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.
3. Claim 9 has been amended and claims 1-13 are pending as amended on 06/29/26.
4. Any rejections and/or objections made in the previous Office action and not repeated below are hereby withdrawn.
5. The text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action.
Priority
This application is a 371 of PCT/CN2020/139307 12/25/2020.
Response to Amendment
7. Applicant's amendment filed on 06/29/26, has been fully considered and entered.
Response to Arguments
8. Applicant's arguments with respect to objection of claims 9 filed on 06/29/26, have been fully considered but are moot in view of amendment. Previous objection has been withdrawn.
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9. Applicant's arguments with respect to rejection of claims 1-8, 10-12 under 35 U.S.C. 102(a)(1) as being anticipated by Yang (WO 2018/107453; for English translation the equivalent US 2020/0079726 applied) and claim 9 under 35 U.S.C. 103 as being unpatentable over Yang in view of Sheats (US 2004/0234717) filed on 06/29/26, have been fully considered but are not persuasive. Applicants have alleged that Yang does not disclose the claimed L and this remain the main issue of applicants remarks. It has been noted that Yang expressly discloses the claimed L. Applicants are suggested to interpret prior arts BMT-2 and BEI-2. Applicants are further suggested to consults prior arts para [0018], and [0022] reproduced here: L represent a divalent group having a repeating
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Accordingly, previous rejections have been maintained.
Applicants arguments regarding double patent rejection has been noted. However, filing of a terminal disclaimer cannot be held in abeyance since that filing "is
necessary for further consideration of the rejection of the claims" MPEP 804 (I) (B) (1).
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 1-3, 5-13 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1, 5-10, 13 of U.S. Patent No. 11,952,462. Although the claims at issue are not identical, they are not patentably distinct from each other because the instant claimed invention and patented claimed inventions are directed to the same curable composition, wherein the patented claims 1, 13 anticipates instant claims 1-2. The instant claims 6-13 are either same as patented claims 5-10 or the composition of patented claims can be used for claimed intended purposes. Regarding instant claims 3, 5, since patented claims discloses same curable compound as instantly claimed, the properties such as viscosity or glass transition temperature would inherently be same as instantly claimed. “Products of identical chemical composition cannot have mutually exclusive properties.” A chemical composition and its properties are inseparable. Therefore, if the prior art teaches the identical chemical structure, the properties applicant discloses and/or claims are necessarily present. See MPEP 2112.01(I) , In re Best, 562 F2d at 1255, 195 USPQ at 433, Titanium Metals Corp v Banner, 778 F2d 775, 227 USPQ 773 (Fed Cir 1985), In re Ludtke, 441 F2d 660, 169 USPQ 563 (CCPA 1971) and Northam Warren Corp v D F Newfield Co, 7 F Supp 773, 22 USPQ 313 (EDNY 1934).
Claim 4 is rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1, 5-10, 13 of U.S. Patent No. 11,952,462 as applied to above, and further in view of Yang (WO 2018/107453; for English translation the equivalent US 2020/0079726 applied)
Regarding instant claim 4, the patented claims are silent about the weight average molecular weight.
However,
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Yang discloses curable composition, for example BMI-2
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which is synthesized from reaction of diamine 2-1 with maleic anhydride (MW 98) by replacing the O of anhydride by amine N at both end of diamine 2-1, wherein the diamine 2-1 has formula
wherein the weight average molecular weight of the diamine 2-1 is 5,500 (para [0186], formula 14, table 1), result in weight average molecular weight of BMI-2 as 5696 (5,500 + 2x98), fall into instant claim range of 1,000 to 10,000.
At the time of invention, it would have been obvious to one of ordinary skill in the art to use the weight average molecular weight of compound disclosed by patented claims over the same range as Yang’s compound, given that both are being used in a similar context for the same purpose, e.g. curable composition to make cured products.
