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 .
Continued Examination Under 37 CFR 1.114
A request for continued examination under 37 CFR 1.114, including the fee set forth in 37 CFR 1.17(e), was filed in this application after final rejection. Since this application is eligible for continued examination under 37 CFR 1.114, and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114. Applicant's submission filed on April 6, 2026 has been entered.
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, 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.
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.
Claims 1, 6-8, 10, 11, and 13 are rejected under 35 U.S.C. 103 as being unpatentable over Yang et al. (WO 2018/107929) in view of Ono et al. (US 2011/0178237). Note: US 2020/0079726 is being used as an English language equivalent for WO 2018/107929.
Considering Claim 1: Yang et al. teaches a curable compound of the formula
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, where R1 and R2 are identical or different, and are represented by groups of the formula
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302
226
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or
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, which read on formula r-1 of the instant claims, D1 and D2 are identical or different and represent a single bond or a linking group, and L represents a group of one of the following formulas
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102
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, where Ar1-Ar3, X and Y have the same definition as claim 2 (¶0018-20). The structure of Yang et al. has 100% groups of formula r-1. Yang et al. teaches preferred embodiments of the formula
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in the examples (Fig. 13-24), which read on the structures claimed in claims 2-4 of the instant claims.
Yang et al. teaches the structure as having a number average molecular weight of 1,900 to 3,220 (Table 4) and a glass transition temperature of 112-155 ºC (Table 4). Yang et al. further teaches the compounds as being highly soluble in solvents (Table 5).
Yang et al. teaches the number average molecular weight of Example 7 (BMI 1-2) as being 2,230 and the degree of polymerization as being 5.8 (Table 4). Yang et al. further teaches the preferred degree of polymerization as being 5 to 20. Based on the data of Table 4, the preferred molecular weight range would be ~1900 (DP 5) to ~7700 (DP 20), which overlaps with the claimed range. It would have been obvious to a person of ordinary skill in the art to have selected a polymer with a molecular weight in the overlapping portion of the claimed range, and the motivation to do so would have been, as Yang et al. suggests, to control the strength of the cured product while retaining solubility (¶0113).
Yang et al. does not recite the proportion of the structure being aromatic, the solvent solubility in terms of g/100g, the η0 or the η10 of the compound. However, Yang et al. teaches the same chemical structure as the instant claims. "Products of identical chemical composition can not have mutually exclusive properties." In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990). A chemical composition and its properties are inseparable. Therefore, if the prior art teaches the identical chemical structure, the properties applicant discloses and/or claims are necessarily present. See MPEP § 2112.01.
Yang et al. is silent towards the alkali metal content of the compound. However, Ono et al. teaches purifying a polyether ether ketone to a sodium cation concentration of less than 5 ppm (¶0080). Yang et al. and Ono et al. are analogous art as they are concerned with the same field of endeavor, namely polyether ether ketone compounds. It would have been obvious to a person of ordinary skill in the art to have purified the compound of Yang et al., as in Ono et al., and the motivation to do so would have been, as Ono et al. suggests, to allow for the use of the compound in forming electronic parts (¶0023).
Considering Claim 6: Yang et al. teaches a cured product from the composition (¶0160).
Considering Claims 7 and 8: Yang et al. teaches curing the composition on a glass substrate through heat treatment (¶0232).
Considering Claim 10: Yang et al. teaches forming a composite material comprising the cured product and a fiber (¶0158).
Considering Claims 11 and 13: Yang et al. teaches compound as being used in an adhesive or a sealant (¶0158).
Claims 2-4, 15-17, and 19-21 are rejected under 35 U.S.C. 103 as being unpatentable over Yang et al. (WO 2018/107929) in view of Ono et al. (US 2011/0178237). Note: US 2020/0079726 is being used as an English language equivalent for WO 2018/107929.
