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 .’
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.
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Claims 1, 3-4, and 6-8 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-7 of copending Application No. 17/768, 450 in view of Lee et al (US 2020/0127206 A1).
Claim 1 of this application differs from claim 1 of copending Application No. 17/768, 450 in that it limits the composition to further comprising a curing retarder.
However, Lee teaches an epoxy resin composition for encapsulating an organic electronic element, wherein the composition comprises an alicyclic epoxy resin, an epoxy oxetane compound, a thermal cationic initiator, and 18-crown-6-ether as a hardening retarder [abstract; p. 0084; example 1]. In comparative example 3, Lee prepares an encapsulating composition in the same manner as example 1, except no hardening retarder was introduced [p. 0093]. The composition with the hardening retarder (example 1) had a pot life of 105 h, whereas the composition without the hardening retarder had a pot life of 20 h [table 1]. 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 include a hardening retarder as an additive in in an epoxy resin composition in order to increase the pot life of the composition.
Claim 3 of the present application and claim 3 of ‘450 both further limit the diluted epoxy resin of the composition of claim 1 to an epoxy resin including a substituted or unsubstituted C5-Cioo alkylene or alkenylene group, or an epoxy resin including a cycloaliphatic group.
Claim 4 of the present application and claim 4 of ‘450 both further limit the diluted epoxy resin of the composition of claim 1 to an epoxy resin containing one or more compounds selected from the group consisting of A-1 to A-3.
Claim 6 of the present application and claim 5 of ‘450 both further limit the composition of claim 1 to further comprise a thermal curing agent. Claim 7 of the present application and claim 6 of ‘450 both further limit the thermal curing agent to a latent thermal curing agent.
Claim 8 of the present application and claim 7 of ‘450 both claim an encapsulant for a display device, wherein the encapsulant comprising the highly refractive and adhesive epoxy resin composition of claim 1.
This is a provisional nonstatutory double patenting rejection.
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.
Claims 1-8 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”. Claims 2-8 are further rejected under 35 U.S.C. 112(b) as being dependent on rejected claim 1 as well as failing to define the variable “Y”.
Claim 2; 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 2 is used by the claim to mean an epoxy resin, 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.
Claim Rejections - 35 USC § 103
In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis (i.e., changing from AIA to pre-AIA ) for the rejection will not be considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status.
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.
This application currently names joint inventors. In considering patentability of the claims the examiner presumes that the subject matter of the various claims was commonly owned as of the effective filing date of the claimed invention(s) absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and effective filing dates of each claim that was not commonly owned as of the effective filing date of the later invention in order for the examiner to consider the applicability of 35 U.S.C. 102(b)(2)(C) for any potential 35 U.S.C. 102(a)(2) prior art against the later invention.
Claim(s) 1- 8 are rejected under 35 U.S.C. 103 as being unpatentable over Fujita (US 2011/0282010 A1) in view of Lee et al (US 2020/0127206 A1)
Regarding claims 1, 3, and 8; Fujita teaches an epoxy resin composition for sealing electronic devices [p. 0013, claim 8]. Fujita exemplifies an epoxy resin composition comprising 40 pbw an o-phenylphenol glycidyl ether resin (reading over chemical formula 1) , 30 pbw bisphenol A diglycidyl ether resin (reading over chemical formula 3), and 30 pbw bisphenolfluorene diglycidyl ether resin (reading over chemical formula 2), having a film refractive index of 1.61 [example 5, tables 1 and 2]. The o-phenylphenol glycidyl ether resin further reads over the claimed diluted epoxide resin as Fujita teaches it contributes to a reduction in the viscosity of the composition and therefore functions as a reactive diluent [p. 0033].
Fujita teaches the composition may comprise other components as additives [p. 0043]. Fujita is silent with respect to a curing retarder as an additive.
Lee teaches an epoxy resin composition for encapsulating an organic electronic element, wherein the composition comprises an alicyclic epoxy resin, an epoxy oxetane compound, a thermal cationic initiator, and 18-crown-6-ether as a hardening retarder [abstract; p. 0084; example 1]. In comparative example 3, Lee prepares an encapsulating composition in the same manner as example 1, except no hardening retarder was introduced [p. 0093]. The composition with the hardening retarder (example 1) had a pot life of 105 h, whereas the composition without the hardening retarder had a pot life of 20 h [table 1]. 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 a hardening retarder as an additive in order to increase the pot life of the composition.
Regarding claim 2, Fujita exemplifies a composition comprising (a) 40 pbw an o-phenylphenol glycidyl ether resin (diluted epoxy resin), and (b) 30 pbw bisphenol A diglycidyl ether resin (highly adhesive epoxy resin) and 30 pbw bisphenolfluorene diglycidyl ether resin (highly refractive epoxy resin). Fujita teaches the weight ratio of (a) to (b) is 0.3 to 3 [p. 0032]. In the compositions exemplified by Fujita, the amount of (a) ranges from 12.5 to 70 pbw [table 1]. Considering (a) of example 5, the general teachings of Fujita indicate (b) may comprise 18 to 180 pbw of the composition. Considering component (b) of Fujita comprises 30 pbw bisphenol A diglycidyl ether resin (highly adhesive epoxy resin), the general teachings of Fujita indicate the bisphenolfluorene diglycidyl ether (highly refractive epoxy resin) may comprise 0 to 150 pbw of the resin composition.
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).
Furthermore, Lee, as relied on for the hardening retarder, teaches the hardening retarder can comprise 0.002 to 0.12 parts by weight relative to 100 parts by weight of the curable composition [p. 0084]. 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).
Regarding claim 4, 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.
Regarding claim 5, Lee teaches the hardening retarder can be one or more selected from the group consisting of an amine-based compound, a polyether-based compound, boric acid, phenylboric acid, salicylic acid, hydrochloric acid, sulfuric acid, oxamic acid, tetraphthalic acid, isophthalic acid, phosphoric acid, acetic acid, and lactic acid [p. 0041].
Regarding claims 6 and 7, Fujita teaches the use of cationic thermal curing agents such as iodonium, sulfonium and phosphonium salts [p. 0040].
Conclusion
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.
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/HOLLEY GRACE HESTER/Examiner, Art Unit 1766
/RANDY P GULAKOWSKI/Supervisory Patent Examiner, Art Unit 1766