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 .
Claim Objections
Claim 10 is objected to because it is an incomplete sentence. The compounds do not include commas or an “and” before the last compound. Appropriate correction is required.
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.
(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 9 is rejected under 35 U.S.C. 102(a)(1) as being anticipated by Ohara (JP 2001-106761, machine translation).
Ohara discloses a resin composition prepared from a fluorene compound represented by general formula (I)
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(paragraph 0008-0010), e.g.
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(paragraph 0042). The latter compound reads on claimed Chemical Formula 1a when R1 is phenyl, r1 is 1, r2 is 0, L1 an L2 are phenylene, X1-X4 are O, Z1 and Z2 are ethylene, and a and b are 1.
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 of this title, 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.
Claims 1-20 are rejected under 35 U.S.C. 103 as being unpatentable over Ohara (JP 2001-106761, machine translation).
With respect to claims 1-4, 9, 11, 17-20, Ohara discloses a resin composition prepared from a fluorene compound represented by general formula (I) n for P-3
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where R1-R8 can be aryl and X and Y can be oxygen or sulfur (paragraph 0008-0010). An exemplified resin includes P-3 (paragraph 0072)
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. This resin reads on claimed Chemical Formula I (except for R1) for r2 = 0, L1 and L2 are halogen-substituted phenylenes, L is -CO-L’- where L’ is phenylene, X1 and X4 are S, X2 and X3 are O and Z2 are ethylene, and a = b = 1.
P-3 does not include an arylene group at claimed R1, however, Ohara teaches that the resin can be prepared from
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(paragraph 0042). This fluorene compound reads on claimed Chemical Formula 1a when R1 is phenyl, r1 is 1, r2 is 0, L1 an L2 are phenylene, X1-X4 are O, Z1 and Z2 are ethylene, and a and b are 1.
Given that Ohara discloses a resin having substantially the same structure as claimed Chemical Formula 1 and further given that the resin can be prepared by a different fluorene compound such as one having R1 that is phenyl, it would have been obvious to one of ordinary skill in the art to add a phenyl group to one of Ohara’s R1-R8 groups in general formula (II).
With respect to claim 5, Ohara’s
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has X (corresponds to claimed X2 and X4) and Y (corresponds to claimed X1 and X4) can be all oxygen (paragraphs 0008-0010). While not exemplified disclosed in a preferred embodiment, it still would have been obvious to one of ordinary skill in the art to prepare a resin with all claimed X1-X4 that are oxygen.
With respect to claim 6, Ohara does not define the number of repeat units n. Even so, case laws holds that if there is no evidence in the record pointing to any critical significance in a claimed molecular weight then the claims are not patentable over the prior art. In re Hoeschele, 406 F.2d 1403, 160 USPQ 809 (CCPA 1969). Should applicant argue criticality of molecular weight, it will be noted that applicant’s examples do not indicate or suggest a critical molecular weight. Such data has little to no probative value.
Given that Ohara discloses a resin with multiple repeat unit n, it would have been obvious to one of ordinary skill in the art to prepare a resin having claimed molecular weight of 10,000-200,000 g/mol.
With respect to claim 7, Ohara teaches that the molding temperature of 230-350°C is 150°C higher than the glass transition temperature of the resin (paragraph 0087). Therefore, Ohara suggests that the glass transition temperature is 80 to 200°C.
With respect to claim 8, Ohara teaches that the refractive index of the resin is at least 1.60 (paragraph 0090).
With respect to claims 10 and 16, in general formula (I), Ohara discloses that the R1-R8 groups can be hydrogen, halogen, sulfur-containing, alkyl, aryl, nitro, cyano, or carboxyl (paragraph 0032). In
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, R3 is aryl (phenyl) and R1, R2, and R4-R8 are hydrogen.
Ohara does not exemplify a fluorene compound having a naphthalene group, however, it teaches that aryl groups include phenyl and naphthyl (paragraph 0032). While Ohara does not explicitly state that the aryl is phenyl or naphthyl, it teaches that “arylthiol” groups include phenylthiol or naphthylthio and “arylsulfonyl” groups include phenylsulfonyl and naphthylsulfonyl. Therefore, Ohara clearly discloses that the term aryl includes naphthyl.
In view of Ohara’s recognition that phenyl and naphthyl are equivalent and interchangeable as aryl groups, it would have been obvious to one of ordinary skill in the art to substitute phenyl with naphthyl. Case law holds that the mere substitution of an equivalent (something equal in value or meaning, as taught by analogous prior art) is not an act of invention; where equivalency is known to the prior art, the substitution of one equivalent for another is not patentable. See In re Ruff 118 USPQ 343 (CCPA 1958).
