DETAILED ACTION
Claim Rejections - 35 USC § 103
In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis (i.e., changing from AIA to pre-AIA ) for the rejection will not be considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status.
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 are rejected under 35 U.S.C. 103 as being unpatentable over Ito et al. (US 2019/0185626).
Regarding claims 1 and 3: Ito et al. teaches an aromatic polysulfone (abstract) having at its terminal a highly polar functional group (para. 59), which has an acid dissociation constant smaller than that of the carboxyl group (para. 61) or a salt thereof (para. 62). Further, Ito et al. teaches the weight average molecular weight is 9,000-90,000 (para. 98). Each aromatic polysulfone unit has a molecular weight of around 232 g/mol when unsubstituted phenylene is used as Ph1 and Ph2, meaning there are on average 39-388 repeat units of aromatic polysulfone per molecule (9,000/232 to 90,000/232). Since each molecule has two terminal positions, the amount of the functional group is 2 units functional group per 39-388 repeat units of aromatic polysulfone, which is the same as 0.515-5.12 units of the terminal functional group per 100 units of the aromatic polysulfone (2/388x100 to 2/39x100, which overlaps the claimed range. In the case where the claimed ranges overlap or lie inside ranges disclosed by the prior art, a prima facie case of obviousness exists (MPEP 2144.05 I). Before the effective filing date of the claimed invention a person having ordinary skill in the art would have found it obvious to use an overlapping amount of highly polar functional groups and would have been motivated to do so since Ito et al. teaches that the overlapping amount would be sufficient to achieve the disclosed invention.
Regarding claim 2: Ito et al. teaches the repeating units claimed/(S-1) (para. 37) and that the highly polar functional group is at its terminal (para. 59), which would indicate the claimed (Se-2).
Regarding claim 4: Ito et al. teaches a mixed resin of an aromatic polysulfone having the highly polar functional group at the terminal and an aromatic polysulfone not having the functional group at the terminal (para. 64).
Regarding claim 5: Ito et al. teaches filler (para. 145).
Regarding claim 6: Ito et al. teaches a method of producing the aromatic polysulfone comprising reacting an aromatic polysulfone precursor having a halogen atom at a terminus with a compound having the functional group (para. 132, para. 106).
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