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 .
Election/Restrictions
Applicant’s election without traverse of Group 1, claims 1-11 in the reply filed on 5/01/2026 is acknowledged.
Claims 12-17 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to nonelected inventions, there being no allowable generic or linking claim.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)(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) 1-5 and 7-11 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Fukuen et al. (JP 2017160399).
In claim 1, ¶’s 33, 77, 114-151, and examples, Fukuen et al. discloses "a polyphenylene ether powder ... characterized in that ... the volume of the gaps is 4.0%-13% of the total volume", and also indicates that the average particle diameter of said polyphenylene ether powder is at least 50 μm.
In addition, in the examples of Fukuen et al., porous polyphenylene particles comprising 2,6-dimethyl phenol and having voids within the particles are produced.
Regarding claims 7-11, such delimitations of usage merely indicates the usefulness of the compound, and is therefore understood to be a compound for which there is no delimitation of usage.
Thus, the requirements for rejection under 35 U.S.C. 102(a)(1) are met.
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.
Claim(s) 6 is/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 by Fukuen et al. (JP 2017160399).
While Fukuen et al. do not expressly teach the disclosed properties of claim 6, it is reasonable that the polyphenylene ether particles of Fukuen et al. would possess the presently claimed properties since the composition of Fukuen et al. is essentially the same as the claimed composition and the USPTO does not have at its disposal the tools or facilities deemed necessary to make physical determinations of the sort. In any event, an otherwise old composition is not patentable regardless of any new or unexpected properties. In re Fitzgerald et al., 619 F.2d 67, 205 USPQ 594 (CCPA 1980). See MPEP § 2112 - § 2112.02.
Even if assuming that the prior art references do not meet the requirements of 35 U.S.C. 102, it would still have been obvious to one of ordinary skill in the art, at the time the invention was made, to arrive at the same inventive composition because the disclosure of the inventive subject matter appears within the generic disclosure of the prior art.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to KELECHI CHIDI EGWIM whose telephone number is (571)272-1099. The examiner can normally be reached M-Th 9-7.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Robert Jones can be reached at (571) 270-7733. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/KELECHI C EGWIM/Primary Examiner, Art Unit 1762
KCE
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