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 .
Status of Claims
This action is in response to Applicant’s Request for Reconsideration dated 03/06/2026.
Claim(s) 1-3 and 5-20 are currently pending.
Claim(s) 1-3, 5-13, 16, 18 and 19 have been amended.
Claim(s) 4 has been canceled.
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 1-3 and 5-20 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 claim 1
The limitation “the polyolefin resin is non-polar polyolefin resin, the polyolefin resin comprises copolymer of ethylene and C3-20 α olefin” is unclear and therefore renders the claim indefinite.
It is unclear whether the limitation requires: (1) a polyolefin resin that is non-polar; (2) the polyolefin resin comprising copolymer of ethylene and C3-20 α olefin; or (3) the non-polar resin comprises the copolymer of ethylene and C3-20 α olefin. The claim appears to recite the in the alternative. However, one cannot reasonably ascertain the scope of the claim without resorting to conjecture.
Regarding claims 2-3 and 5-20
Claims 2-3 and 5-20 are rejected at least for their dependency on claim 1.
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.
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) 1-3, 5-16 and 18-20 is/are rejected under 35 U.S.C. 103 as being unpatentable over US 2016/0177124 A1, Ulbricht et al. (hereinafter “Ulbricht”) in view of US 2010/0229946 A1, Kataoka et al. (hereinafter “Kataoka”), with evidentiary support provided by “Product Specification, Di(ethylene glycol) dimethacrylate”, hereinafter “Sigma-Aldrich1”, “Product Specification, Poly(ethylene glycol) dimethacrylate”, hereinafter “Sigma-Aldrich2” and CN 104031567 A, Kou et al. (hereinafter “Kou”).
Regarding claim 1
Ulbricht teaches a composition, wherein the composition is a non-peroxide initiated composition (the initiator is selected from the group consisting of peroxidic compounds, azo compounds, and photoinitiators, the peroxidic compounds being recited in the alternative and therefore not a requirement of Ulbricht) [para. 0059],
the composition comprises, by weight:
100 parts of polyolefin resin (corresponding to all the polyolefin copolymers encompassed by the composition B) and 0.05-5 parts of a monomer (corresponding to crosslinker comprising diethylene glycol di(meth)acrylate or polyethylene glycol di(meth)acrylate present in an amount of 0.005% to 5% by weight based on the mass of all the polyolefin copolymers encompassed by composition B) [paras. 0070 and 0072-0073],
the monomer comprises a compound shown in a structural formula I (both diethylene glycol di(meth)acrylate and polyethylene glycol di(meth)acrylate satisfies the structural formula I set forth below as evidenced by Sigma-Aldrich):
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194
406
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228
714
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Chemical Structure of diethylene glycol di(meth)acrylate
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248
800
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Chemical Structure of Poly(ethylene glycol) di(meth)acrylate
wherein R is H or methyl (see chemical structure of polyethylene glycol di(meth)acrylate above, wherein R is a methyl group), and n is an integer of 2-5 (see chemical structure of diethylene glycol di(meth)acrylate comprising two ethylene oxide units); and
wherein the polyolefin resin comprises a non-polar polyolefin resin, the polyolefin resin comprises copolymer of ethylene and C3-20 α olefin [para. 0051].
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) [MPEP 2144.05].
The limitation “a polymerization mode of the monomer is ultraviolet light initiated polymerization, or radiation initiated polymerization, or microwave initiated polymerization” is considered a product-by-process limitation. 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. In re Thorpe, 777 F.2d 695, 698, 227 USPQ 964, 966 (Fed. Cir. 1985) [MPEP 2113].
It is noted that Ulbricht teaches the initiator being a photo initiator [para. 0059].
Examiner further notes that the monomer disclosed in the prior art e.g., diethylene glycol di(meth)acrylate, is the same as the one recited in instant claim 12.
As further clarification with regards to the repeating units of ethylene oxide (n) being an integer of 2-5, Kataoka, similar to Ulbricht, teaches a composition for a solar cell sealing/encapsulant film comprising a polyethylene glycol di(meth)acrylate, wherein when the units of ethylene oxide (n) are in a range of 2 to 20, locking phenomena, that is generated between sealing films contacted with each other when the film is prepared to be wound around a roll, is apt not to occur and therefore a solar cell sealing film having high transparency can be easily obtained [paras. 0041 and 0051-0053].
