DETAILED ACTION
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
Claims 1-15 are pending.
The foreign priority application No.2021-154906 filed on September 22, 2021 in Japan has been received and it is acknowledged.
Specification
The disclosure is objected to because of the following informalities:
The limitation “alkylene group which interrupted by one or more oxygen atoms” in par. 0007, par.0011, and par.0017 should be amended to recite “alkylene group which may be interrupted by one or more oxygen atoms” (see par.0021 of the specification).
The limitation “alkyl group which interrupted by one or more oxygen atoms” in par.0007, par. 0011, and par.0017 should be amended to recite “alkyl group which may be interrupted by one or more oxygen atoms” (see par.0021 of the specification).
The limitation “selected from a group an alkyl group having 1 or more and 5 or less carbon atoms” in par.0007 should be amended to recite “selected from an alkyl group having 1 or more and 5 or less carbon atoms”
Appropriate correction is required.
Claim Objections
Claims 1-15 are objected to because of the following informalities:
The limitation “alkylene group which interrupted by one or more oxygen atoms” in claim 1 should be amended to recite “alkylene group which may be interrupted by one or more oxygen atoms” (see par.0021 of the specification).
The limitation “alkyl group which interrupted by one or more oxygen atoms” in claim 1 should be amended to recite “alkyl group which may be interrupted by one or more oxygen atoms” (see par.0021 of the specification).
The limitation “other radically polymerizable compound than the compound (A1)” in claim 1 should be amended to read “a radically polymerizable compound (A2) other than the compound (A1)” (see par.0012 of the specification).
The limitation “selected from a group an alkyl group” in claim 1, line 7 should be amended to recite “selected from an alkyl group”.
The limitation “(meth)acryloyl group” in claim 2 should be amended to read “(meth)acryloyl groups”.
The limitation “Xa05” in claim 12, line 5 should be corrected to read “Xa05”.
Claims 3-11 and 13-15 are objected to as being dependent on the objected claims 1 and 2.
Appropriate correction is required.
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, 3, 6, and 14 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.
Claim 2 recites the limitation "the radically polymerizable compound (A2)" in lines 1-2, and claim 14 recites the limitation "the solvent (S) in line 2. There is insufficient antecedent basis for these limitations in the claims.
Claim 6 depends on itself.
Therefore, it is not clear what is the joint inventor claiming as the invention in claims 2, 6, and 14.
Claim 3 is rejected because it depends on the rejected claim 2.
For the examination on the merits, it is considered that claim 6 depends on claim 4.
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, 4, 5, 8-11, 14, and 15 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-6 and 9-11 of copending Application No. 18/694193 in view of Kobayashi et al. (US 2012/0206810).
The copending Application No. 18/694,193 claims a composition comprising a photopolymerizable compound (A) comprising a compound of formula (A1):
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, wherein Ara01 is an aromatic group optionally substituted with at least one group selected from an alkyl group having 1 to 5 carbon atoms, a cyano group, a halogen atom, having 7 to 12 carbon atoms and a valence of (ma4+1), Ra01 may be a radically polymerizable group-containing group, Xa01, Xa03, and Xa04 may be oxygen atoms, Xa02 is an alkylene group which may be interrupted by one or more oxygen atoms, Xa05 is an alkyl group which may be interrupted by one or more oxygen atoms, ma1 is 0 or 1, ma2 is 0 or 1, ma3 is 0 or 1, ma4 is an integer of 0 or more, and sum of numbers of oxygen atoms as Xa01, Xa03, and Xa04 and numbers of oxygen atoms contained in Xa02 and Xa05 is 3 or more.
The composition further comprises organic microparticles (B) and an initiator (C) (claims 1 and 10).
The copending Application No. 18/694,193 fails to claim that the composition comprises a photopolymerizable compound other than the compound (A1).
Kobayashi et al. teach a composition comprising (A) a first (meth)acrylate having a fluorene skeleton, (B) a second (meth)acrylate having a biphenyl ring, and (B) a polymerization initiator (par.0014). The second (meth)acrylate (B) having a biphenyl ring is represented by the formula (7) (par.0022), and it is equivalent to the compound of formula (A1) in claims 1 and 10 of the copending Application No. 18/694,193.
Kobayashi et al. teach that the (meth)acrylate having a fluorene skeleton is a compound that reduces the cure shrinkage of the composition, increases the refractive index of the cured composition, and decreases the Abbe number of the cured composition (par.0015).