Considering Claims 2-4: Yang et al. teaches a curable compound of the formula
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, where R1 and R2 are identical or different, and are represented by groups of the formula
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302
226
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or
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224
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, which read on formula r-1 of the instant claims, D1 and D2 are identical or different and represent a single bond or a linking group, and L represents a group of one of the following formulas
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102
152
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, where Ar1-Ar3, X and Y have the same definition as claim 2 (¶0018-20). The structure of Yang et al. has 100% groups of formula r-1. Yang et al. teaches preferred embodiments of the formula
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in the examples (Fig. 13-24), which read on the structures claimed in claims 2-4 of the instant claims.
Yang et al. teaches the number average molecular weight of Example 7 (BMI 1-2) as being 2,230 and the degree of polymerization as being 5.8 (Table 4). Yang et al. further teaches the preferred degree of polymerization as being 5 to 20. Based on the data of Table 4, the preferred molecular weight range would be ~1900 (DP 5) to ~7700 (DP 20), which overlaps with the claimed range. It would have been obvious to a person of ordinary skill in the art to have selected a polymer with a molecular weight in the overlapping portion of the claimed range, and the motivation to do so would have been, as Yang et al. suggests, to control the strength of the cured product, while retaining solubility (¶0113).
Yang et al. is silent towards the alkali metal content of the compound. However, Ono et al. teaches purifying a polyether ether ketone to a sodium cation concentration of less than 5 ppm (¶0080). Yang et al. and Ono et al. are analogous art as they are concerned with the same field of endeavor, namely polyether ether ketone compounds. It would have been obvious to a person of ordinary skill in the art to have purified the compound of Yang et al., as in Ono et al., and the motivation to do so would have been, as Ono et al. suggests, to allow for the use of the compound in forming electronic parts (¶0023).
Considering Claim 15: Yang et al. teaches a cured product from the composition (¶0160).
Considering Claims 16 and 17: Yang et al. teaches curing the composition on a glass substrate through heat treatment (¶0232).
Considering Claim 19: Yang et al. teaches forming a composite material comprising the cured product and a fiber (¶0158).
Considering Claims 20 and 21: Yang et al. teaches compound as being used in an adhesive or a sealant (¶0158).
Claim 9 is rejected under 35 U.S.C. 103 as being unpatentable over Yang et al. (WO 2018/107929) in view of Ono et al. (US 2011/0178237) as applied to claim 8 above, and further in view of Sheats et al. (US 2004/0234717).
Considering Claim 9: Yang et al. teaches the method of claim 8 as shown above.
Yang et al. does not teach the claimed method steps for forming the laminate. However, Sheats et al. teaches forming a thin film laminate by applying a molten material onto a polymeric substrate (¶0059; 0061); solidifying the material to obtain a film; detaching the film from the donor substrate (¶0067-68); laminating the film to the receptor substrate and heat treating the laminate (¶0068; 0080). Yang et al. and Sheats et al. are analogous art as they are concerned with the same field of endeavor, namely thin films. It would have been obvious to a person of ordinary skill in the art to have used the process of forming the laminate of Sheats et al. in the process of Yang et al., and the motivation to do so would have been, the substrate properties for forming the thin film are different than those needed for the product (¶0009).
Claim 18 is rejected under 35 U.S.C. 103 as being unpatentable over Yang et al. (WO 2018/107929) in view of Ono et al. (US 2011/0178237)as applied to claim 17 above, and further in view of Sheats et al. (US 2004/0234717).
Considering Claim 18: Yang et al. teaches the method of claim 17 as shown above.
Yang et al. does not teach the claimed method steps for forming the laminate. However, Sheats et al. teaches forming a thin film laminate by applying a molten material onto a polymeric substrate (¶0059; 0061); solidifying the material to obtain a film; detaching the film from the donor substrate (¶0067-68); laminating the film to the receptor substrate and heat treating the laminate (¶0068; 0080). Yang et al. and Sheats et al. are analogous art as they are concerned with the same field of endeavor, namely thin films. It would have been obvious to a person of ordinary skill in the art to have used the process of forming the laminate of Sheats et al. in the process of Yang et al., and the motivation to do so would have been, the substrate properties for forming the thin film are different than those needed for the product (¶0009).
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.
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.
Claims 1, 6-11, and 13 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1 and 4 of copending Application No. 18/269,431 (reference application) in view of Ono et al. (US 2011/0178237).