Ulbricht and Kataoka are analogous inventions in the field of sealing/encapsulant compositions for use in solar cells. It would have been obvious to one of ordinary skill in the art before the effective filing date of the invention to have modified the monomer compound of Ulbricht to comprise 2-20 repeating units of ethylene oxide, as in Kataoka, for the purpose of easily obtaining a sealing/encapsulant film composition that is high in transparency. It is noted that the claimed composition also relates to the field of encapsulating materials (see Abstract and para. 0002 of the instant published application).
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) [MPEP 2144.05].
Regarding claim 2
Modified Ulbricht teaches the composition as set forth above, wherein the n is an integer 2-4 (2-20) [Kataoka, paras. 0041 and 0053].
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) [MPEP 2144.05].
Regarding claim 3
Modified Ulbricht teaches the composition as set forth above, wherein the n is an integer 2-3 (2-20) [Kataoka, paras. 0041 and 0053].
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) [MPEP 2144.05].
Regarding claim 5
Modified Ulbricht teaches the composition as set forth above, wherein the monomer is present in an amount of 0.1-3 parts by weight (0.005% to 5% by weight) [Ulbricht, para. 0073].
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) [MPEP 2144.05].
Regarding claim 6
Modified Ulbricht teaches the composition as set forth above, wherein the monomer is present in an amount of 0.2-2 parts by weight (0.005% to 5% by weight) [Ulbricht, para. 0073].
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) [MPEP 2144.05].
Regarding claim 7
Modified Ulbricht teaches the composition as set forth above, wherein the monomer is present in an amount of 0.3-1.5 parts by weight (0.005% to 5% by weight) [Ulbricht, para. 0073].
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) [MPEP 2144.05].
Regarding claim 8
Modified Ulbricht teaches the composition as set forth above, wherein the monomer is present in an amount of 0.4-1.2 parts by weight (0.005% to 5% by weight) [Ulbricht, para. 0073].
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) [MPEP 2144.05].
Regarding claim 9
Modified Ulbricht teaches the composition as set forth above, wherein the polyolefin resin is selected from any one or more of ethylene-propylene copolymer, ethylene-butene copolymer, ethylene-octene copolymer, and ethylene-propylene-octene copolymer (“[u]seful polyolefin copolymers in accordance with the invention are especially ethylene/α-olefin copolymers…, the “α-olefin” in the context of the invention preferably being selected from the group consisting of propene, 1-butene, 4-methyl-1-pentene, 1-hexene, 1-octene, 1-decene, 1-dodecene, 1-tetradecene, 1-hexadecene, 1-octadecene, 3-cyclohexyl-1-propene, vinylcyclohexane, acrylic acid, methacrylic acid, norbornene, styrene, methylstyrene, vinyl acetate”) [Ulbricht, para. 0051].
Regarding claim 10
Modified Ulbricht teaches the composition as set forth above, wherein the composition further comprises a co-crosslinking agent [Ulbricht, paras. 0023, 0034-0035, 0039 and 0049-0048]; and/or
the co-crosslinking agent is a compound that comprises at least three double bonds [Ulbricht, paras. 0023, 0034-0035, 0039 and 0049-0048; see also para. 0014]; and/or,
the co-crosslinking agent is the compound having an annular structure [Ulbricht, paras. 0023, 0034-0035, 0039 and 0049-0048; see also para. 0014]; and/or,
the co-crosslinking agent is triallyl isocyanurate and/or triallyl cyanurate (the composition B comprises a composition A which comprises (i) at least one compound (I) selected from isocyanurate, and triallyl cyanurate which are known co-crosslinkers) [Ulbricht, paras. 0023, 0034-0035, 0039 and 0049-0048; see also para. 0014].
