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, 5-7, 9, 11, and 13 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.
Regarding claim 1: The suffix "able", from the word obtainable in line 1, when recited in conjunction with a process (i.e., obtainable by) renders the claim indefinite since it is not possible to determine with certainty when such a claim is infringed, i.e., exactly when a product is "able" to be made by the claimed method and when it is not. The claim is indefinite if undue experimentation is involved to determine boundaries of protection. This rationale is applicable to polymer "obtainable" by a stated process because any variation in any parameter within the scope of the claimed process would change the polymer produced. One who made or used a polymer made by a process other than the process cited in the claim would have to produce a polymer using all possible parameters within the scope of the claim, and then extensively analyzing each product to determine if this polymer was obtainable by a process within the scope of the claimed process--see Ex parte Tanksley, 26 USPQ 2d 1389.
Additionally, it is unclear in claim 1 if applicant intends for the claimed polymer to be the reaction of components a), b), and c) in the presence of d) ? It is unclear if applicant intends for the claimed polymer to be the reaction of components a), b), c) and d) , i.e., the obtained polymer has photoinitiator groups ?
Regarding claims 5-7, 9, 11 and 13 : the phrase "preferably” and “more preferably" renders the claim indefinite because it is unclear whether the limitation(s) following the phrase are part of the claimed invention. See MPEP § 2173.05(d).
Claim Interpretation
Claim 1 is a product-by-process claims and therefore “even though product-by-process claims are limited by and defined by the process, determination of patentability is based on the product itself. The patentability of the product does not depend on the method of production. Therefore, if the product in the product-by-process claim is the same as or obvious from a product of the prior art, the claim is unpatentable even though the prior product was made by a different process—see In re Thorpe, 227 USPQ 967 (Fed. Cir. 1985).
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, 3-7 and 11-14 is/are rejected under 35 U.S.C. 102(a1) as being anticipated by Weikard et al (US 6,323,254).
Weikard sets forth UV curable binder composition comprising a) 10 to 90 parts of a polymer having both ethylenically unsaturated groups and the reaction product of a resin containing abietic acid (a rosin acid comprising two unsaturated bonds) with a polyfunctional alcohol; b) 10 to 90 parts by weight of one or more mono-, di- or oligoester of (meth) acrylic acid; and 0.1 to 10 parts by weight of a photoinitiator—see abstract; col. 1, line 55 to col 2., line 2; and col. 3, line 60 to col. 4, line 2.
Weikard sets forth obtaining a polymer a) having both ethylenically unsaturated groups and the reaction product of a resin containing rosin acid and a polyhydroxy compound per examples 1 and 2. In example 1, Weikard reacts a rosin acid (abietic acid) with a polyol (trimethylolpropane) to obtain rosin acid precursor. Said example 1 precursor is than reacted with a polyol (ethylene glycol); maleic anhydride; and trimethylolpropane diallyl ether (unsaturated compound) and then combined with dipropylene glycol diacrylate, a stabilizer and an antioxidant to obtain a solution—see example 2. The obtained polyester comprising a rosin acid resin precursor solution is then added to a composition comprising dipropylene glycol diacrylate and a photoinitiator—see example 6.
Regarding claim 1: Weikard sets forth reacting a rosin acid containing two conjugated carbon-carbon double bonds (abietic acid) with a polyol to obtain a rosin-intermediated, which is deemed to read on applicant’s component a). Weikard sets forth said rosin-intermediated from example 1 is then reacted with a polyol (ethylene glycol, corresponding to applicants component c1)); an acid anhydride; and trimethoylolpropane diallyl ether to obtain a polymer precursor—see example 2. Said polymer precuror is deemed to correspond to applicants components a) and c) is then added to a reactive diluent (dipropylene glycol diacrylate, a dienophile corresponding to applicants b)) and a photoinitiator (corresponding to applicant’s d))—see example 6. It is deemed the reaction mixture in example 6 upon curing anticipates applicant’s claimed polymer, as well as, the method of claim 14---please note there the claim does not require component d) to be reactive with a) thru c). Thus, applicant’s product is deemed anticipated by example 6. In addition, it is deemed the method of claim 14 is anticipated since Weikard sets forth producing a polymer comprising reacting components a) and c) in example 1 (the rosin acid and trimethylolpropane polyol) with a dienophoile (dipropylene glycol diacrylate component b)) in example 6 in the presence of a photoinitiator (component d)).
Regarding claims 3 and 12: the reaction mixture in example 2 comprises maleic anhydride, a carboxylic acid anhydride.
Regarding claim 4: the reaction mixture in example 1 comprises abietic acid as the rosin acid resin.
Regarding claim 5. The trimethylolpropane diallyl ether is deemed to anticipate the compound of formula (1) when R1-R3 and R5-R7 are H, k1 and k2 are 1 and R4 is an C3 alkyl group subsitiuted with ether groups and at least one hydroxyl group.
Regarding claim 6: the dipropylene glycol is deemed to anticipate the diacrylate compound.
Regarding claim 7: the ethylene glycol in example 2 is deemed to anticipate the claimed monomeric polyol having two or more hydroxyl groups.
Regarding claim 11: the photoinitiator in example 6 is phenyl-2-hydroxy-2-propyl ketone, which has two hydroxy groups.
Regarding claim 13: the precurosor resin of example 2 has an acid number of 14 KOH/g and a viscosity when diluent in dipropylene glycol diacrylate of 12 Pa*s—see example 2, lines 54-56.
Allowable Subject Matter
Claims 2, 8-10 and 15 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.
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.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
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
