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.
Claim(s) 1-2, 4-12, 14, and 15 is/are rejected under 35 U.S.C. 103 as being unpatentable over Izawa et al. (US Serial No. 2013/0140083).
Regarding claims 1, 4, 6-9, 12, and 14; Izawa et al. teaches a composition comprising a radical polymerizable compound of general formula (B) (compound A-1), wherein R3-R4 represent hydrogen, c and d are an integer of 3 (MW of about 882 g/mol) [0089].
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diacrylate with a molecular weight of 882 (i.e. diacrylate contains 2 moles of acrylate groups per 1 mole of compound)
acrylic equivalent = 882 (g) = 441 (g/eq)
2 (eq)
The composition further comprises an N-vinyl monomer (e.g. N-vinyl caprolactam; claim 4) [0122], a radical photoinitiator (curing agent D, claim 14) [0127], and 1 wt% to 50 wt% of silicon particles [0083], such as core-shell silicon particles, wherein the shell is silsesquioxane [0072]. In a preferred embodiment, Izawa et al. teaches KMP-600 (core-shell type particle wherein the shell is composed mainly of a random polysilsesquioxane and has a methyl group, with an average particle size of 5.0 μm, instant claims 6-8; see spec [00103-00104]), in an amount of 20 parts with respect to 100 parts of the radically polymerizable component (as calculated by Examiner).
Izawa et al. teaches all of the above required components, however fails to explicitly disclose each in a preferred embodiment. A reference may be relied upon for all that it would have reasonably suggested to one having ordinary skill the art, including the non-preferred embodiments. See Merck & Co. v. Biocraft Laboratories, 874 F.2d 804, 10 USPQ2d 1843 (Fed. Cir.); MPEP §2123. Izawa et al. does not specifically disclose an embodiment containing the diacrylate having a MW of 882, a polysilsesquioxane particle, and a photoinitiator. However, at the time of invention a person of ordinary skill in the art would have found it obvious to prepare a composition containing a diacrylate having a MW of 882, a polysilsesquioxane particle, and a photoinitiator based on the invention of Izawa et al., and would have been motivated to do so since Izawa et al. suggests that the composition can contain a diacrylate having a MW of 882, a polysilsesquioxane particle, and a photoinitiator. Additionally, “It is prima facie obvious to combine two compositions each of which is taught by the prior art to be useful for the same purpose, in order to form a third composition to be used for the very same purpose.... [T]he idea of combining them flows logically from their having been individually taught in the prior art.” In re Kerkhoven, 626 F.2d 846, 850, 205 USPQ 1069, 1072 (CCPA 1980) (citations omitted) [see MPEP 2144.06].
Regarding claim 2-3; Izawa et al. teaches the mixing amount of the radical polymerizable compound (compound A-1, diacrylate) is preferably 5 to 95 wt.% of the composition [0124] and the mixing amount of the N-vinyl compounds (compound A-2) is 0.2 to 15 wt% [0123], thus the amount of the urethane (meth)acylate falls within the scope required by the claim language. 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.
Regarding claim 10; Izawa et al. teaches the radical polymerizable compounds may be used in combination with other radical polymerizable compounds [0101], for example a compound of general formula (G), wherein R9 represents hydrogen (MW of about 484.5 g/mol) [0094].
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Presuming a 1:1 weight ratio mixture:
[50 * (2/882) + 50 * (2/484.5)] = 0.113 + 0.21 = 0.00323 eq/g = (1 / 0.00323) = 310eq/g
100 100
When faced with a mixture, one of ordinary skill in the art would be motivated to select a 1:1 ratio, absent evidence of unexpected or surprising results. Case law holds that "[h]aving established that this knowledge was in the art, the examiner could then properly rely... on a conclusion of obviousness, 'from common knowledge and common sense of the person of ordinary skill in the art within any specific hint or suggestion in a particular reference.'" In re Bozek, 416 F.2d 1385, 1390, 163 USPQ 545, 549 (CCPA 1969). Given the recitation of a “combination” in Izawa et al., one of ordinary skill in the art would at once envisage a 1:1 ratio, since a 1:1 ratio is the most common starting point when mixing two components.
