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 § 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) 1-5, 7-10, and 16-23 is/are rejected under 35 U.S.C. 103 as being unpatentable over Sakano et al. (WO 2020/170698), wherein the machine English translation is used for citation.
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Regarding claims 1-5, 7-10, and 16; Sakano et al. teaches a fluorine containing curable composition comprising component (A) a linear polymer having a fluoropolyether as a main chain, having one or two (meth)acryl groups at one end or both ends of the molecular chain, having a molecular weight of 600-20,000 [011]; a component (B) composed of a fluorine containing acrylic compound; a component (C) composed of a non-fluorinated acrylic compound having an average of two or more (meth)acrylic groups, and a photoinitiator (D) [011]. Sakano et al. teaches, in a preferred embodiment, the component (A) has the following formula (A-1) below (reads on instant A; claims 3-5; e-i = 0)) [0138; Syn Ex1], a component (C) is Ebecryl® 40 (pentaerythritol ethoxy tetraacrylate; viscosity less than 5000 mPa·s; reads on instant B), and Irgacure® 184 (photoinitiator; reads on instant C). Sakano et al. teaches a preferred component (B) has the formula below (reads on instant A, MW ~ 6416; i.e. less than 40,000) [0142-0145, Syn Ex5].
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Sakano et al. teaches the blending amount of the component (A) and the component (B) is 0.05-50 parts by mass with respect to 100 parts of mass of the component (C), and the blending amount of the component (A) is 1-100 parts by mass with respect to 100 parts by mass of component (B). Thus, in the instance components (A) and (B) are employed in an amount of 50 parts by mass (instant A) with respect to 100 parts by mass of component (C) (instant B); the amount of component (C) (instant B) is 200 parts by mass based on 100 parts of component (A) and (B) (instant A), as calculated by Examiner. 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 add the components (A) and (B) (instant A), in an amount of 50 parts by mass (i.e. 100 parts), with respect to 100 parts by mass of component (C) (i.e. 200 parts; instant B), and would have been motivated to do so since Sakano et al. teaches those amounts suitable in order to achieve the particulars of the present invention.
Sakano et al. fails to explicitly teach the composition having a viscosity of 10 to 100,000 mPa·s at 23°C and a refractive index of up to 1.390 at a temperature of 25°C and wavelength of 589 nm. 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. viscosity and refractive index, 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.
Regarding claim 17; the Examiner makes note that “for use in an antireflective agent or optical fiber coating agent” is merely an intended use limitation. 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.
Regarding claims 18 and 21-23; Sakano et al. teaches a cured product [0153], such as a cured antireflection film, lens, coating for an optical fiber [0133].
Regarding claims 19-20; Sakano et al. fails to explicitly teach the cured product has a refractive index of up to 1.400 at a temperature of 25°C and wavelength of 589 nm and a change of hardness falling within the initial hardness ±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. viscosity and refractive index, 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(s) 1 and 12-15 is/are rejected under 35 U.S.C. 103 as being unpatentable over Sakano et al. (JP 2017-190429), herein referred to as JP’429, wherein the machine English translation is used for citation.
Regarding claims 1 and 12-15; JP’429 teaches a fluorine containing active energy ray curable composition comprising (A) a fluorine containing acrylic compound represented by formula (1) and (B) an acrylic compound having a viscosity at 25°C of 100 mPa·s or less and containing one or two (meth)acrylic groups, wherein the mass ratio of component (A) to component (B) is within the range of 0.03<(A)/(B)<10 (e.g. 100 parts (A) to 0.03-10 parts (B)) [011].
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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 add the component (B) in an amount of 10 parts by weight, with respect to 100 parts by mass of component (A), and would have been motivated to do so since JP’429 et al. teaches those amounts suitable in order to achieve the particulars of the present invention.
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JP’429 teaches a suitable compound used as component (A), see below, wherein the MW falls within the range of 500-40,000.
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JP’429 teaches suitable compound to be used as component (B) include a compound of the formula below [012], specifically (2-perfluorohexyl) ethyl acrylate [Ex1].
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JP’429 teaches the composition further comprises 0.1 to 15 parts by mass of a photopolymerization initiator [015].
JP’429 fails to explicitly teach the composition having a viscosity of 10 to 100,000 mPa·s at 23°C and a refractive index of up to 1.390 at a temperature of 25°C and wavelength of 589 nm. 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. viscosity and refractive index, 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(s) 1, 4, 6, and 11 is/are rejected under 35 U.S.C. 103 as being unpatentable over Dominguez-Burguette et al. (US Patent No. 4404247), in view of Jieemusu (JP H02308882A), wherein the machine English translation is used for citation.
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Regarding claims 1, 4, 6, and 11; Dominguez-Burguette et al. teaches an outer coating composition comprising a perfluoropolyether monomer (see structure below) having a molecular weight of 500 to 20,000 [col5, line3],up to about 20% by weight of one or more copolymerizable monomers, such as acrylic and methacrylic esters [col7, line10-20; col6; Formula I], may further comprise photoinitiators [col3, line39-50].
In the instance the perfluoropolyether monomer is employed in an amount of 90% by weight and the copolymerizable (meth)acrylic ester monomer is employed in an amount of 10% by weight, the copolymerizable (meth)acrylic ester monomer would be present in an amount 11.1 parts by weight based on 100 parts by weight of the perfluoropolyether monomer compound (as calculated by Examiner).
Dominguez-Burguette et al. teaches the composition may further comprise copolymerizable (meth)acrylic ester monomers, however fails to explicitly teach specific monomers to be employed in the present invention. Jieemusu teaches coating compositions suitable for use on magnetic recording mediums [02-03], the composition comprising suitable monomers including hexamethylene diacrylate (i.e. hexanediol diacrylate, viscosity 6.5 mPa·s) [022]. Dominguez-Burguette et al. and Jieemusu are analogous art because they are both concerned with the same field of endeavor, namely compositions suitable for use on magnetic recording mediums. At the time of filing, a person of ordinary skill in the art would have found it obvious to add hexamethylene diacrylate, as taught by Jieemusu, to the composition of Dominguez-Burguette et al., and would have been motivated to do so because Dominguez-Burguette et al. teaches the composition may further comprise copolymerizable acrylate monomers, and Jieemusu teaches hexamethylene diacrylate is suitable for use in compositions to be employed on magnetic recording mediums.
Dominguez-Burguette et al. teaches the composition may comprise a photoinitiator, however fails to explicitly teach an amount for said initiator. Jieemusu teaches coating compositions suitable for use on magnetic recording mediums [02-03], wherein an initiator can be added in ana mount of from 0.25 to 1% by weight [016]. Dominguez-Burguette et al. and Jieemusu are analogous art because they are both concerned with the same field of endeavor, namely compositions suitable for use on magnetic recording mediums. At the time of filing, a person of ordinary skill in the art would have found it obvious to employ the initiator of Dominguez-Burguette et al., in an amount of 1% by weight (i.e. 1 part by weight), as taught by Jieemusu, and would have been motivated to do so in order to enhance polymerization, as suggested by Jieemusu [016].
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.
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/JESSICA M ROSWELL/Primary Examiner, Art Unit 1767
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