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 § 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 1-15 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 text of claim 1 reads: “A compound having a chain structure consisting of.” It is unclear if the intended transitional phrase (see MPEP 2111.03) is “having” or “consisting of” since both are used to describe the statutory class of “compound”. “Consisting of” excludes any element, step, or ingredient not specified in the claim. “Having” falls under the category of other transitional phrases in MPEP 2111.03, and must be interpreted in light of the specification to determine whether open or closed claim language is intended. However, the specification does not clearly define the word “having” either as open or closed (the specification offers no guidance on how to interpret “having”). Therefore, it is unclear whether “having” or “consisting of” is the intended transitional phrase, and if having should be the transitional phrase, the claim is unclear whether open or closed claim language is intended. It is suggested to amend to use one of the clearly defined transitional phrases of “comprising”, “consisting of” or “consisting essentially of” since the specification does not define how to interpret “having”.
Regarding claims 2-15: Claim 1, from which all other claims ultimately depend, uses the transitional phrase “consisting of”. This transitional phrase excludes any element, step, or ingredient not specified in the claim (MPEP 2111.03 II). Therefore, any dependent claim that adds components not claimed in claim 1 is broader that the claim on which it depends. For example in claim 1, there are exactly three aromatic groups in the chain (an aromatic ring group, an ether oxygen atom, a methylene group, an aromatic ring group, a methylene group, an ether oxygen atom, and an aromatic ring group bonded in an order). In claim 2 however, there are at least four aromatic groups, and there can be more since the claim is open due to the word “comprising”. A claim that is “comprising” cannot depend on a claim that is “consisting of” since it necessarily opens the claim to additional, unclaimed components, and broadens the definition of the dependent claim over the base independent claim, for example claims 2, 10, 12, 13. Claims 2-15 all introduce or are open to additional, unclaimed components. Based on the dependent claims having additional, unclaimed limitations over the subject matter of claim 1, for the purposes of prior art examination, it is taken that the claims are open to additional, unclaimed elements so that the dependent claims can be fully examined.
Regarding claim 4: The parentheses in claim 4 around the “in Formula (1)…”, “in Formula (2)…”, etc. render the claim indefinite and must be removed. It is unclear if the text within the parentheses is included in the claim and further limits the subject matter of the claim, or whether it is an aside to the claim and is not further limiting. For the purpose of further examination, it is taken that the text within the parentheses further limits the claim. Appropriate correction is required.
Regarding claim 5: Claim 5 recites the limitation "the first aromatic ring group”, “the second aromatic ring group”, “the third aromatic ring group” and “the fourth aromatic ring group" in lines 3 and 4. There is insufficient antecedent basis for these limitations in the claim. It is suggested to change the dependency of claim 5 from claim 1 to either claim 2 or claim 3.
The parentheses in claim 5 around “in Formula (5)…”, “in Formula (6)…”, etc. render the claim indefinite and must be removed. It is unclear if the text within the parentheses is included in the claim and further limits the subject matter of the claim, or whether it is an aside to the claim and is not further limiting. For the purpose of further examination, it is taken that the text within the parentheses further limits the claim. Appropriate correction is required.
Regarding claim 6: Claim 6 recites the limitation "the first aromatic ring group”, “the second aromatic ring group”, “the third aromatic ring group” and “the fourth aromatic ring group" in lines 3 and 4. There is insufficient antecedent basis for these limitations in the claim. It is suggested to change the dependency of claim 6 from claim 1 to either claim 2 or claim 3.
Regarding claim 8: The parentheses in claim 8 around “in Formula (10)…”, “in Formula (11)…”, etc. render the claim indefinite and must be removed. It is unclear if the text within the parentheses is included in the claim and further limits the subject matter of the claim, or whether it is an aside to the claim and is not further limiting. For the purpose of further examination, it is taken that the text within the parentheses further limits the claim. Appropriate correction is required.
Regarding claim 11: This claim is unclear for the same reasons as claim 1 due to the numerous transitional phrases used. It is unclear what scope “has” is given, whether the claim is open to additional, unclaimed elements or not since “has” is not defined in the specification (MPEP 2111.03).
