CTNF 18/787,144 CTNF 75688 DETAILED ACTION Notice of Pre-AIA or AIA Status 07-03-aia AIA 15-10-aia The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA. Election/Restrictions 08-25 AIA Applicant's election with traverse of G roup II i n the reply filed on 0 1/06/2026 i s acknowledged. The traversal is on the ground(s) that t here is no search burden on the examiner. T his is not found persuasive because t he composition as claimed can be used in methods other than being discharged such as methods for forming films onto substrates by dip coating, spin coating, roll coating, and the like as evidenced by Ellison et al (US2006/0128826). Ellison sets forth ultra-thin thiol ene coatings obtained from compositions comprising a multi-functional thiol, a multifunctional (meth) acrylate compound, a photoinitiator, and, optionally, a vinyl ether compound. Ellison sets forth the composition can be cured by exposure to radiation in an oxygen atmosphere—see [0005]; [0014]; [0036]; and the examples. Additionally, the composition of claims 1-10 and 20 does not require the particulars of claims 11-19 and 21 as claimed for patentability (to show novelty and unobviousness) . The requirement is still deemed proper and is therefore made FINAL. The restriction requirement has been amended: Group I: claims 1-10 and 20 and Group II: claims 11-19 and 21. Claim 20 depends from claim 1 in Group I. Claims 1-10 and 20 are currently pending. Claims 11-19 and 21 are withdrawn. Claim Objections 07-05-06 Claim 20 is objected to under 37 CFR 1.75 as being a substantial duplicate of claim 10. When two claims in an application are duplicates or else are so close in content that they both cover the same thing, despite a slight difference in wording, it is proper after allowing one claim to object to the other as being a substantial duplicate of the allowed claim. See MPEP § 608.01(m). Claim Rejections - 35 USC § 112 07-30-02 AIA 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. 07-34-01 Claims 1-10 and 20 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 (2-10 and 20) and 6 sets forth the multi-functional component is selected from a multi-functional thiol; a multi-functional thiol-vinyl ether; a multi-functional thiol-allyl ether; and combinations thereof. Regarding claims 1 and 6: It is unclear if applicant intends for the multi-functional-vinyl ether to be a reaction product of a thiol compound and a vinyl ether compound which has reactive thiol and vinyl ether functional groups or having thiol functional groups only or having vinyl ether functional groups only. It is unclear if applicant intends for the multi-functional vinyl ether component to include both a multi-functional thiol compound and a multi-vinyl ether compound? Appropriate action and/or clarification is requested. It is unclear if applicant intends for the multi-functional-allyl ether to be a reaction product of a thiol compound and an allyl ether compound which has reactive thiol and allyl ether functional groups or having thiol functional groups only or having allyl ether functional groups only. It is unclear if applicant intends for the multi-functional allyl ether component to include both a multi-functional thiol compound and a multi-allyl ether compound? Appropriate action and/or clarification is requested. Unless otherwise indication the multi-functional thiol-vinyl ether component and the multi-functional thiol-allyl ether component are being interpreted as the multi-functional thiol-vinyl ether component comprises both a multi-functional thiol compound and a multi-functional vinyl ether compound and/ or allyl ether compound as seen the disclosure in Table 5. The courts have upheld: portions of the specification which provide support for the patent claims may also be examined and considered when addressing the issue of whether a claim in an application defines an obvious variation of an invention claimed in the patent. In re Vogel , 422 F/2d 438,164 USPQ 619,622 (CCPA 1970). Claim 5 sets forth the multi-functional component is selected from a tri-functional thiol; tetra-functional thiol, a thiol-acrylate; a polymeric thiol-acrylate; and combinations thereof. It is unclear if applicant intends for the multi-functional-acrylate component to be a reaction product of a thiol compound and an acrylate compound which has reactive thiol and acrylate functional groups or having thiol functional groups only or having acrylate functional groups only. It is unclear if applicant intends for the multi-functional thiol- acrylate component to