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
Applicant's election with traverse of Group I (claims 1-6) in the reply filed on 7/1/2026 is acknowledged. The traversal is on the ground(s) that no adequate reasons and/or examples have been provided to support a conclusion of patentable distinctness between the identified groups. This is not found persuasive because the examiner stated in the restriction requirement that inventions I-VIII would require separate fields of search including different search queries. Where it is necessary to search for one of the inventions in a manner that is not likely to result in finding art pertinent to the other inventions (e.g., employing different search queries), a different field of search is shown. See MPEP 808.02. This is sufficient to establish a serious search and/or examination burden.
The requirement is still deemed proper and is therefore made FINAL.
Claims 7-21 are withdrawn from further consideration pursuant to 37 CFR 1.142(b), as being drawn to nonelected inventions, there being no allowable generic or linking claim. Applicant timely traversed the restriction (election) requirement in the reply filed on 7/1/2026.
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.
The text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action.
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) 1-5 is/are rejected under 35 U.S.C. 103 as being unpatentable over Kotani (US 20180147776 A1).
Regarding claims 1-2 and 5, Kotani teaches a photocurable resin composition [A3] comprising a n-butyl acrylate/ethyl acrylate/methoxyethyl acrylate copolymer [P3] [0164, 0186-0189].
The examiner submits that the n-butyl acrylate/ethyl acrylate/methoxyethyl acrylate copolymer [P3] reads on the claimed copolymer with n-butyl acrylate and ethyl acrylate as specified in claim 2 and meeting the claimed constitutional unit (a) of Formula (1) where R1=H, R2=COOR35, and R35 is n-butyl and ethyl groups, and methoxyethyl acrylate meeting the claimed constitutional unit (b) of Formula (2)and is recited in claim 5.
Kotani teaches that the photocurable resin has number average molecular weight of 1,000 or more [0030, 0062, 0064], and the molecular weight distribution (weight-average molecular weight [Mw]/number-average molecular weight [Mn]) of the photocurable resin is preferably less than 1.8 [0065]. This molecular weight overlaps the claimed range of 217,000-1,000,000. A prima facie case of obviousness exists where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" (MPEP 2144.05.I).
Regarding claims 3-4, Synthesis Example 3 shows that the copolymer has acryloyl terminal groups [0164]. Formulation Example 3 combines this copolymer with additional polymerizable monomers [0186]. Example 3 [0187] polymerizes Formulation Example 3. When polymerized, multiple chains of the copolymer from Synthesis Example 3 will combine with one another via the terminal acryloyl groups. Each of these copolymer chains present in the product of Example 3 reads on the macromonomer of Claims 3-4 and 23-24 where R6 is an unsubstituted alkyl group (ethyl or n-butyl) or substituted alkyl group (methoxyethyl) and Z is a terminal acryloyl group. Since n-butyl acrylate/ethyl acrylate/methoxyethyl acrylate at 73 parts/25 parts/2 parts was used, and the number-average molecular weight of the copolymer was about 35,000 [0164-0165], the ratio of n-butyl acrylate : ethyl acrylate : methoxyethyl acrylate is 37 : 16 : 1, and the number of repeating units of n-butyl acrylate/ethyl acrylate/methoxyethyl acrylate is about 5, as calculated by the examiner, falling within the claimed range of n1=2-10,000.
Allowable Subject Matter
Claim 6 is objected to as being dependent upon a rejected base claim, but would be allowable if rewritten in independent form including all of the limitations of the base claim and any intervening claims.
The following is a statement of reasons for the indication of allowable subject matter:
Dependent claim 6 is directed to a copolymer comprising: a constitutional unit (a) of Formula (1); and a constitutional unit (b) of Formula (2), wherein a weight-average molecular weight (Mw) of the copolymer is from 217,000 to 1,000,000; and wherein a total mass of the constitutional unit (b) is more than a total mass of the constitutional unit (a) in all constitutional units. There is no prior art that teaches or makes obvious the aforementioned limitations as claimed.
The closest prior art is the disclosure of Kotani (US 20180147776 A1). Kotani teaches the claimed copolymer with constitutional unit (a) of Formula (1) and a constitutional unit (b) of Formula (2) with overlapping molecular weight.
However, Example 3 of Kotani only includes 2% of monomer (b), and there is no any reason to increase it to more than 50%. Therefore, the limitation of “a total mass of the constitutional unit (b) is more than a total mass of the constitutional unit (a) in all constitutional units” is not met.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to JIANGTIAN XU whose telephone number is (571)270-1621. The examiner can normally be reached Monday-Thursday.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Robert Jones can be reached on (571) 270-7733. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/JIANGTIAN XU/Primary Examiner, Art Unit 1762
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