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 .
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 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.
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, 3, 4, 7, 8, 13, and 16 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Arai et al. (JP 2011-219470, “Arai” a machine translation of which has been provided and is used as the citation copy unless otherwise noted).
Regarding claim 1, Arai teaches a phenylgycidyl ether structure having an epoxy compound having a formula reading on that of claimed [Chem. 1] wherein an epoxy resin may be represented by formula (8) (see pp. 3-4; and see pp. 3-5 of originally filed Japanese application for structures, which are further described herein)
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and wherein the X group may be the following, formula (11) (see pp. 3-4; and see pp. 3-5 of originally filed Japanese application).
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Regarding claims 3 and 4, Arai further teaches the inclusion of a curing agent (see, e.g., [p. 27, curing agent [C], which may be an imidazole compound), and an additional epoxy compound (see p. 25, tri- or higher functional epoxy compound).
Regarding claims 7 and 13, Arai additionally teaches that the resin may be used to create a cured product (e.g., p. 27, pp. 1-5).
Regarding claims 8 and 16, Arai additionally teaches that the curable resin composition may be a one-pack curing type composition (see, e.g., p. 25, Examples pp. 33-40, wherein the resin may be created or used in a single setting).
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 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.
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.
Claim(s) 5-8 and 10-18 is/are rejected under 35 U.S.C. 103 as being unpatentable over Arai.
Regarding claims 5 and 10, Arai additionally teaches that the amount of curing agent may be adjusted so as to modify the mechanical properties of the resultant product and would have been obvious to have modified the amount of curing agent to with the range of from 0.01 to 100 pats by mass per 100 parts by mass of the tri- or higher functional epoxy in order to provide a product having a suitable elastic modulus (see pp. 27-28, 38-40). The Examiner notes 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). Please see MPEP 2144.05.
Regarding claim 6, Arai additionally teaches that the amount of curing agent may be adjusted so as to modify the mechanical properties of the resultant product (p. 27). Arai additionally teaches that the glycidyl type epoxy resin may be on the range of 30 to 70 parts by mass of the total epoxy component (p. 27). It therefore would have been obvious to have modified the amount of curing agent to with the range of from 0.01 to 100 pats by mass per 100 parts by mass of the glycidyl type epoxy resin (p. 27) in order to provide a product having a suitable elastic modulus (see pp. 27-28, 38-40).
Regarding claim 7, Arai additionally teaches that the resin may be used to create a cured product (e.g., p. 27, pp. 1-5).
Regarding claim 8, Arai additionally teaches that the curable resin composition may be a one-pack curing type composition (see, e.g., p. 25, Examples pp. 33-40, wherein the resin may be created or used in a single setting).
Regarding claims 11 and 12, Arai additionally teaches that the amount of curing agent may be adjusted so as to modify the mechanical properties of the resultant product (p. 27). Arai additionally teaches that the glycidyl type epoxy resin may be on the range of 30 to 70 parts by mass of the total epoxy component (p. 27). It therefore would have been obvious to have modified the amount of curing agent to with the range of from 0.01 to 100 pats by mass per 100 parts by mass of the glycidyl type epoxy resin (p. 27) in order to provide a product having a suitable elastic modulus (see pp. 27-28, 38-40).
Regarding claims 13 - 15, Arai additionally teaches that the resin may be used to create a cured product (e.g., p. 27, pp. 1-5).
Regarding claims 16 -18, Arai additionally teaches that the curable resin composition may be a one-pack curing type composition (see, e.g., p. 25, Examples pp. 33-40, wherein the resin may be created or used in a single setting).
Claim(s) 2 and 9 is/are rejected under 35 U.S.C. 103 as being unpatentable over Arai as applied to claim 1, above, and further in view of Ota et al. (WO 01/014710, “Ota” a machine translation of which has been provided and is used as the citation copy unless otherwise noted).
Regarding claim 2, while Arai fails to specifically teach that the aminophenyl based compound comprises a ring having a bridged component (i.e., corresponding to structure a1 as claimed in claim 1). However, such structures are known in the art. For example, in the same field of endeavor of epoxy resin components (pp. 1-3), Ota teaches a structure that reads on the aminophenyl having a bridged ring component (see p. 7, figure I-d, shown below) and that such compounds are known to provide good properties when used in various resin products (see, e.g., pp. 1-3). Therefore, it would have been obvious to the person of ordinary skill in the art to have used a compound having a bridged aromatic structure in the aminophenyl portion of the descried epoxy, such as is shown in the below formula I-d, as such compounds are known to provide good mechanical properties (e.g., Ota, pp. 1-3). Additionally, the simple substitution of one known compound for another that would have provided predictable results (in this case the substitution of a compound having a bridged aromatic structure in the aminophenyl portion of the descried epoxy) would have been obvious to the ordinarily skilled artisan at the time of filing (please see MPEP 2143). Thus the compound of formula (1A) as presently claimed would have been obvious to the skilled artisan at the time of filing.
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Regarding claim 9, Arai further teaches the inclusion of a curing agent (see, e.g., [p. 27, curing agent [C], which may be an imidazole compound), and an additional epoxy compound (see p. 25, tri- or higher functional epoxy compound).
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to ANTHONY J FROST whose telephone number is (571)270-5618. The examiner can normally be reached on Monday to Friday, 8:00am to 4:00pm.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Aaron Austin, can be reached on 571-272-8935. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/ANTHONY J FROST/Primary Examiner, Art Unit 1782
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