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 .
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 1-5 and 7-9 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1, 5-6, and 9-12 of copending Application No. 18/220,671 (reference application) in view of Kobilka (US 20190169213 A1). Levchenko (Russian Journal of General Chemistry 2018, 88, 12, pp. 2793-2812) is included as an evidentiary reference.
Although the claims at issue are not identical, they are not patentably distinct from each other because:
Regarding claims 1-3, claim 5 of the reference application teaches a resin composition comprising 100 parts by weight of an unsaturated C=C double bond-containing polyphenylene ether resin, and between 15 and 90 parts by weight of a phosphorus containing compound (which is described in detail in claim 1 of the reference application). The phosphorus containing compound of claim 5 of the reference application is similar to the claimed “phosphorus-containing compound represented by Formula (1)” for the following reasons:
the compound of the reference application contains the same bisphenol-substituted core as the instant claim when, in the instant claim, “Y” is a -C(CH3)2- group;
the compound of the reference application contains the same substituents (oriented in the ortho-position with respect to the oxygen atoms attached onto the bisphenol core) as the instant claim when, in the instant claim, “R” is either of claimed formulae “(5)” or “(6);”
the compound of the reference application contains ethylenically unsaturated functional groups present as substituents on the oxygen of the bisphenol core
However, the claims of the reference application differ from the instant claim 1 because the phosphorus-containing compound of the reference application differs from that of the instant application. This is because the ethylenically unsaturated functional groups present as substituents on the oxygen of the bisphenol core within the reference application are benzocyclobutene-based, as opposed to those of the instant claim 1 which are optionally vinyl, acryloyl, or p-styrenyl.
In the same field of endeavor, Kobilka teaches a method of making a flame-retardant polymer comprising a phosphorus-containing flame-retardant molecule (Abstract), wherein the flame retardant molecule optionally contains functionality, optionally including vinyl functionality (Abstract). Kobilka teaches that these functionalities are useful because they enable reaction with polymers within the flame retardant composition ([0052] and [0111]), and specifies that the polymers may be, for example, polyphenylene oxide ([0111]).
Benzocyclobutene is also known in the art as a functional group useful within the field of electronic components because it is capable of performing cross-linking reactions (c.f. Levchenko, Abstract and p. 2793, Introduction section). Finally, it is prima facie obvious to substitute equivalents known in the art as suitable for the same purpose (See MPEP 2144.06). Therefore, it would have been obvious to one having ordinary skill in the art at the time of filing to substitute vinyl groups (i.e., -C=CH2 groups) in place of the benzocyclobutene groups within the phosphorus-containing compound of the reference application, as Kobilka teaches them as suitable functional groups for cross-linking within polyphenylene oxide compositions for electronics applications. In doing so, the phosphorus-containing compound of the reference application as modified by Kobelika would read on the claimed structure, wherein R8-10 are all hydrogen atoms, and Q is a covalent bond. The resulting structures read on the claimed structures of “Formula (8),” “Formula (12),” and “Formula (13),” as described in instant claim 3.
Regarding claim 4, claim 6 of the reference application recites the same listing of polymers.
Regarding claim 5, claim 9 of the reference application recites a substantially overlapping listing of additional components.
Regarding claim 7, claim 10 of the reference application recites the same listing of additives.
Regarding claim 8, claim 11 of the reference application recites the same listing of articles.
Regarding claim 9, claim 12 of the reference application teaches overlapping article properties, including glass transition temperature, dielectric constant, dissipation factor, flame retardancy, and thermal expansion.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Claim 6 is provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1, 5, and 9 of copending Application No. 18/220,671 (reference application) in view of Kobilka (US 20190169213 A1), and further in view of Japp (US 2004/0082730 A1).
Regarding claim 6, claims 9, 5, and 1 of the reference application in view of Kobilka discloses the incorporation of an unsaturated C=C double bond-containing crosslinking agent, in addition to all of the limitations of claim 1, as described above. The reference application and Kobilka differ from claim 6 because they are silent with regard to the claimed amount of crosslinking agent.
In the same field of endeavor, Japp teaches dielectric laminate structures compositions (Abstract, [0001]), containing an optional epoxy resin ([0026]), and optional flame retardants ([0002]). The composition also contains a curable polyphenylene ether resin (Abstract). Japp teaches the incorporation of between 0.1-10 parts of epoxy resin per 100 parts of component (A) and component (B), where component (A) is the curable polyphenylene ether resin (Abstract, [0026]). Furthermore, the curable polyphenylene ether comprises between 40 and 98 wt% of the total of components (A) and (B). The epoxy resin is therefore included in amounts ranging from about 0.11 to about 25 parts per 100 parts of the curable polyphenylene ether resin, which overlaps the claimed range of “1 part by weight to 30 parts by weight,” establishing a prima facie case of obviousness. It is prima facie obvious to substitute equivalents known in the art as suitable for the same purpose. See MPEP 2144.06. Therefore, it would have been obvious to one of ordinary skill in the art to utilize the crosslinking agent of the reference application in amounts ranging from about 0.11 to about 25 parts per 100 parts of the curable polyphenylene ether resin, as Japp teaches these amounts as suitable for polyphenylene ether-based electronics compositions.
Conclusion
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/JOSHUA CALEB BLEDSOE/Examiner, Art Unit 1762
/ROBERT S JONES JR/Supervisory Patent Examiner, Art Unit 1762