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
Applicant’s election without traverse of Group II, phenolic resin a-2, epoxy resin A-2, in the reply filed on 7/7/26 is acknowledged.
Claims 1-2, 8-10, 16-20 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected group/species, there being no allowable generic or linking claim. Election was made without traverse in the reply filed on 7/7/26.
It is noted that the epoxy-phenolic resin special technical feature was met by the previously put forth JP2008189709, see the last paragraph of page 6 of the translation attached to this action. The Examiner has grouped together the epoxy resin claims, e.g. 3-7, 11-15 for examination
Priority
The foreign priority is not in English, thus the claims are given an effective date of the filing of the 371: 4/21/22
Information Disclosure Statement
The information disclosure statement (IDS) submitted on 10/10/23 has been considered by the examiner.
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Claim 1 (albeit withdrawn, elected claims depend from it), and its dependents, is rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for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 1 has the limitation “catechol skeleton….and an ortho-xylylene skeleton”, it is unclear how a resin can have 2 skeletons, especially since the backbone is not grafted or branched. This seems better termed “catechol segment”.
Claims 2 (albeit withdrawn), 4, 12, and their dependents, are rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to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.
Each of the above claims has “(In formula (2)….0 to 50)” in parenthesis which renders the claims indefinite.
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.
Claim(s) 3-7, 11-15 is/are rejected under 35 U.S.C. 103 as being unpatentable over Fujinaga JP 2008189708A (English translation provided, JP ref of record).
Fujinaga discloses low melt viscosity phenol novolak resins and epoxy resins using the same (title). Said novolak resin may be of general formula I:
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Therein, R may be the above B2 substituent which can be derived from 1,2 xylylene, and, R1 can be hydroxyl in the ortho position (thus derived from catechol). Page 4 paragraph 2 of the attached translation discloses catechol, and, Page 4 last paragraph discloses 1,2-xylylene, thus embracing the required monomers to obtain the backbone structure of claim 3. See the figure of Column 2, there are 2 phenolic (equivalent to the catechol unit) and 1 benzene unit (equivalent to the o-xylylene), thus meeting the formula of claim 4 wherein p can be 0, however the reference embraces oligomers beyond this.
Though the combination is picked from a list of possible combinations, it has been held that though a specific embodiment is not taught as preferred makes it no less obvious, also, that the mere fact that a reference suggests a multitude of possible combinations does not in and of itself make any one of those combinations less obvious, see Merck v. Biocraft, 10 USPQ2d 1843 (Fed Cir 1985).
The novolak resin can then be epoxidized with epichlorohydrin (last paragraph of page 6) to obtain an epoxy resin that meets claim 3. In light of the picking and choosing from lists to achieve the claimed backbone a prima facie case of obviousness exists over the claim.
Elements above further meet claim 4. The epichlorohydrin is used in amounts of 2-15 times with respect to the hydroxyl equivalent of the phenol resin (last paragraph of page 6). This embraces the exemplified mol ratio of epichlorohydrin to phenolic resin (exemplified in example 3 to be 2 mol phenolic resin to 8 mol epichlorohydrin, and, 3.5 mol phenlic resin to 14 mol epichlorohydrin in Example 4), thus, the epoxy equivalent weight of claim 5 is expected to be embraced by the reference. Therein they higher the equivalent weight the more epoxy groups per chain and the more reactive the resin will be (and vice versa), the amount of epoxidation being a result effective variable that one of ordinary skill would increase/decrease depending on the reactivity desired thereof.
Elements above thusly meet claim 5. The melt viscosity of the novolack resin (without epoxidation) ranges from 100-1000 mPas, which converts to 1-10 dPas (last paragraph of page 2) at 150C, one expects a similar viscosity of the epoxidized resin as well, embracing the requirements of claim 6, alternatively since the epoxy equivalent weight and other composition requirements are met the melt viscosity is deemed to be embraced by the reference. if there is any difference between the above composition and the composition of the instant claims the difference would have been minor and obvious. "Products of identical chemical composition can not have mutually exclusive properties." A chemical composition and its properties are inseparable. Therefore, if the prior art teaches the identical chemical structure, the properties applicant discloses and/or claims are necessarily present. See MPEP 2112.01(I) , In re Best, 562 F2d at 1255, 195 USPQ at 433, Titanium Metals Corp v Banner, 778 F2d 775, 227 USPQ 773 (Fed Cir 1985), In re Ludtke, 441 F2d 660, 169 USPQ 563 (CCPA 1971) and Northam Warren Corp v D F Newfield Co, 7 F Supp 773, 22 USPQ 313 (EDNY 1934).
Elements above meet claims 6 and 7. Elements above further meet claims 11-18.
Claim(s) 3-7, 11-15 is/are rejected under 35 U.S.C. 103 as being unpatentable over Christenson (US 3001972).
Christenson discloses epoxy resins with high heat distortions (title). Said resins are the reaction of a phenol compound such as catechol (Column 2 line 39) and a halogenated benzene such as ortho bis-(chloromethyl)benzene (Column 2 line 66). These two reactants will form the backbone structure of instant claim 3.
Picking this combination of reactants from the list of possible combinations is prima facie obvious. It has been held that though a specific embodiment is not taught as preferred makes it no less obvious, also, that the mere fact that a reference suggests a multitude of possible combinations does not in and of itself make any one of those combinations less obvious, see Merck v. Biocraft, 10 USPQ2d 1843 (Fed Cir 1985).
The resin is further epoxidized by reaction with epichlorohydrin (Column 3 lines 72-73). Therein n may be M/n may be 1 or 0.5, thus embracing wherein there is 1 or 2 n repeats per 1 m, meeting the formula of claim 4. Elements above meet all of the epoxy resin requirements of claims 3 and 4. The amount of epichlorohydrin ranges from 2-20 times equivalency with respect to the hydroxy groups of the novolak resin (Column 4 lines 45-50), as the amount thereof approaches equivalency the chain length of the compound increases and increases the viscosity thereof (Column 4 lines 49-55), thus one can increase or decrease the amount of epichlorohydrin depending on the end viscosity required, rendering the epoxy equivalent range of claim 5 prima facie obvious. See also Example 1 Column 6 line 72 that discloses an epoxy equivalent weight of 204.3 and Column 8 line 35 that discloses an epoxy equivalent weight of 163.
Since the above composition and epoxy equivalents are embraced, the melt viscosity of claim 6 is expected to be embraced by the reference. Elements above meet claim 7. Elements above meet claims 11-18
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.
Claim 1-5, 7-13, 16-20 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1, 4, 6-10 of copending Application No. 18/838326 (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other because claim 1 of ‘326 meets instant claims 1, 2, claim 4 of ‘326 meets instant claims 3-4, 11-12, claim 6 of ‘326 meets instant claims 5, 13, claim 7 of ‘326 meets instant claims 7, 16-18, claim 8 of ‘326 meets instant claims 8, 19, claim 9 of ‘326 meets instant claims 9, 20 and claim 10 of ‘326 meets instant claim 10.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Conclusion
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/ALICIA BLAND/ Primary Examiner, Art Unit 1759
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