DETAILED ACTION
Election/Restrictions
Applicant's election with traverse of Group I, claims 1-11, and the species of structure III (see claim 4) in the reply filed on 5/9/2025 is acknowledged. The traversal is on the ground(s) that lack of unity has allegedly not been established. This is not found persuasive.
The shared features of the inventions of Groups I-III is a material comprising the named components- specifically, an epoxy-containing resin, an anhydride-free curing catalyst, and additive comprising a phenyl carboxylate, wherein the amount of additive is at least 0.1 wt% in stoichiometric terms relative to the epoxy groups in the impregnating agent. Groups I-III lack unity of invention because even though the inventions of these groups require the technical feature of a resin comprising these components, this technical feature is not a special technical feature as it does not make a contribution over the prior art. See the rejections over Nishikubo et al, JPH10101775; Kil et al, US2015/0305152, and Moon et al, US2014/0077129, outlined later in this Office Action. As the shared features were already known, the inventions of Groups I to III lack unity of invention.
Similarly, the shared element to the recited species is a phenyl carboxylate moiety. This structure was already known in the art; see for example 1,3-bis (4-acetoxybenzoyl)benzene taught by Nishikubo as discussed later in this Action.
The requirement is still deemed proper and is therefore made FINAL.
Claims 2, 3, 5-9, 14 and 15 are withdrawn from further consideration pursuant to 37 CFR 1.142(b), as being drawn to a nonelected invention (claims 14, 15) or a nonelected species (claims 2, 3, 5-9), there being no allowable generic or linking claim.
Information Disclosure Statement
The information disclosure statement filed 11/29/2021 fails to comply with 37 CFR 1.98(a)(2), which requires a legible copy of each cited foreign patent document; each non-patent literature publication or that portion which caused it to be listed; and all other information or that portion which caused it to be listed. Applicant did not provide a copy of cited reference DE4040471. It has been placed in the application file, but the information referred to therein has not been considered with respect to this reference.
Claim Objections
Claims 1 and 4 are objected to because of the following informalities:
Regarding claim 1: Based on context, the phrase “the material” in line 2 appears to be referring to the “solid insulation material” recited in line 1. The claim should be amended to recite “the solid insulation material” in line 2, so that consistent terminology is used throughout the claims.
Regarding claim 4: The structure depicted for structure III is blurry and difficult to read. It is requested that applicant amend the claim to include a clear chemical structure.
In the definition of variable R2, there is no punctuation at the end of the list of species. Insert a semicolon to separate the species of R2 from variable R3.
Appropriate correction is required.
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.
The following is a quotation of 35 U.S.C. 112(d):
(d) REFERENCE IN DEPENDENT FORMS.—Subject to subsection (e), a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
The following is a quotation of pre-AIA 35 U.S.C. 112, fourth paragraph:
Subject to the following paragraph [i.e., the fifth paragraph of pre-AIA 35 U.S.C. 112], a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
Claims 1, 4, 10, and 11 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.
Claim 1 recites the limitation "the impregnating agent" in line 8. There is insufficient antecedent basis for this limitation in the claim. Claim 1 does not contain any other references to an impregnating agent; rather, the claimed invention is a “solid insulation material” (line 1) based on a “resin” (line 1). It is unclear whether the phrase “impregnating agent” is supposed to refer to the solid insulation material, the resin, or some other (combination) of component(s).
Regarding claim 4: Claim 4 includes two recitations of the phrase “alkylaryl having 2 to 4 phenyl units biphenyl” (see lines 9-10 and 13 of text). As written, it is unclear whether biphenyl is intended to be an example of an alkylaryl group having 2 to 4 phenyl units, or if it is a separate species. Furthermore, note that the recitation of this phrase in line 13 comes after a semicolon, which applicant previously used to separate the definitions of variables R1 and R2 in the same claim. It is therefore unclear whether the phrase in line 13 is intended to be part of the definition of variable R3 or if it is intended to be an embodiment of some other part of the structure.
Additionally, claim 4 does not correct the deficiency outlined above with respect to claim 1. The claim is therefore indefinite per the same rationale as claim 1.
Regarding claims 10, 11: Claims 10 and 11 both recite the phrase “the impregnating agent”; this phrase is indefinite per the same rationale as outlined above with respect to claim 1.
Claim 4 is rejected under 35 U.S.C. 112(d) or pre-AIA 35 U.S.C. 112, 4th paragraph, as being of improper dependent form for failing to further limit the subject matter of the claim upon which it depends, or for failing to include all the limitations of the claim upon which it depends.
Claim 4 depends from claim 1 and states that the phenyl carboxylate is a compound of structure III. Note, however, that the claim does not contain any language requiring that at least one of R1, R2, or R3 is a phenyl group. As written, structure III reads on compounds that do not contain a phenyl carboxylate moiety. Claim 4 therefore does not include all of the limitations of the parent claim, as it broadens the scope of the claimed additive to read on compounds that are not phenyl carboxylates. Applicant may cancel the claim(s), amend the claim(s) to place the claim(s) in proper dependent form, rewrite the claim(s) in independent form, or present a sufficient showing that the dependent claim(s) complies with the statutory requirements.
Claim Rejections - 35 USC § 102
The following is a quotation of the appropriate paragraphs of 35 U.S.C. 102 that form the basis for the rejections under this section made in this Office action:
A person shall be entitled to a patent unless –
(a)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention.
