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 § 102/103
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 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.
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 1-22 are rejected under 35 U.S.C. 102(a)(1) as anticipated by or, in the alternative, under 35 U.S.C. 103 as obvious over USPN 6,849,333 to Schissel.
Regarding claims 1-22, Schissel teaches an optical fiber with an improved radiation curable primary coating composition and a radiation cured secondary coating, wherein the primary coating comprises an oligomer formed from a reaction comprising a polyol having “m” hydroxyl functional groups, wherein “n” hydroxyl groups of the polyol are terminated in forming the oligomer and “m” is greater than “n” (Schissel, Abstract, column 2 lines 12-53). Schissel teaches that the coating is formed by reacting a compound containing at least one isocyanate group with an ethylenically unsaturated compound having OH, SH, or NH2 groups to form an intermediate, and reacting the intermediate with a polyol having “m” hydroxyl groups wherein “n” hydroxyl groups of the polyol are terminated to form an oligomer (Id., column 3 lines 15-25). Schissel teaches that the composition further comprises at least one more oligomer, including polyether urethane acrylate oligomers (Id., column 9 lines 12-47). Schissel teaches that the composition includes at least monomer and at least photoinitiator, such as 1-hydroxycyclophenylketone (e.g, Irgacure 184), and an adhesion promoter that includes a reactive silane (Id., column 6 lines 43-63, column 11 line 56 to column 12 line 2, column 12 lines 8-65). Schissel teaches that the oligomer comprises from about 10 to about 90 weight percent of the bulk primary coating composition, that the monomer comprises from about 10 to about 90 weight percent of the bulk primary coating composition, and that a photoinitiator comprises from about 0.1 to about 10 weight percent of the bulk primary coating composition (Id., column 7 lines 32-44).
Schissel teaches that the oligomer is an ethylenically unsaturated urethane oligomer, most preferably a (meth)acrylate terminated urethane oligomer such as 2-hydroxyethyl acrylate (Shissel, column 7 lines 47-65). Schissel teaches that preferably di-, tri- and polyfunctional isocyanates are used to form the intermediate, including toluene diisocyanate, tetramethylxylene diisocyanate, isophorone diisocyanate, and methylene di-p-phenylene isocyanate, most preferably 4,4;-methylenebis (cyclohexylisocyanate) (Id., column 8 lines 8-39). Schissel teaches that preferably the polyol used to form the oligomer has two or more hydroxyl functional groups per molecule, most preferably a trifunctional poly(propylene oxide) (Id., column 8 line 50 to column 9 line 11).
Regarding the claimed molar ratio, including claims 5 and 14, Schissel teaches di-tri- and polyfunctional isocyanates and polyols having two or more hydroxyl functional groups per molecule. It should be noted that in the case where the claimed ranges overlap or lie inside ranges disclosed by the prior art, a prima facie case of obviousness exists. In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990). The existence of overlapping or encompassing ranges shifts the burden to Applicant to show that his invention would not have been obvious. In re Peterson, 315 F.3d 1325, 1330 (Fed. Cir. 2003).
Alternatively, it would have been obvious to one of ordinary skill in the art before the effective filing date to make the coating composition of Schissel, and adjusting and varying the molar amount of isocyanate groups and hydroxyl groups, such as within the claimed ratio, as taught by Schissel, as it is within the level of ordinary skill to determine suitable amounts of isocyanate groups and hydroxyl groups in a molar ratio based on the totality of the teachings of Schissel.
Regarding claim 2, Schissel teaches that the composition further comprises at least one more oligomer, including polyether urethane acrylate oligomers.
Regarding claims 3 and 4, Schissel teaches that the polyol is a trifunctional poly(propylene oxide) which is a polyether polyol, present in overlapping amounts as claimed.
Regarding claims 6 and 22, Schissel does not appear to teach the claimed viscosity, or the claimed storage modulus, or time to reach 30% of the storage modulus increase. However, since Schissel teaches a substantially similar oligomer composition as claimed, it is reasonable for one of ordinary skill to expect that the claimed properties are inherent to, or naturally flow from, the teachings of Schissel. Products of identical structure cannot have mutually exclusive properties. The burden is on Applicants to prove otherwise.
Regarding claim 7, Schissel teaches that preferably di-, tri- and polyfunctional isocyanates are used to form the intermediate.
Regarding claim 8, Schissel teaches that the number average molecular weight of the oligomer is at least 6,000 Daltons (Schissel, claim 5).
Regarding claim 11, Schissel teaches that the ethylenically unsaturated compounds include (meth)acrylates, including triacrylates and diacrylates (Schissel, column 8 lines 8-39).
Regarding claim 12, Schissel teaches that preferably the polyol used to form the oligomer has two or more hydroxyl functional groups per molecule, most preferably a trifunctional poly(propylene oxide).
Regarding claim 15, Schissel teaches that preferably di-, tri- and polyfunctional isocyanates are used to form the intermediate, including toluene diisocyanate, tetramethylxylene diisocyanate, isophorone diisocyanate, and methylene di-p-phenylene isocyanate, most preferably 4,4;-methylenebis (cyclohexylisocyanate).
Regarding claim 16, Schissel teaches that the oligomer is an ethylenically unsaturated urethane oligomer, most preferably a (meth)acrylate terminated urethane oligomer such as 2-hydroxyethyl acrylate.
Regarding claims 17 and 18, note that the scope of the claims includes 0%. Therefore, the scope of the claims is interpreted as being optional, consistent with claim 1.
Regarding claim 21, Schissel teaches coating a glass fiber with primary and secondary coatings and then cured, wherein the cured primary coating has a Young’s modulus of less than about 1.0 Mpa (Schissel, column 2 lines 28-34, Example 7).
In the event it is shown that Schissel does not disclose the claimed invention with sufficient specificity, the invention is obvious because Schissel discloses the claimed constituents and discloses that they may be used alternatively or in combination.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to PETER Y CHOI whose telephone number is (571)272-6730. The examiner can normally be reached M-F 9:00 AM - 3:00 PM.
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/PETER Y CHOI/ Primary Examiner, Art Unit 1786
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