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 with traverse of Group I, claims 1-6 and 8 in the reply filed on 02/24/26 is acknowledged. The traversal is on the ground(s) that: 1) Group III claims 9 and 11, drawn to a method of preparing a flame proof vinyl polymer should remain in the Application and 2) that there is unity of invention between Group I and Group III. This is not found persuasive because Group III claims 9 and 11, do in fact remain in the Application, because they have not been canceled. Furthermore, there is in fact NO unity of invention between Group I and Group III, because the special technical feature of Group I and Group III, is known in the art, as shown by the below prior-art rejections.
The requirement is still deemed proper and is therefore made FINAL.
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.
Claims 1-6 and 8 are rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor (or for applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention.
Independent claim 1 is indefinite in regards to the limitation of: “a second monomer which is polymerizable with the first polymer” [Emphasis added]. The sub-limitation “the first polymer” lacks antecedent basis. Instead of “a first polymer” does applicant intend –a first monomer--?
Independent claim 1 is further indefinite in regards to the following limitation: “wherein the first monomer comprises at least one aliphatic double bond and is polymerizable with the second monomer to a reactive flame-proof polymer comprising an aliphatic double bond” [Emphasis added]. What is the relationship of the first and second monomers to the sub-limitation: “a reactive flame-proof polymer comprising an aliphatic double bond”? Is Applicant trying to claim that the first monomer when polymerized with the second monomer, forms “a reactive flame-proof polymer comprising an aliphatic double bond”?
Dependent claim 6 is itself indefinite in regards to the limitation “wherein the first monomer is preferably . . .” [Emphasis added], because the use of the word “preferably” makes the metes and bound of the scope of the claimed invention unclear.
All other claims are also rejected here because they are either directly or indirectly dependent on a rejected claim.
Claim Rejections - 35 USC § 102
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.
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.
(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.
EXAMINATION NOTE:
Although Applicant’s independent claim 1 speak in terms of a first monomer and a second monomer, it should be noted that according to applicant’s specification, some embodiments of the first and/or second monomers would normally be considered to be oligomers or polymers, but are nevertheless considered monomers because they are polymerizable reactive.
Claim(s) 1-6 and 8 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Kelley et al. U.S. Patent Application Publication No.: 2019/0270873 A1.
Kelly et al. discloses a resin composition comprising: styrene maleic anhydride co-polymer (reads on Applicant’s first monomer); at least one epoxy resin (reads on Applicant’s second monomer); at least one cross-linking agent; talc (a known flame retardant); and silica (a known flame retardant), see independent claim 1.
Applicant’s claims are directly anticipated over Kelly et al.’s resin composition set forth in TABLE 4 which comprises (parts by weight): 1) 17.6 parts styrene maleic anhydride SMA (reads on Applicant’s first monomer), 2) 10.3 parts polymer Epoxy resin Bisphenol A (reads on Applicant’s second monomer), 3) 11.1 parts Epoxy resin Brominated Bisphenol A (reads on Applicant’s second monomer), 4) 5.6 parts cross-linking agent Tetrabromobisphenol A, 5) 5.8 parts filler Silated Talc (a known flame retardant), 6) 5.8 parts filler amorphous fused silica (silated) (a known flame retardant), 7) 26.8 parts solvent MEK, 8) 15.2 parts solvent Cyclohexanone, and 8) 0.1 parts catalyst Tetrabuylphosphonium Acid Acetate.
Claim(s) 1-6 and 8 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Kato et al. U.S. Patent Number 5,589,129.
Kato et al discloses a liquid resin composition prepared by mixing an ionic material and/or a chargeable material into a thermosetting or thermoplastic resin is injected into a mold having a predetermined inner shape, and a DC voltage is applied to the liquid resin composition to concentrate the ionic material and/or chargeable material on a desired portion or to distribute the ionic material and/or chargeable material continuously. Thereafter, the resin composition is thermally cured when the resin composition contains the thermosetting resin, or the resin composition is hardened by cooling when the resin composition contains the thermoplastic resin, thereby obtaining a molding having a predetermined shape, see abstract.
Applicant’s claims are deemed to be anticipated over EXAMPLE 9 which discloses in parts by weight the following: 90 parts by weight of a bisphenol A type epoxy resin (Epikote 828, epoxy equivalent: 189, available from Yuka Shell) (reads on Applicant’s second monomer), 10 parts by weight of a brominated epoxy resin (Epicron 152, epoxy equivalent: 360, bromine content: 47%, available from Dainippon Ink & Chemicals, Inc.) (reads on Applicant’s second monomer), 80 parts by weight of a hardener of acid anhydride (methyl tetrahydrophthalic anhydride) (reads on Applicant’s first monomer), 150 parts by weight of a fused silica (Toshiba Ceramics) having an average particle size of 4.5 microns (a known flame retardant) and 0.1 parts by weight of antimony trioxide (a known flame retardant) were uniformly mixed with each other while heating by a mixer and then cooled to 50oC., and 3 parts by weight of a microcapsule type latent catalyst (HX 3742, available from Asahi Chemical Industry Co., Ltd.) were uniformly mixed into the resultant mixture, thereby preparing a resin composition.
Claim(s) 1-6 and 8 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by JP H08248630 (A).
JP H08248630 (A) discloses a photo-via forming photosensitive element which is excellent in dielectric breakdown voltage, heat resistance, and flame resistance, and by which an insulating layer having a large adhesive strength between a conductor and an insulator can be formed. CONSTITUTION: In a photo-via forming photosensitive element in which a first layer of a photosensitive resin composition is formed on the surface of a light transmissive base material, and thereon a second layer of the photosensitive resin composition is formed; the first photosensitive resin composition as essential components is made up of (A) a resin composition consisting of 10 to 90 parts by weight of rubber and 10 to 90 parts by weight of epoxy resin, (B) an aromatic polyazido compound, (C) a thermosetting crosslinking agent, and (D) a filler, and the composition ratios by weight of (A) to (C), and (D) are (A) 100, (B) 1 to 10, (C) 1 to 80, and (D) 5 to 40; and the second photosensitive resin composition as essential components is made up of (1) a resin composition consisting of 20 to 80 parts by weight of bromine included film property providing polymer and 20 to 80 parts by weight of ethylene unsaturated monomer, and (2) a photopolymerization initiator, and the composition ratios by weight of (1) and (2) are (1) 100 and (2) 1 to 10 respectively, see abstract.
Applicant’s claims 1-6 are deemed to be directly anticipated over Synthesis Examples 2-4. As way of illustration only, in Synthesis Example 2, EP100 (a brominated epoxy resin) was dissolved in cyclohexane so that the resin content as about 40 wt.%. Tetrahydrophthalic anhydride was then added. After the polymerization reaction between the brominated epoxy resin and the tetrahydrophthalic anhydride, the resulting polymer was a tetrahydrophthalic acid-modified bromine-containing epoxy resin. Applicant’s claims are anticipated over said composition prior to the polymerization process and after the polymerization process.
Applicant’s dependent claim 8 is itself directly anticipated over Example 1, wherein said tetrahydrophthalic acid-modified bromine-containing epoxy resin is admixed with other components such as Hidilite H-42M, which is a silica filler (a known flame retardant).
Any inquiry concerning this communication or earlier communications from the examiner should be directed to JOSEPH DAVID ANTHONY whose telephone number is (571)272-1117. The examiner can normally be reached M-F: 10:00AM-6:30PM.
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/JOSEPH D ANTHONY/Primary Examiner, Art Unit 1764
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