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 1-15 are rejected under 35 U.S.C. 103 as being unpatentable over Kaji et al. (JP 2010229260) using the original document for the structures and the English language machine translation for the citations below.
Regarding claims 1: Kaji et al. teaches
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(original document page 5). In this structure A is a divalent aromatic group that may have a substituent of a lower alkyl C1-C4 (pg. 3 “Description of Embodiments” and pg. 4 second paragraph). Therefore, Kaji et al. teaches an embodiment in which the substituent of A is a C1 alkyl, making the end group a hydroxymethyl group attached to an aromatic ring group, an ether oxygen atom, a methylene group, an aromatic ring group, a methylene group, an ether oxygen and an aromatic ring group bonded in an order, with the other end group being a hydroxyl group. While Kaji et al. teaches additional embodiments that do not read on the claimed compound, before the effective filing date of the claimed invention a person having ordinary skill in the art would have found it obvious to select the C1 alkyl substituent and would have been motivated to do so since Kaji et al. teaches it is a possible solution to the disclosed problem.
Regarding claims 2 and 3: Kaji et al. teaches the structure set forth above. This structure has an aromatic ring unit bonded to two ether oxygen atoms, an aromatic ring unit bonded to two methylene groups, an aromatic ring unit bonded to a hydroxymethyl group when the substituent of A is C1 alkyl, and an aromatic ring unit bound to a hydroxyl end group. The first and second aromatic ring units are alternately disposed, with the second aromatic ring unit disposed at both ends with the third aromatic ring group bonded to a first end of the skeleton via an ether oxygen and the fourth aromatic ring group bonded to the second end of the skeleton vie an ether oxygen atom.
Regarding claim 4: Kaji et al. teaches the structure set forth above, where m can be 1-15 (pg. 3), which overlaps formula (1).
Regarding claims 5, 6, and 7: Kaji et al. teaches the aromatic group can be a 1,4-phenylene group or a 4,4’-biphenylene group (pg. 3 “Description of Embodiments” and pg. 4 second paragraph).
Regarding claim 8: Kaji et al. teaches
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(original document page 5). In this structure A is a divalent aromatic group that may have a substituent of a lower alkyl C1-C4 (pg. 3 “Description of Embodiments” and pg. 4 second paragraph). This is the structure of Formula (10).
Regarding claim 9: Kaji et al. teaches the aromatic groups can have a substituent of a lower C1-C4 alkyl (pg. 3 “Description of Embodiments” and pg. 4 second paragraph), which means R1-R4 can be hydrogen and one among R5-R8 and one among R9 to R12 can be methyl.
Regarding claim 10: Kaji et al. teaches a resin composition (title).
Regarding claim 11: Kaji et al. teaches the structure set forth above. This structure has an aromatic ring unit bonded to two ether oxygen atoms, an aromatic ring unit bonded to two methylene groups, an aromatic ring unit bonded to a hydroxymethyl group when the substituent of A is C1 alkyl, and an aromatic ring unit bound to a hydroxyl end group. The first and second aromatic ring units are alternately disposed, with the second aromatic ring unit disposed at both ends with the third aromatic ring group bonded to a first end of the skeleton via an ether oxygen and the fourth aromatic ring group bonded to the second end of the skeleton vie an ether oxygen atom.
Regarding claim 12: Kaji et al. teaches an epoxy and a curing agent where the curing agent is the compound of claim 1 (abstract, pg. 3 “Description of Embodiments” and pg. 4 second paragraph).
Regarding claim 13: Kaji et al. teaches a resin sheet comprising the composition (pg. 8 last paragraph).
Regarding claim 14: Kaji et al. teaches a cured product (first full paragraph of page 9).
Regarding claim 15: Kaji et al. teaches using the resin substrate as a laminated board (first paragraph page 2).
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure in that they are relevant to the claimed compound.
Contact Information
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Megan McCulley whose telephone number is (571)270-3292. The examiner can normally be reached Monday - Friday 9-5:30.
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/MEGAN MCCULLEY/
Primary Examiner, Art Unit 1767