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 .
Election/Restrictions
Claims 12, 18, and 20-24 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected invention, there being no allowable generic or linking claim. Election was made without traverse in the reply filed on June 24, 2026.
Specification
The abstract of the disclosure is objected to because it exceeds 150 words in length. A corrected abstract of the disclosure is required and must be presented on a separate sheet, apart from any other text. See MPEP § 608.01(b).
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, 30 and 32 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1, 2, and 3 respectively of U.S. Patent No. 12,104,000. Although the claims at issue are not identical, they are not patentably distinct from each other because in the patent the urethane component is optional while the urethane is required in the current application. However, claim 20 of the patent requires the addition of the urethane.
Claim Rejections - 35 USC § 103
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.
Claims 1 and 24-35 are rejected under 35 U.S.C. 103 as being unpatentable over Fujimoto et al (JP 2005068331) in view of Cho et al (JP 2011221256).
With regards to claims 1, 24-25, 30, and 33, Fujimoto teaches an energy curable composition (title) that contains the following urethane (meth)acrylate:
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405
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(0011) wherein
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530
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(0011) at a concentration of 30% (0052 table 1), another urethane compound at a concentration of 45% (0052 table 1), a diacrylate (0052 table 1), a photopolymerization initiator (0030) in an amount of 0.001 to 10 parts per 100 parts of A, B, or C (0031) with a preferred amount of 3% (0052 table 1), and an inhibitor (0033).
Fujimoto does not teach the urethane compound to be one of the claimed structures.
Cho teaches a photosensitive composition (0002) that contains the following compound:
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(0011) wherein
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532
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(0011). Cho teaches the motivation for using the above compound because it can crosslink and polymerize by light exposure (0061). Cho and Fujimoto are analogous in photosensitive compositions. In light of the benefit above, it would have been obvious to one skilled in the art prior to the effective filing date of the present invention to use the compound of Cho as the urethane of Fujimoto, thereby obtaining the present invention.
With regards to claim 26, Fujimoto teaches the ratio of the urethane compounds to be 6:4 (0052 table 1).
With regards to claim 27, Fujimoto teaches the addition of tetrahydrofurfurylacrylate (THFA) (0053 and 0052) reading on a monofunctional acrylate.
With regards to claim 28, Fujimoto teaches the amount of the THFA to be 25% and the amount of the urethane to be 20% (0052 example 1).
With regards to claim 29, Fujimoto teaches the addition of 2-hydroxyethyl (meth)acrylate (0013).
With regards to claim 31, Fujimoto teaches the multifunctional monomer to be from 10 to 25% by mass (0022).
With regards to claims 34 and 35, Fujimoto teaches the elongation at break to be 90% (0052) and the tensile modulus to be 520 to 7500 (0052).
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to JESSICA WHITELEY whose telephone number is (571)272-5203. The examiner can normally be reached 8 - 5:00.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Joseph Del Sole can be reached at 5712721130. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/JESSICA WHITELEY/Primary Examiner, Art Unit 1763
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