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 1-12 are pending as amended on 6/13/2023.
Election/Restrictions
Applicant’s election without traverse of Group I, claims 1-7 and 11, and species wherein the polycarbonate is a copolymer of monomer 1-1 and monomer 2-2, in the reply filed on 5/19/2026 is acknowledged.
Claims 8-10 and 12 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected invention, there being no allowable generic or linking claim.
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) 1-7 and 11 is/are rejected under 35 U.S.C. 102(a)(2) as being anticipated by Jung et al (US 2023/0303767).
The applied reference has a common assignee and inventor(s) with the instant application. Based upon the earlier effectively filed date of the reference, it constitutes prior art under 35 U.S.C. 102(a)(2). This rejection under 35 U.S.C. 102(a)(2) might be overcome by: (1) a showing under 37 CFR 1.130(a) that the subject matter disclosed in the reference was obtained directly or indirectly from the inventor or a joint inventor of this application and is thus not prior art in accordance with 35 U.S.C. 102(b)(2)(A); (2) a showing under 37 CFR 1.130(b) of a prior public disclosure under 35 U.S.C. 102(b)(2)(B) if the same invention is not being claimed; or (3) a statement pursuant to 35 U.S.C. 102(b)(2)(C) establishing that, not later than the effective filing date of the claimed invention, the subject matter disclosed in the reference and the claimed invention were either owned by the same person or subject to an obligation of assignment to the same person or subject to a joint research agreement.
As to claims 1, 3 and 11, Jung discloses a resin composition [0029] including a resin formed by polymerizing a compound according to formula 1a and a polycarbonate precursor [0106]. A polycarbonate formed from a compound to Jung’s formula 1a (see [0103]) has a structure according to instant Chemical formula 1. See, e.g., Jung’s example in [0286] wherein a monomer having a structure according to instant monomer 1-1 reacts with diphenyl carbonate to form a polycarbonate resin (polymer 10) which has a structure according to instant Chemical formula I wherein Ar1 and Ar2 are naphthyl, the X groups are O, the Z groups are ethylene, R1 is H, and a and b are each 1:
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.
As to claims 4-7, Jung’s polymer 10 has a molecular weight of 36,100 g/mol, a refractive index of 1.695, a Tg of 120 C, and an Abbe’s number of 14.7 (Table 1), which fall within the claimed ranges.
As to claim 2, instant chemical formula 2 encompasses a unit having a structure according to the units in Jung’s polymer 10 (instant L11 can be an arylene group). Therefore, Jung’s polymer 10 falls within the scope of instant claim 2, wherein at least one unit therein corresponds to instant chemical 1, and at least one unit therein corresponds to instant chemical formula 2.
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 1-7 and 11 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims of copending Application No. 18/023139 (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other.
As to instant claims 1, 2 and 11, the unit recited in copending claim 1 meets instant chemical formula 1, and falls within the scope of instant chemical formula 2, when “L” in the copending claim is a direct bond.
The recitations of instant claim 3 are in copending claims 3-5.
The range recited in instant claim 4 is met by copending claim 6.
The ranges recited in instant claims 5-7 encompass the corresponding ranges recited in copending claims 7, 8 and 17.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Claims 1-7 and 11 rejected on the ground of nonstatutory double patenting as being unpatentable over claims of U.S. Patent No. 12,441,836. Although the claims at issue are not identical, they are not patentably distinct from each other.
A polycarbonate resin encompassed by instant claims 1 and 2 is recited in ‘836 claim 1. The Chemical formula 1 recited in ‘836 claim 1 corresponds to instant chemical formula 1, and the chemical formula 2 recited in ‘836 claim 2 is encompassed by (is a narrower embodiment of) the chemical formula 2 recited in instant claim 2.
The recitations of instant claim 3 are in ‘836 claim 3.
The range recited in instant claim 4 is met by ‘836 claim 5.
The ranges recited in instant claims 5-7 are met by the corresponding ranges recited in ‘836 claims 6-8.
The recitations of instant claim 11 are in ‘836 claim 12.
Claims 1-6 and 11 rejected on the ground of nonstatutory double patenting as being unpatentable over claims of U.S. Patent No. 12,497,484. Although the claims at issue are not identical, they are not patentably distinct from each other.
A polycarbonate resin encompassed by instant claims 1 and 2 is recited in ‘484 claim 1 (wherein La is a direct bond). The Chemical formula 1 recited in ‘484 claim 1 includes a unit (subscripted s) according to instant chemical formula 1, and the chemical formula 2 recited in ‘484 claim 2 includes a unit (subscripted y) encompassed by the chemical formula 2 recited in instant claim 2.
