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Claims 16-18 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected invention, there being no allowable generic or linking claim.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 May 13, 2026.
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.
Claims 1, 2, 3, 5, 7, 9, 10, 11, and 12 are 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.
Regarding claims 1, 2, 3, 5, 7, 9, 10, 11, and 12, the phrase "preferably" renders the claim indefinite because it is unclear whether the limitation(s) following the phrase are part of the claimed invention. See MPEP § 2173.05(d).
A broad range or limitation together with a narrow range or limitation that falls within the broad range or limitation (in the same claim) may be considered indefinite if the resulting claim does not clearly set forth the metes and bounds of the patent protection desired. See MPEP § 2173.05(c).
In the present instance, claim 1 recites the broad recitation that compound C has the viscosity of less than 100 mPa.s, and the claim also recites that is preferably below 50 mPa.s, even more preferably below 25 mPa.s which is the narrower statement of the range/limitation.
In the present instance, claim 2 recites the broad recitation that compound A has a Tg that is below 0°C, and the claim also recites that it is preferably below -20°C, more preferably below -30°C even more preferably below -40°C which is the narrower statement of the range/limitation.
In the present instance, claim 3 recites the broad recitation that the condensation reaction is of a straight chain aliphatic dicarboxylic acid having 4 to 14 atoms and an aliphatic or cycloaliphatic polyol, and the claim also recites preferably an aliphatic diol or cycloaliphatic diol which is the narrower statement of the range/limitation.
In the present instance, claim 5 recites the broad recitation that the weight average molecular weight of compound A is between 200 and 10000, and the claim also recites that it is more preferably between 400 and 5000, which is the narrower statement of the range/limitation.
In the present instance, claim 7 recites the broad recitation that the compound B comprises at least two ethylenically unsaturated moieties, and the claim also recites it is preferably not more than 8, more preferably not more than 6 ethylenically unsaturated moieties which is the narrower statement of the range/limitation.
In the present instance, claim 9 recites the broad recitation that the amount of compound A is at least 20 wt% of compound A, and the claim also recites that it is preferably from 20 wt% to 79 wt%, more preferably from 20 wt% to 40 wt%, which is the narrower statement of the range/limitation.
In the present instance, claim 9 recites the broad recitation that the composition comprises at least 20 wt% of compound B, and the claim also recites that it includes preferably from 20 wt% to 79 wt%, more preferably from 20 wt% to 50 wt%, which is the narrower statement of the range/limitation.
In the present instance, claim 10 recites the broad recitation that compound C is added in an amount to obtain a viscosity of less than 2500, and the claim also recites the viscosity to be preferably less than 1800, morepreferably less than 1500 mPa.s which is the narrower statement of the range/limitation.
In the present instance, claim 11 recites the broad recitation that the composition contains 0.01 to 10 wt% of a photoinitiator, and the claim also recites the amount to be 0.1 to 8 wt% more preferably from 0.1 to 5 wt%, which is the narrower statement of the range/limitation.
In the present instance, claim 12 recites the broad recitation that the composition contains 0.01 to 5 wt% of a free-radical generating agent, and the claim also recites that the amount of the agent is from 0.1 to 4 wt% more preferably from 0.2 to 3 wt%, which is the narrower statement of the range/limitation.
The claim(s) are considered indefinite because there is a question or doubt as to whether the feature introduced by such narrower language is (a) merely exemplary of the remainder of the claim, and therefore not required, or (b) a required feature of the claims.
With regards to claim 1, the phrase "essentially" renders the claim indefinite because it is unclear whether the limitation(s) following the phrase are part of the claimed invention. See MPEP § 2173.05(d).
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 1-15 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Chakraborty et al (WO 2019/104079).
With Regards to claim 1, Chakraborty teaches a free-radically polymerizable resin (abstract) that contains a blend of a monomer comprising at least 2 (meth)acryl moieites at a concentration of 30 to 70% (reading on claimed component B), a monofunctional reactive diluent at a concentration of 25 to 70% (reading on claimed C), a urethane component at a concentration of 30 to 70% (reading on claimed A) (page 7). Chakraborty further teaches the urethane component to be polyfunctional (page 8) having from 2 to 4 (meth)acrylate moieties (page 10) and to be formed from a polypropylene oxide (page 11). Chakraborty teaches the compound reading on claimed B to include SR833S (tricyclodecane dimethanol diacrylate) (page 56). Chakraborty teaches the compound reading on claimed (C) to include isobornyl acrylate (page 56) which has a viscosity of 9 cp (9 mPa·s). Chakraborty teaches the amount of the compound reading on claimed A (exoth-108) to be 40% and the amount of the compound reading on the claimed B (SR833S) to be 20% (page 65) reading on a total of A and B of 60%.
Chakraborty is silent on the glass transition temperature (Tg) of the composition after curing. The glass transition temperature is the temperature at which an amorphous material transitions from a brittle glassy state to a more flexible rubbery state. Further, when using the fox equation to calculate the Tg as follows:
1/Tg=(40/40)+(20/186)+(20/96)+(-20/6)
the Tg comes to 0.496 reading on less than 90°C.
With Regards to claim 2, Chakraborty teaches the compound reading on claimed component A to be Exothane-108 (page 65) which has a glass transition temperature of 40°C.
With Regards to claim 3, Chakraborty teaches the urethane component to be formed from a polyester diol (page 13).
With Regards to claim 4, Chakraborty teaches the urethane to be one of the following structures:
PNG
media_image1.png
175
500
media_image1.png
Greyscale
(page 13).
With Regards to claim 5, Chakraborty teaches the urethane compound to have a weight average molecular weight of 2,000 or greater (page 11).
With Regards to claim 6, Chakraborty teaches the compound to be a polyurethane having 2-4 (meth)acrylate moieties (page 10).
With Regards to claim 7, Chakraborty teaches the compound reading on claimed compound B to be SR833S (page 56) having 2 methacrylate groups.
With Regards to claim 8, Chakraborty teaches the compound reading on claimed compound B to be SR833S (page 56) which is different from the urethane reading on compound A.
With Regards to claim 9, Chakraborty teaches the composition to contain 40% of the exothane-108 (claimed A) and 20% of the SR833S (claimed B) (page 65).
With Regards to claim 10, Chakraborty teaches the monofunctional compound to be added to provide a photopolymerizable composition having a sufficiently low viscosity (page 25) and the viscosity of the composition to be 0.1 to 1000 Pa.s (page 43).
With Regards to claim 11, Chakraborty teaches the composition to contain 0.1 to 5% (page 3).
With Regards to claim 12, Chakraborty teaches the initiator to be a free-radical photoinitiator (page 2) at a concentration of 0.1 to 5% (page 3).
With Regards to claim 13, Chakraborty teaches the elongation of the composition to be at least 20% (page 45).
Chakraborty is silent on the flexural strength of the composition. However, 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 claimed tests are inherently present in the prior art. Absent an objective showing to the contrary, the addition of the claimed flexural strength to the claim language fails to provide patentable distinction over the prior art.
With Regards to claim 14, Chakraborty teaches the addition of fillers (page 39).
With Regards to claim 15, Chakraborty teaches the filler to include inorganic nanoparticles and carbon or glass fibers (page 41).
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. The following references also teach the composition of claim 1: Watanabe et al (US 20029/0030107), Sachdev et al (US 2006/0069177), and Ren et al (US 2018/0163075).
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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