DETAILED ACTION
Notice of Pre-AIA or AIA Status
1. The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
Response to Amendment
2. The amendment filed by Applicant on July 14, 2025 has been fully considered. All previous rejections are maintained for the reasons set forth on “Response to Arguments” section below. The following action is made final.
3. It is further noted that instant claim 2 is cited as “Previously Presented”. However, the compound ERC-44, which was referred to in the previous Office action, is no longer presented and totally eliminated from said claim 2, and thereby instant claim 2 appears to be currently amended, and not “previously presented”. However, given instant claim 2 is cited as “previously presented”, it is considered that said compound ERC-44 was unintentionally omitted, and thereby the compound ERC-44 should be returned to the list of ERC compounds of instant claim 2.
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.
4. Claims 1-2 are rejected under 35 U.S.C. 103 as being unpatentable over Buchwalter et al (US 5,932,682) in view of Ogura et al (US 2004/0087740).
5. The rejection is adequately set forth on pages 2-8 of an Office action mailed on April 18, 2025 and is incorporated here by reference.
Response to Arguments
5. Applicant's arguments filed on July 14, 2025 have been fully considered.
6. With respect to Applicant’s arguments regarding the rejection of Claims 1-2 under 35 U.S.C. 103 as being unpatentable over Buchwalter et al (US 5,932,682) in view of Ogura et al (US 2004/0087740), it is noted that:
1) The above rejections are based on the combination of references. One cannot show nonobviousness by attacking references individually where the rejections are based on combinations of references. In re Keller, 642 F.2d 413, 208 USPQ 871 (CCPA 1981); In re Merck & Co., Inc., 800 F.2d 1091, 231 USPQ 375 (Fed. Cir. 1986).
2) Thus, Buchwalter et al discloses compounds that are cleavable due to the presence of acetal groups; wherein the compounds of Formula I-III show diepoxides having acetal cleavable group connecting said two epoxy groups, wherein the group shown in brackets “[ ]” is a linking group connecting each of the epoxy groups with the acetal group. The linking group shown in brackets in Formula III is an alkylene group comprising 1-15 CH2 groups. The linking group shown in Formula II comprises an alkylene-arylene group including a benzene ring. Based on the teachings of Buchwalter et al, it would have been obvious to a one of ordinary skill in the art that both alkylene and alkylene-arylene groups can be used as the linking group connecting each of the epoxy groups with the acetal group, and it would have been obvious to a one of ordinary skill in the art to choose and use the linking group comprising both alkylene and arylene groups, since it would have been obvious to choose material based on its suitability. Case law holds that the selection of a known material based on its suitability for its intended use supports prima facie obviousness. Sinclair & Carroll Co vs. Interchemical Corp., 325 US 327, 65 USPQ 297 (1045).
3) Though Buchwalter et al does not explicitly recite said linking group comprising both alkylene and arylene groups and having a structure as claimed in instant invention,
the secondary reference of Ogura et al was applied for the teachings of that.
Thus, Ogura et al discloses diepoxide compounds comprising acetal groups and comprising arylene-alkylene-arylene groups linking the acetal groups with the epoxy groups ([0013]).
Thus, Ogura et al specifically shows the diepoxides, wherein the groups linking the acetal groups
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with epoxy groups
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being as follows:
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Formula A
The whole acetal/epoxide portion is having the structure of Formula B below, corresponding to compound ERC-44 of instant claim 2, which compound is currently eliminated from instant claim 2, as mentioned above:
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Formula B
4) Ogura et al explicitly shows that the arylene-alkylene-arylene group/chain connecting the acetal group with epoxy group can contain an oxygen atom, thus forming the epoxy end group as glycidyl ether (glycidyloxy) group. Ogura et al further teaches that the presence of acetal group imparts flexibility to the compound; the glycidyloxy group bonded to the aromatic group improves toughness ([0068]).
5) It is further noted that Ogura et al is a secondary reference. Secondary reference does not need to teach all limitations. “It is not necessary to be able to bodily incorporate the secondary reference into the primary reference in order to make the combination.” In re Nievelt, 179 USPQ 224 (CCPA 1973).
