DETAILED ACTION
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 .
Priority
Receipt is acknowledged of certified copies of papers required by 37 CFR 1.55.
Status of Claims
The examiner acknowledges the amendments made to claims 1-3 and 7-9 as well as the cancellation of claims 5 and 6. Claims 1-4 and 7-15 are pending.
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 1-4 and 7-15 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.
Regarding Claim 1,
The applicant states that R5a may be the same as Q1a and lists other options, however the groups allowed for Q1a have not been defined in the instant claim, rendering this statement to be indefinite. The applicant is required to revise the claim language to specify the allowable groups. For the purposes of examination, the list contained within the instant claim that is undefined will be used as the allowable groups for substituent Q1a.
Regarding Claims 7-9,
Claims 7-9 are directed towards the copolymer of claim 6, however claim 6 has been cancelled, thus rendering the instant claims to be indefinite. The applicant is required to revise the claims to be dependent upon a pending claim. For the purposes of examination, claims 7-9 will be interpreted to be dependent upon the independent claim 1.
Claims 2-4 and 10-15 are rejected based upon their dependency on Claim 1.
Claim Rejections - 35 USC § 102
The text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action.
Claims 1-2 and 7-9 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Carrillo (US 20090062478).
Regarding Claims 1 and 7,
Carrillo teaches a capped poly(arylene ether) (Paragraph 3) that is comprised of monophenol monomers of the following structure:
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where each Z1 can independently be a variety of groups including halogens, and substituted C1-C12 hydrocarbons, where hydrocarbon includes both aliphatic and aromatic groups (Paragraph 8) (corresponds to Q1a, R5a, Q1b, and R5b of the structures of the instant claims) and Z2 can be the same groups with the addition of hydrogen (Paragraph 8) (corresponds to Q2 in the structures of the instant claims), meeting the requirements of the instant claims. Additionally, the poly(arylene ether) can also contain structures with two phenolic groups and is of the following structure:
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where R1-R4 can each be hydrogen, halogen, or C1-C12 hydrocarbons, amongst other options (Paragraph 10), meeting the requirement of the instant claims. The Y group can be the following structures (corresponding to Y1 of the instant claims):
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and Z can be 0 or 1, meeting the requirement of the instant claims. Carillo also teaches that when using the bifunctional phenol described above, that the number of monomer units on each side may independently be from 0 to 30, provided that the sum of the monomer units is equal to at least 2 (Paragraph 10). Finally, Carrillo teaches that the polymer is capped using a variety of capping agents, including halohydrocarbons or acryloyl or methacryloyl chloride (Paragraph 18), meeting the requirements of the instant claims.
Regarding Claim 2,
Carrillo teaches the use of bifunctional poly(arylene ethers), which are stated specifically to have two phenolic hydroxy groups (Paragraph 10) and that the conditions should result in complete capping (Paragraph 18), meeting the requirement of the instant claim.
Regarding Claims 8-9,
Carrillo teaches the use of tetramethylbisphenol A as the bifunctional phenol (Paragraph 46) that is then further reacted with 2,6-dimethylphenol and finally capped with methacrylic anhydride (Paragraph 46), which combined with repeat unit restrictions described above in regard to claims 1 and 5-6 meets the requirements of the instant claims.
Claim Rejections - 35 USC § 103
The text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action.
Claims 3-4, 10-12 and 14-15 are rejected under 35 U.S.C. 103 as being unpatentable over Carrillo (US 20090062478) as applied to Claims 1-2, and 5-9above.
Regarding Claims 3-4, 10, and 13,
Carrillo teaches the monophenol of the following structure
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can have Z2 groups that can be hydrogen (Paragraph 8) as well as Z1 groups that can independently be C1-C12 hydrocarbyl groups that can be aliphatic or aromatic (Paragraph 8), meeting the requirements of the instant claim. Carrillo additionally teaches that the poly(arylene ether) can be synthesized from oxidative polymerization of monohydric phenols and polyhydric phenols (Paragraph 13) and notes the use of solvent such as toluene (Paragraph 15) and the use of catalysts such as copper (I) oxide (Paragraph 15), meeting the requirements of the instant claims. While Carrillo does not specifically teach that the monohydric phenol is a 2-alkyl-6-aryl substituted phenol, that substitution pattern is allowed by Carrillo. Because the 2, 4, and 6 positions of the phenol are reactive, if only reactivity is desired at the 4 position, it would logically follow that the 2 and 6 positions be substituted, as Carrillo requires (Paragraph 8). It would therefore have been obvious prior to the effective filing date of the instant application to have substituted these positions with any of the substituents as disclosed by Carrillo. Carrillo teaches that mixtures of monohydric phenols may be used (Paragraph 13).
Regarding Claims 11 and 12,
Carrillo teaches that the capping reaction may be conducted on the polymerization reaction mixture containing the solvent and catalyst from the reaction, but may also be performed following solvent and catalyst removal (Paragraph 31), meeting the requirements of the instant claims.
Regarding Claims 14-15,
While Carrillo is silent on the steps forming an article, Carrillo does teach that compositions containing poly(arylene ethers) are often blended with other plastics to form a variety of products, including automotive parts, plumbing fixtures, and coated wire (Paragraph 1) and additionally teaches that the addition of poly(arylene ethers) to thermoset resins can make them less brittle (Paragraph 1), rendering the use of the polymer as disclosed by Carrillo which is a poly(arylene ether) in a thermoset composition to produce an article to have been obvious prior to the effective filing date of the instant application.
Response to Arguments
Applicant's arguments filed 10/19/25 have been fully considered but they are not persuasive for the following reasons.
On page 8, the applicant states that the office did not cite any source teaching the limitations of the now cancelled claim 6. However, the rejection of this claim was included along with the rejections of claims 1, 5, and 7 found of pages 5 and 6 of the office action mailed on 7/11/2025. Carillo discloses the groups listed by the applicant in the now cancelled claim 6 in a poly(arylene ether) polymer of the same structure of the applicant as stated in the prior office action and indeed, Carillo teaches the following as an embodiment prior to capping:
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where Q5 and Q6 are methyl and a and be are from 0 to 20 with a sum of at least 2 (Paragraph 12), which upon endcapping meets all of the requirements of the claim as stated previously.
While the applicant states that they respectfully traverse the rejections of the prior office action, the applicant does not provide evidence of what features are lacking in the prior art used in the rejection. As a result, the rejection is maintained.
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 ADAM J BERRO whose telephone number is (703)756-1283. The examiner can normally be reached M-F 8:30-5.
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/A.J.B./ Examiner, Art Unit 1765
/JOHN M COONEY/ Primary Examiner, Art Unit 1765
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