The recitations of instant claim 3 are in ‘484 claim 5.
The range recited in instant claim 4 is met by ‘484 claim 8.
The ranges recited in instant claims 5 and 6 are met by the corresponding ranges recited in ‘484 claims 9 and 10.
The recitations of instant claim 11 are in ‘484 claim 13.
Claims 1-6 and 11 rejected on the ground of nonstatutory double patenting as being unpatentable over claims of U.S. Patent No. 12,516,151. Although the claims at issue are not identical, they are not patentably distinct from each other.
A polycarbonate resin encompassed by instant claims 1-3 is recited in ‘151 claim 1 (wherein La is a direct bond). The Chemical formula 1 recited in ‘151 claim 1 includes a unit (subscripted s) according to instant chemical formula 1, and the chemical formula 2 recited in ‘151 claim 2 includes a unit encompassed by the chemical formula 2 recited in instant claim 2.
The range recited in instant claim 4 is met by ‘151 claim 5.
The ranges recited in instant claims 5 and 6 are met by the corresponding ranges recited in ‘151 claims 6 and 7.
The recitations of instant claim 11 are in ‘151 claim 10.
Conclusion
Jung, cited above, is considered the closest prior art. None of the claims are presently limited to the elected copolymer species. Search and examination have been extended to non-elected species of polycarbonate resins encompassed by the generic claims in order to determine if there is any reference which discloses or suggests the claimed subject matter, and, which is available as prior art under 35 USC 102(a)(1), or, available under 35 USC 102(a)(2) but which does not have a common assignee. None was found. The prior art made of record below and not relied upon to form a rejection is considered pertinent to applicant's disclosure.
Caldwell (US 2799666) discloses polycarbonates formed from a 2,2’-areylenedioxydiethanol
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, wherein “X” can be a phenylene group linked in the 1,4 positions (see col 2, lines 35-50). The oxyethylene groups in Caldwell’s monomer have structures according to instant Z1-X1 and X2-Z2. However, Caldwell fails to disclose a polycarbonate formed from a monomer wherein a phenylene group (X above) is disubstituted with aryl or heteroaryl groups in the 2 and 5 positions, i.e., groups according to instant Ar1 and Ar2 as required by instant chemical formula 1.
A polymer having units derived from hydroquinones which are disubstituted with aryl (phenyl) groups was known in the art:
Khan et al (Synthesis and mesophase characterization of liquid crystalline polyesters with bulky, rigid, lateral substituents, Journal of Polymer Science: Part B: Polymer Physics, Vol. 32,2509-2518(1994)) discloses a polyester formed from 2,5-diphenylhydroquinone:
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However, Khan fails to teach a polycarbonate polymer as presently recited (Khan’s disclosure is drawn to polyesters), and, Khan’s units derived from diphenylhydroquinone differ from the presently recited units because they do not have structure corresponding to instant Z1-X1 or X2-Z2. Therefore, Khan, fails to reasonably suggest a polycarbonate as presently recited. Moreover, given the differences between Khan and Caldwell (polyester vs polycarbonate, as well as the presence of the oxyethylene groups in Caldwell and absence thereof in Khan), the references in combination fail to reasonably a polycarbonate as presently recited.
Sakashita (US 5418315) discloses a copolycarbonate formed from a substituted hydroquinone according to the formula:
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, wherein “n” is permitted to be 2 and R is a hydrocarbon group. Sakashita names 3-phenylhydroquinone as an example of a substituted hydroquinone (col 2, lines 30-61). However, arriving at the presently claimed polycarbonate from Sakashita would require selection of n = 2 from the disclosed range of 0 to 4, would require selection of “phenyl” as R, and, would require para-attachment of the two phenyl R groups. Then, Sakashita would need to be modified to insert groups according to instant Z1-X1 or X2-Z2 (as these groups are not disclosed by Sakashita). The examiner is unaware of prior art which, in combination with Sakashita, would reasonably render obvious the modifications to Sakashita which would be required in order to arrive at the presently claimed subject matter.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to RACHEL KAHN whose telephone number is (571)270-7346. The examiner can normally be reached Monday to Friday, 8-5.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Randy Gulakowski can be reached at 571-272-1302. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/RACHEL KAHN/ Primary Examiner, Art Unit 1766
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