forth composition having adhesive properties to glass substrates—see col. 25, lines 39-41. It is deemed a skilled artisan could obtain the cured product as set forth in instant claim 11 from the overall teachings of the reference, as well as, for the reasons set forth above in absence of evidence to the contrary and/or unexpected results.
Allowable Subject Matter
Claims 7-9 and 12 are objected to as being dependent upon a rejected base claim but would be allowable if rewritten in independent form including all of the limitations of the base claim and any intervening claims.
The following is a statement of reasons for the indication of allowable subject matter: Nakasuga does not expressly teach and/or fairly suggest, alone or in combination, adding additional reactive resin selected from epoxy-containing compounds, oxetanes, vinyl ethers and/or hybrid compounds thereof having (meth) acrylate groups. Nakasuga additionally fails to teach heating said compositions to temperatures from 60 to 100 deg. C for 5 to 60 mins to cure said compositions.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to SANZA L MCCLENDON whose telephone number is (571)272-1074. The examiner can normally be reached 8-5.
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/SANZA L. McCLENDON/Primary Examiner, Art Unit 1765
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