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
Applicants election without traverse of group I, claims 1-9, drawn to an epoxy resin in the reply filed on 04/16/2026 is acknowledged.
Applicant’s election without traverse of linker group (L), group (1)(a), also referred to as a divinylbenzene compound in instant claim 2, in the reply filed on 04/16/2026 is acknowledged.
Applicant's election with traverse of the election of end groups (E) in the reply filed on 04/16/2026 is acknowledged. Applicants elect for the end group (2)(b), which corresponds to formulas 2c1, 2c2, 2c5, and 2c6, which are obtained from benzyl halide capping agents.
The traversal is on the ground(s) that the Examiner considered the group (2)b end groups (E) to be obtained from benzyl halide/alcohol compounds and the group (2)c end groups to be obtained from styrenic compounds. The group (2)b end groups, however, can also be formed by styrenic compounds. Formulas 2c5 and 2c6, members of group (2)b elected by Applicant, may be obtained from the styrenic compounds 2d7 and 2d8 disclosed in paragraph [0105] of Applicant's specification; similarly, formulas 2c1 (when R15 = H) and 2c2 (when R16 = H), members of group (2)c, can be obtained from the styrenic compounds 2d3 and 2d4. Therefore, Applicant submits that its election of end group (2)b should, beyond what the Examiner has assigned, further encompass examples 1, 2, and 5-12 and groups obtained from styrenic compounds.”
This traversal is found persuasive and the election of species of end group (E) has been expanded to encompass groups (2)a, (2)b, and (2)c in order to capture the scope of examples 1, 2, and 5-12 and groups obtained from styrenic compounds.
Therefore, the elected end groups (E) are groups (2)a-(2)c, which includes hydrogen and formulas 2c1, 2c2, 2c3, 2c4, 2c5, and 2c6. The end groups that are withdrawn from consideration are groups (2)d-(2)g, which include formulas 4c1, 4c2, 5c1, 5c2, 3c1, and 3c2.
Claim Status
Claims 10-19 are canceled. Claims 1-9 are currently pending.
Specification
The specification is objected to as failing to provide proper antecedent basis for the claimed subject matter. See 37 CFR 1.75(d)(1) and MPEP § 608.01(o). Correction of the following is required: the term monofunctional polymer, which is found in instant claim 2, does not appear in the specification.
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.
Claim 2 is 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 2 recites the limitation "monofunctional polymer" in line 5. There is insufficient antecedent basis for this limitation in the claim. The end groups (E) as recited in instant claim 1 do not appear to be inclusive of any polymeric species. Furthermore, the instant specification describes end group (E) as a monofunctional monomer in [p. 0041]. It is unclear if applicants intended to further limit (E) to a monofunctional polymer or monomer. For the purpose of examination, claim 2 is interpreted at further limiting (E) to a monofunctional monomer.
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.
(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, 4, 7 and 8 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Mori (US 5270403 A).
Mori discloses a resin system comprising an epoxy resin (bisphenol A diglycidyl ether type), a synthetic phenolic resin prepared by Mori, and N-methylimidazole as a curing accelerator [example 1; c. 12, ll. 65-69; c. 14, ll. 1-7].
The phenolic polymer Mori prepares, and subsequently uses in the epoxy resin system, has a number average molecular mass of 990 Da, and a structure of instantly claimed formula 1, wherein the linker group L corresponds to a divinyl benzene compound of claimed formula 2, the end group E corresponds to Hydrogen, and R1 is H [synthesis example 1, c. 10, ll. 10 -45; structure provided below].
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Regarding claim 7; Mori discloses the average number of the polymer repeat units, n, is 3, therefore, there are approximately 5 hydroxyl groups per polymer chain. Considering the molecular mass of the phenolic polymer, the phenolic polymer of synthesis example 1 has a hydroxyl content of 8.6 wt. %.
Regarding claim 8; Mori discloses the polymer of synthesis example 1 was melted by heating it to 100 °C, and therefore has a softening point less than 170 °C [example 1, c. 12, ll. 64-69].
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.
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.
This application currently names joint inventors. In considering patentability of the claims the examiner presumes that the subject matter of the various claims was commonly owned as of the effective filing date of the claimed invention(s) absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and effective filing dates of each claim that was not commonly owned as of the effective filing date of the later invention in order for the examiner to consider the applicability of 35 U.S.C. 102(b)(2)(C) for any potential 35 U.S.C. 102(a)(2) prior art against the later invention.
