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 .
Claims 27-38 are pending as amended on 8/11/2026.
Election/Restrictions
Applicant's election with traverse of Group I (now claims 27-29) and species according to figure 1 in the reply filed on 8/11/2026 is acknowledged. Because applicant did not distinctly and specifically point out the supposed errors in the restriction requirement, the election has been treated as an election without traverse (MPEP § 818.01(a)). The requirement is still deemed proper and is therefore made FINAL.
Claims 30-38 are withdrawn from further consideration pursuant to 37 CFR 1.142(b), as being drawn to a nonelected invention, there being no allowable generic or linking claim.
The elected species (a benzoxazine according to figure 1 and instant example 1) is free of prior art. However, there are no claims presently limited to the elected species, and therefore no claims are presently free of prior art. Examination has proceeded for species which are encompassed by the generic claims.
Drawings
The drawings are objected to because the structure of the benzoxazine shown in figure 1 does not match the description of figure 1. See p 22 of the instant specification: The monomer shown in figure 1 is produced according to instant example 1. The monomer is produced using ethanolamine (mea), yet the monomer shown in figure 1 shows groups derived from 2-(2-aminoethoxy)ethanol (aee). [Note that the structures shown in figure 1 and figure 6 are the same, despite being prepared using different aminoalcohols.] The aee-derived groups in figure 1 should be replaced with mea-derived groups.
Corrected drawing sheets in compliance with 37 CFR 1.121(d) are required in reply to the Office action to avoid abandonment of the application. Any amended replacement drawing sheet should include all of the figures appearing on the immediate prior version of the sheet, even if only one figure is being amended. The figure or figure number of an amended drawing should not be labeled as “amended.” If a drawing figure is to be canceled, the appropriate figure must be removed from the replacement sheet, and where necessary, the remaining figures must be renumbered and appropriate changes made to the brief description of the several views of the drawings for consistency. Additional replacement sheets may be necessary to show the renumbering of the remaining figures. Each drawing sheet submitted after the filing date of an application must be labeled in the top margin as either “Replacement Sheet” or “New Sheet” pursuant to 37 CFR 1.121(d). If the changes are not accepted by the examiner, the applicant will be notified and informed of any required corrective action in the next Office action. The objection to the drawings will not be held in abeyance.
Specification
The disclosure is objected to because of the following informalities:
The instant specification describes several example syntheses which include a Fischer esterification step between PEG, DPA and PA. The examples indicate that 0.15 equivalents of PA are utilized. This is not consistent with the mass of PA utilized, relative to the mass of DPA, nor is it consistent with the structures of the products shown in the instant figures. Based on the molecular weight of PA and the amounts utilized, the equivalents of PA in the instant examples should be corrected, where appropriate, from 0.15 eq to 1.15 eq.
Additionally, the use of commas and periods in numbers throughout the specification must be corrected. A period must be used as decimal marker to separate an integer from its fractional part (e.g., 0,85 must be corrected to 0.85). A comma may be used, if desired, to separate thousands (e.g., “one thousand” could be shown as 1000 or 1,000 or 1,000.00; “one thousand” should not be written as 1.000 or 1.000,00). Appropriate correction is required.
Claim Objections
Claims 27-29 are objected to because of the following informalities:
In the second line of the definition of “Rp” in claim 27, the term “alkyleneoxy” means a divalent group and should be corrected to monovalent terminology (if a group with unsaturation is intended, an appropriate correction would be “alkenyloxy”).
Note that throughout the claims, there are Markush groups (similar to the first two lines of the definition of Rp in claim 27) which include terms meaning a saturated monovalent aliphatic group or a saturated monovalent group containing -O- (e.g., “alkyl or alkoxy group…”) followed by terms meaning an unsaturated monovalent aliphatic group or a saturated divalent group containing -O- (e.g., “alkenyl or alkyleneoxy group…”) Applicant is advised that the term “alkylene” means a divalent group which is saturated (no double bonds). In contrast, the term “alkenyl” means a monovalent group which contains C=C unsaturation. Applicant should review the claims and, where appropriate, change terms which contain *alkylen* to terms which contain *alken* if a group containing unsaturation (rather than a divalent saturated group) was intended.
Additionally, in claim 27 (see p 4) there are calculations defining the x and y subscripts. In the formulas on p 3, the subscripts are not italicized, yet in the calculations on p 4, the subscripts are italicized. The claims should be amended for consistency, such that the subscripts are either always italicized or always not italicized.
Appropriate correction is required.
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 27-29 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.
