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 .
Claim Status
Claim 1 is amended and claims 2, 5, and 6 are canceled. Claims 1, 3, 4, and 7 are pending.
Double Patenting
In response to applicants’ arguments that the filing of a terminal disclaimer would be premature, and did not respond specifically to the rejection.
Applicants argue that the filing of a terminal disclaimer would be premature, however, applicants did not respond specifically to the rejection
Normally, this would be considered a non-responsive response, see MPEP below. For the purposes of compact prosecution, the response will be considered, and ODP will be maintained. Applicants are required to respond to ALL REJECTIONS.
See MPEP 714.02 :
37 C.F.R. 1.111 Reply by applicant or patent owner to a non-final Office action.
(a)
(1) If the Office action after the first examination (§ 1.104 ) is adverse in any respect, the applicant or patent owner, if he or she persists in his or her application for a patent or reexamination proceeding, must reply and request reconsideration or further examination, with or without amendment. See §§ 1.135 and 1.136 for time for reply to avoid abandonment.
(2) Supplemental replies.
(i) A reply that is supplemental to a reply that is in compliance with § 1.111(b) will not be entered as a matter of right except as provided in paragraph (a)(2)(ii) of this section. The Office may enter a supplemental reply if the supplemental reply is clearly limited to:
(A) Cancellation of a claim(s);
(B) Adoption of the examiner suggestion(s);
(C) Placement of the application in condition for allowance;
(D) Reply to an Office requirement made after the first reply was filed;
(E) Correction of informalities (e.g., typographical errors); or
(F) Simplification of issues for appeal.
(ii) A supplemental reply will be entered if the supplemental reply is filed within the period during which action by the Office is suspended under § 1.103(a) or (c).
PNG
media_image1.png
18
19
media_image1.png
Greyscale
(b) In order to be entitled to reconsideration or further examination, the applicant or patent owner must reply to the Office action. The reply by the applicant or patent owner must be reduced to a writing which distinctly and specifically points out the supposed errors in the examiner’s action and must reply to every ground of objection and rejection in the prior Office action. The reply must present arguments pointing out the specific distinctions believed to render the claims, including any newly presented claims, patentable over any applied references. If the reply is with respect to an application, a request may be made that objections or requirements as to form not necessary to further consideration of the claims be held in abeyance until allowable subject matter is indicated. The applicant’s or patent owner’s reply must appear throughout to be a bona fide attempt to advance the application or the reexamination proceeding to final action. 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 does not comply with the requirements of this section.
PNG
media_image1.png
18
19
media_image1.png
Greyscale
(c) In amending in reply to a rejection of claims in an application or patent under reexamination, the applicant or patent owner must clearly point out the patentable novelty which he or she thinks the claims present in view of the state of the art disclosed by the references cited or the objections made. The applicant or patent owner must also show how the amendments avoid such references or objections.
PNG
media_image1.png
18
19
media_image1.png
Greyscale
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.
Response to Arguments
Applicant’s arguments with respect to claim 1 have been considered but are moot because the new ground of rejection does not rely on any reference applied in the prior rejection of record for any teaching or matter specifically challenged in the argument.
Furthermore, applicant’s arguments, see page 6, request that the examiner indicates acceptance of the drawings filed May 26, 2022. The examiner notes there appear to be no drawings associated with this application.
Claim Rejections - 35 USC § 112
The following is a quotation of the first paragraph of 35 U.S.C. 112(a):
(a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
The following is a quotation of the first paragraph of pre-AIA 35 U.S.C. 112:
The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention.
Claims 1, 3, 4, and 7 are rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the written description requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for applications subject to pre-AIA 35 U.S.C. 112, the inventor(s), at the time the application was filed, had possession of the claimed invention.
Claim 1 has been amended to recite “a highly refractive epoxy resin comprising a compound represented by Chemical Formula 1 or 2 below, in an amount of 40 to 45 parts by weight.” This amended limitation does not resemble previous claim 2, which recited that the highly refractive epoxy resin comprises 50 to 80 parts by weight of the composition. Furthermore, there is no support for the amendment in the specification (see p. 6, p. 11, p. 21). There is also no support for sub-ranges regarding the combination of compounds of formula 1 or 2.
In addition, claim 1 has been amended to recite, “a latent thermal curing agent, in an amount corresponding to the remainder of the composition.” The range of “the remainder of the composition” is not supported by the specification as p. 17 of the specification recites the latent thermal curing agent is preferably included in an amount of 0.5 to 5.0 parts by weight.
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 1, 3, 4, and 7 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 variable “Y” in reference to chemical formula 2. The variable “Y” does not appear in chemical formula 2. It is unclear what applicants intended to further limit by defining the variable “Y”.