With respect to claim 12, the polythioester P-3 is prepared from terephthalic acid chloride (paragraph 0062) which reads on claimed Chemical Formula B when Ra1 and Ra2 are halogen, Ar1 is phenylene, and a1 and a2 are 0.
With respect to claims 13-15, Ohara teaches that the resin is used in a resin composition and molded into articles (paragraph 0078) such as optical lenses (paragraph 0086).
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 1-9 and 11-20 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1, 5-7, 9, and 11-13 of U.S. Patent No. 12,441,836. Although the claims at issue are not identical, they are not patentably distinct from each other because of the reasons given below.
With respect to claims 1-5 and 16-20, claim 1 of US ‘836 includes a polycarbonate resin derived from
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which reads on claimed Chemical Formula 1 with L, X, and Z symbols that are the same. US ‘836 discloses that R3 and R4 are different from each other and can be alkyl or aryl groups and r1 and r2 are independently 1 to 4.
US ‘836 fails to disclose with sufficient specificity a resin comprising claimed Chemical Formula 1 with claimed R1 that is aryl and claimed R2 that is alkyl group.
Even so, given that US ‘836 that the claimed R1 and R2 are permitted in the formula, it would have been obvious to one of ordinary skill in the art to select R1 that is an aryl group.
With respect to claim 6, see claim 5 of US ‘836.
With respect to claim 7, see claim 7 of US ‘836.
With respect to claim 8, see claim 6 of US ‘836.
With respect to claims 9, 11, see claim 9 of US ‘836.
With respect to claim 12, see claim 11 of US ‘836.
With respect to claim 13, see claim 12 of US ‘836.
With respect to claims 14, see claim 13 of US ‘836.
With respect to claim 15, the molded article from claim 13 of US ‘836 is capable of being used as an optical lens.
Claims 1-20 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1 and 6-15 of copending Application No. 18/569,821. Although the claims at issue are not identical, they are not patentably distinct from each other for the following reasons.
With respect to claims 1-5 and 16-20, claim 1 of US appl ‘921 claims a resin comprising
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which reads on claimed Chemical Formula 1 when r is greater than 1. US appl ‘921 discloses that R1 and R2 are different from each other and can be alkyl or aryl groups and r1 and r2 are independently 0 to 4.
US appl ‘821 fails to disclose with sufficient specificity a resin comprising claimed Chemical Formula 1 with claimed R1 that is aryl and claimed R2 that is alkyl group.
Even so, given that US appl ‘821 that the claimed R1 and R2 are permitted in the formula, it would have been obvious to one of ordinary skill in the art to select at least R1 that is an aryl group.
With respect to claim 6, see claim 6 of US appl ‘821.
With respect to claim 7, see claim 8 of US appl ‘821.
With respect to claim 8, see claim 7 of US appl ‘821.
With respect to claims 9 and 10, claims 17 and 18 of US appl ’821 includes fluorene compounds such as
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With respect to claim 11, see claim 10 of US appl ‘821.
With respect to claim 12, see claim 12 of US appl ‘821.
With respect to claims 13 and 14, see claim 13 and 14 of US appl ‘821.
With respect to claim 15, the molded article from claim 14 of US appl ‘821 is capable of being used as an optical lens.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Claims 1-20 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1 and 6-15 of copending Application No. 18/569,429. Although the claims at issue are not identical, they are not patentably distinct from each other for the following reasons.
With respect to claims 1-5 and 16-20, claim 1 of US appl ‘429 claims a resin comprising
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which reads on claimed Chemical Formula 1 when r is greater than 1. US appl ‘429 discloses that R1 and R2 are different from each other and can be alkyl or aryl groups and r1 and r2 are independently 0 to 4.
US appl ‘429 fails to disclose with sufficient specificity a resin comprising claimed Chemical Formula 1 with claimed R1 that is aryl and claimed R2 that is alkyl group.
Even so, given that US appl ‘429 that the claimed R1 and R2 are permitted in the formula, it would have been obvious to one of ordinary skill in the art to select at least R1 that is an aryl group.
With respect to claim 6, see claim 4 of US appl ‘429.
With respect to claim 7, see claim 6 of US appl ‘429.
With respect to claim 8, see claim 5 of US appl ‘429.
With respect to claims 9 and 10, claims 14 and 15 of US appl ’429 includes fluorene compounds such as
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With respect to claim 11, see claim 8 of US appl ‘429.
With respect to claim 12, see claim 10 of US appl ‘429.
With respect to claims 13 and 14, see claim 11 and 12 of US appl ‘429.
With respect to claim 15, the molded article from claim 12 of US appl ‘429 is capable of being used as an optical lens.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Conclusion
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/Vickey Nerangis/
Primary Examiner, Art Unit 1763
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