Claim(s) 2, 5, 6, and 9 is/are rejected under 35 U.S.C. 103 as being unpatentable over Mori (US 5270403 A).
Regarding claims 5 and 6; Mori teaches the synthetic resin, hereinafter referred to as synthetic resin (I), is produced by reacting (A) an aromatic hydrocarbon containing a phenolic hydroxyl group with (B) a compound having at least two ethylenically unsaturated double bonds by means of addition reaction [c. 2, ll. 38-45].
Mori exemplifies the use of phenol as the phenolic hydroxyl group-containing aromatic hydrocarbon (A) to be used for producing synthetic resin (I) [c. 2, ll. 62-69; synthetic example 1]. Mori exemplifies the use of divinyl benzene as aromatic divinyl compound (B) [c. 3, ll. 10-25; synthetic example 1].
Mori teaches compound (B) may be used in combination with a reactive third ingredient. Examples of the third ingredient include aromatic monovinyl compounds such as styrene, methylstyrene, ethylstyrene, monobromostyrene, and the like [c. 3, ll. 25-35].
In light of the general teachings of Mori, it would have been obvious to one having ordinary skill in the art at the time the invention was filed to produce synthetic resin (I) by reacting (A) phenol, (B) divinylbenzene, and a reactive third ingredient, such as ethylstyrene. A skilled artisan would appreciate that a phenolic resin prepared from these reactants would have structure of instantly claimed formula (1), wherein the linker group (L) is a divinyl benzene compound of formula 2, and the end groups (E) correspond to instantly claimed formula(s) 2c3, 2c5, 2c5, or 2c6, wherein R2, R4, and R3 are H; and R16 and R15 are methyl groups. Therefore, Mori teaches phenolic polymers that obviously satisfy instant claims 5 and 6.
Regarding claim 2; Furthermore, Mori teaches, in producing synthetic resin (I), the amount of compound (B) to be used is not particularly limited and an optimum amount thereof should be suitably selected according to aromatic hydrocarbon (A) to be used. Normally, however, compound (B), or compound (B) used in combination with a reactive third ingredient, is used in an amount of generally from 0.3 to 0.9 mol, per mol of aromatic hydrocarbon (A) [c. 3, ll. 38-47]. Mori is silent with respect to the weight ratio of each component in synthetic resin (I). However, a skilled artisan would appreciate that the general teachings of Mori obviously embrace the claimed embodiments, satisfying instant claim 2. For example, if compound (B) is used in combination with a reactive third ingredient at equimolar amounts, wherein the total of (B) and the third ingredient is used at an amount of 0.5 mol per mol of aromatic hydrocarbon (A), embodiments wherein compound (A) is phenol, compound (B) is divinylbenzene, and the reactive third ingredient is ethylstyrene would result in a phenolic polymer comprising 60 wt. % phenol (A), 20 wt. % divinylbenzene (B), and 20 wt. % ethylstyrene (E), which reads over the ranges of instant claim 2.
Regarding claim 9; Mori teaches synthetic resin (I), which is an epoxy resin hardener, may be combined with additional hardener(s), for example, hexamethylenetetramine. This combination can be advantageously used as a foundry binder, grinding wheel binder, binder for glass fibers or carbon fibers, refractory binder, brake lining binder, clutch facing binder, IC potting material, wall covering material for houses or aircraft, heat insulation material, raw material for phenolic foams, and a material for various products including bathtubs, waterproof pans, sink cabinets, corrugated sheets, water storage tanks, and pleasure boats [c. 9, ll. 39-50].
In light of this, it would have been obvious to one having ordinary skill in the art at the time the invention was filed to prepare the resin system of Mori with an amine hardener as Mori teaches the resulting resin systems have advantageous characteristics in certain applications.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to HOLLEY GRACE HESTER whose telephone number is (703)756-5435. The examiner can normally be reached Monday - Friday 9:00AM -5:00PM.
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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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/HOLLEY GRACE HESTER/ Examiner, Art Unit 1766
/RANDY P GULAKOWSKI/ Supervisory Patent Examiner, Art Unit 1766
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