Claim 1 has been amended to recite, “a latent thermal curing agent, in an amount corresponding to the remainder of the composition.” The range of “the remainder of the composition” has no bounds and is not clear as one cannot ascertain what amounts applicants intend to claim, as the ranges for the epoxy resins are not relative to the total parts by weight of the composition and do not add up to 100.
Where applicant acts as his or her own lexicographer to specifically define a term of a claim contrary to its ordinary meaning, the written description must clearly redefine the claim term and set forth the uncommon definition so as to put one reasonably skilled in the art on notice that the applicant intended to so redefine that claim term. Process Control Corp. v. HydReclaim Corp., 190 F.3d 1350, 1357, 52 USPQ2d 1029, 1033 (Fed. Cir. 1999). The term “diluted epoxy resin” in claim 1 is used by the claim to mean the epoxy resin compounds of claim 4, while the accepted meaning is an epoxy resin compound in solvent. The term is indefinite because the specification does not clearly redefine the term. It is unclear if the amount of diluted epoxy resin claimed takes into account the presence of solvent.
Claims 1, 3, and 7 are rejected under 35 U.S.C. 103 as being unpatentable over Fujita (US 2011/0282010 A1) in view of Nobuhiko et al (KR 2015/0090063 A; all citations directed toward English machine translation) as evidenced by Lee (US 6376638 B1).
Fujita teaches an epoxy resin composition for sealing electronic devices [p. 0013, claim 8]. Fujita exemplifies an epoxy resin composition comprising (a) 40 pbw an o-phenylphenol glycidyl ether resin, and (b) 30 pbw bisphenol A diglycidyl ether resin and 30 pbw bisphenolfluorene, wherein the cured film has a refractive index of 1.61 [example 5, tables 1 and 2]. Fujita teaches the weight ratio of (a) to (b) is 0.3 to 3 [p. 0032]. In example 5, (a) is present at 40 pbw, therefore general teachings of Fujita indicate that the (b) components may comprise 18 to 180 pbw of the composition. Considering the 30 pbw bisphenol A diglycidyl ether in the composition of example 5, the bisphenolfluorene resin may comprise up to 150 pbw of the epoxy resin composition, reading over the claimed range. In the case where the claimed ranges "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).
Fujita teaches the use of cationic thermal curing agents such as iodonium, sulfonium and phosphonium salts [p. 0040] – which are known in the art to be latent cationic thermal curing agents, as evidenced by Lee [c. 1, ll. 35-42].
Fujita teaches the epoxy resin composition has a refractive index of 1.6 or higher [p. 0032], however, Fujita is silent with respect to the liquid refractive index of the composition.
Nobuhiko is directed at an epoxy resin composition for electrode encapsulation [abstract]. The composition of Nobuhiko comprises a bisphenol A epoxy resin, an aromatic epoxy resin, and an alicyclic epoxy resin [p. 0010]. Nobuhiko teaches the liquid refractive index of the resin composition is usually 1.50 to 1.65 [p. 0095].
The composition of Nobuhiko is substantially similar to the composition of Fujita. Furthermore, the composition of Fujita satisfies all chemical and material limitations of the claimed invention. In light of this, it would have been obvious to one having ordinary skill in the art at the time the invention was filed that the composition of Fujita appears to be capable of satisfying the claimed liquid refractive index.
Claim 4 is rejected under 35 U.S.C. 103 as being unpatentable over Fujita (US 2011/0282010 A1) in view of Nobuhiko et al (KR 2015/0090063 A; all citations directed toward English machine translation) as evidenced by Lee (US 6376638 B1), as applied to claims 1, 3, and 7 above, and further in view of Lee II (US 2020/0127206 A1).
Fujita teaches the compound (b) is not particularly limited as long as it has high compatibility with compound (a) and can participate in crosslinking reactions with (a) [p. 0037]. Fujita exemplifies the use of alicyclic epoxy resins (di(glycidyl-methyl tricyclodecane); resin 3 of table 1). However, Fujita is silent with respect to the claimed alicyclic epoxy compounds.
Lee teaches alicyclic epoxy resins corresponded to A-1 and A-3 [formula 1 and formula 3]. Lee teaches these alicyclic epoxy resin impart physical properties such as colorless transparency, low temperature hardenability and chemical resistance, and heat resistance durability at high temperature and high humidity upon curing of the curable composition [p. 0020, 0027].
In light of this, it would have been obvious to one having ordinary skill in the art at the time the invention was filed to prepare the composition of Fujita with the alicyclic epoxy resins taught by Lee in order to improve the physical properties of the encapsulating resin.
Conclusion
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). 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 HOLLEY GRACE HESTER whose telephone number is (703)756-5435. The examiner can normally be reached Monday - Friday 9:00AM -5:00PM.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Randy Gulakowski can be reached at (571) 272-1302. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/HOLLEY GRACE HESTER/Examiner, Art Unit 1766
/RANDY P GULAKOWSKI/Supervisory Patent Examiner, Art Unit 1766