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Claims 39-40, 44, 48, 51-52, 57, 60, 64, 66-67, 69-72, 78-82 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected invention, there being no allowable generic or linking claim.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 29, 2026.
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.
The following claims are rejected on the ground of nonstatutory double patenting as being unpatentable over the corresponding claims of U.S. Patent No. 12,098,227.
Current Application Claims
Patent Claims
2
1 and 2
20
3 and 9
5
5
6
6
23
11
32
13
Although the claims at issue are not identical, they are not patentably distinct from each other because claim 1 of the patent does not contain the limitations of the ratio of the first polymerizable component and the second component in each of the phases. However, claim 2 of the patent adds this limitation.
Further, It is clear that all the elements of the application claim 2 are to be found in patent claim 1 (as the application claim 2 fully encompasses patent claim 1). The difference between the application claim 2 and the patent claim 1 lies in the fact that the patent claim includes many more elements and is thus much more specific. Thus the invention of claim 1 of the patent is in effect a “species” of the “generic” invention of the application claim 2. It has been held that the generic invention is “anticipated” by the “species”. See In re Goodman, 29 USPQ2d 2010 (Fed. Cir. 1993). Since application claim 2 is anticipated by claim 1 of the patent, it is not patentably distinct from claim 1 of the patent.
Claim Objections
Claim 23 is objected to because of the following informalities: It appears that the “(i)” is in the wrong place, it is believed that it is meant to be after the word “comprising”. Appropriate correction is required.
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.
Claim 32 is 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.
With regards to claim 32, the claim states that the filler includes “ATH A1(OH)3” and “MDH Mg(OH)2”. It is unclear what these terms are meant to include, thereby, rendering the claim indefinite.
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.
(a)(2) the claimed invention was described in a patent issued under section 151, or in an application for patent published or deemed published under section 122(b), in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention.
Claims 2, 5, 6, 20, 21, 23, 32, and 37 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Cole (WO 2019/006409).
With regards to claim 2, Cole teaches a resin composition (abstract) that contains a first polymerizable component, a second polymerizable component, and an initiator (0005) wherein the composition has a first region having a first ratio of the first and second polymerizable components and a second region having a second ratio that is different from the first ratio (0005).
With regards to claim 5, Cole is silent on the shore hardness of the different regions. However, when the composition recited in the reference is substantially identical to that of the claims, the claimed properties or function are presumed inherent. MPEP 2112.01. Because the prior art exemplifies Applicant’s claimed composition in that the claimed components in the claimed amounts are used, the claimed physical properties relating to the hardness of the different regions are inherently present in the prior art. Absent an objective showing to the contrary, the addition of the claimed physical properties to the claim language fails to provide patentable distinction over the prior art.
With regards to claim 6, Cole teaches the first polymerizable component to include a methacrylate monomer (0013) and the second polymerizable component to be an acrylate monomer (0013).
With regards to claims 20, 21, 23, and 32, Cole teaches the addition of a polymer compound (0106) that includes polyolefin, a polyester, polycarbonates, polyurethanes, or polypropylenes (0106).
With regards to claim 37, Cole teaches the composition to include a plurality of first exposure areas and a plurality of second exposure areas (0033).
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 2, 5, 6, 20, 21, 23, 32, and 37 are rejected under 35 U.S.C. 103 as being unpatentable over Jia et al (US 2007/0049656).
With regards to claim 2, Jia teaches a curable composition (abstract) that includes a curable mono(meth)acrylate resin (0020) and a multifunctional resins (0034) and for the resin to have a base paste and a catalyst paste (0077) wherein the amount of the mono(meth)acrylate to be greater than the second polymerizable compound in the catalyst paste and for the second polymerizable compound to be more than the first in the base paste (0077).
With regards to claim 5, Jia teaches the shore hardness of the A material to be 85-90 (0079) and for the B material to be above the A level of the shore hardness scale (0079).
With regards to claim 6, Jia teaches the polymerizable compounds to include methacrylates and acrylates (0031).
With regards to claims 20, 21, and 23, Jia teaches the addition of a filler (0050) or a plasticizer that includes polyethylene (0032).
With regards to claim 32, Jia teaches the filler to include a silica or glass fibers (0049).
With regards to claim 37, Jia teaches the composition to have several phases having differing hardness (0079).
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. The following reference also teaches the composition as claimed in claim 1: Liska et al (WO 2019/213585).
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.
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, 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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