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 III, claims 25-34, in the reply filed on 06 May 2026 is acknowledged. The traversal is on the grounds that the compounds of original claims 13, 15, and 17 were found advantageous for the article claim, and thus the article claim relates to a single general inventive concept such that Bogels does not disclose such an article. This is not found persuasive for the following reasons.
In response to Applicant’s arguments, the technical feature of compounds of Formulas I, II, or III do not constitute a special technical feature because it does not make a contribution over the prior art in view of Bogels for the reasons set forth in paragraphs 12-14 of the action mailed 16 April 2026. Applicant has provided no reasons as to why Bogels does not disclose such an article, but merely provides a conclusory statement that Bogels does not disclose the article. Such argument amounts to a general allegation that the claims define a patentable invention without specifically pointing out how the language of the claims patentably distinguishes them from the references and thus fails to comply with 37 CFR 1.111(b) because they amount to a general allegation that the claims define a patentable invention without specifically pointing out how the language of the claims patentably distinguishes them from the references.
The requirement is still deemed proper and is therefore made FINAL.
Claims 35-43 are withdrawn from further consideration pursuant to 37 CFR 1.142(b), as being drawn to nonelected inventions, there being no allowable generic or linking claim.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 06 May 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 26-34 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.
With respect to claim 26, the claim recites “The compound of claim 1” in line 1. However, claim 1 has been cancelled, causing claim 26 to be indefinite since it is unclear which claim it is meant to depend from. For the purposes of examination, the claim has been interpreted as if it depends from claim 25.
With respect to claim 26, in view of the examiner’s interpretation of claim 26 as being dependent on claim 25 as set forth above, claim 26 is indefinite since it recites “The compound of claim [25]” in line 1. However, claim 25 (which claim 26 has been interpreted as depending on) is drawn to an article and not a compound, and thus claim 26 is indefinite.
With respect to claim 26, in view of the examiner’s interpretation of claim 26 as being dependent on claim 25 as set forth above, claim 26 is indefinite since it recites “The compound of claim [25]” in line 1. However, claim 25 recites “a compound of Formula I” in line 5, “a compound of Formula II” in line 11, and “a compound of Formula III” in line 20. Thus, it is unclear which compound “The compound” refers to, and therefore claim 26 is indefinite.
With respect to claim 27, the claim recites “The article of claim 1” in line 1. However, claim 1 has been cancelled, causing claim 27 to be indefinite since it is unclear which claim it is meant to depend from. For the purposes of examination, the claim has been interpreted as if it depends from claim 25.
With respect to claim 28, the claim recites “The article of claim 1” in line 1. However, claim 1 has been cancelled, causing claim 28 to be indefinite since it is unclear which claim it is meant to depend from. For the purposes of examination, the claim has been interpreted as if it depends from claim 25.
With respect to claim 29, the claim recites “The article of claim 1” in line 1. However, claim 1 has been cancelled, causing claim 29 to be indefinite since it is unclear which claim it is meant to depend from. For the purposes of examination, the claim has been interpreted as if it depends from claim 25.
With respect to claim 30, the claim recites “The article of claim 1” in line 1. However, claim 1 has been cancelled, causing claim 30 to be indefinite since it is unclear which claim it is meant to depend from. For the purposes of examination, the claim has been interpreted as if it depends from claim 25.
With respect to claim 31, the claim recites “The article of claim 1” in line 1. However, claim 1 has been cancelled, causing claim 31 to be indefinite since it is unclear which claim it is meant to depend from. For the purposes of examination, the claim has been interpreted as if it depends from claim 25.
With respect to claim 32, the claim recites “The article of claim 1” in line 1. However, claim 1 has been cancelled, causing claim 32 to be indefinite since it is unclear which claim it is meant to depend from. For the purposes of examination, the claim has been interpreted as if it depends from claim 25.
Claims 33-34 are rejected under 35 U.S.C. 112(b) due to their dependency on claim 31.
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.
Claims 25-29 and 32 are rejected under 35 U.S.C. 103 as being unpatentable over Chen et al. (US 2018/0319944 A1, “Chen ‘944”).
With respect to claims 25, 28-29, and 32, Chen ‘944 discloses a multilayer construction 300 having a sealing layer 32/barrier layer 30/polymer layer 36/substrate layer 34 ([0104], Fig. 3). The polymer layer is made from multifunctional thiol-ene-acrylate or multifunctional thiol-acrylate monomers ([0080], [0085]). The thiol-ene material includes one or more cured thiol-ene resins from polythiols and polyenes including one or more multifunctional thiol-ene monomers ([0080]). The polythiol monomers include pentaerythritol tetra(3-mercaptopropionate) ([0080]), which is identical to that of the present invention (instant specification, page 2, line 34-page 3, line 1). The (meth)acrylates include ethoxylate bisphenol A di(meth)acrylate ([0088]), which is identical to that of the present invention (instant specification, page 6, lines 19 and 24-25). Thus, while there may be no explicit disclosure from Chen ‘944 regarding these components forming a compound of Formula I, given that Chen ‘944 discloses otherwise identical monomers forming a polymer as that of the present invention, it is clear the polymer of Chen ‘944 would necessarily inherently have a structure represented by Formula I, absent evidence to the contrary. Chen ‘944 further discloses the barrier layer 30 is a metal ([0057]) and has a thickness of 4 nm to 2 µm ([0056]), which overlaps the presently claimed range. As set forth in MPEP 2144.05, in the case where the claimed range “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). As seen in Fig. 3 below, the barrier layer 30 (i.e., metal layer) is a continuous layer. The substrate layer 34 is made from a flexible polymeric material ([0104]); as can be seen in Fig. 3 below, the substrate layer 34 is disposed on the opposing surface of the polymer layer 36.