Therefore, it would have been obvious to one of ordinary skill in the art before the filing date of the claimed invention to include a (meth)acrylate having a fluorene skeleton in addition to the compound of formula (A1) in the composition of the copending Application No. 18/694,193, in order to reduce the cure shrinkage of the composition, increase the refractive index of the cured composition, and decrease the Abbe number of the cured composition.
The compositions in claims 1 and 10 of the copending Application No. 18/694,193 modified by Kobayashi is equivalent to the photosensitive composition in claims 1 and 4 of the instant application.
The copending Application No. 18/694,193 further claims that the inorganic microparticles (B) are one or more selected from a group consisting of metal oxide microparticles (B1) and metal micropartricles (B2)(claim 2), same as in claim 5 of the instant application.
The copending Application No. 18/694,193 further claims that the radically polymerizable group-containing group is a (meth)acryloyl group-containing group (claim 3), same as in claim 8 of the instant application.
The copending Application No. 18/694,193 further claims that ma4=0 (claim 4), same as in claim 9 of the instant application.
The copending Application No. 18/694,193 further claims that ma1 and ma2 are respectively 1 (claim 5), same s in claim 10 of the instant application.
The copending Application No. 18/694,193 further claims that the alkylene group as Xa02 which may be interrupted by one or more oxygen atoms may be a group selected from a group consisting of ma aliphatic chain saturated hydrocarbon groups selected from an alkylene group having 1 to 4 carbon atoms, an alkanetryl group having 1 to 4 carbon atoms, and an alkyl group having 1 to 4 carbon atoms, and (ma+1) oxygen atoms bridging ma aliphatic chain saturated hydrocarbon groups, and ma is an integer from 2 to 6 (claim 6), same as in claim 11 of the instant application.
The copending Application No. 18/694,193 further claims that the composition comprises a solvent (S) comprising a high boiling solvent having a boiling point of 170oC or higher under atmospheric pressure (claim 9), same as in claim 14 of the instant application.
The copending Application No. 18/694,193 further claims a cured product (claim 11), same as in claim 15 of the instant application.
This is a provisional nonstatutory double patenting rejection.
Claim Rejections - 35 USC § 102
The following is a quotation of the appropriate paragraph of 35 U.S.C. 102 that forms the basis for the rejections under this section made in this Office action:
A person shall be entitled to a patent unless –
(a)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention.
Claims 1, 2, 8-13, and 15 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Kobayashi et al. (US 2012/0206810).
With regard to claim 1, Kobayashi et al. teach a composition comprising a first methacrylate of Formula 2, the second methacrylate of Formula 12, and a photopolymerization initiator (Example 1 in par.0079-0082).
The second methacrylate of Formula 12 is:
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(par.0025), and it is a compound (A1) of formula (A1) in claim 1, wherein Ara01 is an unsubstituted aromatic group with 12 carbon atoms, ma4=0, ma1=1, Xa01 and Xa03 are oxygen atoms, ma2=1, Xa2 is an alkylene group interrupted by oxygen atoms, the sum of oxygen atoms as Xa01, Xa03, and oxygens included in Xa02 is 6, and Ra01 is a radically polymerizable group-containing group.
The first methacrylate of Formula 2 is:
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(par.0018), and it is equivalent to “a radically polymerizable compound (A2) other than the compound (A1)” in claim 1.
Therefore, the composition in Example 1 of Kobayashi et al. anticipates the photosensitive composition in claim 1.
With regard to claim 2, the first methacrylate of Formula 2 of Kobayashi et al. is a polyfunctional radically polymerizable compound with 2 methacryloyl groups.
With regard to claim 8, the second methacrylate of Formula 12 of Kobayashi et al. comprises methacryloyl groups.
With regard to claims 9 and 10, the second methacrylate of Formula 12 of Kobayashi et al. is a compound (A1) of formula (A1), wherein ma4=0, ma1=1, and ma2=1.
With regard to claims 11-13, the second methacrylate of Formula 12 of Kobayashi et al. is a compound (A1) of formula (A1), wherein the alkylene group interrupted by oxygen atom (Xa02) is a group consisting of ma alkylene groups with 2 carbon atoms (ethane-1,2-diyl group) and (ma-1) oxygen atoms bridging the ma alkylene groups, and ma=5.
The value for ma is within the range in claim 11.
The examiner would like to note that the alkyl group Xa05 is optional for the compound (A1) of formula (A1), because ma4 may be 0.
With regard to claim 15, Kobayashi et al. teach that the composition is cured to form a resin layer (par.0083).
Claims 1, 2, 8-13, and 15 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Yokoshima (JP H05-295692, with attached machine translation).