Regarding claim 11
Modified Ulbricht teaches the composition as set forth above, wherein the composition further comprises, by weight, 0.1-1.5 parts of organosiloxane (0.05% to 5% by weight) [Ulbricht, paras. 0077-0078], and/or,
the organosiloxane simultaneously comprises an olefinic group and a hydrolyzable group [Ulbricht, paras. 0077-0078]; and/or,
the organosiloxane is a trialkoxysilane compound selected from a combination of any one or more of y-methacryloyloxypropyl trimethoxysilane, vinyltrimethoxysilane, triethoxyvinylsilane, vinyl tris(P-methoxyethoxy) silane, and allyltrimethoxysilane [Ulbricht, paras. 0077-0078].
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) [MPEP 2144.05].
Regarding claim 12
Modified Ulbricht teaches the composition as set forth above, wherein the polyolefin resin in the composition is a vinyl polymer [Ulbricht, para. 0051], and the monomer is diethylene glycol dimethacrylate [Ulbricht, para. 0072].
Regarding claim 13
Modified Ulbricht teaches the composition as set forth above, wherein the vinyl polymer meets with the following technical features:
1) the vinyl polymer is thermoplastic vinyl polymer [Ulbricht, para. 0051-0055]; and/or,
2) the vinyl polymer comprises any one or more of polyethylene, hyperbranched polyethylene and ethylene-α olefin copolymer [Ulbricht, para. 0051-0055];
5) 2) the vinyl polymer comprises any one or more of polyethylene, hyperbranched polyethylene and ethylene-α olefin copolymer, the ethylene-α olefin copolymer is selected from any one or more ethylene-butene copolymer, ethylene-octene copolymer and ethylene-propylene-hexene copolymer [Ulbricht, para. 0051-0055].
Regarding claims 14-15
Modified Ulbricht teaches the composition as set forth above.
Modified Ulbricht is silent to the melting point of the vinyl polymer being 90-120°C (instant claim 14) and 95-115°C (instant claim 15).
However, modified Ulbricht teaches the vinyl polymer comprising ethylene-vinyl acetate copolymer with a vinyl acetate polymer in the range of 15% to 50% by weight [Ulbricht, para. 0054], said copolymer having a melting point in the range of 35-100°C as evidenced by Kou [see Pages 1-2 of Kou].
The court has held that products of identical chemical composition cannot have mutually exclusive properties. A chemical composition and its properties are inseparable. Therefore, if the prior art teaches the identical chemical structure, the properties applicant discloses and/or claims are necessarily present. In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990).
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) [MPEP 2144.05].
Regarding claim 16
Modified Ulbricht teaches the composition as set forth above, wherein the vinyl polymer further comprises any one or more of ethylene-vinyl acetate, ethylene-methyl acrylate copolymer, ethylene-acrylic acid copolymer, ethylene-glycidyl methacrylate copolymer, ethylene-acrylate-glycidyl methacrylate copolymer, maleic anhydride-grafted polyolefin, and silane-grafted polyolefin [Ulbricht, para. 0051-0055].
Regarding claim 18
Modified Ulbricht teaches an encapsulating glue film comprising the composition of claim 1 (the composition may be used for the production of a film for encapsulation of an electronic device) [Ulbricht, paras. 0046, 0057 and 0099; Kataoka, paras. 0041 and 0051-0053].
The limitation “wherein the film is obtained by mixing and performing melt extrusion on the polyolefin resin and the monomer of the composition” is considered a product-by-process limitations.
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. In re Thorpe, 777 F.2d 695, 698, 227 USPQ 964, 966 (Fed. Cir. 1985) [MPEP 2113].
Examiner notes that modified Ulbricht discloses mixing the components and extruding the polymer formulation [Ulbricht, paras. 0101-0102].
Regarding claim 19
Modified Ulbricht teaches an electronic component (electronic device) [Ulbricht, para. 0099], comprising a solar cell [Ulbricht, paras. 0057 and 0099], wherein at least one surface of the electronic component (e.g., solar cell) is in contact with an encapsulating glue film (corresponding to an encapsulation film for solar cells) [Ulbricht, paras. 0046, 0057 and 0099]; and the encapsulating glue film is the encapsulating glue film according to claim 18 (the composition may be used for the production of a film for encapsulation of an electronic device) [Ulbricht, paras. 0057 and 0099; Kataoka, paras. 0041 and 0051-0053].