Regarding claim 11; Izawa et al. teaches the composition may further comprise a urethane di(meth)acrylate (compound A) [0102], having a weight average molecular weight of not less than 5000 to less than 30,000 [0107]. In the instance a urethane di(meth)acrylate compound having a weight average molecular weight of 10,000, it would thus have an ethylenically unsaturated group equivalent of 5,000 g/eq (as calculated by Examiner).
Urethane diacrylate with average molecular weight of 10,000 (i.e. diacrylate contains 2 moles of acrylate groups per 1 mole of compound)
acrylic equivalent = 10,000 (g) = 5,000 (g/eq)
2 (eq)
Regarding claim 13; Izawa et al. teaches the urethane acrylate can be prepared from polycarbonate diols [0106].
Regarding claim 15; Izawa et al. teaches a cured adhesive product [0020].
Regarding claims 16-17; Izawa et al. does not explicitly teach wherein the cured product has a specific amount of wear of less than 0.5 mm3/N·km and a friction coefficient of less than 1.0. 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. wear and friction coefficient, 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.
Double Patenting
The nonstatutory double patenting rejection is based on a judicially created doctrine grounded in public policy (a policy reflected in the statute) so as to prevent the unjustified or improper timewise extension of the “right to exclude” granted by a patent and to prevent possible harassment by multiple assignees. A nonstatutory double patenting rejection is appropriate where the conflicting claims are not identical, but at least one examined application claim is not patentably distinct from the reference claim(s) because the examined application claim is either anticipated by, or would have been obvious over, the reference claim(s). See, e.g., In re Berg, 140 F.3d 1428, 46 USPQ2d 1226 (Fed. Cir. 1998); In re Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993); In re Longi, 759 F.2d 887, 225 USPQ 645 (Fed. Cir. 1985); In re Van Ornum, 686 F.2d 937, 214 USPQ 761 (CCPA 1982); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Thorington, 418 F.2d 528, 163 USPQ 644 (CCPA 1969).
A timely filed terminal disclaimer in compliance with 37 CFR 1.321(c) or 1.321(d) may be used to overcome an actual or provisional rejection based on nonstatutory double patenting provided the reference application or patent either is shown to be commonly owned with the examined application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. See MPEP § 717.02 for applications subject to examination under the first inventor to file provisions of the AIA as explained in MPEP § 2159. See MPEP § 2146 et seq. for applications not subject to examination under the first inventor to file provisions of the AIA . A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
The filing of a terminal disclaimer by itself is not a complete reply to a nonstatutory double patenting (NSDP) rejection. A complete reply requires that the terminal disclaimer be accompanied by a reply requesting reconsideration of the prior Office action. Even where the NSDP rejection is provisional the reply must be complete. See MPEP § 804, subsection I.B.1. For a reply to a non-final Office action, see 37 CFR 1.111(a). For a reply to final Office action, see 37 CFR 1.113(c). A request for reconsideration while not provided for in 37 CFR 1.113(c) may be filed after final for consideration. See MPEP §§ 706.07(e) and 714.13.
The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The actual filing date of the application in which the form is filed determines what form (e.g., PTO/SB/25, PTO/SB/26, PTO/AIA /25, or PTO/AIA /26) should be used. A web-based eTerminal Disclaimer may be filled out completely online using web-screens. An eTerminal Disclaimer that meets all requirements is auto-processed and approved immediately upon submission. For more information about eTerminal Disclaimers, refer to www.uspto.gov/patents/apply/applying-online/eterminal-disclaimer.
Claims 1-14 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claim 1-12 and 14-15 of copending Application No. 18/297338 (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other because they are both drawn to the same art specific subject matter, namely photocurable resin compositions. The essential difference between the instant application and the copending application is that the copending application further requires a monofunctional radically polymerizable compound in the independent claim and teaches a polyfunctional radically polymerizable compound having an ethylenically unsaturated group equivalent of less than 700 g/eq in an independent claim. A reference may be relied upon for all that it would have reasonably suggested to one having ordinary skill the art, including the non-preferred embodiments. Merck & Co. v. Biocraft Laboratories, 874 F.2d 804, 10 USPQ2d 1843 (Fed. Cir.); see MPEP §2123.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Response to Arguments
Applicant's arguments filed 09 July 2026 have been fully considered but they are not persuasive.
