DETAILED ACTION
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
Election/Restrictions
Applicant’s election without traverse of Group I, claim s1, 3-9 in the reply filed on 12/8/2025 is acknowledged. Claims 2, 10-12 withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected invention, there being no allowable generic or linking claim. Election was made without traverse in the reply filed on 12/8/2025.
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.
Claim 8 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 pre-AIA the applicant regards as the invention.
Claim 8 recites “the storage elastic modulus of the cured product obtained by curing the thermosetting resin composition at 20°C is …”. The claim limitation has no patentable weight and is meaningless from a scientific point of view because 1) it is unclear if 20°C is the curing temperature or modulus measuring temperature, 2) it does not recite for how long the composition is cured, by adjusting the curing time, the claimed modulus can always be achieved, 3) modulus measuring frequency, strain amplitude and temperature are not recited.
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, 4-9 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Luo et al (US 2020/0325346).
Claims 1, 4, 6-7: Luo teaches a composition comprising 16wt% of a hydroxy group-containing fluororesin, 9wt% of a blocked isophorone polyisocyanate Vestagon B 1530, and 29wt% of rutile titanium oxide Ti-Pure R960 [0137-0143]. The fluororesin is a copolymer of a fluorine containing vinyl monomer CTFE and a hydroxy group containing vinyl monomer HBVE 4-hydroxybutyl vinyl ether.
Claim 5: the fluorine containing vinyl monomer can be tetrafluoroethylene, CTFE, etc [0078].
Claim 8: because Luo teaches the claimed composition, it is therefore inherent that the composition exhibit claimed property since such a property is evidently dependent upon the nature of the composition used, see MPEP 2112.01. Absent an objective showing to the contrary, the addition of the claimed physical properties to the claim language fails to provide patentable distinction over the prior art.
Claim 9: The composition can be used as claimed.
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.
The factual inquiries set forth in Graham v. John Deere Co., 383 U.S. 1, 148 USPQ 459 (1966), that are applied for establishing a background for determining obviousness under 35 U.S.C. 103 are summarized as follows:
1. Determining the scope and contents of the prior art.
2. Ascertaining the differences between the prior art and the claims at issue.
3. Resolving the level of ordinary skill in the pertinent art.
4. Considering objective evidence present in the application indicating obviousness or nonobviousness.
Claims 1, 3 is/are rejected under 35 U.S.C. 103 as being unpatentable over Luo et al (US 2020/0325346).
Luo teaches a composition comprising 10-50 wt% of a hydroxy group-containing fluororesin, 3-30wt% of a blocked polyisocyanate Vestagon B 1530, and rutile titanium oxide Ti-Pure R960 [0115, 0118, 0120, 0137-0143]. The content of titanium oxide is 20-200 parts by mass based on the 100 parts by mass of the fluororesin [0123]. Case law holds that in the case where the claimed ranges “overlap or lie inside ranges disclosed by the prior art” a prima facie case of obviousness exists. In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990).
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/WENWEN CAI/
Primary Examiner, Art Unit 1763
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