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 .
DETAILED ACTION
All the references cited in the International Search Report have been considered. None is anticipatory. The most pertinent of these references have been applied below.
Election/Restrictions
The applicant has elected Group I (claims 1-4 and 10-11) without traverse.
This restriction is made FINAL. See previous action for the reasons of applying restriction.
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.
Claim(s) 2 (is)are rejected under 35 U.S.C. 112(b) as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor, or for pre-AIA the applicant regards as the invention.
The formula is illegible and appears to be erroneous regarding the end groups.
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 of this title, 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.
Claim(s) 1-3 and 11 is (are) rejected under 35 U.S.C. 103 as being unpatentable over Fukuhara et al. (JP 2010100696 listed on IDS and ISR).
As to claims 1-4 and 11, Fukuhara (abs., claims, examples) discloses a composition for producing prepreg (7) comprising 5-10 parts of isomers of diaminodiphenylsulfone (embracing 4, 4’- diaminodiphenylsulfone, 23) per 100 parts of multifunctional epoxy (8, 23, preferred aminophenol-type epoxy) as a curing agent (27, such as exemplary glycidylamine-type epoxy resins of tetraglycidyl xylenediamine, out of 10 candidates, 21). The composition can be cured at 120-160 °C (8, 24). The curing agent may be a combination including preferred dicyandiamide and 3-(3,4-dichlorophenyl)-1,1-dimethylurea (27).
Therefore, one having ordinary skill in the art would obviously recognize to prepare the claimed composition by selecting aforementioned tetraglycidyl xylenediamine epoxy (meets the ones of instant claims 1-2), 4, 4’- diaminodiphenylsulfone, and dicyandiamide or 3-(3,4-dichlorophenyl)-1,1-dimethylurea (meets the ones of instant claims 1, 3 and 12), because although many compositions are disclosed in the reference and therefore anticipation does not appear to be present, it has been held that the mere fact that a reference suggests a multitude of possible combinations does not in and of itself make any one of these combinations less obvious (Merck & Co. v. Biocraft Laboratories, 874 F.2d 804, 10 USPQ2d 1843 (Fed. Cir. 1989).
Fukuhara is silent on the intended use of "modifier” of 4, 4’- diaminodiphenylsulfone of claim 1. Case law holds that a recitation of the intended use of the claimed invention must result in a structural difference between the claimed invention and the prior art in order to patentably distinguish the claimed invention from the prior art. If the prior art structure is capable of performing the intended use, then it meets the claim. See MPEP 2111.02, In re Casey, 152 USPQ 235 (CCPA 1967) and In re Otto, 136 USPQ 458,459 (CCPA 1963). In this particular case, no compositional difference between the claimed and disclosed 4, 4’- diaminodiphenylsulfone, and the disclosed 4, 4’- diaminodiphenylsulfone would inherently be capable of performed the claimed intended use.
Claim(s) 1-4 and 11 is (are) rejected under 35 U.S.C. 103(a) as being unpatentable over Fukuhara et al. (JP 2010100696) in view of Fujiwara et al. (JP 2010100696), both listed on IDS and ISR.
Disclosure of Fukuhara is adequately set forth in ¶1 and is incorporated herein by reference.
Fukuhara is silent on the particular curing agent C.
In the same area of endeavor of producing prepregs with excellent heat resistance, compressive strength, and appearance (1-2) comprising cured epoxy with amines, such as dicyandiamide combined with other amines, Fukuhara ((abs., claims, examples, 18, 89) discloses using a commercially available tetraglycidyl xylyllenediamine epoxy, "TETRAD X", the same epoxy used for instant examples ([0159]). Fukuhara (39) discloses adding dicyandiamide as a curing agent to obtain excellent balance of hardenability at low temperatures.
Therefore, as to claims 1-4 and 11, it would have been obvious to one of ordinary skill in the art to have modified the composition disclosed by Fukuhara and selected TETRAD X as the epoxy because of its commercial availability acid and further selected/utilized dicyandiamide as a curing agent in view of Fujiwara, because the resultant composition would yield improvement in excellent balance of hardenability at low temperatures.
