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 § 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 1 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. Claim 1 contains brackets or parenthesis. Parenthesis and/or brackets in claims should only be used with labels/number from the specification or drawings. It is unclear whether the applicant intends these limitations to be a part of the claim.
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.
Claim(s) 1-2, 7-8, and 12-13 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Ishida et al. (JP 2014-091774), wherein the machine English translation is used for citation.
Regarding claims 1-2; Ishida et al. teaches, in a preferred embodiment, a temporary adhesive comprising 20 parts A-BPE-10 (ethoxylated bisphenol A diacrylate; instant (A-1)), 20 parts R-684 (dicyclopentanyl diacrylate; instant (A-2)), and 10 parts I-754 (photopolymerization initiator) [Ex1; Table1; 0054].
Ishida et al. does not explicitly teach wherein a cured body of the composition has a storage modulus at 23°C of 0.66 GPa or less. 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. storage modulus, 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 and II.
The Examiner makes note that “wherein the cured body is prepared by…” is a product-by-process limitation. The examiner notes that even though product-by-process claims are limited by and defined by the process, determination of patentability is based on the product itself. The patentability of a product does not depend on its method of production. If the product in the product-by-process claim is the same as or obvious from a product of the prior art, the claim is unpatentable even though the prior product was made by a different process.” See In re Thorpe, 777 F.2d 695, 698, 227 USPQ 964, 966 (Fed. Cir. 1985) ); see MPEP §2113.
Regarding claims 7-8; Ishida et al. teaches the preferred embodiment further comprises 20 parts M-101 (phenol ethylene oxide 2-mol modified acrylate; monofunctional monomer (instant E)), thus component (E) is 50% in a mass ratio of the component (A) to the component (E).
Regarding claim 12; Ishida et al. teaches a cured body for temporary adhesion [0055].
Regarding claim 13; Ishida et al. does not explicitly teach the cured body having a temperature at which mass is reduced by 2% of 300°C or more under an atmosphere of nitrogen. 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. temperature at which mass is reduced by 2% of 300°C or more, 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 and II.
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.
This application currently names joint inventors. In considering patentability of the claims the examiner presumes that the subject matter of the various claims was commonly owned as of the effective filing date of the claimed invention(s) absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and effective filing dates of each claim that was not commonly owned as of the effective filing date of the later invention in order for the examiner to consider the applicability of 35 U.S.C. 102(b)(2)(C) for any potential 35 U.S.C. 102(a)(2) prior art against the later invention.
Claim(s) 3-5, 10, and 11 is/are rejected under 35 U.S.C. 103 as being unpatentable over Ishida et al. (JP 2014-091774), wherein the machine English translation is used for citation, as applied to claim 1 above.
Ishida et al. teaches the basic claimed composition for temporary bonding, as set forth above, with respect to claim 1.
Regarding claims 3 and 4; Ishida et al. teaches (B) a polyfunctional (meth)acrylate other than (A) may be used, for example a polyfunctional (meth)acrylate oligomer/polymer having two or more (meth)acryloyl groups, e.g. polyfunctional (meth)acrylate oligomers/polymers including 1,2-polybutadiene-terminated urethane (meth)acrylates (instant C) [0023]. It is prima facie obvious to combine two compositions (in this case compounds) 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; the idea of combining them flows logically from their having been individually taught in the prior art. See In re Kerkhoven, 626 F.2d 846, 850, 205 USPQ 1069, 1072 (CCPA 1980), see MPEP §2144.06.
Regarding claim 5; Ishida et al. teaches the component (B) is used in an amount of 5 to 25 parts by mass per 100 parts by mass of the total (A) to (C). Thus, in the instance the component (B) (instant C) is employed in an amount of 20 parts by mass in combination with 20 parts component (A) [Ex1], the amount of component (A) is 50% in a mass ratio of component (A) to component (C).