include both a multi-functional thiol compound and an acrylate compound? Appropriate action and/or clarification is requested. Regarding claim 8: The term “high refractive index filler” in claim 8 is a relative term which renders the claim indefinite. The term “high refractive index filler” is not defined by the claim, the specification does not provide a standard for ascertaining the requisite degree, and one of ordinary skill in the art would not be reasonably apprised of the scope of the invention. It is not clear if applicant intends for the high refractive index filler to comprise a filler having a refractive index of 1.48 or 1.65 or 1.76. Applicant has disclosed only one filler, Zircostar ZP153, in the example which has a refractive index of 1.53. Thus, it is deemed the term high refractive index filler will be a filler having a refractive index of at least 1.53 or greater, for examination purposes. Claim Rejections - 35 USC § 112 07-36 AIA The following is a quotation of 35 U.S.C. 112(d): (d) REFERENCE IN DEPENDENT FORMS. —Subject to subsection (e), a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers. The following is a quotation of pre-AIA 35 U.S.C. 112, fourth paragraph: Subject to the following paragraph [i.e., the fifth paragraph of pre-AIA 35 U.S.C. 112], a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers. 07-36-01 AIA Claim s 5 are rejected under 35 U.S.C. 112(d) or pre-AIA 35 U.S.C. 112, 4th paragraph, as being of improper dependent form for failing to further limit the subject matter of the claim upon which it depends, or for failing to include all the limitations of the claim upon which it depends. Claim 1 requires the multi-functional component to be selected from the group consisting of multi-functional thiol; a multi-functional thiol-vinyl ether; a multi-functional thiol-allyl ether; and combinations thereof in claim 5. This is a closed grouping; therefore, the thiol-acrylate and polymeric thiol-acrylate components are excluded and do no further limit claim 1 . Applicant may cancel the claim(s), amend the claim(s) to place the claim(s) in proper dependent form, rewrite the claim(s) in independent form, or present a sufficient showing that the dependent claim(s) complies with the statutory requirements. Claim Rejections - 35 USC § 102/Claim Rejections - 35 USC § 103 07-07-aia AIA 07-07 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 – 07-08-aia AIA (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. 07-20-aia AIA 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. 07-27-aia AIA Claim(s) 1-7 an d 9 is/a re rejected under 35 U.S.C. 102(a1) a s a nticipated by or, in the alternative, under 35 U.S.C. 103 as obvious over Elli son et al (US2006/0128826). Elli son sets forth ultra-thin thiol-ene coatings. Ellison sets forth cured films comprising the reaction product obtained by radiation curing a curable thiol-ene composition, wherein the thiol-ene composition comprises a multifunctional ethylenically unsaturated compound; a multifunctional thiol compound; and optionally a polymerization initiator, an adhesion promoter, a stabilizer, a surfactant, conductive filler, or a combination thereof—see [0005]. Said radiation curing is performed in the presence of oxygen and provides an optically clear, durable material having good adhesion to a variety of substrate materials, excellent hardness giving improved abrasion resistance, as well as improved solvent, alkali, and acid resistance—see [0007]. Regarding claims 1-6 and 9: Ellison explicitly sets forth a composition comprising 6.78 wt. % of TAIC (triallyl isocyanurate); 0.01 wt.% of G01-402 (mercaptopropyl methyl siloxane polymer); 1.0 wt. % of photoinitiator (I-184: 1-hydroxycyclohexylphenyl ketone); 0.012 wt. % of pyrogallol (phenolic antioxidant/stabilizer); 12.20 wt. % of pentaerythritol tetra (3-mercapto propionate: tetrafunctional thiol); and 5 wt. % of methacrylamide functional silane (adhesion promoter)—see Table 4, example 15. Said composition comprises 5 wt. % of a multi-functional methacrylate component, i.e., the adhesion promoter has a methacrylamide functional group and a silane functional group; a photoinitiator, i.e., I-184 and BP. Said compositions were cured in the presence of oxygen by exposure to ultraviolet radiation [0116]. The primary differences are Ellison does not expressly set forth said composition exhibit oxygen resistance at the composition surface level of at least 40 % nor the cured composition has a refractive index of 1.6 >= RI >= 1.55. However, the examiner suspects