Regarding claim 20
Modified Ulbricht teaches a solar cell assembly (corresponding to a PV module), comprising a solar cell [Ulbricht, paras. 0046, 0057 and 0099], wherein at least one surface of the solar cell is in contact with an encapsulating glue film (corresponding to an encapsulation film for solar cells) [Ulbricht, paras. 0046, 0057 and 0099]; and the encapsulating glue film is the encapsulating glue film according to claim 18 (the composition may be used for the production of a film for encapsulation of an electronic device) [Ulbricht, paras. 0057 and 0099; Kataoka, paras. 0041 and 0051-0053].
Claim(s) 17 is/are rejected under 35 U.S.C. 103 as being unpatentable over Ulbricht in view of Kataoka, with evidentiary support provided by Sigma-Aldrich1, Sigma-Aldrich2 and Kou, as applied to claims 1-3, 5-16 and 18-20 above, and further in view of WO 2019/019987 A1, Xu et al. (hereinafter “Xu”).
Regarding claim 17
Modified Ulbricht is silent to the shape of the composition is selected from any one of a granule, a flake, a strip, or a tube.
Xu teaches a composition for use as a solar cell encapsulation film (see Abstract), wherein the shape of the composition may be one of a film, ring or strip [Abstract and Page 11].
Modified Ulbricht and Xu are analogous inventions in the film of compositions for use as solar cell encapsulation films. It would have been obvious to one of ordinary skill in the art before the effective filing date of the invention to modify the composition of modified Ulbricht such that it has a strip shape, as in Xu, as such is one of a finite number of identified, predictable shapes known in the art for such encapsulating compositions. One of ordinary skill in the art would have found obvious to pursue the known options with reasonable expectation of success. Since Xu teaches that a strip shaped film composition leads to the anticipated success, said shape is not of innovation but of ordinary skill and common sense [see MPEP 2143].
[see MPEP 2143].
Further, the particular shape of the composition appears to be a matter of choice which a person of ordinary skill in the art would have found obvious absent persuasive evidence that the particular shape of the claimed composition is significant, solves any stated problem or is for any particular purpose [see MPEP § 2144.04 IV (B)].
Response to Arguments
Applicant's arguments filed 03/062026 have been fully considered but they are not persuasive.
Applicant argues that a person skilled in the art would have no motivation to combine D2 with D1 for the following reasons:
The technical problems are different, and the objectives are completely opposite.
Applicant argues that D1 aims to solve the problem of Potential Induced Degradation (PID) in ethylene- vinyl acetate (EVA) encapsulating films, focusing on "shunt damage to battery cells caused by sodium ion migration".
Applicant further argues that D2 aims to improve the transparency (light transmittance in the 300-1200nm band) of encapsulating films in polar resin systems and to prevent inter-film adhesion during processing.
Examiner respectfully disagrees. Two separate tests define the scope of analogous prior art: (1) whether the art is from the same field of applicant’s endeavor, regardless of the problem addressed and, (2) if the reference is not within the field of the inventor’s endeavor, whether the reference still is reasonably pertinent to the particular problem with which the inventor is involved. In re Klein, 647 F.3d. 1343, 1348 (Fed. Cir. 2011) (citing In re Bigio, 381 F.3d 1320, 1325 (Fed. Cir. 2004)). The test is NOT if the references are analogous to each other, but analogous between the reference and the instant invention.
In the instant case, D1 specifically discloses the repeating unit n being an integer of 2-5. D2 was merely cited as further clarification regarding the repeating unit wherein a composition for a solar cell sealing/encapsulating film comprising a polyethylene glycol di(meth)acrylate having a repeating unit n in the range of 2-2- results in a sealing composition that is high int transparency. Both D1 and D2 are concerned with encapsulating materials comprising polyethylene glycol di(meth)acrylate.
“The test for obviousness is not whether the features of a secondary reference may be bodily incorporated into the structure of the primary reference.... Rather, the test is what the combined teachings of those references would have suggested to those of ordinary skill in the art.” In re Keller, 642 F.2d 413, 425, 208 USPQ 871, 881 (CCPA 1981).
