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 1-21 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.
Where applicant acts as his or her own lexicographer to specifically define a term of a claim contrary to its ordinary meaning, the written description must clearly redefine the claim term and set forth the uncommon definition so as to put one reasonably skilled in the art on notice that the applicant intended to so redefine that claim term. Process Control Corp. v. HydReclaim Corp., 190 F.3d 1350, 1357, 52 USPQ2d 1029, 1033 (Fed. Cir. 1999). The term “polyiso(thio)cyanate” in claims 1-21 is used by the claim to mean “polyisocyanate, as evidenced by the required grouping for compound (b), i.e., selected from the group consisting of pentamethylene diisocyanate, hexamethylene diisocyanate, xylylene diisocyanate, isophorone diisocyanate, bis(isocyanatomethyl)cyclohexane, bis(isocyanatocyclohexyl)methane, 2,5-bis(isocyanatomethyl)bicyclo-[2.2.1]-heptane, 2,6-bis(isocyanatomethyl)bicyclo-[2.2.1]-heptane, tolylene diisocyanate, 4,4′-diphenylmethane diisocyanate, and phenylene diisocyanate” while the accepted meaning is “a compound having the structural unit:
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.” The term is indefinite because the specification does not clearly redefine the term.
Additionally, it is unclear in claims 1-21 if applicant intends for the (thio) within the parenthesis of the limitation “poly-iso(thio)cyanate” to be an optional choice in light of the required polyisocyanate compounds of the group selection. It is unclear if applicant intends for the component (b) to comprise a polyisocyanate selected from the Markush grouping and optionally, a polyisothiocyanante. It is unclear if applicant intends for the component (b) to comprise both a polyisocyanate selected from the Markush grouping and an isothiocyanate. It is unclear if applicants intend for the polyisothiocyanate to be any type of polyisothiocyanate or if applicant intends for the polyisothiocyanate to be selected from thiocyanate derivatives of the polyisocyanate compounds of the claimed Markush grouping. Clarification is requested.
Specification
The specification is objected to as failing to provide proper antecedent basis for the claimed subject matter. See 37 CFR 1.75(d)(1) and MPEP § 608.01(o). Correction of the following is required: The claims require component (b) of the photocurable composition to comprise a polyiso(thio)cyanate, wherein said polyiso(thio)cyanate are selected from the group consisting of pentamethylene diisocyanate, hexamethylene diisocyanate, xylylene diisocyanate, isophorone diisocyanate, bis(isocyanatomethyl)cyclohexane, bis(isocyanatocyclohexyl)methane, 2,5-bis(isocyanatomethyl)bicyclo-[2.2.1]-heptane, 2,6-bis(isocyanatomethyl)bicyclo-[2.2.1]-heptane, tolylene diisocyanate, 4,4′-diphenylmethane diisocyanate, and phenylene diisocyanate. The examiner does not find polyisothiocyanate compounds. Please see above rejections.
Claim Rejections - 35 USC § 102
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, 6-7, 8, 10, 12, 14, and 18-19 is/are rejected under 35 U.S.C. 102(a) as being anticipated by Klinkenberg et al (6,579,913).
Klinkenberg sets forth photoactivable coating compositions comprising a photo-latent base.
Klinkenberg explicitly sets forth a composition which is deemed to anticipate claims 1, 12, 14 and 18-19 in example 2. Said composition comprises an aliphatic trimer of hexamethylene diisocyanate (corresponding to claimed polyiso(thio)cyanate—hexamethylene diisocyanate) [claim 1]; trimethylolpropane tris (3-methcapto propionate) --corresponding to the claimed polythiol--; isopropylthioxanthone (ITX, photosensitizer [claim 12]) and a photolatent base having the formula:
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--see example 2 and Table 2. This photolatent base is deemed to anticipate formula (1) in claim 1, when R1-R4 are alkyl groups having 4 carbon atoms and R5-8 are halogen substituted phenyl groups. Said composition is coated onto a substrate and cured by exposure to UBA at room temperature [claims 14 and 18]. Klinkenberg teaches after irradiation the coatings results sat at room temperature and/or in the dark for 10 min [claim 19]—see col. 9, lines 63-67 to col. 10, line 1.
