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 .
Claims 1-3, 5, 6, 8-14, 16, 17, 19-20, are pending and being examined,
Response to Amendment
The previous rejection of Claims 3, 9, 15-20, under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite is/are withdrawn in light of the Applicant’s amendments.
The previous rejection of Claim(s) 1-20, under 35 U.S.C. 103 as being unpatentable over CN 110628013 A to Zhou et al. (hereinafter Zhou) is/are withdrawn in light of the Applicant’s amendments.
The previous rejection of Claim(s) 1-5, 7, 9-11, 13, 15-16, 18, under 35 U.S.C. 103 as being unpatentable over US 2019/0367647 A1 to Li et al. (hereinafter Li) is/are withdrawn in light of the Applicant’s amendments.
Claim Rejections - 35 USC § 112
The following is a quotation of 35 U.S.C. 112(d):
(d) REFERENCE IN DEPENDENT FORMS.—Subject to subsection (e), a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
The following is a quotation of pre-AIA 35 U.S.C. 112, fourth paragraph:
Subject to the following paragraph [i.e., the fifth paragraph of pre-AIA 35 U.S.C. 112], a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
Claims 10, and 13, are rejected under 35 U.S.C. 112(d) or pre-AIA 35 U.S.C. 112, 4th paragraph, as being of improper dependent form for failing to further limit the subject matter of the claim upon which it depends, or for failing to include all the limitations of the claim upon which it depends.
Claim 10 recites “wherein a number average molecular weight of the polymer having the structure represented by formula (1) is 1,000 to 10,000.” However, claim 1, from which claim 2 depends from, already requires for the Mn of the polymer of formula (1) be in the range of 1,000 to 10,000. Thus, claim 10 fails to further limit claim 2.
Claim 13 recites wherein the polymer having formula (1) further “comprises formula (2) or formula (3)…” However, claim 1, from which claim 2 depends from, already requires for the polymer having formula (1) to further comprises formula (2) or formula (3). Thus, claim 13 fails to further limit claim 2.
Applicant may cancel the claim(s), amend the claim(s) to place the claim(s) in proper dependent form, rewrite the claim(s) in independent form, or present a sufficient showing that the dependent claim(s) complies with the statutory requirements.
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, 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, 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
The text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action.
Claim(s) 1-3, 5, 6, 8-14, 16, 17, 19-20, 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, 5, 6, 8-14, 16, 17, 19-20, 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 0-50, 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 claims 6, 12, 17. 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).
Specifically, in the Examples, the alkenyl terminate polyphenylene ether has the formula
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, (see examples), wherein the sum of m+n is preferably 1-30, (page 2), and the sum of m+n is specifically 21 or 23, and having a molecular weight of 2886.36 or 3126.47 (See Fig. 3, and page 9), which meets the claimed molecular weight. Zhong further teaches the alkenyl terminate polyphenylene ether is end capped by a functionality of 1.9 or greater (See Table 1, page 9), when the molecular weight is 2886.36 g/mol, this correlates to a methyacryl equivalent of 1,519.1 g/eq of methacryl, and an OH equivalent of 1,367.3 g/eq of OH, which meets claim 5.
Response to Arguments
Applicant's arguments filed 07/27/2026 have been fully considered but they are not persuasive in part.
On page 11-12, the Applicant argues that Zhong does not teach the Mn range of 1000-10000. This is not persuasive because, Zhong teaches in the Examples, the alkenyl terminate polyphenylene ether has the formula
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, (see examples), wherein the sum of m+n is preferably 1-30, (page 2), and as shown in Fig. 1, the sum of m+n is specifically 21 or 23, and the polymer has a molecular weight of 2886.36 or 3126.47 (See Fig. 3, and page 9), which meets the claimed molecular weight.
On page 15, the Applicant argues that App. No. 18/683,593 does not teach the (meth)acrylic anhydride. This is not persuasive because a compound of formula (2)
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in claim 12 of App. No. 18/683,593 is a structural formula which encompasses a (meth)acrylic anhydride. For example,
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is used in the Applicant’s examples as the (meth)acrylic anhydride and this is encompassed by formula 2,
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wherein there are two (meth)acrylic groups on both sides of the -O-. Thus, for the above reasons, the Applicant’s arguments are found unpersuasive.
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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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Randy 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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/HA S NGUYEN/Primary Examiner, Art Unit 1766
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