Furthermore, the reason or motivation to modify the reference may often suggest what the inventor has done, but for a different purpose or to solve a different problem. It is not necessary that the prior art suggest the combination to achieve the same advantage or result discovered by applicant. See, e.g., In re Kahn, 441 F.3d 977, 987, 78 USPQ2d 1329, 1336 (Fed. Cir. 2006) (see MPEP 2144)
Applicant argues that the core problem addressed by the present application is "insufficient insulation resistance in non-polar polyolefin resins due to residual metal ions".
Applicant argues that the residual metal ions from synthesis inside the polyolefin resin of the present application are inherent impurities of the polyolefin resin itself, uniformly dispersed within the non-polar resin molecular chains, and cannot be removed by simple physical means.
Applicant further argues that the sodium ions mentioned in D1 are exogenous ions that penetrate from the external medium after the photovoltaic module is encapsulated. It is explicitly recorded that these sodium ions originate from the cover glass of the photovoltaic module (see paragraph [0010] of D1) and are foreign ions external to the encapsulation system, not ions contained within the encapsulating film (polyolefin copolymer) itself.
Examiner respectfully disagrees. Instant claim 1 does not recite residual metal ions, metal-ion absorption, metal-ion removal, or any insulation resistance limitation. Applicant’s arguments are not commensurate in scope with the claims. Although the claims are interpreted in light of the specification, limitations from the specification are not read into the claims. See In re Van Geuns, 988 F.2d 1181, 26 USPQ2d 1057 (Fed. Cir. 1993).
Applicant argues that it is evident that the differing sources of the so-called metal ions in D1 and the present application determine that they address completely different technical problems.
Applicant argues that the present application solves the problem of inherent impurities within the encapsulating material itself, whereas D1 solves the problem of ion penetration from an external medium within the encapsulation system.
Examiner respectfully disagrees. The fact that the inventor has recognized another advantage which would flow naturally from following the suggestion of the prior art cannot be the basis for patentability when the differences would otherwise be obvious. See Ex parte Obiaya, 227 USPQ 58, 60 (Bd. Pat. App. & Inter. 1985).
In the instant case, D1 specifically discloses the repeating unit n being an integer of 2-5 (see chemical structure of, e.g., diethylene glycol di(meth)acrylate having an integer n of 2-5, Pages 12-13 of the Non-Final Rejection mailed 12/08/2025). D2 was merely cited as further clarification regarding the repeating unit wherein a composition for a solar cell sealing/encapsulating film comprising a polyethylene glycol di(meth)acrylate having a repeating unit n in the range of 2-2- results in a sealing composition that is high int transparency. Both D1 and D2 are concerned with encapsulating materials comprising polyethylene glycol di(meth)acrylate.
The reason or motivation to modify the reference may often suggest what the inventor has done, but for a different purpose or to solve a different problem. It is not necessary that the prior art suggest the combination to achieve the same advantage or result discovered by applicant. See, e.g., In re Kahn, 441 F.3d 977, 987, 78 USPQ2d 1329, 1336 (Fed. Cir. 2006) (see MPEP 2144)
The core principles and technical approaches are different.
Applicant argues that the core principle of D1 is to increase crosslinking density through the co-crosslinking action of TAIC and ethylene glycol di(meth)acrylate compounds, thereby improving volume resistivity.
Applicant argues that the core principle of D2 is to improve transparency by utilizing the compatibility of an alkyleneoxy-containing compound with a polar resin.
Applicant argues that the core principle of the present application is based on the
thermodynamic incompatibility between the non-polar polyolefin resin and the polar monomer, forming a chelating network that adsorbs metal ions through monomer aggregation and in-situ polymerization.
Applicant argues that the technical principles and approaches of D1, D2, and the present application are completely different.
Examiner respectfully disagrees. The fact that the inventor has recognized another advantage which would flow naturally from following the suggestion of the prior art cannot be the basis for patentability when the differences would otherwise be obvious. See Ex parte Obiaya, 227 USPQ 58, 60 (Bd. Pat. App. & Inter. 1985).