Claims 1-3, 5-13 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-4, 9-18 of U.S. Patent No. 12,545,753. Although the claims at issue are not identical, they are not patentably distinct from each other because the instant claimed invention and patented claimed inventions are directed to the same curable composition, wherein the patented claims 1-4 anticipates instant claims 1-2. The instant claims 6-13 are same as patented claims 9-18. Regarding instant claims 3, 5, since patented claims discloses same curable compound as instantly claimed, the properties such as viscosity or glass transition temperature would inherently be same as instantly claimed. “Products of identical chemical composition cannot have mutually exclusive properties.” A chemical composition and its properties are inseparable. Therefore, if the prior art teaches the identical chemical structure, the properties applicant discloses and/or claims are necessarily present. See MPEP 2112.01(I) , In re Best, 562 F2d at 1255, 195 USPQ at 433, Titanium Metals Corp v Banner, 778 F2d 775, 227 USPQ 773 (Fed Cir 1985), In re Ludtke, 441 F2d 660, 169 USPQ 563 (CCPA 1971) and Northam Warren Corp v D F Newfield Co, 7 F Supp 773, 22 USPQ 313 (EDNY 1934).
Claim 4 is rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-4, 9-18 of U.S. Patent No. 12,545,753 as applied to above, and further in view of Yang (WO 2018/107453; for English translation the equivalent US 2020/0079726 applied)
Regarding instant claim 4, the patented claims are silent about the weight average molecular weight.
However,
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Yang discloses curable composition, for example BMI-2
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which is synthesized from reaction of diamine 2-1 with maleic anhydride (MW 98) by replacing the O of anhydride by amine N at both end of diamine 2-1, wherein the diamine 2-1 has formula
wherein the weight average molecular weight of the diamine 2-1 is 5,500 (para [0186], formula 14, table 1), result in weight average molecular weight of BMI-2 as 5696 (5,500 + 2x98), fall into instant claim range of 1,000 to 10,000.
At the time of invention, it would have been obvious to one of ordinary skill in the art to use the weight average molecular weight of compound disclosed by patented claims over the same range as Yang’s compound, given that both are being used in a similar context for the same purpose, e.g. curable composition to make cured products.
Claims 1-3, 5-13 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 2-4, 15-21 of copending Application No 18/030,720. Although the claims at issue are not identical, they are not patentably distinct from each other because the instant claimed invention and copending claimed inventions are directed to the same curable composition, wherein the copending claims 2-4 anticipates instant claims 1-2, the noted difference is the instant claim 1 require an aromatic rings may have an alkyl in L, while the copending claim 4 discloses Ar¹ to Ar³ in Formula (I) and Formula (II) are identical or different, and each represent a group in which two hydrogen atoms are removed from a structure of an aromatic ring having from 6 to 14 carbons, or a group in which two hydrogen atoms are removed from a structure containing two or more aromatic rings each having from 6 to 14 carbons, the aromatic rings being bonded through a single bond, a linear or branched-chain alkylene group having from 1 to 5 carbons, or a group in which one or more hydrogen atoms of a linear or branched-chain alkylene group having from 1 to 5 carbons are substituted with a halogen atom. The instant claims 6-13 are same as copending claims 5-10, and further the composition of copending claims can be used for any of the claimed intended purposes. Regarding instant claims 3, 5, since copending claims discloses same curable compound as instantly claimed, the properties such as viscosity or glass transition temperature would inherently be same as instantly claimed. “Products of identical chemical composition cannot have mutually exclusive properties.” A chemical composition and its properties are inseparable. Therefore, if the prior art teaches the identical chemical structure, the properties applicant discloses and/or claims are necessarily present. See MPEP 2112.01(I) , In re Best, 562 F2d at 1255, 195 USPQ at 433, Titanium Metals Corp v Banner, 778 F2d 775, 227 USPQ 773 (Fed Cir 1985), In re Ludtke, 441 F2d 660, 169 USPQ 563 (CCPA 1971) and Northam Warren Corp v D F Newfield Co, 7 F Supp 773, 22 USPQ 313 (EDNY 1934).
Claim 4 is rejected on the ground of nonstatutory double patenting as being unpatentable over claims 2-4, 15-21 of copending Application No 18/030,720 as applied to above, and further in view of Yang (WO 2018/107453; for English translation the equivalent US 2020/0079726 applied)
Regarding instant claim 4, the copending claims are silent about the weight average molecular weight.
However,
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Yang discloses curable composition, for example BMI-2
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which is synthesized from reaction of diamine 2-1 with maleic anhydride (MW 98) by replacing the O of anhydride by amine N at both end of diamine 2-1, wherein the diamine 2-1 has formula
wherein the weight average molecular weight of the diamine 2-1 is 5,500 (para [0186], formula 14, table 1), result in weight average molecular weight of BMI-2 as 5696 (5,500 + 2x98), fall into instant claim range of 1,000 to 10,000.