Applicants argue there is no reasonable motivation to combine the teachings of Izawa to arrive at the scope of claim 1 and there is no reasonable expectation of success.
The Examiner respectfully disagrees. A reference may be relied upon for all that it would have reasonably suggested to one having ordinary skill the art, including the non-preferred embodiments. Merck & Co. v. Biocraft Laboratories, 874 F.2d 804, 10 USPQ2d 1843 (Fed. Cir.); see MPEP §2123. Izawa teaches all of the claimed compounds are suitable to achieve the particulars of the present invention, thus there is reasonable motivation to combine the teachings of Izawa with reasonable expectation of success.
In response to applicant's argument that Izawa does not provide any teaching or suggestion that polysilsesquioxane particles can act as a lubricant that rolls at a sliding interface without breaking to lower friction and prevent wear, the fact that the inventor has recognized another advantage which would flow naturally from following the suggestion of the prior art cannot be the basis for patentability when the differences would otherwise be obvious. See Ex parte Obiaya, 227 USPQ 58, 60 (Bd. Pat. App. & Inter. 1985).
Applicants argue one having ordinary skill in the art, seeing to formulate a high-durability resin would have no logical reason to turn to a circuit-bonding adhesive reference to solve a sliding wear or surface friction problem. In response to applicant's argument that the references fail to show certain features of the invention, it is noted that the features upon which applicant relies (i.e. sliding wear or surface friction) are not recited in the rejected claim(s). Although the claims are interpreted in light of the specification, limitations from the specification are not read into the claims. See In re Van Geuns, 988 F.2d 1181, 26 USPQ2d 1057 (Fed. Cir. 1993). The claims of the instant invention are generically directed to a photocurable resin composition, not to formulating a high-durability resin to solve a sliding wear or surface friction problem.
Applicants argue one having ordinary skill in the art would be motivated away from selecting the combination of features recited by claim 1. In response to argument that one having ordinary skill in the art would be motivated away from selecting the combination of features recited by claim 1, the fact that the inventor has recognized another advantage which would flow naturally from following the suggestion of the prior art cannot be the basis for patentability when the differences would otherwise be obvious. See Ex parte Obiaya, 227 USPQ 58, 60 (Bd. Pat. App. & Inter. 1985). Izawa teaches it obvious to employ each of the components required by the claim language, thus does not “teach away” as applicants allege.
Regarding arguments directed to the alleged criticality and unexpected results, the data and results of the examples of the specification are not commensurate in scope with claim 1; the limitations of claim 1 are broad with respect to the examples in the instant specification. The claimed invention requires any amount of any polyfunctional radically polymerizable compound, any amount of any monofunctional radically polymerizable compound, and amount of any curing agent containing a radical photoinitiator.
Furthermore, the alleged unexpected results must occur over all ranges and therefore applicants must show a broad range of examples. It is unclear whether the unexpected results are the result of unexpectedly improved results or a property not taught by the prior art, the “objective evidence of nonobviousness must be commensurate in scope with the claims which the evidence is offered to support.” In other words, the showing of unexpected results must be reviewed to see if the results occur over the entire claimed range. In re Clemens, 622 F.2d 1029, 1036, 206 USPQ 289, 296 (CCPA 1980). MPEP 716.02(d).
In response to Applicants arguments directed to the obviousness-type double patenting rejection; a 103 type analysis was provided in that the claims of the copending application read on the claims of the instant application in varying embodiments of the claims. Although the claims are not identical, they are not patentably distinct from each other, thus the obviousness-type double patenting rejection stands.
As such, Izawa is still relied upon for rendering obvious the basic claimed photocurable composition as required by the instant claim language.
Conclusion
THIS ACTION IS MADE FINAL. 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.
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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