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 .
Election/Restrictions
Applicant’s election without traverse of Group I (claims 1-10 and 12-20) in the reply filed on May 19, 2026 is acknowledged. Claim 21 is withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected Group.
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.
Claims 10 and 18 are rejected under 35 U.S.C. 112(b) as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor regards as the invention.
Claim 10 is indefinite because this claim recites that the polymer-based portion achieves a specific result, i.e., a parallel distance of 10 mm, but does not set forth the test or conditions used to achieve the claimed result.
The phrase “substantially free of a multi-functional monomer“ in claim 18 is a relative term which renders the claim indefinite. The term “substantially free” is not defined in the claim, the specification does not provide a standard for ascertaining the requisite degree, and one of ordinary skill in the art would not be reasonably apprised of the scope of the invention.
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.
(a)(2) the claimed invention was described in a patent issued under section 151, or in an application for patent published or deemed published under section 122(b), in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention.
Claims 1-5, 7, 8, 12-18, and 20 are rejected under 35 U.S.C. 102(a)(1)/(a)(2) as being anticipated by Winningham (US Pub 2007/0078247).
Regarding claims 1, 2, 12, and 13, US ‘247 discloses a polymer-based portion, i.e., coating, and method of forming the same comprising an index of refraction of 1.48 (Table 1), wherein the polymer-based portion comprises the product of curing a composition comprising a difunctional urethane-acrylate oligomer and a reactive diluent. Examples A and 1-3 exemplify embodiments where the difunctional urethane-acrylate oligomer, i.e., BR3741, is present in an amount of 52 wt% and the reactive diluent, i.e., Photomer 4003, ECX3040, and/or Tone M-100, is present in an amount of 44.5 wt% or 46.5 wt%, which is within the presently claimed ratio set forth in claims 1 and 12.
Regarding claims 3 and 14, the examples of US ‘247 include a reactive diluent that comprises a phenol ether acrylate, i.e., Photomer 4003.
Regarding claims 4 and 15, US ‘247 discloses examples having a glass transition temperature within the presently claimed range (Table 2, Examples 1 and 2).
Regarding claims 5 and 17, US ‘247 discloses that the composition can further include a silane coupling agent in an amount of about 1 wt% ([0058], Examples).
Regarding claims 7, 8, and 20, US ‘247 discloses that the polymer-based portion has a tensile strength within the presently claimed ranges (Table 2).
Regarding claim 16, US ‘247 discloses that the composition further contains a photo-initiator present in an amount of 1.5 wt% ([0054], Examples).
Regarding claim 18, the examples of US ‘247 do not contain a multi-functional monomer.
Claim Rejections - 35 USC § 102/103
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 6, 9, 10, and 19 are rejected under 35 U.S.C. 102(a)(1)/(a)(2) as anticipated by or, in the alternative, under 35 U.S.C. 103 as obvious over Winningham (US Pub 2007/0078247).
US ‘247 does not disclose the flexural or bending/folding properties of claims 6, 9, 10, and 19. However, US ‘247 does disclose that the cured polymer portion is an elastic and compliant material and capable of handling stresses induced by microbending ([0004], [0006]). Additionally, as detailed above, the cured polymer portion of US ‘247 is formed from a composition that contains the same materials and the same amounts as the present claims. As set forth in MPEP 2112, “Where applicant claims a composition in terms of a function, property or characteristic and the composition of the prior art is the same as that of the claim but the function is not explicitly disclosed by the reference, the examiner may make a rejection under both 35 U.S.C. 102 and 103. There is nothing inconsistent in concurrent rejections for obviousness under 35 U.S.C. 103 and for anticipation under 35 U.S.C. 102." In re Best, 562 F.2d 1252, 1255 n.4, 195 USPQ 430, 433 n.4 (CCPA 1977). And, as set forth in MPEP 2112.01, “Where the claimed and prior art products are identical or substantially identical in structure or composition, or are produced by identical or substantially identical processes, a prima facie case of either anticipation or obviousness has been established.” In re Best, 562 F.2d 1252, 1255, 195 USPQ 430, 433 (CCPA 1977). "When the PTO shows a sound basis for believing that the products of the applicant and the prior art are the same, the applicant has the burden of showing that they are not." In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990). In the present application, it is reasonable to conclude that the flexural and bending/folding properties of the cured polymer portion of US ‘247 would be within the presently claimed ranges or would have been obvious to one of ordinary skill in the art absent some showing on the record to the contrary.
Claim Rejections - 35 USC § 103
Claims 1, 2, 4, 6-10, 12, 13, 15, 16, and 18-20 are rejected under 35 U.S.C. 103 as being unpatentable over Johnson et al. (US Pub 2018/0178246).