The scope of claim 27 is unclear for several reasons, as set forth below:
A. The claim recites that x1, x2 and xp are from 0 to 1 and are not together zero (last line on p 3). However, the claim encompasses compounds wherein Rp is not a group which contains xp (e.g., wherein Rp is H). It is not clear how the requirement in the last line on p 3 can be satisfied if there is no xp in the monomer of formula (I). Applicant may wish to consider amending the claim to recite a first limitation which applies only when Rp is a group which contains xp and a second limitation which applies only when Rp is a group which does not contain xp.
B. On p 4, claim 27 recites equations defining x and y subscripts in terms of calculations based on “the number of aminoalcohol” and “the number of amines.” However, there is no recitation of any aminoalcohol, or any amine, or any “number” thereof prior to the recited calculations. Because the terms in the equations lack antecedent basis, it is not clear what values should be used to perform the recited calculations.
C. The claim defines the “x” subscripts as being “from 0 to 1” and defines the “y” subscripts as being 1-x. It is not clear how the recited subscript ranges could encompass the species which are intended to be recited.
To illustrate: instant example 1 has some end groups with structure derived from the reaction of the OH of PEG with PA (phloretic acid, which has one phenolic group) and some end groups with structure derived from the reaction of the OH of PEG with DPA (diphenolic acid, which has two phenolic groups). In a “PA” end group, there is only one phenolic group, which means only one benzoxazine ring can form; in a “DPA” end group, there are two phenolic groups, which means two benzoxazine rings can form. The example 1 monomer has some benzoxazine rings formed from reaction of a phenolic group (of DPA or PA) with monoethanolamine (“mea,” subscripted x) and some benzoxazine rings formed from reaction of a phenolic group (of DPA or PA) with furfurylamine (“fa,” subscripted y). The process described in instant example 1 must produce a mixture of compounds having different types of end group structures derived from PA and DPA. The mixture must include each of the following types of end group structures:
An EG with only one benzoxazine ring, derived from reaction of a PA phenolic group and mea [this EG would have a structure according to instant R1 or R2 wherein there is no structure according to the group subscripted “y;” therefore in this EG, x must be 1 because y must be 0],
An EG with only one benzoxazine ring, derived from reaction of a PA phenolic group and fa [this EG would have a structure according to instant R1 or R2 wherein there is no structure according to the group subscripted “x;” therefore in this EG, y must be 1 because x must be 0],
An EG with two benzoxazine rings derived from reaction of both DPA phenolic groups with mea [this EG would have a structure according to instant R1 or R2 wherein there are two groups subscripted “x”, and therefore “x” must be 2. However, x is only permitted to be from 0 to 1, and therefore a compound having this type of EG structure must not be encompassed by claim 27],
An EG with two benzoxazine rings derived from reaction of both DPA phenolic groups with fa [this EG would have a structure according to instant R1 or R2 wherein there are two groups subscripted “y”, and therefore “y” must be 2. However, y must only be from 0 to 1, and therefore a compound having this EG structure must not be encompassed by claim 27],
An EG with two benzoxazine rings: a first ring which is derived from the reaction of a first DPA phenolic group with mea, and a second ring which is derived from the reaction of a second DPA phenolic group with fa [this EG would have a structure according to instant R1 or R2 wherein there is one group subscripted “x” (derived from mea) and one group subscripted “y” (derived from fa). However, “x” is required to be from 0 to 1, and “y” must be equal to 1-x. Because “x” and “y” cannot simultaneously be 1, a compound having this EG structure would not be encompassed by claim 27].
Considering the instant examples, Applicant must intend the structural formulas in the independent claim to encompass compounds wherein an end group has two benzoxazine rings, such as an end group having structure derived from DPA as in the instant examples. It is unclear, however, how the ranges defined for the instant “x” and “y” subscripts could permit an end group which has two “x” groups, two “y” groups, or one “x” group and one “y” group.
D. Claim 27 defines R1’ and R2’ using divalent terminology (see paragraph bridging pp 4-5) and defines Rp’ using trivalent terminology (see first full paragraph on p 5). This doesn’t make sense, because the valency of each of these linking moieties depends on how many total “x” subscripted and “y” subscripted groups are present. For example, for a monomer formed from PEG, DPA and PA, as in instant example 1, some R1’ and R2’ moieties are trivalent (those formed from reaction of PEG with DPA) and some are divalent (those formed from reaction of PEG with PA). As another example, for a monomer formed from reaction of glycerol with 4-hydroxybenzoic acid, as in instant example 9, R1’, R2’ and Rp’ are all divalent linking moieties.
E. The definition of Rp” (p 5, second full paragraph) includes “alkynyl” which is a monovalent term. This doesn’t make sense given that Rp” is divalent.