At the time of invention, it would have been obvious to one of ordinary skill in the art to use the weight average molecular weight of compound disclosed by copending claims over the same range as Yang’s compound, given that both are being used in a similar context for the same purpose, e.g. curable composition to make cured products.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
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.
Claims 1-8, 10-12 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Yang (WO 2018/107453; for English translation the equivalent US 2020/0079726 applied).
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Regarding claims 1-2, Yang discloses a curable compound of formula
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, wherein R1 and R2 are identical or different, represented by structures such as
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(para [0018]-0020]; read on Formula (r-1)), wherein D1 and D2 are identical or different, represented by formula
(para [0021]; read on claim 2 structure), wherein L represents the formula
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, wherein Ar1, Ar2, Ar3, X, and Y have same definition as claim 1 (para [0018]-[0022], [0107]). Further, Yang discloses the structure containing 100% of Formula (r-1), for example,
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or
(para [0115], [0177], [0186]; read on a proportion of the group represented by Formula (r-1) to a sum of the group represented by Formula (r-1) and the group represented by Formula (r-2) is 97% or greater), meeting the requirements of claims 1-2.
Regarding claim 3, since Yang discloses same curable compound as instantly claimed, the properties such as viscosity would inherently be same as instantly claimed. “Products of identical chemical composition cannot have mutually exclusive properties.” A chemical composition and its properties are inseparable. Therefore, if the prior art teaches the identical chemical structure, the properties applicant discloses and/or claims are necessarily present. See MPEP 2112.01(I) , In re Best, 562 F2d at 1255, 195 USPQ at 433, Titanium Metals Corp v Banner, 778 F2d 775, 227 USPQ 773 (Fed Cir 1985), In re Ludtke, 441 F2d 660, 169 USPQ 563 (CCPA 1971) and Northam Warren Corp v D F Newfield Co, 7 F Supp 773, 22 USPQ 313 (EDNY 1934).
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Regarding claim 4, Yang discloses BMI-2
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which is synthesized from reaction of diamine 2-1 with maleic anhydride (MW 98) by replacing the O of anhydride by amine N at both end of diamine 2-1, wherein the diamine 2-1 has formula
wherein the weight average molecular weight of the diamine 2-1 is 5,500 (para [0186], formula 14, table 1), result in weight average molecular weight of BMI-2 as 5696 (5,500 + 2x98), fall into instant claim range of 1,000 to 10,000.
Regarding claim 5, Yang discloses glass transition temperature 131 0C (table 4, BMI-2-1), fall into claimed range of 80 to 230 0C.
Regarding claims 6-7, 10-13, Yang includes the features of claim 1 above. Yang further discloses a molded product, laminated plates, composite materials comprising fibers, coating agents (paints), and sealants obtained from the curable compound either in cured or uncured form (para [0145], [0151]).
Regarding claim 8, Yang includes the features of claim 1 above. Yang further discloses a method of curing the curable compound on a glass substrate through heat treatment (para [0232]).
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.
Claim 9 is rejected under 35 U.S.C. 103 as being unpatentable over Yang as applied to claims 1, 8 above, and further in view of Sheats (US 2004/0234717).
Yang includes the features of claims 1, 8 above.
Regarding claim 9, Yang is silent about the method comprising applying a molten material of the curable compound product on a support made of plastic, solidifying the applied material, forming a thin film containing the curable compound product, releasing the formed thin film from the support, laminating the formed thin film on a substrate, and performing heat treatment.
However, Sheats discloses forming a thin film laminate by applying a molten material onto a polymeric substrate (para [0059]-[0062]), solidifying the material to obtain a film, detaching the film from the donor substrate (para [0067]-[0068]), laminating the film to the receptor substrate and heat treating the laminate (para [0068], [0080]) to have good adhesion and excellent mechanical stability (para [0012]).
It would have been obvious to a person of ordinary skill in the art to have used the process of forming the laminate of Sheats in the process of Yang. The rationale to do so would have been motivation provided by of Sheats that to do so would provide a good adhesion and excellent mechanical stability.
Conclusion
THIS ACTION IS MADE FINAL. Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any nonprovisional extension fee (37 CFR 1.17(a)) pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the mailing date of this final action.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to KUMAR R BHUSHAN whose telephone number is (313)446-4807. The examiner can normally be reached 9.00 AM to 5.50 PM (EST).
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, RANDY P 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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/KUMAR R BHUSHAN/Primary Examiner, Art Unit 1766
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