Considering Claim 1: Claim 1 of Application ‘431 teaches the compound of formula (2) in claim 2 in an anticipatory manner. Claim 4 of Applciation ‘431 teaches the molecular weight as being 1,000 to 10,000.
Application ‘431 does not recite the glass transition temperature, the proportion of the structure being aromatic, the solvent solubility in terms of g/100g, the η0 or the η10 of the compound. However, Yang et al. teaches the same chemical structure as the instant claims. "Products of identical chemical composition can not have mutually exclusive properties." In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990). A chemical composition and its properties are inseparable. Therefore, if the prior art teaches the identical chemical structure, the properties applicant discloses and/or claims are necessarily present. See MPEP § 2112.01.
Application ‘431 is silent towards the alkali metal content of the compound. However, Ono et al. teaches purifying a polyether ether ketone to a sodium cation concentration of less than 5 ppm (¶0080). Application ‘431 and Ono et al. are analogous art as they are concerned with the same field of endeavor, namely polyether ether ketone compounds. It would have been obvious to a person of ordinary skill in the art to have purified the compound of Application ‘431, as in Ono et al., and the motivation to do so would have been, as Ono et al. suggests, to allow for the use of the compound in forming electronic parts (¶0023).
Considering Claims 6-11 and 13: Claims 6-11 and 13 of Application ‘431 correspond to instant claims 6-11 and 13.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Claims 2-4 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claim 1, 6-11, and 13 of copending Application No. 18/269,431 (reference application) in view of Ono et al. (US 2011/0178237).
Considering Claim 2-4: Claim 1 of Application ‘431 teaches the compound of formula (2) in claim 2 in an anticipatory manner. Claim 4 of Applciation ‘431 teaches the molecular weight as being 1,000 to 10,000.
Application ‘431 does not recite the glass transition temperature, the proportion of the structure being aromatic, the solvent solubility in terms of g/100g, the η0 or the η10 of the compound. However, Yang et al. teaches the same chemical structure as the instant claims. "Products of identical chemical composition can not have mutually exclusive properties." In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990). A chemical composition and its properties are inseparable. Therefore, if the prior art teaches the identical chemical structure, the properties applicant discloses and/or claims are necessarily present. See MPEP § 2112.01.
Application ‘431 is silent towards the alkali metal content of the compound. However, Ono et al. teaches purifying a polyether ether ketone to a sodium cation concentration of less than 5 ppm (¶0080). Application ‘431 and Ono et al. are analogous art as they are concerned with the same field of endeavor, namely polyether ether ketone compounds. It would have been obvious to a person of ordinary skill in the art to have purified the compound of Application ‘431, as in Ono et al., and the motivation to do so would have been, as Ono et al. suggests, to allow for the use of the compound in forming electronic parts (¶0023).
Considering Claims 15-21: Claims 6-11 and 13 of Application ‘431 correspond to instant claims 15-21.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Response to Arguments
Applicant's arguments filed April 6, 2026 have been fully considered but they are not persuasive, because:
The applicant’s argument that Yang et al. does not teach the claimed number average molecular weight is not persuasive. Yang et al. teaches the number average molecular weight of Example 7 (BMI 1-2) as being 2,230 and the degree of polymerization as being 5.8 (Table 4). Yang et al. further teaches the preferred degree of polymerization as being 5 to 20. Based on the data of Table 4, the preferred molecular weight range would be ~1900 (DP 5) to ~7700 (DP 20), which overlaps with the claimed range. It would have been obvious to a person of ordinary skill in the art to have selected a polymer with a molecular weight in the overlapping portion of the claimed range, and the motivation to do so would have been, as Yang et al. suggests, to control the strength of the cured product, while retaining solubility (¶0113).
Correspondence
Any inquiry concerning this communication or earlier communications from the examiner should be directed to LIAM J HEINCER whose telephone number is (571)270-3297. The examiner can normally be reached M-F 7:30-5:00.
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, Mark Eashoo can be reached at 571-272-1197. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/LIAM J HEINCER/Primary Examiner, Art Unit 1767
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