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 .
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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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. 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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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. 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.
Claims 1, 6-11, and 13 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1, 5-10, and 12 of copending Application No. 18/030,697 (reference application) in view of Ono et al. (US 2011/0178237).
Considering Claim 1: Claim 1 of Application ‘697 teaches a curable compound having the following characteristics (a) to (g): (a) a number average molecular weight (calibrated with polystyrene standard) is from 1000 to 15000; (b) a proportion of a structure derived from an aromatic ring in a total amount of the curable compound product is 50 wt.% or greater; (c) solvent solubility at 230C is 1 g/100 g or greater; (d) a glass transition temperature is from 80 to 2300C; (e) a viscosity (ηo) of a 20 wt.% NMP solution obtained by subjecting the curable compound product to a reduced-pressure drying process and then dissolving the reduced- pressure-dried curable compound product in NMP, and a viscosity (η10) of the 20 wt.% NMP solution after being left to stand for 10 days in a desiccator maintained at 23 0C satisfy Equation (E) below: η10/η0<2 (E).
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 5-10 and 12 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 and 15-20 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 2 and 13-20 of copending Application No. 18/030,697 (reference application) in view of Ono et al. (US 2011/0178237).
Considering Claim 2-4: Claim 2 of Application ‘697 teaches the compound of formula (2) in claim 2 in an anticipatory manner.
Application ‘697 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 ‘697 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 ‘697, 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 13-18 and 20 of Application ‘697 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.
Claims 2-4 and 15 are rejected on the ground of nonstatutory double patenting as being unpatentable over claim 1 and 10 of US Pat. 11,021,438 in view of Ono et al. (US 2011/0178237).
Considering Claim 2-4: Claim 1 of Patent ‘438 teaches the compound of formula (2) in claim 2 in an anticipatory manner.
Patent ‘438 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). Patent ‘438 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 Patent ‘438, 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: Claim 10 of Patent ‘438 teaches the molded article.
Response to Arguments
Applicant's arguments filed December 16, 2025 have been fully considered but they are not persuasive, because:
A) The applicant’s argument that Ono et al. does not teach a sodium content of less than 5 ppm is not persuasive. The applicant has ignored the section of the reference cited by the examiner in the previous action (repeated above). Ono et al. teaches:
“The polyether ether ketone of the present invention can have a sodium cation concentration in the polyether ether ketone that reaches less than 25 ppm, suitably less than 20 ppm, preferably less than 15 ppm, more preferably less than 10 ppm, and particularly preferably less than 5 ppm, as described later.” (¶0080).
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.
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