Claim(s) 1, 10, and 11 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Nishikubo et al, JPH10101775.
A machine translation of Nishikubo was used to prepare this Action.
Nishikubo discloses the production of a curable epoxy resin composition comprising an epoxy resin, an optional catalyst, and an ester compound (abstract, ¶0007). Nishikubo discloses an example (¶0027) teaching the production of a composition comprising bisphenol A diglycidyl ether; 1,3-bis (4-acetoxybenzoyl) benzene; and triphenylphosphine (see ¶0026 for DGEBA equals bisphenol A diglycidyl ether and TPP equals triphenyl phosphine).
Regarding the claimed resin containing epoxy groups: As noted above, the composition of the prior art examples comprises bisphenol A diglycidyl ether, corresponding to the claimed resin.
Regarding the claimed anhydride-free curing catalyst: As noted above, the composition of the prior art example comprises triphenylphosphine as a catalyst. Note that this compound does not contain an anhydride functional group, and therefore corresponds to the claimed anhydride-free curing catalyst (for claim 1).
Regarding the claimed additive: As noted above, the composition of the prior art example comprises the compound 1,3-bis (4-acetoxybenzoyl)benzene, the structure of which is shown below.
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Note that structure of 1,3-bis (4-acetoxybenzoyl)benzene corresponds to claimed additive which is a phenyl carboxylate (for claim 1).
Regarding the claimed amount of additive: The composition of the example comprises the bisphenol A diglycidyl ether and 1,3-bis (4-acetoxybenzoyl)benzene in an equimolar ratio (i.e., 100%) (for claims 1, 10, 11); further note that Nishikubo teaches that this ratio is based on the epoxy groups present (¶0012).
Claim 1 is rejected under 35 U.S.C. 102(a)(1) as being anticipated by Kil et al US2015/0305152.
Example 3 of Kil (0056) discloses a composition comprising a crystalline epoxy resin of prior art formula 2 (see ¶0031), corresponding to the claimed resin with epoxy groups (for claim 1); a phenolic curing agent (see ¶0041) bisphenol F type epoxy compound, corresponding to the claimed anhydride-free curing catalyst (for claim 1); and 4,4’-dihydroxydiphenyl ester, corresponding to the claimed phenyl carboxylate (for claim 1). The prior art composition comprises 2% of the 4,4’-dihydroxydiphenyl ester (for claim 1).
Claims 1, 10, 11 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Moon et al, US2014/0077129.
Claim 3 of Moon recites a composition comprising an epoxy resin, corresponding to the claimed resin with epoxy groups (for claim 1); an amino triazine novolac hardener, corresponding to the claimed anhydride-free curing catalyst (for claim 1); and a liquid crystal oligomer. Said liquid crystal oligomer may be a compound containing phenyl ester groups, corresponding to the claimed additive comprising a phenyl carboxylate (for claim 1) (see claimed Formulae 2-5). Moon further teaches that the prior art composition can comprises 39 to 60% of the epoxy resin and 39 to 60 parts of the liquid crystal oligomer (¶0044, 0051; Moon claim 5); the prior art wherein the ratio of liquid crystal oligomer to epoxy resin is 0.65 to 1: 1; i.e. 65 to 100% (for claims 1, 10, 11)
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.
Claim 4 is rejected under 35 U.S.C. 103 as being unpatentable over Nishikubo et al, JPH10101775.
As discussed earlier in this Action, Nishikubo discloses the production of a curable epoxy resin composition comprising an epoxy resin, an optional catalyst, and an ester compound. Triphenylphosphine, corresponding to the claimed anhydride free curing catalyst, is taught by Nishikubo as said optional catalyst. Said ester compound is included in combined in a ratio of about 0.1 to 1.2 relative to the epoxy groups present (¶0012).
Regarding the claimed structure (III): Nishikubo discloses the production of TMPB (¶0024), shown below.
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Note that the claimed invention does not contain any language prohibiting R3 from being substituted when it is an aryl group. The structure shown above therefore corresponds to claimed structure III wherein each R1 is a C1 alkyl group and each instance of R2 and R3 is an aryl group containing 6 carbon atoms.
Nishikubo does not specifically disclose the production of a composition comprising an epoxy resin, an anhydride-free curing catalyst, and a compound of structure III.
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, 277 F.2d 197, 125 USPQ 416 (CCPA 1960); Ryco, Inc. v. Ag-Bag Corp., 857 F.2d 1418, 8 USPQ2d 1323 (Fed. Cir. 1988) (MPEP § 2144.07).
The prior art teaches the production of a composition comprising an epoxy resin, a curing catalyst, and an ester compound. Furthermore, triphenylphosphine, corresponding to the claimed anhydride-free catalyst, and TMPB, corresponding to the claimed phenyl carboxylate of structure III, were both taught by Nishikubo for use in the prior art composition. Barring a showing of evidence demonstrating unexpected results, it therefore would have been obvious to prepare a composition comprising the claimed components, with the reasonable expectation of obtaining a final composition having improvements in crosslinking density and glass transition temperature as taught by Nishikubo (¶0014).
Conclusion
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/JEFFREY S LENIHAN/Examiner, Art Unit 1765