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In light of the overlap between the claimed article and that taught by Chen ‘944, it would have been obvious to one of ordinary skill in the art to use an article that is both taught by Chen ‘944 and is encompassed within the scope of the present claims, and thereby arrive at the claimed invention.
With respect to claim 26, given this claim further limits an optional embodiment, the claim is considered met by the prior art.
With respect to claim 27, while there is no disclosure from Chen ‘944 regarding the barrier layer 30 (corresponding to the claimed metal layer as set forth above) comprises gold or silver, given that Chen ‘944 discloses the barrier layer is made from metal ([0057]), it would have been obvious to one of ordinary skill in the art to use any metal, including gold or silver as presently claimed, and thus arrive at the claimed invention. The selection of a known material based on its suitability for its intended use supported a prima facie obviousness determination in Sinclair & Carroll Co. v. Interchemical Corp., 325 U.S. 327, 65 USPQ 297 (1945). See also In re Leshin, 227 F.2d 197, 125 USPQ 416 (CCPA 1960). Given Chen ‘944 discloses the use of metal, one of ordinary skill in the art would consider all metals to be equivalent and interchangeable, absent evidence to the contrary.
Claims 25-27 and 31 are rejected under 35 U.S.C. 103 as being unpatentable over Chen (US 2024/0101754 A1, “Chen ‘754”).
With respect to claims 25 and 31, Chen ‘754 discloses a composition formed by the Michael addition of pentaerythritol tetrakis(3-mercaptopropionate) and ethoxylated bisphenol A diacrylate in the presence of a base catalyst ([0019], [0054], [0094]). The epoxy acrylate (i.e., multi (meth)acrylate) is present in an amount of 10-95 wt%, while the polythiol (i.e., multithiol) is present in an amount of 5-90 wt% ([0009-0011]), which overlaps the presently claimed range. As set forth in MPEP 2144.05, in the case where the claimed range “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). While there may be no explicit disclosure from Chen ‘754 regarding the composition forming a compound having the structure of Formula I, given Chen ‘754 discloses identical monomers and identical base catalysts present in overlapping amounts and an identical reaction mechanism as that of the present invention (instant specification, page 2, line 34-page 3, line 1; page 6, lines 19-20 and 24-25; page 7, lines 13-16), it is clear the compound of Chen ‘754 would necessarily inherently form a compound having the structure of Formula I, absent evidence to the contrary. The composition is formed on a substrate that includes metals ([0120]).
In light of the overlap between the claimed article and that taught by Chen ‘754, it would have been obvious to one of ordinary skill in the art to use an article that is both taught by Chen ‘754 and is encompassed within the scope of the present claims, and thereby arrive at the claimed invention.
With respect to claim 26, given this claim further limits an optional embodiment, the claim is considered met by the prior art.
With respect to claim 27, while there is no disclosure from Chen ‘754 regarding the metal substrate (corresponding to the claimed metal layer as set forth above) comprises gold or silver, given that Chen ‘754 discloses the substrate is made from metal ([0120]), it would have been obvious to one of ordinary skill in the art to use any metal, including gold or silver as presently claimed, and thus arrive at the claimed invention. The selection of a known material based on its suitability for its intended use supported a prima facie obviousness determination in Sinclair & Carroll Co. v. Interchemical Corp., 325 U.S. 327, 65 USPQ 297 (1945). See also In re Leshin, 227 F.2d 197, 125 USPQ 416 (CCPA 1960). Given Chen ‘754 discloses the use of metal, one of ordinary skill in the art would consider all metals to be equivalent and interchangeable, absent evidence to the contrary.
Conclusion
The prior art made of record but not relied upon is considered pertinent to Applicant’s disclosure.
Jin (US 2018/0250201 A1) discloses a composite that has excellent adaptation to walls and substrates (Abstract) used in dentistry (Title, claim 1). The composite is made from the Michael addition of a diacrylate and polythiol in the presence of DBU (Fig. 2, [0058]), which produces a compound having the structure shown below (annotated Fig. 3), which corresponds to a compound of Formula I where n is 2. However, Jin does not disclose wherein the substrate is metal.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Steven A Rice whose telephone number is (571)272-4450. The examiner can normally be reached Monday/Wednesday 07:30-12:30 and 20:30-22:30; Tuesday/Thursday/Friday 07:30-16:30 Eastern.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Callie E Shosho can be reached at (571) 272-1123. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/STEVEN A RICE/Examiner, Art Unit 1787
/CALLIE E SHOSHO/Supervisory Patent Examiner, Art Unit 1787
