DETAILED ACTION
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
Continued Examination Under 37 CFR 1.114
A request for continued examination under 37 CFR 1.114, including the fee set forth in 37 CFR 1.17(e), was filed in this application after final rejection. Since this application is eligible for continued examination under 37 CFR 1.114, and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114. Applicant's submission filed on 5/5/2025 has been entered.
The previous prior art rejection under Oda et al (JP 2015017177) in view of Harder et al (US
20090062452) maintained.
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.
Claims 1, 5-14 and 17 are rejected under 35 U.S.C. 103 as being unpatentable over Oda et al (JP
2015017177) in view of Harder et al (US 20090062452), both cited in previous Office Action.
The rejection can be found in the NON-FINAL office action mailed 11/06/2024 and is herein
incorporated by reference.
Response to Arguments
Applicant's arguments filed 5/5/2025 have been fully considered but they are not persuasive.
Applicant argues that inherency criteria are not achieved and the claimed difference between Tm and Tc is not achieved by the prior art cited in the Office Action.
Examiner disagrees. Oda et al (JP2015017177) modified with Harder et al (US 20090062452) discloses the composition identical to the Applicant’s one (see Non-Final Office Action issued 11/06/2024).
The claiming of a new use, new function or unknown property, which is inherently present in the prior art, does not necessarily make the claim patentable. In re Best, 562 F.2d 1252, 1254, 195 USPQ 430, 433 (CCPA 1977).
Therefore, it would have been obvious to a person of ordinary skills in the art before the effective filing date of the invention to expect the same properties from Applicant’s and modified Oda’s compositions, since they disclose the same composition.
Note that Oda alone disclose basically the same composition as one claimed. The only difference is the quantity of aliphatic diamine (the component is disclosed by Oda).
Applicant submits that the amounts of all components are critical inn achieving the physical properties listed in claim 1.
However, Applicant fails to demonstrate the criticality of the components ratio. Examiner suggest that relevant Declaration can be submitted.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to GREGORY LISTVOYB whose telephone number is (571)272-6105. The examiner can normally be reached 9am-5pm EST M-F.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Heidi Riviere Kelley can be reached at (571) 270-1831. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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GL
/GREGORY LISTVOYB/Primary Examiner, Art Unit 1765
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