6) Since both Buchwalter et al and Ogura et al are related to acetal/epoxy functional compounds used in curable compositions (Abstract and col. 7, lines 40-45 of Buchwalter et al and [0068] of Ogura et al), and thus belong to the same field of endeavor, wherein Ogura et al teaches the use of the linking groups connecting the epoxy groups to the acetal group being arylene-alkylene-arylene also containing oxygen in said linker, improving toughness of the compound, therefore, it would have been obvious to a one of ordinary skill in the art to combine the teachings of Buchwalter et al and Ogura et al and to choose, or obvious to try to choose and use the linking group of Formula A above as the linking group used in both brackets “[ ]” of the cleavable/degradable curable diepoxide acetal of Formula I of Buchwalter et al shown above, especially since Buchwalter et al explicitly shows the use of both alkylene and arylene group as part of linking group, to further improve toughness of the epoxy/acetal compound and since such linking group is taught in the art for connecting said acetal and epoxy groups and it would have been obvious to choose material based on its suitability. Case law holds that the selection of a known material based on its suitability for its intended use supports prima facie obviousness. Sinclair & Carroll Co vs. Interchemical Corp., 325 US 327, 65 USPQ 297 (1045). Case law holds that the mere substitution of an equivalent (something equal in value or meaning, as taught by analogous prior art) is not an act of invention; where equivalency is known to the prior art, the substitution of one equivalent for another is not patentable. See In re Ruff 118 USPQ 343 (CCPA 1958). The key to supporting any rejection under 35 USC 103 is the clear articulation of the reason(s) why the claimed invention would have been obvious. The Supreme Court in KSR noted that the analysis supporting a rejection under 35 USC 103 should be made explicit. The Court quoting In re Kahn, 441 F.3d 977, 988, 78 USPQ2d 1329, 1336 (Fed. Cir. 2006), stated that "‘[R]ejections on obviousness cannot be sustained by mere conclusory statements; instead, there must be some articulated reasoning with some rational underpinning to support the legal conclusion of obviousness.’" KSR, 550 U.S. at 418, 82 USPQ2d at 1396. Exemplary rationales that may support a conclusion of obviousness include:
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(A) Combining prior art elements according to known methods to yield predictable results;
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(B) Simple substitution of one known element for another to obtain predictable results;
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(C) Use of known technique to improve similar devices (methods, or products) in the same way;
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(D) Applying a known technique to a known device (method, or product) ready for improvement to yield predictable results;
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(E) "Obvious to try" – choosing from a finite number of identified, predictable solutions, with a reasonable expectation of success;
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(F) Known work in one field of endeavor may prompt variations of it for use in either the same field or a different one based on design incentives or other market forces if the variations are predictable to one of ordinary skill in the art; (G) Some teaching, suggestion, or motivation in the prior art that would have led one of ordinary skill to modify the prior art reference or to combine prior art reference teachings to arrive at the claimed invention. MPEP 2141
7) Given the compound of Formula I of Buchwalter et al comprises the linking group of Formula A above, as taught by Ogura et al, in place of both brackets “[ ]”, therefore, said compound appears to correspond to compound ERC-44 (currently eliminated from instant claim 2) and ERC-45 of instant claim 2.
8) In response to Applicant’s argument that the examiner’s conclusion of obviousness is based upon improper hindsight reasoning, it must be recognized that any judgment on obviousness is in a sense necessarily a reconstruction based upon hindsight reasoning. But so long as it takes into account only knowledge which was within the level of ordinary skill at the time the claimed invention was made, and does not include knowledge gleaned only from the applicant’s disclosure, such a reconstruction is proper. See In re McLaughlin, 443 F.2d 1392, 170 USPQ 209 (CCPA 1971).
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.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to IRINA KRYLOVA whose telephone number is (571)270-7349. 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, Arrie Lanee Reuther can be reached at 571-270-7026. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/IRINA KRYLOVA/Primary Examiner, Art Unit 1764