The references are silent on the solid content viscosity of claim 4. Accordingly, the examiner recognizes that not all of the claimed effects or physical properties are positively stated by the references. However, the references teach a composition containing the claimed components in the claimed amounts prepared by substantially similar components (components A, B, C, and ratio). Therefore, one of ordinary skill would have a reasonable expectation that the claimed effects and physical properties, i.e. solid content viscosity, would necessarily flow from a composition containing all of the claimed components in the claimed amounts prepared by a substantially similar process. Where the claimed and prior art products are identical or substantially identical in structure or composition, or are produced by identical or substantially identical processes, a prima facie case of either anticipation or obviousness has been established. See In re Best, 562 F.2d 1252, 1255, 195 USPQ 430, 433 (CCPA 1977); In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990); see also MPEP § 2112.01(I)-(II). If it is the applicant’s position that this would not be the case: (1) applicant must provide evidence to support the applicant’s position, and (2) it would be the examiner’s position that the application contains inadequate disclosure on how to obtain the claimed effects or properties with only the claimed components in the claimed amounts by the disclosed or claimed process.
Claim(s) 1-3 and 10-11 is (are) rejected under 35 U.S.C. 103(a) as being unpatentable over Fukuhara et al. (JP 2010100696 listed on IDS and ISR) in view of Ohya et al. (US 5714544).
Disclosure of Fukuhara is adequately set forth in ¶1 and is incorporated herein by reference.
Fukuhara is silent on the claimed xylylene diamines as the epoxy modifier.
In the same area of endeavor of producing prepregs comprising cured epoxy with amines, such as dicyandiamide combined with other amines, Ohya (abs., claims, examples, 5:65-68, 6:5-35) discloses using m-xylylene diamine to cure epoxy at low temperature.
Therefore, as to claims 1-3 and 10-11, it would have been obvious to one of ordinary skill in the art to have modified the process disclosed by Fukuhara and replaced 4, 4’- diaminodiphenylsulfone with m-xylylene diamine in view of Ohya, because the resultant composition would yield lowered curing temperatures for the epoxy.
The claimed intended use is met by the same rationale of ¶1.
Claim(s) 1-4 and 10-11 is (are) rejected under 35 U.S.C. 103(a) as being unpatentable over Fukuhara et al. (JP 2010100696, listed on IDS and ISR) in view of Fujiwara et al. (JP 2010100696 listed on IDS and ISR) and further in view of Ohya et al. (US 5714544).
Disclosure of Fukuhara and Fujiwara is adequately set forth in ¶2 and is incorporated herein by reference.
They are silent on the claimed xylylene diamines as the epoxy modifier.
In the same area of endeavor of producing prepregs comprising cured epoxy with amines, such as dicyandiamide combined with other amines, Ohya (abs., claims, examples, 5:65-68, 6:5-35) discloses using m-xylylene diamine to cure epoxy at low temperature.
Therefore, as to claims 1-4 and 10-11, it would have been obvious to one of ordinary skill in the art to have modified the process disclosed by Fukuhara and Fujiwara and replaced 4, 4’- diaminodiphenylsulfone with m-xylylene diamine in view of Ohya, because the resultant composition would yield lowered curing temperatures for the epoxy.
The claimed intended use is met by the same rationale of ¶1. The claimed solid content viscosity is met by the same rationale of ¶2.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to SHANE FANG whose telephone number is (571)270-7378. The examiner can normally be reached on Mon-Thurs. 8am-6pm. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Randy Gulakowski can be reached on 571.572.1302. Information regarding the status of an application may be obtained from the Patent Application Information Retrieval (PAIR) system. Status information for published applications may be obtained from either Private PAIR or Public PAIR. Status information for unpublished applications is available through Private PAIR only. For more information about the PAIR system, see http://pair-direct.uspto.gov. Should you have questions on access to the Private PAIR system, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative or access to the automated information system, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/SHANE FANG/Primary Examiner, Art Unit 1766
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