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 § 102
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 the appropriate paragraphs of 35 U.S.C. 102 that form 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.
Claim(s) 1-16, 19, and 20 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Hirata et al. (WO 2021/117880), wherein US Serial No. 2023/0037488 is used as the English equivalent for purpose of citation.
Regarding claims 1-5 and 19; Hirata et al. teaches, in a preferred embodiment, an active energy ray curable composition comprising 5 wt% of a polymerizable photoinitiator (C-7) having one benzophenone group, acrylamide unsaturation, and four urethane groups [0108] and 90 wt% of polymerizable compound (H-1 dimethylacrylamide, H-2 isobornyl acrylate, H-3 polyethylene glycol diacrylate, and H-4 urethane acrylate) [Table2, Ex11].
Hirata et al. does not explicitly teach wherein a content of components having a molecular weight of less than 1000 in a cured product of the active energy ray curable composition is less than 10%. 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. a content of components having a MW of less than 1000 in a cured product of the composition is less than 10%, would necessarily be present in a 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 6-16; The Examiner makes note that the limitations of the claims are directed to the intended use. A recitation of the intended use of the claimed invention must result in a structural difference between the claimed invention and the prior art in order to patentably distinguish the claimed invention from the prior art. If the prior art structure is capable of performing the intended use, then it meets the claim; see MPEP §2111.02, 7.37.09.
Hirata et al. teaches the photopolymerization initiator compositions can be suitably used as photocurable ink compositions, photocurable inkjet ink compositions, photocurable nail cosmetic compositions, photocurable pressure-sensitive adhesive compositions, photocurable adhesives compositions, photocurable caulking agent (sealing) compositions, photocurable coating agent compositions, photocurable resin compositions for decorative sheets, photocurable resin compositions for self-healing materials, photocurable elastomer compositions, photocurable resin compositions for stereo shaping, photocurable vehicular coating agent compositions, dental hygiene materials, etc [0002, 0132].
Regarding claim 20; Hirata et al. teaches curability at 358 nm and 405 nm wavelengths [0124].
Claim(s) 17 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Hirata et al. (WO 2021/117880), wherein US Serial No. 2023/0037488 is used as the English equivalent for purpose of citation.
Regarding claim 17; Hirata et al. teaches, in a preferred embodiment, an active energy ray curable composition comprising 5 wt% of a polymerizable photoinitiator (C-7) having one benzophenone group, acrylamide unsaturation, and four urethane groups (Mn=1700) [0108] and 90 wt% of polymerizable compound (20 wt% H-1 dimethylacrylamide, MW=99; 30 wt% H-2 isobornyl acrylate, MW=208; 20 wt% I-1 polyethylene glycol diacrylate, MW=400; and 20 wt% I-2 urethane acrylate, MW=1500) [Table2, Ex11]. Hirata et al. teaches components having an molecular weight of less than 1000 in the composition is 70 wt% [Table2; Ex11]
Hirata et al. does not explicitly teach wherein a content of components having a molecular weight of less than 1000 in a cured product of the active energy ray curable composition is less than 10%. 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. a content of components having a MW of less than 1000 in a cured product of the composition is less than 10%, would necessarily be present in a 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 & II.
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.
Claim(s) 18 is/are rejected under 35 U.S.C. 103 as being unpatentable over Hirata et al. (WO 2021/117880), wherein US Serial No. 2023/0037488 is used as the English equivalent for purpose of citation.
Regarding claim 18; Hirata et al. teaches, in a preferred embodiment, an active energy ray curable composition comprising 5 wt% of a polymerizable photoinitiator (C-7) having one benzophenone group, acrylamide unsaturation, and four urethane groups (Mn=1700) [0108] and 90 wt% of polymerizable compounds [Table2, Ex11]. Although Hirata et al. teaches the Mn for the polymerizable photoinitiator is 1700, a larger range is contemplated of from 200 to 1000 [0027]. Hirata et al. further teaches the Mn of the polyfunctional unsaturated compound is preferably 100-20000 [0070]. In the case where the claimed ranges “overlap or lie inside ranges disclosed by the prior art” a prima facie case of obviousness exists. See In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990), see MPEP §2144.05. At the time of filing, a person of ordinary skill in the art would have found it obvious to employ a polymerizable photoinitiator having a MW of, for example 200, and would have been motivated to do so in order to achieve a polymerization initiator having one or more ethylenic groups, as suggested by Hirata et al. [0027], in other words, to achieve a photoinitiator having a desired number of ethylenically unsaturated groups.
Hirata et al. does not explicitly teach wherein a content of components having a molecular weight of less than 1000 in a cured product of the active energy ray curable composition is less than 10%. 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. a content of components having a MW of less than 1000 in a cured product of the composition is less than 10%, would necessarily be present in a 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 & II.
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.
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.
/JESSICA M ROSWELL/Primary Examiner, Art Unit 1767
Prosecution Insights