With regard to claim 1, Yokoshima teach a composition comprising: the acrylic ester of the bisphenol-type epoxy resin of Synthesis Example 2, the compound of formula (1) obtained in Synthesis Example 4, the compound of formula (1) obtained in Synthesis Example 5, phenyloxyethyl acrylate, diacrylate of 1,6-hexanediol diglycidyl ether and 1-hydroxycyclohexyl phenyl ketone (Example 2 in par.0031).
1-hydroxycyclohexyl phenyl ketone is a photopolymerization initiator (par.0015).
The compound of formula (1) obtained in Synthesis Example 5 is represented by the formula:
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, wherein n=4 (abstract, Synthesis Example 5 in par.0029), and it is a compound (A1) of formula (A1) in claim 1, wherein Ara01 is an unsubstituted aromatic group with 12 carbon atoms, ma4=0, ma1=1, Xa01 and Xa03 are oxygen atoms, ma2=1, Xa2 is an alkylene group interrupted by oxygen atoms, the sum of oxygen atoms as Xa01, Xa03, and oxygen atoms included in X0a2 is 5, and Ra01 is a radically polymerizable group-containing group.
The diacrylate of 1,6-hexanediol diglycidyl ether of Yokoshima is “a radically polymerizable compound (A2) other than the compound (A1)” in claim 1.
Therefore, the composition in Example 3 of Yokoshima anticipates the composition in claim 1 of the instant application.
With regard to claim 2, the diacrylate of 1,6-hexanediol diglycidyl ether of Yokoshima is a radically polymerizable compound (A2) having 2 acryloyl groups.
With regard to claim 8, the compound of formula (1) obtained in Synthesis Example 5 of Yokoshima comprises an acryloyl group.
With regard to claims 9 and 10, the compound of formula (1) obtained in Synthesis Example 5 of Yokoshima is a compound (A1) of formula (A1) in claim 1, wherein ma4=0, ma1=1, and ma2=1.
With regard to claims 11-13, the compound of formula (1) obtained in Synthesis Example 5 of Yokoshima is a compound (A1) of formula (A1) in claim 1, wherein the alkylene group interrupted by oxygen atom (Xa02) is a group consisting of ma alkylene groups with 2 carbon atoms (ethane-1,2-diyl group) and (ma-1) oxygen atoms bridging the ma alkylene groups, and ma=4.
The value for ma is within the range in claim 11.
The examiner would like to note that the alkyl group Xa05 is optional for the compound (A1) of formula (A1), because ma4 may be 0.
With regard to claim 15, Yokoshima teaches a cured product obtained from the composition of Example 2 (par.0031).
Claims 1, 4-13, and 15 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Yokoshima (JP05-311102A, with attached machine translation).
With regard to claim 1, Yokoshima teaches a printing ink composition comprising a polyurethane acrylate, the product of Synthesis Example 4, tetrahydrofurfuryl acrylate, hydrogenated dicyclopentadiene acrylate, and a photopolymerization initiator (Example 3 in par.0026).
The product of Synthesis Example 4 is the reaction product of the compound of formula (3):
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with acrylic acid (par.0021-0023). and it is a compound (A1) of formula (A1) in claim 1, wherein Ara01 is an unsubstituted aromatic group with 12 carbon atoms, ma4=0, ma1=1, Xa01 and Xa03 are oxygen atoms, ma2=1, Xa2 is an alkylene group interrupted by oxygen atoms, the sum of oxygen atoms as Xa01, Xa03, and oxygen atoms included in Xa02 is 5, and Ra01 is a radically polymerizable group-containing group.
Tetrahydrofurfuryl acrylate and the hydrogenated dicyclopentadiene acrylate are “radically polymerizable compounds (A2) other than the compound (A1)” in claim 1.
Therefore, the composition in Example 3 of Yokoshima anticipates the composition in claim 1 of the instant application.
With regard to claims 4-6, the printing ink composition in Example 3 of Yokoshima comprises titanium dioxide (white pigment) (Example 3 in par.0026).
Titanium dioxide is an inorganic particle (B) in claim 4, and meets the limitations for “metal oxide microparticles (B1) in claim 5.
With regard to claim 7, the printing ink composition in Example 3 of Yokoshima comprises ethyl N,N-dimethylaminobenzoate (Example 3 in par.0026), which is an amine (E1) of formula (e1) wherein Re1, Re2, and Re3 are organic groups.
With regard to claim 8, the product of Synthesis Example 4 of Yokoshima comprises an acryloyl group.
With regard to claims 9 and 10, the product of Synthesis Example 4 of Yokoshima is a compound (A1) of formula (A1) in claim 1, wherein ma4=0, ma1=1, and ma2=1.