F. The definition of R*** (first full paragraph on p 6) includes a recitation of a “O-linear…alkyl group.” The meaning of an O-linear alkyl group is not clear. Additionally, the portion of the R*** definition beginning with “…and further includes a linear or branched C1-15 alkyl group…” and ending at the end of the claim is unclear. It is not clear whether a group which is listed among those “further included” must be present as an R*** substituent, or, whether the “further included” groups are part of the same Markush group as H, OH and C1-6 alkyl group (such that none of the “further included” groups are necessarily required to be an R***, but are “further included” in the list of alternatives). The same issues exist in the definition of R*** in claims 28 and 29.
The scope of dependent claims 28-29 is unclear for the same reasons set forth above, due to their dependency from claim 27.
Additionally, in claim 28:
G. R** is a monovalent group. In the definition recited in claim 28:
It is not clear what structure is implied by -(CH2)n3-O-(CH2)n4. The group must not terminate in -CH2 group, yet no further terminating structure is identified.
It is not clear what structure is meant by S-(CH2)n3-CH-(CH3)2. If the two (CH3) groups are meant to be linked to the same C as in the CH group, then the dash between CH and (CH3)2 should be deleted.
It is not clear what structure is meant by S-(CH2)n3-(CHZ)n4-(CH3)2. Two methyl groups cannot be linked together as required by -(CH3)2, nor could two methyl groups be attached to the adjacent (CHZ) carbon, as the tetravalency of the (CHZ) carbon would be exceeded.
It is not clear what structure is meant by S-(CHZ)n4-[(CH2)n3-(CH3)]2. It appears the tetravalency of a CHZ carbon would be exceeded in the formula as written.
Additionally, in claim 29:
H. In the definition of R*, it is not clear what is meant by a “diradical” of the recited groups which are monovalent. R* is a divalent group, and therefore divalent terminology or formulas should be recited for clarity.
I. In the definition of R**, it is not clear whether “phenyl” in the last line is intended to be substituted or unsubstituted in the same manner as the preceding “furan,” or whether the word “and” should appear before “phenyl” rather than at the end of the third line of the definition of R**.
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.
Claim(s) 27-29 is/are rejected under 35 U.S.C. 103 as being unpatentable over Yoshino et al (WO 2020175520; English equivalent US 20220144980 cited herein) in view of Machin et al (Phloretic acid as an alternative to the phenolation of aliphatic hydroxyls for the elaboration of polybenzoxazine, Green Chem., 2017, 19, 5065; copy provided by Applicant).
Yoshino discloses that benzoxazine compounds are cured by action of heat to provide a cured product with excellent physical properties, high heat resistance, low water absorption etc…, such that the benzoxazine compounds are utilized as thermosetting materials in various application [0002].
Yoshino teaches a benzoxazine compound represented by the formula (2):
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In the formula (2), R1a and R1b can be the same or different, and each are (or have) a first polymerizable functional group. Yoshino names several examples of polymerizable functional groups in [0032], including a hydroxy group which may be bonded to the benzoxazine compound via a linking group, such as an alkylene group. (Yoshino fails to specify the number of carbon atoms in an “alkylene” linking group, however, from a generic disclosure of “alkylene,” one having ordinary skill in the art would at least envisage the simplest alkylene group, i.e., -CH2-). When at least one of Yoshino’s R1a or R1b groups is a hydroxy group bonded via -CH2-, the benzoxazine ring has a structure according to instant R1 or R2 wherein x is 1, y is 0, and R* is alkylene.
Instant claim 27 requires R1 and R2 of formula (I) to be different. A compound according to Yoshino’s formula (2) could meet this requirement even if both R1a and R1b are hydroxy groups bonded via -CH2- because Yoshino’s compound further includes R2a, R2b, R3a and R3b groups which are substituents which can be different. A compound having groups R2a and R2b which are different, and/or having groups R3a and R3b which are different, as taught by Yoshino, would have groups according to instant R1 or R2 which are different. Alternatively, Yoshino teaches that R1a and R1b can be different. Therefore, the instant requirement for R1 or R2 to be different can be met by a compound according to Yoshino wherein R1a is hydroxy bonded via -CH2- and wherein R1b is a different polymerizable functional group, e.g., a group having a polymerizable unsaturated carbon-carbon bond [0032], such as vinyl or allyl [0033]. Such a group would have a benzoxazine ring which has a structure according to instant R1 or R2 wherein x is 0, y is 1 and R** is alkenyl.
