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.
Examiner’s Note
The Applicant's amendments and arguments filed 20 August 2026 are acknowledged and have been fully considered. The Examiner has re-weighed all the evidence of record. Rejections
not reiterated from previous Office Actions are hereby withdrawn. The following rejections are either reiterated or newly applied. They constitute the complete set presently being applied to the instant application. In the Applicant’s response, filed 20 August 2026, it is noted that claims 1, 2, 17, and 20 have been amended and no claims have been canceled or added. Support for the amendments can be found in para. 10 of the specification. No new matter has been added.
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.
Claim 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 2 recites the limitation "the substituents" in line 2 of claim 2, whereas claim 1 recites “one or more cyclic substituents” in reference to (meth)acrylate (A) instead of “the one or more cyclic substituents.” 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, entire teaching) 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 species elections 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. Yasunaga also teaches isobornyl acrylamide, N-alkyl acrylamide-based chains (pg. 2, para. 10) (b1 example, instant specification, para. 24) and acryloylmorpholine (pg. 6, para. 2) (b2 example, instant specification, para. 29). Regarding the mass%, 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, isobornyl acrylamide, or acryloylmorpholine (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 and 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.
Response to Arguments
Applicant's arguments filed 20 August 2026 have been fully considered but they are not persuasive.
The Applicant argues that the 112b rejections are appropriately addressed and corrected (Remarks, pgs. 7-8).
Applicant’s argument is not found persuasive. Claim 2 recites the limitation "the substituents" in line 2 of claim 2, whereas claim 1 recites “one or more cyclic substituents” in reference to (meth)acrylate (A), instead of “the one or more cyclic substituents.” There is insufficient antecedent basis for this limitation in the claim.
The Applicant argues that isobornyl acrylate (Applicant’s election for polymerizable compound (B)) does not satisfy the limitations in claim 1 and Yasunaga does not teach polymerizable compound (b2) (Remarks, pg. 10).
Applicant’s argument is not found persuasive. In addition to isobornyl acrylate, Yasunaga also teaches isobornyl acrylamide and acryloylmorpholine (pg. 6, para. 2), where acryloylmorpholine is an example of a polymerizable compound for b2 (instant specification, para. 29).
The Applicant argues that isobornyl acrylate is only mentioned once in the background section of the teaching (Remarks, pgs. 10-11).
Applicant’s argument is not found persuasive. Compound, such as isobornyl acrylate, isobornyl acrylamide, and acryloylmorpholine are used throughout the teaching in the synthesis examples section.
Conclusion
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any nonprovisional extension fee (37 CFR 1.17(a)) pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the mailing date of this final action.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Danielle Kim whose telephone number is (571)272-2035. The examiner can normally be reached M-F: 9-5 p.m. PST.
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/D.A.K./Examiner, Art Unit 1613
/ANDREW S ROSENTHAL/Primary Examiner, Art Unit 1613
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