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 .
DETAILED ACTION
Response to Amendment
The previous 112 rejection has been overcome by the amendment supported by the original disclosure.
The text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action.
The previous restriction and 103 rejections have been maintained and repeated.
Election/Restrictions
Amended claims 39-40 are directed to an invention that is independent or distinct from the invention originally claimed for the following reasons: claims 39-40 are drawn to a polymer comprising Group I as indicated in the previous restriction. The restriction as stated in the previous office action is repeated here as such.
Since applicant has received an action on the merits for the originally presented invention, this invention has been constructively elected by original presentation for prosecution on the merits. If, after an office action on an application, the applicant presents claims directed to an invention distinct from and independent of the invention previously claimed, the applicant will be required to restrict the claims to the invention previously claimed if the amendment is entered, subject to reconsideration and review as provided in §1.143 and 1.144. See 37 CFR 1.142(b) and MPEP § 821.03
Accordingly, claims 39-40 are withdrawn from consideration as being directed to a non-elected invention.
This restriction is made FINAL. See previous action for the reasons of applying restriction.
Claim Rejections - 35 USC § 103
Claim(s) 21-22 is (are) rejected under 35 U.S.C. 103(a) as being unpatentable over Trejo-Machin et al. (Green Chem., 2017, 19, 5065, listed on IDS and ISR) in view of Sung et al. (US20180186976).
As to claims 21-22 and 39-40, Trejo-Machin (abs., Scheme 1 and 2) discloses a benzoxazine monomer for producing polybenzoxazole by reacting 3-(4-Hydroxyphenyl)propanoic acid with ethylene glycol:
PNG
media_image1.png
200
400
media_image1.png
Greyscale
to create a biphenol intermediate, followed by further reacting the intermediate with polyethylene glycol (n=9) and furfurylamine:
PNG
media_image2.png
200
400
media_image2.png
Greyscale
Trejo-Machin is silent on the claimed hydroxyl terminals of formulae I, owning to the use of ethanolamine, as indicated in instant Ex.1.
Solving the same problem of producing a benzoxazine resin having superior mechanical properties and flexibility, Sung (abs., claims, examples, 10, 16-19, 27, 41, 44-45) discloses furfurylamine and ethanolamine are functionally equivalent amines reacting with phenols for producing a benzoxazine resin having superior mechanical properties and flexibility. Sung further discloses ethanolamine shows improved reactivity and production flexibility.
Therefore, as to claims 21-22, it would have been obvious to one of ordinary skill in the art to have replaced furfurylamine of Trejo-Machin with ethanolamine because of their equivalent functionality as primary functionally equivalent amines reacting with phenols for producing a benzoxazine resin having superior mechanical properties and flexibility. These conditions appear to equally apply to both productions using similar amines. Furthermore, one of ordinary skill in the art it would have been obvious to one of ordinary skill in the art to have modified the process for producing the benzoxazine monomer disclosed by Trejo-Machin and replaced furfurylamine with ethanolamine in view of Sung, because the resultant process would yield improved reactivity and production flexibility. The resultant benzoxazine monomer would meet the claimed formula I, corresponding to R”=ethylene, R*=nil, R=ethylene, R’=H, p=9, n1=n2=1 on the claimed formula I.
Response to Arguments
The argument for allowance of amended claims has been fully considered but not persuasive.
The applicant attacked (12:4) Sung for lack of motivation or suggestion. The examiner disagrees. Sung’s teaching of equivalent functionally of furfurylamine and ethanolamine for producing a benzoxazine resin having superior mechanical properties and flexibility enables the combination of Sung with Trejo-Machin to meet the claims. Moreover, the motivation to combine may be implicit and may be found in the knowledge of one of ordinary skill in the art, or, in some cases, from the nature of the problem to be solved. Id. at 1366, 80 USPQ2d at 1649. See MPEP-2143. Sung solves the same problem of producing a benzoxazine resin and monomers (claim 1, n=-1) by end capping with amines.
The applicant attacked (13:5-14:1) the equivalent functionally rationale, because Sung and Trejo-Machin relate to different type of molecules and applications. The examiner disagrees. Sung is an analogous art of Trejo-Machin, because Sung solves the same problem of producing a benzoxazine resin and monomers (claim 1, n=-1) by end capping with amines. It has been held that a prior art reference must either be in the field of applicant’s endeavor or, if not, then be reasonably pertinent to the particular problem with which the applicant was concerned, in order to be relied upon as a basis for rejection of the claimed invention. See In re Oetiker, 977 F.2d 1443, 24 USPQ2d 1443 (Fed. Cir. 1992).
The applicant argued (14:2-3) Sung’s furfurylamine and ethanolamine are functionally equivalent amines because of structural difference. The examiner disagrees. The examiner asserts Sung (abs., claims, examples, 10, 16-19, 27, 41, 44-45) discloses furfurylamine and ethanolamine are functionally equivalent amines (17-19) reacting with phenols for producing a benzoxazine monomers (claim 1, n=1) and resin having superior mechanical properties and flexibility (27). Sung teaches furfurylamine and ethanolamine capping agents are functional equivalent, hence they would have been obvious, and would be expected to give the expected results. Applicant’s attack appears argumentative with showing evidence to defeat the rationale.
Therefore, as to claims 21-22, it would have been obvious to one of ordinary skill in the art to have replaced furfurylamine of Trejo-Machin with ethanolamine because of their equivalent functionality as primary functionally equivalent amines reacting with phenols for producing a benzoxazine resin having superior mechanical properties and flexibility. These conditions appear to equally apply to both productions using similar amines. Furthermore, one of ordinary skill in the art it would have been obvious to one of ordinary skill in the art to have modified the process for producing the benzoxazine monomer disclosed by Trejo-Machin and replaced furfurylamine with ethanolamine in view of Sung, because the resultant process would yield improved reactivity and production flexibility. The resultant benzoxazine monomer would meet the claimed formula I, corresponding to R”=ethylene, R*=nil, R=ethylene, R’=H, p=9, n1=n2=1 on the claimed formula I.
Therefore, the previous restriction and 103 rejections have been maintained and repeated.
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 extension fee 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 date of this final action.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to SHANE FANG whose telephone number is (571)270-7378. The examiner can normally be reached on Mon-Thurs. 8am-6pm.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Randy Gulakowski can be reached on 571.572.1302. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
Information regarding the status of an application may be obtained from the Patent Application Information Retrieval (PAIR) system. Status information for published applications may be obtained from either Private PAIR or Public PAIR. Status information for unpublished applications is available through Private PAIR only. For more information about the PAIR system, see http://pair-direct.uspto.gov. Should you have questions on access to the Private PAIR system, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative or access to the automated information system, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/SHANE FANG/Primary Examiner, Art Unit 1766
Prosecution Insights