In Yoshino’s compound according to formula (2), “L” is a linking group [0044]. Yoshino names several different examples of multivalent linking groups, including ether bonds, ester bonds, and multivalent hydrocarbon groups [0030]. However, Yoshino fails to teach a linking group having a structure as shown in instant formula (I).
Machin teaches that polybenzoxazines are a class of thermosets with outstanding properties such as near-zero shrinkage, high char yield, high Tg, low water absorption and excellent electrical/mechanical properties (p 5065, left column). Machin teaches that adding benzoxazine functionalities to polymers results in oligomers which possess properties specific both to benzoxazine (high cross-linking density) and to the polymer backbone (processability, flexibility or film-formation). See p 5065, right column.
Machin discloses using phloretic acid (PA) as a building block to bring phenolic functionalities onto ethylene glycol and polyethylene glycol (PEG), followed by reaction with amine to form benzoxazine end-capped molecules (p 5066, left column). The structure of the phenol-terminated oligomer is shown in Scheme 1 on p 5067:
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The reaction of phenol-terminated oligomer with amine (and paraformaldehyde) is shown in Scheme 2:
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Considering Machin’s disclosure, when forming a benzoxazine compound via reaction of a phenol, an amine and paraformaldehyde (which is the same synthetic method taught by Yoshino, see [0046]), the person having ordinary skill in the art would have been motivated to utilize a phenol-terminated oligomer formed from reaction of ethylene glycol or PEG with phloretic acid (i.e., EG-PA or PEG-PA) in order to provide a benzoxazine compound which possesses the high cross-linking density of a benzoxazine, as well as processability and flexibility properties associated with ethylene glycol or PEG. It would have been obvious to the person having ordinary skill in the art, therefore, to have formed Yoshino’s benzoxazine of formula (2) by utilizing Machin’s EG-PA or PEG-PA as the phenolic reactant, thereby arriving at an ester-containing benzoxazine monomer according to instant formula (I) wherein Rp is H and p is 1 (for EG-PA), 9 or 45 (for PEG400-PA or PEG2000-PA; see Machin scheme 2).
Claim(s) 27-29 is/are rejected under 35 U.S.C. 103 as being unpatentable over Machin et al (Phloretic acid as an alternative to the phenolation of aliphatic hydroxyls for the elaboration of polybenzoxazine, Green Chem., 2017, 19, 5065; copy provided by Applicant) in view of Kiskan et al (Synthesis and characterization of fluid 1,3-benzoxazine monomers and their thermally activated curing, Journal of Polymer Science: Part A: Polymer Chemistry, Vol. 47, 6955–6961 (2009)).
Machin teaches that polybenzoxazines are a class of thermosets with outstanding properties such as near-zero shrinkage, high char yield, high Tg, low water absorption and excellent electrical/mechanical properties (p 5065, left column). Machin teaches that adding benzoxazine functionalities to polymers results in oligomers which possess properties specific both to benzoxazine (high cross-linking density) and to the polymer backbone (processability, flexibility or film-formation). See p 5065, right column.
Machin discloses using phloretic acid (PA) as a building block to bring phenolic functionalities onto ethylene glycol and polyethylene glycol (PEG), followed by reaction with amine to form benzoxazine end-capped molecules (p 5066, left column). The structure of the phenol-terminated oligomer is shown in Scheme 1 on p 5067:
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The reaction of phenol-terminated oligomer with amine (and paraformaldehyde) is shown in Scheme 2:
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As shown above, Machin discloses furfurylamine as the amine reactant, and teaches that furfurylamine is bio-based, resulting in formation of benzoxazine end capped molecules which are almost 100% bio-based (p 5066, left). Machin fails to disclose including an additional amine reactant which contains hydroxyl functionality (i.e., a reactant resulting in structure subscripted x1 and x2 in instant formula (I)).
Kiskan discloses that polybenzoxazines possess a combination of attractive properties, such as nearly zero shrinkage, good thermal stability and chemical resistance. Kiskan discloses that benzoxazine monomers are formed from phenols, primary amines and formaldehyde, and therefore they offer a wide range of molecular design flexibility, allowing tailoring of polybenzoxazine properties (p 6955, introduction). Kiskan teaches bifunctional benzoxazine monomers containing oxyalcohol groups formed by reaction of a bisphenol as a phenolic reactant, 2-(2-aminoethoxy)ethanol as a primary amine, and paraformaldehyde (p 6956, paragraph bridging columns; p 6957, scheme 3). Kiskan attributes a relatively low ring-opening polymerization temperature due to the hydroxyl groups present in the monomer, and, teaches that hydrogen bonding of the hydroxyl groups may cause alignment of the monomers in the liquid state, facilitating polymerization of oxazine ring (p 6955, abstract; p 6960).