the curing method exhibits an oxygen resistance at the composition surface level of at least 40 % (60 % (claim 2); 80% (claim 3) or 90 % (claim 4)) and the cured composition has a refractive index of 1.6 >= RI >= 1.55. The cured product of example 15 has a cured pencil hardness of 6H which indicates to the examiner a high reaction conversion and crosslink density/thorough and complete cure. And since the Patent and Trademark Office is not equipped to conduct experimentation in order to determine whether Applicant’s composition differs and, if so, to what extent, from the discussed reference. Therefore, with the showing of the reference, the burden of establishing non-obviousness by objective evidence is shifted to the Applicants. Regarding the refractive index: example 15 set forth the cured film has a haze value of 0.9 and a clarity of 99.5 thus the cured composition should inherently have a high refractive index and be non-yellowing as defined. The clarity optical or lens usually refers to the percentage of light transmitted through a material which is closely related to the refractive index because the refractive index determines how much light is reflected at the surface of a material. A higher refractive index means the material slows light more, which increases the amount of reflection at the surface. A high refractive index naturally causes more light to be reflected at the surface; therefore, it deemed the clarity of 99.5% suggests the lens material has a high refractive index. And since the Patent and Trademark Office is not equipped to conduct experimentation in order to determine whether Applicant’s composition differs and, if so, to what extent, from the discussed reference. Therefore, with the showing of the reference, the burden of establishing non-obviousness by objective evidence is shifted to the Applicants. In the alternative, it is deemed where the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation. In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 124 (CCPA 1955). In this case, one skilled in the art prior to the effective filing date of the present invention would know to alter the refractive index and oxygen inhibition at the surface level during curing of the composition in order to achieve the desired hardness and optical clarity. Regarding claims 5-6: the thiol in example 15 is a tetrafunctional thiol compound found in an amount of 12.20 wt. %. Regarding claim 9: Example 15 sets forth phenolic antioxidant, pyrogallol. Regarding claim 7: Ellison explicitly sets forth a composition comprising 27.33 wt. % of TAIC (triallyl isocyanurate); 1.00 wt.% of Irganox 1035 (phenolic antioxidant); 0.40 wt. % G01-402 (mercaptopropyl methyl siloxane polymer); 2.0 wt. % of photoinitiator (I-184: 1-hydroxycyclohexylphenyl ketone); 0.02 wt.% of photoinitiator benzophenone; 0.20 wt. % of pyrogallol (phenolic antioxidant/stabilizer); 49.05 wt. % of pentaerythritol tetra (3-mercapto propionate: tetrafunctional thiol); and 20 wt. % of methacrylamide functional silane (adhesion promoter)—see Table 4, example 15. Said composition comprises 20 wt. % of a multi-functional methacrylate component, i.e., the adhesion promoter has a methacrylamide functional group and a silane functional group; a photoinitiator, i.e., I-184 and BP . 07-27-aia AIA Claim(s) 1-6, 8, 10 and 20 is /are rejected under 35 U.S.C. 102(a1 ) a s anticipated by or, in the alternative, under 35 U.S.C. 103 as obvious over Bo wman et al (8,962,709). Bo wman sets forth resin systems for dental restoratives, such as adhesives. Said resin systems are photopolymerizable resin systems comprising a thiol-ene component as the reactive diluent in a dimethacrylate system. Said system is a ternary system which comprises a thiol monomer, an ene monomer, a dimethacrylate monomer—see abstract. Said system additionally comprises a photoinitiator—see col. 4, lines 15-24. Regarding claims 1-6, 8, 10 and 20: Bowman sets forth by a composition comprising a 70:30 wt.% ratio of ethoxylated bisphenol A dimethacrylate (corresponding to applicant’s methacrylate component) to thiol-ene in a 2:1 ratio of thiol to ene, wherein the thiol-ene comprises 22.5 wt. % of pentaerythritol tetra (3-mercapto propionate) (corresponding to claimed multi-functional thiol (claim 1) and tetrafunctional thiol (claim 5) as the thiol compound and 7.5 wt. % of tri-allyl-1.3.5-triazine-2,4,6-(1H,3H,5H)-trione (TATATO corresponding the claimed allyl ether compound (claim 1), wherein the composition additionally comprises 0.035 wt. % of a polymerization inhibitor: (Q1301( and 0.3 wt. % of photoinitiator Irgacure 819, as well as, 72.5 wt.