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 § 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.
Claim 9 rejected under 35 U.S.C. 102(a)(1) as being anticipated by JP2017031245.
The reference exemplifies (#1; paragraph 8) production of copolycarbonates of 50mol% bisphenol A and 50mol% 2,2’ bis(4-hydroxyphenyl)-4-methylpentane. The former is applicant’s formula (2) and the latter is applicant’s formula (8).
The Mv is 13,900g/mol (table 1). Given the molecular weight of each phenol, applicant’s “a” of 1-1,000 is easily met.
The copolycarbonate may be molded into a film (paragraph 60). While the reference does not deposit the film a solution of the copolycarbonate, applicant’s claim is product by process in nature. The same film results whether solution deposited or extruded.
Claim 9 rejected under 35 U.S.C. 102(a)(1) as being anticipated by Yamai 2019/0163119.
Yamai exemplifies (table 1 PC1) production of a copolycarbonate of 50mol% (I), and 50mol% (II-1). (I) corresponds to applicant’s (1) with “X” being oxygen. (II-1) corresponds to applicant’s (8) – see paragraph 24 of the reference. The Mv is 55,000g/mol. Given the molecular weight of each phenol, applicant’s “a” of 1-1,000 is easily met.
The copolycarbonate is dissolved in solvent(s) and formed into a film (paragraph 181,182).
This dried film meets applicant’s claim regardless of what solvent was used as the solvent is eliminated upon drying.
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 1-3 and 7-9 rejected under 35 U.S.C. 103 as being unpatentable over Ogawa 2019/0359847.
Ogawa claims (#1) 0.1-50% polycarbonate in a solvent. The solvent (paragraph 52) may be dimethylcarbonate, ethylmethylcarbonate etc.
The polycarbonate may be made from 2,2-bis(4-hydroxyphenyl)-4-methylpentane which is applicant’s (8).
Although no example meets applicant’s claim, Ogawa clearly suggests each limitation.
In regards to applicant’s dependent claims:
The viscosity of the polycarbonate should be 0.3 -2dl/g (paragraph 48) – meeting applicant’s claim 7.
The polycarbonate solution is coated on steel and dried (paragraph 81) – meeting applicant’s claim 9.
Claims 1-3 and 7-9 rejected under 35 U.S.C. 103 as being unpatentable over Ogawa 2019/0359847 in view of JP2017031245.
Ogawa applies as explained above.
While Ogawa suggests polycarbonates from 2,2-bis(4-hydroxyphenyl)-4-methylpentane, Ogawa does not specifically point out advantages of this monomer.
JP2017031245 teaches such a monomer together with BPA in making polycarbonates has good optical properties and strength.
It would have been obvious to select 2,2-bis(4-hydroxyphenyl)-4-methylpentane along with BPA from Ogawa’s list of possible monomers for making a polycarbonate of good optical properties and strength.
Claims 1-3 and 7-9 rejected under 35 U.S.C. 103 as being unpatentable over Ogawa 2019/0359847 in view of JP2019199558.
Ogawa applies as explained above.
JP2019199558 exemplifies dimethyl carbonate effectively dissolves polycarbonate in example 1.
Thus, JP2019199558 provides further reason to choose dimethyl carbonate from Ogawa’s list of potential solvents.
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 and 8-13 provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-12 of copending Application No. 19-119212 (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other because the copending application also claims electrolyte solutions of polycarbonate in a carbonate solvent (eg #4). The instant claims are broader in the sense that the polycarbonate need not have all three bisphenol monomers of the copending application.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Applicant's arguments filed 4/20/26 have been fully considered but they are not persuasive.
Applicant argues that Ogawa ‘847’s BPC type polycarbonate does not read on the sunset of formula (1) now limited to.
Applicant ignores Ogawa’s broader teachings that include 2,2-bis(4-hydroxyphenyl)-4-methylpentane which provide applicant’s formula (8) units.
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any nonprovisional extension fee (37 CFR 1.17(a)) pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the mailing date of this final action.
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 5/15/26
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