In the instant case, D1 specifically discloses the repeating unit n being an integer of 2-5 (see chemical structure of, e.g., diethylene glycol di(meth)acrylate having an integer n of 2-5, Pages 12-13 of the Non-Final Rejection mailed 12/08/2025). D2 was merely cited as further clarification regarding the repeating unit wherein a composition for a solar cell sealing/encapsulating film comprising a polyethylene glycol di(meth)acrylate having a repeating unit n in the range of 2-2- results in a sealing composition that is high int transparency. Both D1 and D2 are concerned with encapsulating materials comprising polyethylene glycol di(meth)acrylate.
The reason or motivation to modify the reference may often suggest what the inventor has done, but for a different purpose or to solve a different problem. It is not necessary that the prior art suggest the combination to achieve the same advantage or result discovered by applicant. See, e.g., In re Kahn, 441 F.3d 977, 987, 78 USPQ2d 1329, 1336 (Fed. Cir. 2006) (see MPEP 2144)
Applicant argues that, even if D1 and D2 were forcibly combined, a person skilled in the art would still find it difficult to conceive of using the above-mentioned distinguishing technical features to solve the technical problem of the present application for the following reasons:
The precise limitation of the monomer content in distinguishing technical feature 1) cannot be derived:
Applicant argues that, in D1, the amount of the crosslinking agent is 0.005% to 5% (based on the mass of the polyolefin copolymer) and that, in D2, the amount of the alkyleneoxy-containing compound is 0.01 to 5 parts by weight (based on 100 parts by weight of the ethylene-polar monomer copolymer).
Examiner notes that D2 was not relied upon to meet with the limitations regarding the amount of crosslinking agent. Applicant’s arguments are not commensurate with the rejection. Furthermore, the test for obviousness is not whether the features of a secondary reference may be bodily incorporated into the structure of the primary reference; nor is it that the claimed invention must be expressly suggested in any one or all of the references. Rather, the test is what the combined teachings of the references would have suggested to those of ordinary skill in the art. See In re Keller, 642 F.2d 413, 208 USPQ 871 (CCPA 1981).
Applicant argues that, in both cases, the rationale for these amounts is unrelated to metal ion adsorption.
Applicant further argues that 0.05 to 5 parts by weight of the monomer in the present application is based on balancing the "saturation adsorption amount of metal ions" with "avoiding monomer precipitation" within the non-polar polyolefin resin.
Examiner respectfully disagrees. Applicant’s arguments are not commensurate in scope with the claims. In response to applicant's argument that the references fail to show certain features of the invention, it is noted that the features upon which applicant relies (i.e., balancing the "saturation adsorption amount of metal ions" with "avoiding monomer precipitation" within the non-polar polyolefin resin) are not recited in the rejected claim(s). Although the claims are interpreted in light of the specification, limitations from the specification are not read into the claims. See In re Van Geuns, 988 F.2d 1181, 26 USPQ2d 1057 (Fed. Cir. 1993).
Furthermore, it is noted that the chemical composition discloses in the art is identical to the one claimed. The court has held that products of identical chemical composition cannot have mutually exclusive properties. A chemical composition and its properties are inseparable. Therefore, if the prior art teaches the identical chemical structure, the properties applicant discloses and/or claims are necessarily present. In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990).
The mere recognition of latent properties in the prior art does not render nonobvious an otherwise known invention. In re Wiseman, 596 F.2d 1019, 201 USPQ 658 (CCPA 1979). Additionally, the fact that the inventor has recognized another advantage which would flow naturally from following the suggestion of the prior art cannot be the basis for patentability when the differences would otherwise be obvious. See Ex parte Obiaya, 227 USPQ 58, 60 (Bd. Pat. App. & Inter. 1985).
The technical feature of limiting the monomer structure to n=2-5 in distinguishing technical feature 2) cannot be derived:
Applicant argues that, in D2, n ranges from 1 to 30, and its selection is based on improving transparency and preventing adhesion between films.
Applicant argues that, in D1, the n value corresponding to all the examples is 1.
Applicant further argues that the limitation of n being 2-5 in the present application is determined based on the dispersibility of the monomer in the non-polar polyolefin resin, the difficulty of polymerization, and the efficiency of chelating metal ions.
