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
All the references cited in the International Search Report have been considered. The most pertinent of these references have been applied below.
Election/Restrictions
Applicant’s election with traverse of Group I, (claims 1-17) is acknowledged. All groups are distinct inventions and present a serious burden to the U.S. Patent and Trademark Office based on a proper lack of unity analysis. The traversal is on the ground that the restriction is only proper if the claims are independent or distinct and there would be a serious burden placed on the Examiner if restriction is not required. This is not found persuasive because the issue as to the meaning and intent regarding “independent and distinct” as used in 35 U.S.C 121 and 37 CFR 1.41, which is for national applications, but it is not used for PCT national stage (371) applications. For PCT national stage applications, restriction is based upon unity of invention; restriction of a national stage application does not take into account whether or not the inventions are independent or distinct, and does not take into account burden on the examiner.
This restriction is made FINAL. The restriction and election of species as stated in the previous office action are repeated here as such.
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 and 10-17 is(are) rejected under 35 U.S.C. 102(a)(1) as being anticipated by Parker et al. (US 4468507 listed on IDS and ISR).
As to claims 1 and 10-17, Parker (claims, abs., examples) discloses process of producing a branched novolak comprising reacting bisphenol A with formaldehyde (HCHO: bisphenol A =4.1:1) in presence of a NaOH catalyst at 36-40 °C to form a tetramethylolated bisphenol A (EX.1, step 1, 12:5-20), followed by reacting (Ex. IC, 15:20-35) the tetramethylolated bisphenol A with o-cresol (o-cresol: tetramethyloled: bisphenol A=5:1). The branched novolak is applied as curing agent for laminates, molding, and powder coating (10:1-5,16:5-10).
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 of this title, 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.
Claim(s) 6-7 is (are) rejected under 35 U.S.C. 103(a) as being unpatentable over Parker et al. (US 4468507).
Disclosure of Parker is adequately set forth in ¶1 and is incorporated herein by reference.
As to claims 6-7, the polydispersity of the branched novolak resin would inherently be ≥1 (overlapping with the ranges) due to the nature of a polymer/oligomer. It has been found that where claimed ranges overlap ranges disclosed by the prior art, a prima facie case of obviousness exists - see MPEP 2144.05.
Claim(s) 8-9 is (are) rejected under 35 U.S.C. 103(a) as being unpatentable over Parker et al. (US 4468507) in view of Suzuki et al. (US 20130018163).
Disclosure of Parker is adequately set forth in ¶1-2 and is incorporated herein by reference.
Parker teaches a generic structure of biphenol (claim 7) embracing bisphenol F and tetramethylol bisphenol F but is silent on using bisphenol F:
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Z can be C1 alkylene.
In the same area of endeavor of producing phenolic mold (62) comprising methylol groups (claims, abs., examples), Suzuki (62) teaches bisphenol F and bisphenol A are functionally equivalent biphenols to elevate the melting point of the resultant phenolic resin.
Therefore, as to claims 8-9, it would have been obvious to one of ordinary skill in the art to have replaced bisphenol A with bisphenol F because of their equivalent functionality as primary biphenols for producing phenolic resins with elevated melting points. These conditions appear to equally apply to both productions using similar bisphenol raw materials. This adaptation would have obviously yielded instantly the tetramethylol bisphenol F of claim 9.
Claim(s) 1-11 and 14-15 is (are) rejected under 35 U.S.C. 103 as being unpatentable over Maciejewski et al. (PL 177605, listed on IDS and ISR, machine translation provided) in view of Parker et al. (US 4468507) and further in view of Suzuki et al. (US 20130018163).
As toc claims 1-11 and 14-15, Maciejewski (claims, abs., examples) discloses a process of producing a branched novolak having molecular weight greater than 1k for curing powder application (pg.3:3) comprising reacting phenol (188g, 2 mol) with formaldehyde (650g, 37% of formalin, 8mol) at a molar ratio of HCHO: phenol A (4:1) in presence of a NaOH catalyst to form methylolated novolak (EX.I, pg.3:4-20), followed by reacting (Ex. IC, 15:20-35) the methylolated novolak with 200g of cresol comprising o-cresol. The resultant branched novolak exhibits a Mn of 2.6k.
Maciejewski is silent on the claimed biphenols.
Disclosure of Parker and Suzuki is adequately set forth in ¶1-3 and is incorporated herein by reference.
Therefore, as to claims 1-11 and 14-15, it would have been obvious to one of ordinary skill in the art to have modified the process disclosed by Maciejewski and replaced phenol with bisphenol F in view of Parker and Suzuki, because the resultant process would yield a branched novolak having improved melting point and branching, because bisphenol F would have more methylol (tetramethylol) sites for branching compared to phenol, as obviously recognized by one of ordinary skill in the art.
Particularly to claims 2-7, the resultant bisphenol F based branched novolak would be expected to yield a Mn about 2.6k or greater than 1k (overlapping with the ranges of claims 3-4). Since the polydispersity of the branched novolak resin would inherently be ≥1 (overlapping with the ranges of claims 6-7) due to the nature of a polymer/oligomer, the resultant Mw would be expected to be ≥2.6k or ≥1k, overlapping with the claimed range. It has been found that where claimed ranges overlap ranges disclosed by the prior art, a prima facie case of obviousness exists - see MPEP 2144.05.
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. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Randy Gulakowski can be reached on 571.572.1302. 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