Klinkenberg explicitly sets forth a composition which is deemed to anticipate claims 6-8 and 10 in example 4. Example 4 sets forth a composition comprising 10 parts pentaerythritol tetrakis (3-mercaptopropionate)—[corresponding to the polythiol in claim 6]; 17.9 parts aliphatic trimer of hexamethylene diisocyanate (corresponding to claimed polyiso(thio)cyanate—hexamethylene diisocyanate [claim 6 and 10]); 0.63 parts of a polyether-modified polydimethylsiloxane (BYK-306); 1.1 part of a photo-base generator [claim 6]; and 1.16 parts of an metal complex catalyst (titanium diisopropoxide bis 2,4 (pentadienoate)). It is deemed BYK-306 has the structure:
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--[claim 7].
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 and 11-19 is/are rejected under 35 U.S.C. 103 as being unpatentable over Klinkenberg et al (cited above).
Klinkenberg sets forth photoactivable coating compositions comprising a photo-latent base.
Klinkenberg sets forth a composition which is deemed to anticipate claims 1, 12, 14 and 18-19 in example 2. Said composition comprises an aliphatic trimer of hexamethylene diisocyanate (corresponding to claimed polyiso(thio)cyanate—hexamethylene diisocyanate) [claim 1]; trimethylolpropane tris (3-mercaptopropionate) --corresponding to the claimed polythiol--; isopropylthioxanthone (ITX, photosensitizer [claim 12]) and a photolatent base having the formula:
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--see example 2 and Table 2. This photolatent base is deemed to read on formula (1) in claim 1, when R1-R4 are alkyl groups having 4 carbon atoms and R5-8 are halogen substituted phenyl groups. Said composition is coated onto a substrate and cured by exposure to UVA at room temperature [claims 14 and 18]. Klinkenberg teaches after irradiation the coatings results sat at room temperature and/or in the dark for 10 min [claim 19]—see col. 9, lines 63-67 to col. 10, line 1.
The primary difference is Klinkenberg does not explicitly set forth a composition comprising the polythiol compounds found in instant claim 11. However, in the overall teachings of the reference sets forth polythiol compounds such as trimethylolpropane tris (3-mercaptopropionate) and pentaerythritol tetrakis (3-mercaptopropionate) are suitable equivalent substitutes for providing good results—see col. 5, lines 36-39. A skilled artisan would have found it obvious to obtain a composition such as found in example 2 by replacing the trimethylolpropane tris (3-mercaptopropionate) with pentaerythritol tetrakis (3-mercaptopropionate) with an expectation of obtain the desired “good” results in absence of evidence to the contrary and/or unexpected results. Thus, claim 11 is set forth with sufficient specificity and, therefore, obvious.
Regarding claim 13: Klinkenberg sets forth the addition of a metal catalyst improves/extends the pot life of the composition—see col. 3, lines 37-45. It is deemed a skilled artisan would have found it obvious to add a metal catalyst to the composition, such as set forth above, with an expectation of extending the pot life of the composition in absence of evidence to the contrary and/or unexpected results.
Regarding claims 15-17: Klinkenberg sets forth said composition are suitable as clear coats, base coats, pigmented topcoats, primers, and fillers—see col. 8, lines 60-65. Additionally teaches said clear coat composition is applied to the surface of a base coat and then cured. An intermediate curing step for the base coat may be introduced. It would have been within the skill level of an ordinary artisan to use the composition as set forth in example 2 as a base coating, as suggested in the teachings, to obtain a laminate. Thus claims 15-17 are deemed obvious in view of the reference, wherein the base coat is deemed to be an adhesion/tie layer that lies between the primer and clear coatings.
Allowable Subject Matter
Claims 2-5, 9, and 20-21 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: Klinkenberg does not set forth the addition of an episulfide. While setting forth the addition of UV absorbers Klinkenberg does not expressly teach ones represented by formulas e-1 to e-4. Klinkenberg does not set forth a method for making a lens.
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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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Heidi Riviere-Kelley can be reached at 571-270-1831. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/SANZA L. McCLENDON/Primary Examiner, Art Unit 1765
SMc
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