DETAILED ACTION
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
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 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.
Examiner’s Note
It is noted that all references hereinafter to Applicant’s specification (“present specification”) are to the published application PG Pub. 2025/0101179, unless stated otherwise.
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) 1-9 is/are rejected under 35 U.S.C. 103 as being unpatentable over Sudo et al. (US 2011/0189458, “Sudo”) in view of Furukawa et al. (JP 2003-041001, “Furukawa” a machine translation of which is provided and used as the citation copy unless otherwise noted).
Regarding claims 1 and 2, Sudo teaches a benzoxazine compound having a similar formula to that of presently claimed general formula (1) (see [0020], [0021], formula (I) wherein Y may be hydroxyl, q may be 2, and wherein Z groups are not particularly limited and may include alkylene groups). Sudo differs from the invention of this application in that the linking moiety Z of the benzoxazine does not have an alicyclic structure. However, in the same field of endeavor Furukawa discloses benzoxazine that is a resin starting material similarly to that of Sudo (e.g., Furukawa, pp. 1-3), and teaches that a hydrocarbon ring group is used as the linking group X of benzoxazine in order that preferred characteristics are achieved when forming a resin (see claims, especially claims 1-2, etc.). Furukawa additionally teaches that benzoxazines (examples 1-3, etc.) having, as a linking group, cyclohexyl, cyclopentyl, or specifically a 3,3,5-trimethyleyclohexyl group (see, e.g., Furukawa p. 7 of original foreign document, 14-B, or [0020], wherein the medial group is a 3,3,5-trimethyleyclohexyl group, consistent with the requirements of claim 2) provide improved physical properties when compared to benzoxazines having, as a linking group, the carbonyl, direct bond or 1,1-dimethylmethine employed as a linking group in Sudo (Furukawa, [0016] – [0020], and comparative examples 1-3, etc. of Furukawa). It therefore would have been obvious to the person of ordinary skill in the art at the time of filing to have included linking groups such as a 3,3,5-trimethyleyclohexyl group in order to improve the physical properties of the benzoxazine compound (Furukawa, [0016] – [0020], and comparative examples 1-3, etc. of Furukawa).
Regarding claims 3, 5, and 8 Sudo additionally teaches the composition may comprise various polymerizable compounds in a curable resin (e.g., [0007] – [0014]).
Regarding claim 4, Sudo additionally teaches the content of the benzoxazine compound may be on the range of from, e.g., 10 to 100% by mass (e.g., [0093] – [0096]). The Examiner notes that a composition comprising the above amount of benzoxazine would present that amount under various testing methods including gel permeation chromatography analysis. Further, the Examiner notes that in the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists. In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990). Please see MPEP 2144.05.
Regarding claims 6 and 9, Sudo additionally teaches the resin may include epoxy resins ([0098]).
Regarding claim 7, Sudo additionally teaches that the cured resin may be made into a cured product (e.g., [0002], [0013]).
Pertinent Prior Art
The following constitutes a list of prior art which are not relied upon herein, but are considered pertinent to the claimed invention and/or written description thereof. The prior art are purposely made of record hereinafter to facilitate compact/expedient prosecution, and consideration thereof is respectfully suggested.
Katagiri et al. (US 2010/0210810) discloses a similar benzoxazine composition.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to ANTHONY J FROST whose telephone number is (571)270-5618. The examiner can normally be reached on Monday to Friday, 8:00am to 4:00pm.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Aaron Austin, can be reached on 571-272-8935. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/ANTHONY J FROST/Primary Examiner, Art Unit 1782
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