Regarding claims 10-11; Ishida et al. teaches (B) a polyfunctional (meth)acrylate other than (A) may be used, for example a polyfunctional (meth)acrylate oligomer/polymer having two or more (meth)acryloyl groups (inclusive of trifunctional or more; instant F) [0023]. It is prima facie obvious to combine two compositions (in this case compounds) 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; the idea of combining them flows logically from their having been individually taught in the prior art. See In re Kerkhoven, 626 F.2d 846, 850, 205 USPQ 1069, 1072 (CCPA 1980), see MPEP §2144.06. Ishida et al. teaches the component (B) (instant F) is used in an amount of 5 to 25 parts by mass per 100 parts by mass of the total (A) to (C). Thus, in the instance the component (B) (instant F) is employed in an amount of 20 parts by mass in combination with 20 parts component (A) [Ex1], the amount of component (F) is 50% in a mass ratio of component (A) to component (F).
Claim(s) 1, 6, and 9 is/are rejected under 35 U.S.C. 103 as being unpatentable over Maletz et al. (US Serial No. 2012/0196249).
Regarding claims 1 and 6; Maletz et al. teaches a composition consisting of a polymerizable (meth)acrylate [0042-0043], such as aromatic urethane di(meth)acrylates [0057] or alkoxylated bisphenol di(meth)acrylates [0058], a photoinitiator [0090], and a UV absorber [0124].
Maletz 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. Maletz et al. does not specifically disclose an embodiment containing an aromatic urethane di(meth)acrylates or alkoxylated bisphenol di(meth)acrylates, a photoinitiator, and a UV absorber. However, at the time of invention a person of ordinary skill in the art would have found it obvious to prepare a composition containing an aromatic urethane di(meth)acrylates or alkoxylated bisphenol di(meth)acrylates, a photoinitiator, and a UV absorber based on the invention of Maletz et al., and would have been motivated to do so since Maletz et al. suggests that the composition can contain aromatic urethane di(meth)acrylates [0057] or alkoxylated bisphenol di(meth)acrylates [0058], a photoinitiator [0090], and a UV absorber [0124].
Maletz et al. does not explicitly teach wherein a cured body of the composition has a storage modulus at 23°C of 0.66 GPa or less. 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. storage modulus, 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 and II.
The Examiner makes note that “wherein the cured body is prepared by…” is a product-by-process limitation. The examiner notes that even though product-by-process claims are limited by and defined by the process, determination of patentability is based on the product itself. The patentability of a product does not depend on its method of production. If the product in the product-by-process claim is the same as or obvious from a product of the prior art, the claim is unpatentable even though the prior product was made by a different process.” See In re Thorpe, 777 F.2d 695, 698, 227 USPQ 964, 966 (Fed. Cir. 1985) ); see MPEP §2113.
The Examiner makes notes that “for temporary bonding” is an intended use limitation. If the body of a claim fully and intrinsically sets forth all of the limitations of the claimed invention, and the preamble merely states, for example, the purpose or intended use of the invention, rather than any distinct definition of any of the claimed invention’s limitations, then the preamble is not considered a limitation and is of no significance to claim construction. Pitney Bowes, Inc. v. Hewlett-Packard Co., 182 F.3d 1298, 1305, 51 USPQ2d 1161, 1165 (Fed. Cir. 1999). See also Rowe v. Dror, 112 F.3d 473, 478, 42 USPQ2d 1550, 1553 (Fed. Cir. 1997); see MPEP §2111.02.
Regarding claim 9; Maletz et al. does not explicitly require the use of monofunctional (meth)acrylate monomers.
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, 6, 7, 12 provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-2, 10-11, 14, and 22 of copending Application No. 18/288121 (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other because they are both directed to the same art specific subject matter, namely a composition for temporary bonding. The essential difference between the instant application and the copending application is that the copending application further comprises a bifunctional (meth)acrylate not having a cyclic structure. A genus does not always anticipate a claim to a species within the genus. However, when the species is clearly named, the species claim is anticipated no matter how many other species are additionally named. See Ex parte A, 17 USPQ2d 1716 (Bd. Pat. App. & Inter. 1990); MPEP 2131.02(II). The claims of the copending application are reads on the all of the claimed components of the instant application.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
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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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Mark Eashoo can be reached at 571-272-1197. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/JESSICA M ROSWELL/Primary Examiner, Art Unit 1767
