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 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 3, 9, 15-20, 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.
Claims 3, 9 and 20, recite “wherein the polymer…is further reacted with an acyl compound…” However, claims 1, and 20 recite that the polymer is reacted with a (meth)acrylic anhydride, which contains two acyl groups already. Thus, it is unclear if the “acyl compound” is a different acyl compound or if the (meth)acrylic anhydride may also meet the acyl compound. For examination purposes, the claims are interpreted to be met by the (meth)acrylic anhydride.
Claims 15-18 are dependent claims which fail to alleviate the issues above.
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, 2, 4, 7, 10, and 13, are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claim 12-22 of copending Application No. 18/683,593 (App. No. 18/683,593).
Although the claims at issue are not identical, they are not patentably distinct from each other because App. No. 18/683,593 teaches each and every component and reads upon the claims in an anticipatory manner.
Regarding claims 1, 2, 4, 7, 10, and 13, App. No. 18/683,593 teaches a method of producing a resin comprising reacting a compound of formula (2)
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(i.e. (meth)acrylic anhydride), with a raw resin having constituent units in group (4)
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, in the presence of a basic compound, (See claims 12-18), wherein the basic compound is a potassium carbonate, rubidium carbonate or cesium carbonate (claim 21), wherein the raw resin has a Mn of 400-4000 and a Mw of 400-16000 (claim 19).
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
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.
Claim(s) 1-3, 7-9, 13, 14, 18, 19, is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by CN 110437439 A to Zhong et al. (hereinafter Zhong).
Regarding claims 1-3, 7-9, 13, 14, 18, 19, Zhong teaches an alkenyl terminate polyphenylene ether having the formula
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. (page 1-2). The above is obtained by washing a double-ended hydroxylpolyphenylene ether having the formula
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, wherein m and n are 0-5, R1-R5 are hydrogens or alkyl groups, with an alkaline aqueous solution, then subjecting the above to an end-capping reaction with an alkylating agent (page 2), wherein the alkaline aqueous solution contains potassium carbonate and the alkaline aqueous solution is used in a mass ratio amount of 1 : (5-100) to double-ended hydroxylpolyphenylene solution (page 4), and the solvent is toluene (Example 1), which meets the claimed aromatic hydrocarbon solvent of claim 8. The above is then mixed with methacrylate anhydride to the double-ended hydroxylpolyphenylene solution in a molar ratio of 1.3:1 (Example 1, page 5-6), which meets the ratio of claim 6. Zhong further teaches the alkaline aqueous solution specifically used is 40 mL of a 2mol/L potassium carbonate solution (Example 2, page 6). The above results in an alkenyl functionality polymer of 1.91, (See Example 1 of Table 1). Zhong also teaches using an alkaline aqueous solution effectively reduces monomer residue which greatly reduces the adverse reaction between the anhydride and residual monomers during the end-capping process, resulting in higher end-capping efficiency. (page 9-10).
Claim Rejections - 35 USC § 103
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 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(s) 1-20, is/are rejected under 35 U.S.C. 103 as being unpatentable over CN 110628013 A to Zhou et al. (hereinafter Zhou).
Regarding claims 1, 2, 4-8, 10-14, Zhou teaches a bifunctional phosphorous-containing polyphenyl ether obtained by reacting a phosphorus-containing diphenol having the formula
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,
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, wherein m and n is 0 to 50, and R1-R4 are hydrogen or alkyl gourps (page 3), with a functional compound (page 3), in the presence of an acid-binding agent wherein the acid-binding agent is preferably potassium carbonate in a molar ratio of acid-binding agent to functional compound of 1:1 to 3:1 (page 4 and 7), resulting in the final formula
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,
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. (page 7). Specifically, in the example 8, a phosphorous-containing dihydroxypolyphenyl ether (hydroxyl content 0.065 mol) in a solvent of toluene, is reacted with methacrylic anhydride (0.0975 mol) (See example 8, page 10), wherein the phosphorous-containing dihydroxypolyphenyl ether has an average molecular weight of 3056, with a hydroxyl group mass of 1.10%, and 1.97 mol of OH per mol of polyphenyl ether, (page 9, Example 4), which correlates to ~1551.3 g/eq OH, and meets the polymer cited in claims 1, 2, 4-6, 8, 10-12, 14.
It would have been obvious to one ordinarily skilled in the art before the effective date of the claimed invention to react example 8 of Zhou in the presence of potassium carbonate because Zhou teaches the reaction with the functional group occurs in the presence of an acid-binding agent wherein the acid-binding agent is preferably potassium carbonate in a molar ratio of acid-binding agent to functional compound of 1:1 to 3:1 (page 4 and 7). (“The selection of a known material based on its suitability for its intended use supported a prima facie obviousness determination.” See MPEP 2144.07).
Regarding claims 3, 9, 15-20, Zhou teaches that the methacrylic anhydride is continuously added by dripping into the reaction mixture. (Example 8). The above methacrylic anhydride also meets the claimed “acyl compound” and as it is further dripped into the reaction, this meets the “further” reaction with an acyl compound.
Claim(s) 1-5, 7, 9-11, 13, 15-16, 18, is/are rejected under 35 U.S.C. 103 as being unpatentable over US 2019/0367647 A1 to Li et al. (hereinafter Li).
Regarding claims 1-5, 7, 9-11, 13, 15-16, 18, Li teaches the chemical equation 4
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, wherein the reaction occurs in the presence of an alkaline catalyst, wherein examples of the alkaline catalyst include potassium carbonate (para 33-34). Specifically, in embodiment 11, the 1 g of PPO bisphenol oligomer III has a Mn of 3845g/mol, a Mw of 5149 g/mol, is reacted with 0.4998 g of methacrylic anhydride with 0.01 g of alkaline catalyst (sodium acetate) in a solution of dimethylacetamide (DMac) (para 58). The above PPO bisphenol oligomer III has 2 OH groups per polymer chain and thus, has a hydroxy value of 1922.5 g/OH eq, which meets claims 4-5.
It would have been obvious to one ordinarily skilled in the art before the effective date of the claimed invention to use potassium carbonate as the alkaline catalyst of embodiment 11 of Li because Li teaches the suitable examples of the alkaline catalyst include potassium carbonate (para 33-34). (“The selection of a known material based on its suitability for its intended use supported a prima facie obviousness determination.” See MPEP 2144.07).
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to HA S NGUYEN whose telephone number is (571)270-7395. The examiner can normally be reached Mon-Fri, Flex schedule 7:30am-4:00pm.
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/HA S NGUYEN/Primary Examiner, Art Unit 1766
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