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 .
Applicant’s amendment and accompanying remarks filed October 10, 2025 are acknowledged.
The rejection of claims 1-2, 5-6, 9-10 and 16-20 under 35 U.S.C. 102(a)(1) & (a)(2) as being anticipated by Kondo et al., JP 2008-239720 is withdrawn due to Applicant’s argument.
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.
Regarding claim 2, a broad range or limitation together with a narrow range or limitation that falls within the broad range or limitation (in the same claim) may be considered indefinite if the resulting claim does not clearly set forth the metes and bounds of the patent protection desired. See MPEP § 2173.05(c). In the present instance, claim 2 recites the broad recitation of a t-butyl group, and the claim also recites a structure
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wherein R³¹ are each independently a linear alkyl group having 1 to 8 carbons that may be substituted, or a cyclic alkyl structure having 1 to 8 carbons to which two R³¹ are bonded, R³² are each independently an alkylene group having 1 to 8 carbons that may be substituted, b are each independently 0 or 1, and R³³ is a hydrogen atom, an alkyl group having 1 to 8 carbons that may be substituted, or a phenyl group that may be substituted which is the narrower statement of the range/limitation. The claim(s) are considered indefinite because there is a question or doubt as to whether the feature introduced by such narrower language is (a) merely exemplary of the remainder of the claim, and therefore not required, or (b) a required feature of the claims.
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.
Claims 1-2, 8, 10 and 14-17 are rejected under 35 U.S.C. 102(a)(1) as anticipated by or, in the alternative, under 35 U.S.C. 103 as obvious over Sumitomo Chemical, JP S56104961.
Regarding claims 1-2, 10, 14-17, Sumitomo discloses in the reference claims a polyphenylene ether copolymer includes 2,6-dimethylphenol [which represents Applicant’s Formula (1)] present in the amount 99.5 to 85 mol% and 0.5 to 15 mol% of 8-methyl-t-tert-butylphenol [which represents Applicant’s Formula (2)].
Sumitomo teaches the claimed invention but fails to teach a reduced viscosity measured in chloroform solution at a concentration of 0.5 g/dl, at 30 ºC is from 0.03 dL/g to 0.30 d:/g. It is reasonable to presume that a reduced viscosity measured in chloroform solution at a concentration of 0.5 g/dl, at 30 ºC is from 0.03 dL/g to 0.30 d:/g is inherent to Sumitomo. Said presumption is based upon Sumitomo’s disclosure of a polyphenylene ether copolymer includes 2,6-dimethylphenol [which represents Applicant’s Formula (1)] present in the amount 99.5 to 85 mol% and 0.5 to 15 mol% of 8-methyl-t-tert-butylphenol [which represents Applicant’s Formula (2)]. Burden is upon Applicant to prove otherwise. Fitzgerald, In re, 619 F.2d 67, 205 USPQ 594 (CCPA 1980).
Regarding claim 8, the reference claims disclose oxidative polycondensation.
Claims 3-7, 9, 11-13 and 18-20 are objected to as being dependent upon a rejected base claim, but would be allowable if rewritten in independent form including all of the limitations of the base claim and any intervening claims. Applicant claims a polyphenylene ether composition as recited in claim 1. The closest prior art, Sumitomo Chemical, JP S56104961, discloses in the reference claims a polyphenylene ether copolymer includes 2,6-dimethylphenol [which represents Applicant’s Formula (1)] present in the amount 99.5 to 85 mol% and 0.5 to 15 mol% of 8-methyl-t-tert-butylphenol [which represents Applicant’s Formula (2)]. Sumitomo fails to teach or suggest the limitations as required in claims 3-7, 9, 11-13 and 18-20.
Response to Arguments
Applicant’s arguments with respect to the present claims have been considered but are moot because the new ground of rejection does not rely on any reference applied in the prior rejection of record for any teaching or matter specifically challenged in the argument.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to CAMIE S THOMPSON whose telephone number is (571)272-1530. The examiner can normally be reached 8:30 am - 5:30 pm.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Jennifer Boyd, can be reached at 571-272-7783. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/CAMIE S THOMPSON/Primary Examiner, Art Unit 1786
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