DETAILED ACTION
The communication of 3/23/2026 has been entered and fully considered. Claims 1-18 are pending with no amendments filed.
Priority
This case was filed 9/9/2024 and claims priority to PCT JP2023/009407 (filed 3/10/2023) and claims priority to JP 2022-038224 (filed 3/11/2022).
Applicant cannot rely upon the certified copy of the foreign priority application to overcome this rejection because a translation of said application has not been made of record in accordance with 37 CFR 1.55. When an English language translation of a non-English language foreign application is required, the translation must be that of the certified copy (of the foreign application as filed) submitted together with a statement that the translation of the certified copy is accurate. See MPEP §§ 215 and 216.
Therefore, the effective filing date of the claimed invention is 9/9/2024.
Response to Arguments
Applicant has filed on the record a statement overcoming the 102(a)(2) rejection as both references where not later than the effective filing date of the present invention commonly owned.
Applicant has not overcome the 102(a)(1) rejection because the requirements set forth above have not been met in full. Although a certified copy has been made of record, the copy is not in English and there is no translation on file.
Claim Rejections - 35 USC § 102
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 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.
Claim(s) 1-5, 8, 10, 17, and 18 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by WO 2022/239270 (US 20230146524, relied upon). WO 270 is relied upon for its publication and filing dates but all references below are to US 524 which is relied upon as a translation.
WO 2022/239270 was published 11/17/2022 the national stage entry (US 20230146524) was published 5/11/2023. Both qualify as references under 102(a)(1)). The filings date of both references is 11/11/2021 with priority to JP 2021-080798 (filed 5/12/2021). Both references qualify under 35 USC 102(a)(2).
The 102(b)(1)(A) exclusion is not available because the publication date of the prior art is more than one year before the effective filing date of the claimed invention. Should Applicant perfect priority such that the 102(b)(1) exclusions become available, a declaration will not be required to invoke the exclusion because the publication only includes one or more joint inventor(s), but not the entire inventive entity, of the application under examination and does not name anyone else.
Example 1 of the prior art meets each limitation of claim 1 except for the vinyl content. Example 1 uses a higher radiation level to cure. However, Examples 19 and 20 of the instant application provide evidence that as the kGy goes up the vinyl content goes down. Therefore, it is reasonable to conclude that the vinyl content of the claim would be inherent to the prior art.
Example 1 anticipates claims 1-5, 8, 10, 17, and 18.
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.
The factual inquiries for establishing a background for determining obviousness under 35 U.S.C. 103 are summarized as follows:
1. Determining the scope and contents of the prior art.
2. Ascertaining the differences between the prior art and the claims at issue.
3. Resolving the level of ordinary skill in the pertinent art.
4. Considering objective evidence present in the application indicating obviousness or nonobviousness.
Claims 6, 7, 9, and 11-16 are rejected under 35 U.S.C. 103 as being obvious over WO 2022/239270 (US 20230146524, relied upon).
Claims 6, 7, 11-16 are obvious in light of example 1 and the claims of the ‘524 reference which teach each of the instant claim’s features. Although the ‘524 reference does not exemplify these limitations in Ex. 1 they would be obvious to provide for based upon the disclosure as a whole.
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.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to FRANK J VINEIS whose telephone number is (571)270-1547. The examiner can normally be reached Monday - Thursday: 8:00 a.m. - 4:00 p.m.
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, Greg Tryder can be reached at (571) 270-7365. 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.
/FRANK J VINEIS/Supervisory Patent Examiner, Art Unit 1781
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