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 .
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.
Election/Restrictions
Applicant’s election without traverse of Group I, claims 1 – 2 and 7 – 11, in the reply filed on 2/4/26 is acknowledged.
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)(2) the claimed invention was described in a patent issued under section 151, or in an application for patent published or deemed published under section 122(b), in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention.
Claim(s) 1 – 2 and 7 - 11are rejected under 35 U.S.C. 102(a)(2) as being anticipated by JP-2016069524 A to Takayuki et al. hereinafter “Takayuki”.
Takayuki is directed to a modified polyhydric hydroxy resin, epoxy resins and cured products made with these materials [0001].
Regarding claim 1, Takayuki teaches the synthesis of a polyvalent hydroxyl resin represented by the following figures [0011].
PNG
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368
645
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Greyscale
Formula I of Takayuki meets the structural limitations of formula (1) where R1 = a (above) and R2 = CH3 (1 carbon hydrocarbon group), R3 = H, R4 = H, p = q = 1 – 2 and n= 1 – 5.
Addressing claim 2, R2 = CH3 (1 carbon hydrocarbon group / methyl group), p = q = 1 – 2.
The polyvalent hydroxyl resin of Takayuki is produced by reacting phenol, boron trifluoride (catalyst) and cyclopentadiene.
As to claim 7, Takayuki discloses that the present invention comprises an epoxy resin and a curing agent where the composition contains the modified polyhydric hydroxy resin a part or all of the curing agent [0045].
Regarding claims 8 – 10, a preamble as intended use does not carry any patentable weight, See MPEP 2111.02. Additionally, since the composition reads on the presently claimed one, it would possess the required material properties. In re Best, 195 USPQ 430 (CCPA 1977). Takayuki teaches that the epoxy resin can be used as encapsulants, resins for circuit boards [0002] and in applications such as lamination, molding, casting and adhesives [0009].
As to claim 11, Takayuki teaches that the compositions are cured by curing the epoxy and polyhydric hydroxy resin [0009].
Conclusion
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PAS 3/6/26
/PETER A SALAMON/Primary Examiner, Art Unit 1759
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