Considering Kiskan’s disclosure, when preparing a benzoxazine monomer from phenolic, primary amine and paraformaldehyde reactants, the person having ordinary skill in the art would have been motivated to combine known amine reactants in order to tailor the properties of the final polybenzoxazine. In particular, the person having ordinary skill in the art would have been motivated to form a benzoxazine monomer from primary amines which include a combination of furfurylamine as taught by Machin (in order to increase the bio-based content of the material) and 2-(2-aminoethoxy)ethanol as taught by Kiskan (in order to facilitate hydrogen bonding and monomer alignment, and lower the ring-opening polymerization temperature).
It would have been obvious to the person having ordinary skill in the art, therefore, to have formed benzoxazine monomers from the reaction of phenol-terminated oligomer, primary amine and paraformaldehyde reactants, as taught by Machin, by utilizing a combination of Machin’s furfurylamine and Kiskan’s 2-(2-aminoethoxy)ethanol as the primary amine reactant in order to achieve a desired balance of hydrogen bonding, polymerization temperature and biobased content for a given application, thereby arriving at a monomer according to instant formula (I). [A benzoxazine monomer as taught by Machin prepared utilizing some of Kiskan’s 2-(2-aminoethoxy)ethanol in addition to furfurylamine as primary amine reactants has a structure according to formula (I) wherein Rp is H, p is 1 (for EG-PA), 9 or 45 (for PEG400-PA or PEG2000-PA; see Machin scheme 2), R1 and R2 have structures wherein “x1” is 1 and is a group derived from 2-(2-aminoethoxy)ethanol, wherein “y2“ is 1 and is a group derived from furfurylamine, and wherein y1 and x2 are 0.]
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 27-29 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claim 21 of copending Application No. 18009787 (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other because the ester-containing benzoxazine monomer recited in copending claim 21 has a formula which is encompassed by instant claim 27 (when instant “y” subscripts are 0) when, e.g., there is only one R* group which is not H in the monomer of formula (I) in the copending claim. When only one non-H R* substituent is present in the copending formula, the end groups corresponding to instant R1 and R2 must be different, as required by instant claim 27. This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Claims 27-29 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claim 16 of copending Application No. 18698954 (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other because copending claims recite a benzoxazine monomer which is substantially similar to the instant monomer. The difference between the copending claims and the instant claims is that the copending claims recite an “R” group where the instant claims contain a moiety derived from, e.g., ethylene glycol or propylene glycol or polymers thereof. However, the instant claims permit “p” to be 1. Therefore, the scope of the instant and copending claims overlap at least because the copending claims permit “R” to be C2 ‘alkyl.’ In other words, both the instant and copending claims at least encompass a monomer formed from esterification reaction of ethylene glycol with DPA or PA, followed by Mannich reaction with primary amines (e.g., mea and fa) and paraformaldehyde. This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Claims 27-29 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claim 1 of copending Application No. 19139513 (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other because the copending claims recite a benzoxazine monomer structure which encompasses the instant monomer.
In copending formula (I), “n” can be 2 and “R” can be C2 alkyl; therefore, the moiety subscripted “n” in copending formula (I) corresponds to instant groups R1 and R2, and the C2 alkyl “R” group in copending (I) corresponds to the instant moiety subscripted “p” when “p” is 1. The group “R1” in copending formula (I) corresponds to instant groups subscripted x, while the groups R2 and/or R3 in copending formula (I) correspond to instant groups subscripted “y” (note that the acrylate-containing copending group in R2 can correspond to instant R** because the copending R” in copending R2 can be alkynyl, which results in a group corresponding to instant R** because instant R** can be a substituted alkynyl). This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Claims 27-29 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claim 1 of copending Application No. 19493751 (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other because the copending claims recite a benzoxazine monomer structure which encompasses the instant monomer.
In copending formula (I), “n” can be 2 and “R” can be C2 alkyl; therefore, the moiety subscripted “n” in copending formula (I) corresponds to instant groups R1 and R2, and the C2 alkyl “R” group in copending (I) corresponds to the instant moiety subscripted “p” when “p” is 1. The group “R1” in copending formula (I) corresponds to instant groups subscripted x, while the groups R2 and/or R3 in copending formula (I) correspond to instant groups subscripted “y” (note that the acrylate-containing copending group in R2 can correspond to instant R** because the copending R” in copending R2 can be alkynyl, which results in a group corresponding to instant R** because instant R** can be a substituted alkynyl). This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Conclusion
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/RACHEL KAHN/Primary Examiner, Art Unit 1766
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