With regard to claims 11-13, the product of Synthesis Example 4 of Yokoshima is a compound (A1) of formula (A1) in claim 1, wherein the alkylene group interrupted by oxygen atom (Xa02) is a group consisting of ma alkylene groups with 2 carbon atoms (ethane-1,2-diyl group) and (ma-1) oxygen atoms bridging the ma alkylene groups, and ma=4.
The value for ma is within the range in claim 11.
The examiner would like to note that the alkyl group Xa05 is optional for the compound (A1) of formula (A1), because ma4 may be 0.
With regard to claim 15, Yokoshima teaches a cured product obtained from the composition of Example 3 (par.0026).
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.
Claims 3, 7, and 14 are rejected under 35 U.S.C. 103 as being unpatentable over Yokoshima (JP H05-295692, with attached machine translation).
With regard to claim 3, Yokoshima teaches the composition of claim 2 (see paragraph 12 above), but diacrylate of 1,6-hexanediol diglycidyl ether of Yokoshima is not an aliphatic acrylate with 3 or more acryloyl groups.
However, Yokoshima teaches that diacrylate of 1,6-hexanediol diglycidyl ether is functionally equivalent to trimethylol propane triacrylate as reactive monomers for the composition of Yokoshima (par.0017).
Therefore, it would have been obvious to one of ordinary skill in the art before the filing date of the claimed invention to replace the diacrylate of 1,6-hexanediol diglycidyl ether with trimethylol propane triacrylate in the composition of Example 3 of Yokoshima.
The trimethylol propane triacrylate is an aliphatic acrylate with 3 acryloyl groups.
With regard to claim 7, Yokoshima teaches the composition in claim 1 (see paragraph 12 above), but the composition in Example 2 does not comprise an amine compound (E1) of formula (a1).
However, Yoskohima teaches that the composition may comprise a photosensitizer (par.0015).
Therefore, it would have been obvious to one of ordinary skill in the art before the filing date of the claimed invention to include a photosensitizer in the composition in Example 2 of Yokoshima in order to improve the curability of the composition.
Yokoshima teaches that the photosensitizer may be ethyl N,N-dimethylaminobenzoate, isoamyl N,N-dimethylaminobenzoate, triethanolamine, or triethylamine (par.0015). These are amines (E1) of formula (e1) wherein Re1, Re2, and Re3 are organic groups.
With regard to claim 14, Yokoshima teaches the composition in claim 1 (see paragraph 12 above), but the composition in Example 2 does not comprise a solvent.
However, Yoskohima teaches that the composition may comprise an organic solvent in order to adjust the viscosity (par.0018).
Therefore, it would have been obvious to one of ordinary skill in the art before the filing date of the claimed invention to include an organic solvent in the composition of Example 2 of Yokoshima, in order to adjust the viscosity of the composition.
Yokoshima further teaches organic solvent with a boiling point of 70-150oC (par.0018). This range is outside the claimed range.
However, a value of 150oC is close enough to 170oC, so it would have been obvious to one of ordinary skill in the art before the filing date of the claimed invention to use an organic solvent with a boiling point of 170oC in the composition of Example 2 of Yokoshima.
(A) prima facie case of obviousness exists where the claimed ranges or amounts do not overlap with the prior art but are merely close. Titanium Metals Corp. of America v. Banner, 778 F.2d 775, 783, 227 USPQ 773, 779 (Fed. Cir. 1985) (Court held as proper a rejection of a claim directed to an alloy of "having 0.8% nickel, 0.3% molybdenum, up to 0.1% iron, balance titanium" as obvious over a reference disclosing alloys of 0.75% nickel, 0.25% molybdenum, balance titanium and 0.94% nickel, 0.31% molybdenum, balance titanium. "The proportions are so close that prima facie one skilled in the art would have expected them to have the same properties."). See also Warner-Jenkinson Co., Inc. v. Hilton Davis Chemical Co., 520 U.S. 17, 41 USPQ2d 1865 (1997) (under the doctrine of equivalents, a purification process using a pH of 5.0 could infringe a patented purification process requiring a pH of 6.0-9.0); In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955) (Claimed process which was performed at a temperature between 40°C and 80°C and an acid concentration between 25% and 70% was held to be prima facie obvious over a reference process which differed from the claims only in that the reference process was performed at a temperature of 100°C and an acid concentration of 10%) (MPEP 2144.05.I. OVERLAPPING, APPROACHING, AND SIMILAR RANGES, AMOUNTS, AND PROPORTIONS)
Conclusion
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/ANCA EOFF/ Primary Examiner, Art Unit 1722
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