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 .
DETAILED ACTION
Claims 1-4 pending
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.
Claim 3 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.
Claim 3 states “(6) applying …
(7) at least partially …
(8) at least partially …
(9) remove the composite …”
However, it is not clear what are those “(6), (7), (8) and (9)” related to, as there are no starting points that refers to “(1), (2)” and so forth.
Double Patenting
The nonstatutory double patenting rejection is based on a judicially created doctrine grounded in public policy (a policy reflected in the statute) so as to prevent the unjustified or improper timewise extension of the “right to exclude” granted by a patent and to prevent possible harassment by multiple assignees. A nonstatutory double patenting rejection is appropriate where the conflicting claims are not identical, but at least one examined application claim is not patentably distinct from the reference claim(s) because the examined application claim is either anticipated by, or would have been obvious over, the reference claim(s). See, e.g., In re Berg, 140 F.3d 1428, 46 USPQ2d 1226 (Fed. Cir. 1998); In re Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993); In re Longi, 759 F.2d 887, 225 USPQ 645 (Fed. Cir. 1985); In re Van Ornum, 686 F.2d 937, 214 USPQ 761 (CCPA 1982); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Thorington, 418 F.2d 528, 163 USPQ 644 (CCPA 1969).
A timely filed terminal disclaimer in compliance with 37 CFR 1.321(c) or 1.321(d) may be used to overcome an actual or provisional rejection based on nonstatutory double patenting provided the reference application or patent either is shown to be commonly owned with the examined application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. See MPEP § 717.02 for applications subject to examination under the first inventor to file provisions of the AIA as explained in MPEP § 2159. See MPEP § 2146 et seq. for applications not subject to examination under the first inventor to file provisions of the AIA . A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
The filing of a terminal disclaimer by itself is not a complete reply to a nonstatutory double patenting (NSDP) rejection. A complete reply requires that the terminal disclaimer be accompanied by a reply requesting reconsideration of the prior Office action. Even where the NSDP rejection is provisional the reply must be complete. See MPEP § 804, subsection I.B.1. For a reply to a non-final Office action, see 37 CFR 1.111(a). For a reply to final Office action, see 37 CFR 1.113(c). A request for reconsideration while not provided for in 37 CFR 1.113(c) may be filed after final for consideration. See MPEP §§ 706.07(e) and 714.13.
The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The actual filing date of the application in which the form is filed determines what form (e.g., PTO/SB/25, PTO/SB/26, PTO/AIA /25, or PTO/AIA /26) should be used. A web-based eTerminal Disclaimer may be filled out completely online using web-screens. An eTerminal Disclaimer that meets all requirements is auto-processed and approved immediately upon submission. For more information about eTerminal Disclaimers, refer to www.uspto.gov/patents/apply/applying-online/eterminal-disclaimer.
Claim 4 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1 and 6 of U.S. Patent No. 12,386,253 B2. Although the claims at issue are not identical, they are not patentably distinct from each other because
Claim 4 states “A method of using the composite (S1C1) according to claim 1, the method comprising using the composite (S1C1) as embossing mold (e2) of an embossing tool (E2) for transferring an embossed structure to at least a part of a surface of a coating composition (C2a), or to at least a part of a surface of a coating composition (C2a) which is at least partly applied on a substrate (S2)”. Where claim 1 states “A composite (S1C1) composed of a substrate (S1) and an at least partially embossed and at least partially cured coating (C1), wherein the coating (C1) is obtained by at least partially curing a coating composition (C1a) applied to at least a part of a surface of the substrate (S1) and at least partially embossing, by radiation curing, wherein the coating composition (C1a) is a radiation-curable coating composition, comprising
(a) 5 to 45 weight % of at least one crosslinkable polymer and/or oligomer,
(b) 40 to 95 weight % of at least one reactive diluent,
(c) 0.01 to 15 weight % of at least one photoinitiator, and
(d) 0 to 5 weight % of at least one additive;
wherein (i) the stated total amounts of the components (a), (b), (c), and (d) are each based on the total weight of the coating composition (C1a), and (ii) the total amounts of all components present in the coating composition (C1a) add up to 100 weight %;
wherein the at least one crosslinkable polymer and/or oligomer (a) comprises a total amount of at least 25 weight % based on the total weight of all crosslinkable polymer and/or oligomer comprised in the coating composition (C1a), of at least one silicone (meth)acrylate oligomer. ”
Where this is disclosed in claims 1 and 6 of Pat ‘253.
Allowable Subject Matter
The following is an examiner’s statement of reasons for allowance:
For claims 1-3;
The prior art of Kim (PG Pub 2006/0214326 A1) disclose the forming coating composite form embossing a substrate (abstract), where the coating/resin composite include (a) compound C of silicone containing compound with 0.01 – 200 part by wt [0011]; (b) compound B of reactive diluent with 10 – 60 part by wt [0010]; (c) compound D of photoinitiator with 0.1 – 10 part by wt [0012], and (d) compound A of additive compound with 40-90 part by wt [0009].
Wherein (a) compound C include four sub-compounds of: (i) reactive monomer of oligomer silicon (meth)acrylate, (ii) reactive monomer of fluorine containing group, (iii) silicone or fluorine resin, and (iv) silicone or fluorine surfactant [0032], wherein the sub-compound (i) to (iii) are in at amount of 5 – 200 part by wt, and (iv) is 0.01 – 5 part by wt [0033].
Therefore, the silicone (meth)acrylate oligomer (i) of compound C is one of total four sub-compounds. However, Kim does not disclose the amount of each sub-compound nor amount used the sub-compound of interest (i) silicone (meth)acrylate oligomer in the total weight of the compound C. Therefore, Kim does not disclose the silicone (meth)acrylate oligomer with at least 25% based on the total weight of all crosslinkable polymer and/or oligomer, in the coating/resin composition.
None of the prior art of record, suggests or discloses the claimed method of transferring an embossed structure to a surface of a coating composition (C2a) using composite (S1C1) using the claimed steps (1)-(5), where the composite (S1C1) composed of a substrate (S1) and at least partially embossed and partially cured coating (C1), wherein a coating composition (C1a) used for producing partially embossed and partially cured coating (C1), wherein the coating composition (C1a) is radiation-curable coating composition comprises:
(a) 5 to 45 weight % of at least one crosslinkable polymer and/or oligomer,
(b) 40 to 95 weight % of at least one reactive diluent,
(c) 0.01 to 15 weight % of at least one photoinitiator, and
(d) 0 to 5 weight % of at least one additive;
wherein the at least one crosslinkable polymer and/or oligomer (a) comprises a total amount of at least 25 weight % based on the total weight of all crosslinkable polymer and/or oligomer comprised in the coating composition (C1a), of at least one silicone (meth)acrylate oligomer, as claimed.
Any comments considered necessary by applicant must be submitted no later than the payment of the issue fee and, to avoid processing delays, should preferably accompany the issue fee. Such submissions should be clearly labeled “Comments on Statement of Reasons for Allowance.”
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Mohammad Mayy whose telephone number is (571)272-9983. The examiner can normally be reached Monday to Friday, 11:00AM-7:00PM EST.
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/Mohammad Mayy/
Art Unit 1718
/KELLY M GAMBETTA/Primary Examiner, Art Unit 1718
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