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 .
Priority
The instant application was filed 08 May 2024 and is the national stage entry of PCT/JP2022/042300 filed 14 November 2022. The Applicant claims priority to foreign applications JP2021-187434 and JP2021-187438, both filed 17 November 2021. An English copy of the foreign documents has not been provided. Therefore, the effective filing date of the instant application is 14 November 2022.
Election/Restrictions
Applicant’s election without traverse of Acryloyloxyethylene norbornenecarboxyamide as (meth)acrylate (A) and Isobornyl acrylate as Polymerizable compound (B) in the reply filed on 15 May 2026 is acknowledged.
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 and 2 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 1 recites “excluding A” in parenthesis. The parenthetical recitation renders the claim indefinite because it is unclear whether the limitations in the parenthesis are part of the claimed invention or describing an example of preference. See MPEP 2173.05(d).
Claim 2 recites the limitation "the substituents" in lines 1-2 of claim 2, whereas claim 1 recites “one or more cyclic substitutions” in reference to (meth)acrylate (A). There is insufficient antecedent basis for this limitation in the claim.
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.
Claim(s) 1-20 is/are rejected under 35 U.S.C. 103 as being unpatentable over Yasunaga et al. (JP 2018095626 A; machine translation cited).
Regarding claims 1-4 and 17-20, Yasunaga teaches a composition with high active energy ray curability comprising (meth)acrylate (abs) and a polymerizable compound (pg. 4, para. 6). The (meth)acrylate compound may be an N-alkyl (linear or branched with 1-4 carbons), such as N-(methyl)acryloyloxyethyl norbornenecarboxamide (pg. 2, para. 10), and the polymerizable compound may be isobornyl acrylate (pg. 6, para. 2), which is interpreted as addressing Applicant’s election and the structural limitations in claims 1-4. The (meth)Acrylate compounds taught by Yasunaga are interpreted as addressing Applicant’s election of Acryloyloxyethylene norbornenecarboxyamide based on Compound A-2 (Table 1, instant specification). Compound A-2 is described as comprising an acrylate group, an ethyl group ((CH2)2 ), a secondary amide, and a cyclic norbornene substituent. Regarding the mass%, Yasunaga teaches isobornyl acrylate, which is interpreted as addressing the % mass of the substituents for compounds (b1) and (b2) based on Applicant’s election. The amount of (methacrylate) A (polycyclic carboxamide compound) may be at least 10 wt% (pg. 4, para. 5) and the amount of polymerizable compound B may be 10-90 wt% (pg. 5, para. 1). 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). MPEP 2144.05 (I).
Regarding claim 5, the composition in the form of an LED light beam is considered intended use and is given minimal patentable weight. See MPEP 2111.02(II).
Regarding claims 6 and 7, the limitations of the curing shrinkage rate and saturated water absorption rate are considered inherent properties of the composition. In lieu of objective evidence of unexpected results, these inherent properties are interpreted as being present in the composition since Yasunaga teaches the same composition with the same components and compounds. It is noted that “products of identical chemical composition cannot have mutually exclusive properties.” A chemical composition and its properties are inseparable. Therefore, if the prior art teaches the identical chemical structure, the properties applicant discloses and/or claims are necessarily present. In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990) (see MPEP 2112.01 (II)).
Regarding claims 8-16, the composition in the form of or for use as an ink, a pressure-sensitive adhesive, an adhesive, a coating, a sealing, a nail cosmetic, a decorative coating agent, and a dental are considered intended use and are given minimal patentable weight. See MPEP 2111.02(II).
Yasunaga does not teach an exact combination of Applicant’s election of Acryloyloxyethylene norbornenecarboxyamide and Isobornyl acrylate for at least claim 1.
In regards to selecting the combination of Acryloyloxyethylene norbornenecarboxyamide and Isobornyl acrylate, “[w]hen a patent simply arranges old elements with each performing the same function it had been known to perform and yields no more than one would expect from such an arrangement, the combination is obvious.” KSR v. Teleflex, 127 S.Ct. 1727, 1740 (2007) (quoting Sakraida v. A.G.Pro, 425 U.S. 273, 282 (1976)). “When the question is whether a patent claiming the combination of elements of prior art is obvious,” the relevant question is “whether the improvement is more than the predictable use of prior art elements according to their established functions.” (Id.). Addressing the issue of obviousness, the Supreme Court noted that the analysis under 35 USC 103 “need not seek out precise teachings directed to the specific subject matter of the challenged claim, for a court can take account of the inferences and creative steps that a person of ordinary skill in the art would employ.” KSR at 1741. The Court emphasized that “[a] person of ordinary skill is… a person of ordinary creativity, not an automaton.” Id. at 1742.
Consistent with this reasoning, it would have been obvious to have selected various combinations of various disclosed ingredients from within a prior art disclosure, to arrive at compositions “yielding no more than one would expect from such an arrangement.”
Yasunaga teaches a composition with high active energy ray curability comprising (meth)acrylate (abs) and a polymerizable compound (pg. 4, para. 6). The (meth)acrylate compound may be an N-alkyl (linear or branched with 1-4 carbons), such as N-(methyl)acryloyloxyethyl norbornenecarboxamide (pg. 2, para. 10), and the polymerizable compound may be isobornyl acrylate (pg. 6, para. 2). However, the claimed invention is directed towards an active energy ray curable composition comprising a (meth)acrylate compound (A) having one or more amide groups and one or more cyclic substitutions, a polymerizable compound (B) having one or more ethylenically unsaturated groups, wherein the polymerizable compound (B) contains one or more chain substituents with 1-36 carbons or one or more cyclic substituents with 3-20 carbons. Since Yasunaga teaches the individual components of the claimed composition, it is obvious for one of ordinary skill in the art to select the different combinations of ingredients to arrive at the claimed invention with a reasonable expectation of success.
Conclusion
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/D.A.K./Examiner, Art Unit 1613
/ANDREW S ROSENTHAL/Primary Examiner, Art Unit 1613
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