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 1-15 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.
Claim 1’s “n” being 1 would not be “a repeating unit” nor a “polyphenylene oxide”.
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.
Claim 2 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. The claim merely requires the steps be performed in succession. However, each step defined in claim 1 require the previous step to have occurred. It is not seen what hypothetical subject could possibly fall within the bounds of claim 1 but not claim 2. Applicant may cancel the claim(s), amend the claim(s) to place the claim(s) in proper dependent form, or present a sufficient showing that the dependent claim(s) complies with the statutory requirements.
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.
Claims 1-10 rejected under 35 U.S.C. 103 as being unpatentable over JP2004339343 in view of JP56-21007B.
J’343 exemplifies (#2 paragraph 34) conducting a reaction of a mixture of catalyst, dibutylamine, o-cresol, 2,6 dimethylphenol (ie 2,6 xylenol) in toluene. The dibutylamine qualifies as applicant’s secondary amine. The catalyst isn’t specifically identified, but is presumably the preferred catalyst identified at paragraph 18 that includes a copper compound. The weight ratio of o-cresol to 2,6 dimethylphenol is 40:60. This is a mole ratio of:
40g cresol x 1 mol cresol/108g cresol
--------------------------------------------------- = 0.75
60g xylenol x 1 mol xylenol/122g xylenol
The above meets applicant’s step 2.
The polymer is precipitated out and washed with methanol (paragraph 33) which would remove o-cresol from the polymer. This qualifies as applicant’s step 3.
J’343 does not identify the source of the o-cresol and 2,6 dimethylphenol.
J56-21007 produces mixtures of o-cresol and 2,6 dimethylphenol by reacting PhOH with methanol (abstract). Table 3 shows a 40.9:59.1 wt ratio of o-cresol to 2,6 dimethylphenol can be made. This is the approximate wt ratio called for by the cited example of JP2004339343.
It would have been obvious to produce JP2004339343’s o-cresol by any known method and 2,6 dimethylphenol by any known method. J56-21007 provides a convenient route of simultaneously producing both simultaneously at the weight ratio desired by J’343.
It would have been obvious to produce JP2004339343’s starting o-cresol + 2,6 dimethylphenol mixture by the method of J56-21007 which corresponds to applicant’s step (1).
Any argument that JP2004339343 does not provide a homopolymer will not be convincing as JP2004339343’s polymerization method matches that taught by applicant. Either (1) both applicant and JP2004339343 polymers have some comonomer units or (2) JP2004339343 produces a homopolymer (whether recognized by the reference or not).
In regards to applicant’s dependent claims:
JP2004339343’s copper compound may be cupric or cuprous bromide – meeting applicant’s claim 3 and 10.
The amount of copper is 0.001-0.6mol per 100mol of monomer (paragraph 19) or 0.00001-0.006 per mol monomer - meeting applicant’s claim 4.
Applicant’s claims 7 and 8 do not require the presence of the pyridines but merely limit what qualifies as a pyridine in claims 1’s “secondary amine or pyridine” requirement.
The amount of tertiary and secondary amines (paragraph 23) should be 0.1-10 mol per 100 mole of monomer. The amount of diamines (paragraph 22) should be 0.1-10 mol per 100 mole of monomer. Collectively, the total amine content would be 0.2-20mol per 100 mol of monomer or 0.002-0.2 mol amines per mole of monomer – meeting applicant’s claim 9.
Claim 11 rejected under 35 U.S.C. 103 as being unpatentable over JP2004339343 in view of JP56-21007B optionally in further view of Nagaoka 4868276.
JP2004339343 and JP56-21007B apply as explained above.
JP2004339343 (paragraph 33) conducts the polymerization together with “aeration with oxygen” which may also be mixed with nitrogen (paragraph 30) but does not provide a flow rate.
Applicant’s “cc/min” is meaningless without specifying the amount monomer present, volume of reactor etc. Obviously, an air rate of 80-350cc/min for 1 gram of monomer would not be equivalent to an air rate of 80-350cc/min for 1,000 grams of monomer.
In any case, Nagaoka (col 7 line 38) teaches an air rate of 1.5 L/min (ie 1500cc/min) for polymerizing 1222g of 2,6- dimethylphenol. When conducting JP2004339343’s polymerization with ~75g to 425g of monomer, applicant’s 80-350cc/min of air would have been obvious to supply sufficient oxygen to the reaction mixture.
Claim 12 rejected under 35 U.S.C. 103 as being unpatentable over JP2004339343 in view of JP56-21007B in further view of Yashida 6759507.
JP2004339343 and JP56-21007B apply as explained above.
JP2004339343’s polymer is precipitated out and washed with methanol (paragraph 33) which would remove o-cresol from the polymer. JP2004339343 does not teach what is done with the solvent/methanol/water by-product from the precipitation process.
It is known to recover the waste solvent/methanol/water by-product from precipitation of polyphenylene oxide. Yashida (col 1 line 25-27; col 3 line 34-36,45-47,51-55) teaches recovering solvent, methanol etc for re-use.
It would have been obvious to distill JP2004339343’s waste liquid to recover solvent etc for cost savings/environmental reasons. When distilling this waste liquid, o-cresol would also necessarily be separated.
Claim 14 rejected under 35 U.S.C. 103 as being unpatentable over JP2004339343 in view of JP56-21007B in further view of Hay 3432469.
JP2004339343 and JP56-21007B apply as explained above.
JP2004339343 does not perform a second polymerization step to increase the molecular weight of the polyphenylene oxide.
Hay (abstract; example 2) teaches such a two-step technique to achieve higher molecular weights.
It would have been obvious to conduct a second polymerization step subsequent to the first in order to increase molecular weight to the extent desired.
Claims 13 and 15 objected to as being dependent upon a rejected base claim, but would be allowable if rewritten in independent form including all of the limitations of the base claim and any intervening claims.
The references of record do not teach Mw/Mn of claim 13. Nor do the references recognize intentionally recovering o-cresol from the polymerization. Recycling the recovered o-cresol back to step (1) therefore could not have been obvious.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to DAVID J BUTTNER whose telephone number is (571)272-1084. The examiner can normally be reached M-F 9-3pm.
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/DAVID J BUTTNER/Primary Examiner, Art Unit 1765 2/28/26