% of a filler material comprises 90 % of Schotts 0.4 micron glass and 10 wt. % of aerosol OX-50 (fumed silica) –see example 4, lines 30-40). The compositions are cures by exposure to radiation [col. 18, lines 35-41]. Said composition comprises 30 wt. % of a multi-functional component (claim 1) comprising a multi-functional thiol-allyl ether (claim 1), wherein the thiol compound is a tera-functional thiol (claim 5): tetra (3-mercapto propionate), as well as, comprising an epoxy acrylate (claims 10 and 20): ethoxylated bisphenol A dimethacrylate and high refractive index fillers (claim 8, glass and fumed silica). The primary differences are Bowman does not expressly set forth the refractive index or set forth upon curing in the presence of oxygen the surface exhibits oxygen resistance as evidenced by a reaction conversion at the surface of at least 40 % (claim 1; as well as, at least 60 % (claim 2); 80 % (claim 3) or 90 % (claim 4). However, it is deemed the composition inherently has oxygen resistance at the surface as evidenced by the depth cure and conversion rate of both (meth) acrylate (72 %) and ene groups (29 %) in Tables 6 and 7 and the thiol-ene addition which is known not being inhibited by oxygen (see col. 3, lines 10-15 and 25-34). Since the Patent and Trademark Office is not equipped to conduct experimentation in order to determine whether Applicant’s composition differs and, if so, to what extent, from the discussed reference. Therefore, with the showing of the reference, the burden of establishing non-obviousness by objective evidence is shifted to the Applicants. Bowman does not expressly set forth the refractive index of the composition as defined in the claims; however, Bowman sets forth the addition of Schotts dental glass which ranges in refractive index from 1.50-1.61; therefore, it is deemed a skilled artisan using the overall teachings of the reference may obtain a resin composition having a refractive index of up to 1.60. Therefore, where the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation. In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 124 (CCPA 1955). In this case, one skilled in the art prior to the effective filing date of the present invention would know to alter filler refractive index of the composition in order to achieve the desired transparency and/or color. In the alternative, since the Patent and Trademark Office is not equipped to conduct experimentation in order to determine whether Applicant’s composition differs and, if so, to what extent, from the discussed reference. Therefore, with the showing of the reference, the burden of establishing non-obviousness by objective evidence is shifted to the Applicants . Claim Rejections - 35 USC § 103 07-20-aia AIA 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. 07-21-aia AIA Claim (s) 8 is/are rejected under 35 U.S.C. 103 as being unpatentable over Ellison (cited above) . Ellison is deemed to anticipate the composition as set forth in claims 1-6and 9 for the reasons set forth above. Ellison does not expressly teach the addition of a high refractive index filler in the compositions. However, Ellison sets forth in the overall teachings of the reference other additives, such as colloidal silica and alumina can be added to the compositions to increase the abrasion resistance, wherein colloidal silica inherently has a refractive index between 1.43 and 1.55 and alumina inherently has a refractive index of 1.76. Therefore, it is deemed, from the overall teachings, a skilled artisan would have found it obvious to add a high refractive index filler, such as silica or alumina with an expectation of obtaining the desired results set forth by Ellison in absence of evidence to the contrary and/or unexpected results. 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. Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000. /SANZA L. McCLENDON/Primary Examiner, Art Unit 1765 SMc Application/Control Number: 18/787,144 Page 2 Art Unit: 1765 Application/Control Number: 18/787,144 Page 3 Art Unit: 1765 Application/Control Number: 18/787,144 Page 4 Art Unit: 1765 Application/Control Number: 18/787,144 Page 5 Art Unit: 1765 Application/Control Number: 18/787,144 Page 6 Art Unit: 1765 Application/Control Number: 18/787,144 Page 7 Art Unit: 1765 Application/Control Number: 18/787,144 Page 8 Art Unit: 1765 Application/Control Number: 18/787,144 Page 9 Art Unit: 1765
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