Regarding claims 1, 2, 12, and 13, US ‘246 discloses a polymer-based portion, i.e., coating, and method of forming the same comprising an index of refraction in the range of 1.46 to 1.64 [0033], which overlaps with the presently claimed range. The polymer-based portion comprises the product of curing a composition comprising a 55-65 wt% of a difunctional urethane-acrylate oligomer, i.e., Photomer 6210, and 35-45wt% of a reactive diluent [0022], which is within the presently claimed ratio set forth in claims 1 and 12 and overlaps with the weight percentages set forth in claims 2 and 13. As set forth in MPEP 2144.05, “In the case where the claimed ranges ‘overlap or lie inside ranges disclosed by the prior art’ a prima facie case of obviousness exists. In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976).
Regarding claims 4 and 15, US ‘246 discloses that the cured polymer-based portion has a Tg of less than 30ᵒC ([0020], [0021]), which overlaps with the presently claimed range.
Regarding claims 6, 9, 10, and 19, does not disclose the flexural or bending/folding properties of claims 6, 9, 10, and 19. However, US ‘246 does disclose that the cured polymer portion has no visible cracks following mandrel bend testing with a mandrel having a diameter of 8 mm [0027]. Additionally, as detailed above, the cured polymer portion of US ‘246 is formed from a composition that contains the same materials and in overlapping amounts as the present claims. As set forth in MPEP 2112, “ Where applicant claims a composition in terms of a function, property or characteristic and the composition of the prior art is the same as that of the claim but the function is not explicitly disclosed by the reference, the examiner may make a rejection under both 35 U.S.C. 102 and 103. There is nothing inconsistent in concurrent rejections for obviousness under 35 U.S.C. 103 and for anticipation under 35 U.S.C. 102." In re Best, 562 F.2d 1252, 1255 n.4, 195 USPQ 430, 433 n.4 (CCPA 1977). And, as set forth in MPEP 2112.01, “Where the claimed and prior art products are identical or substantially identical in structure or composition, or are produced by identical or substantially identical processes, a prima facie case of either anticipation or obviousness has been established.” In re Best, 562 F.2d 1252, 1255, 195 USPQ 430, 433 (CCPA 1977). "When the PTO shows a sound basis for believing that the products of the applicant and the prior art are the same, the applicant has the burden of showing that they are not." In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990). In the present application, it is reasonable to conclude that the flexural and bending/folding properties of the cured polymer portion of US ‘246 would be within the presently claimed ranges or would have been obvious to one of ordinary skill in the art absent some showing on the record to the contrary.
Regarding claims 7, 8, and 20, US ‘246 does not disclose the tensile strength of the polymer-based portion. However, as set forth in MPEP 2112.01, “Where the claimed and prior art products are identical or substantially identical in structure or composition, or are produced by identical or substantially identical processes, a prima facie case of either anticipation or obviousness has been established.” In re Best, 562 F.2d 1252, 1255, 195 USPQ 430, 433 (CCPA 1977). "When the PTO shows a sound basis for believing that the products of the applicant and the prior art are the same, the applicant has the burden of showing that they are not." In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990). In the present application, it is reasonable to conclude that the polymer-based portion of US ‘246 would exhibit the same tensile strength properties as the present claims or would have been obvious to one of ordinary skill in the art absent some showing on the record to the contrary, because US ‘246 forms the polymer-based portion from a composition that contains the same materials in overlapping amounts as the presently claimed composition.
Regarding claim 16, US ‘246 discloses that the composition includes a photoinitiator in an amount of 0.25-1 wt% [0022].
Regarding claim 18, US ‘246 does not disclose that the composition that forms the polymer-based portion is required to include a multi-functional monomer.
Claims 3, 5, 14, and 17 are rejected under 35 U.S.C. 103 as being unpatentable over Johnson et al. (US Pub 2018/0178246) in view of Winningham (US Pub 2007/0078247).
Regarding claims 3 and 14, US ‘246 does not disclose that the reactive diluent comprises one or more of biphenylmethyl acrylate, phenol ether acrylate, an alkyl phenol ether acrylate, or isooctyl acrylate. US ‘247 discloses that is known in the art to use a reactive diluent that comprises a phenol ether acrylate, i.e., Photomer 4003 (Examples). US ‘247 discloses that the use of such a reactive diluent increases the polymerization rate and results in a cured product characterized by a low Tg and high refractive index. It would have been obvious to one of ordinary skill in the art to have used the composition of US ‘246 wherein the reactive diluent comprises a phenol ether acrylate, as taught in US ‘247, motivated by the desire to obtain a cured polymer product that exhibits a low Tg and high refractive index.
Regarding claims 5 and 17, US ‘246 does not disclose that the composition includes a silane coupling agent in an amount from 0.1-4.9 wt%. US ‘247 discloses that the composition can further include a silane coupling agent in an amount of about 1 wt% ([0058], Examples) to function as an adhesion promoter [0057]. It would have been obvious to one of ordinary skill in the art to have incorporated a silane coupling agent within the presently claimed range to the composition of US ‘246, as taught in US ‘247, motivated by the desire to promote adhesion of the polymer-based portion to another substrate.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Blaine Copenheaver whose telephone number is (571)272-1156. The examiner can normally be reached M-F 8-5.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Frank Vineis can be reached at (571)270-1547. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/BLAINE COPENHEAVER/Primary Examiner, Art Unit 1781
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