Examiner respectfully disagrees. In the instant case, D1 specifically discloses the repeating unit n being an integer of 2-5 (see chemical structure of, e.g., diethylene glycol di(meth)acrylate having an integer n of 2-5, Pages 12-13 of the Non-Final Rejection mailed 12/08/2025). D2 was merely cited as further clarification regarding the repeating unit wherein a composition for a solar cell sealing/encapsulating film comprising a polyethylene glycol di(meth)acrylate having a repeating unit n in the range of 2-2- results in a sealing composition that is high int transparency. Both D1 and D2 are concerned with encapsulating materials comprising polyethylene glycol di(meth)acrylate.
The fact that the inventor has recognized another advantage which would flow naturally from following the suggestion of the prior art cannot be the basis for patentability when the differences would otherwise be obvious. See Ex parte Obiaya, 227 USPQ 58, 60 (Bd. Pat. App. & Inter. 1985).
The reason or motivation to modify the reference may often suggest what the inventor has done, but for a different purpose or to solve a different problem. It is not necessary that the prior art suggest the combination to achieve the same advantage or result discovered by applicant. See, e.g., In re Kahn, 441 F.3d 977, 987, 78 USPQ2d 1329, 1336 (Fed. Cir. 2006) (see MPEP 2144)
The specific polymerization method in distinguishing technical feature 3) cannot be derived:
Applicant argues that it is well known to a person skilled in the art that the
specific polymerization method of the present application synergizes with the monomer structure and the thermodynamic properties of the polyolefin resin (uniform mixing at room temperature, aggregation of the monomer after melting) and is a necessary condition for achieving the "metal ion adsorption" effect. It is not merely a selection of a production method and cannot be simply characterized as a "product-by-process" limitation.
Examiner respectfully disagrees. Claim 1 does not recite the alleged chelating network or the purported metal-ion adsorption effect. The recited polymerization mode is evaluated based on the claim language itself. Furthermore, D1 discloses photo initiators [see para. 0059].
Applicant argues that D1 relies on peroxides, azo compounds, or photoinitiators, all of which are initiators that need to be additionally introduced into the polymerization system from external sources.
Applicant argues that the polymerization in D2 employs conventional methods such as thermal decomposition.
Applicant further argues that neither document discloses non-peroxide initiation methods such as ultraviolet- initiated polymerization, radiation-initiated polymerization, or microwave-initiated polymerization, nor do they recognize the impact of initiator residues on insulation performance.
Examiner respectfully disagrees. First, it is noted that D2 was merely cited as further clarification regarding the repeating unit wherein a composition for a solar cell sealing/encapsulating film comprising a polyethylene glycol di(meth)acrylate having a repeating unit n in the range of 2-2- results in a sealing composition that is high int transparency.
D2 was not relied upon to meet with any limitation regarding the polymerization method.
Applicant states that “the polymerization method of the present application does not require the addition of an external initiator, thus avoiding the negative impact on insulation performance caused by metal ion contamination from initiator residues”, however the limitation reads: “a polymerization mode of the monomer is ultraviolet light initiated polymerization, or radiation initiated polymerization, or microwave initiated polymerization.”
The disclosure of photo-initiators in D1 meets with the limitations of the claim. Furthermore, the peroxide initiators disclosed in D1 are merely alternatives and not a requirement (see Pages 11-12 of the Non-Final Rejection mailed 12/08/2025).
Examiner further notes that the fact that the inventor has recognized another advantage which would flow naturally from following the suggestion of the prior art cannot be the basis for patentability when the differences would otherwise be obvious. See Ex parte Obiaya, 227 USPQ 58, 60 (Bd. Pat. App. & Inter. 1985).
The reason or motivation to modify the reference may often suggest what the inventor has done, but for a different purpose or to solve a different problem. It is not necessary that the prior art suggest the combination to achieve the same advantage or result discovered by applicant. See, e.g., In re Kahn, 441 F.3d 977, 987, 78 USPQ2d 1329, 1336 (Fed. Cir. 2006) (see MPEP 2144)
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.
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/MAYLA GONZALEZ RAMOS/Primary Examiner, Art Unit 1721
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