DETAILED ACTION
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 .
Status of the Claims
The amendment filed on 07/21/2026 has been entered. Claims 1, 3, 11-13 and 19 have been amended and claim 2 has been canceled. Thus, claims 1 and 3-23 are currently pending; claim 11 has been withdrawn from further consideration, and claims 1, 3-10 and 12-23 are under examination.
Withdrawn Rejections
Claim 19 has been amended to obviate the indefinite language and thus the 112(b) rejection has been withdrawn.
Claim 1 has been narrowed to a structure of formula (A1). Wu, Mandle and Nishichi fail to anticipate the amended claim. Thus the 102(a)(1) rejections have been withdrawn. Furthermore, the 103 rejections of the record for the dependent claims have also been withdrawn because Nishichi fails to make the claims obvious.
Claim Objections
Claims 7-8, 10 and 13-23 are newly objected to as being dependent upon a rejected base claim, but would be allowable if rewritten in independent form including all of the limitations of the base claim and any intervening claims.
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.
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.
Claims 1, 3-6, 9 and 12 are newly rejected under 35 U.S.C. 102(a)(1) as being anticipated by Horčic (Horčic, M. et al. “Bent-core dimers with top-to-bottom linkage between central units” RSC Adv., 2018, 8, 22974).
Regarding claim 1, Horčic teaches the following compounds that are species of the claimed formula (A1)
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568
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wherein each corresponding variable is as follows:
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683
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wherein n = 3.
Regarding claim 3, in the above compound, Y1 is represented as follows:
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Y1 is -COO-
a is 0, thus Y2 is absent
Regarding claim 5, the limitation “wherein a ratio of the fluorine-substituted arylcarbonyloxy group to the hydroxy group” is not given patentable weight because in view of claim 1, in which the presence of the hydroxy group is an optional limitation by the recitation “a substituent group or a hydroxy group”.
Regarding claim 6, the number of fluorine atoms in the fluorine-substituted arylcarbonyloxy groups in the compounds is more than 3.
Regarding claim 9, the compounds D3-FF-FF and D4-FF-FF contain 36 fluorine atoms (total mass of fluorine = 684 g/mol) in a total weight of 2588.09 g/mol of the compounds and thus the content of fluorine atoms is about 26.4% by mass.
Regarding claim 12, the limitation “obtained by…” is a product by process claim language as a result of the product obtained. The product by process limitation is not limited to the manipulations of the recited steps for preparing the product, but only to the structure implied by the steps, in this case, only to product. In view of the specification, the product obtained is a compound comprising two or more aromatic rings to which a fluorine-substituted arylcarbonyloxy group is directly bonded, in which formula (A1) is also achieved. See MPEP § 2113:
"[E]ven though product-by-process claims are limited by and defined by the process, determination of patentability is based on the product itself. The patentability of a product does not depend on its method of production. If the product in the product-by-process claim is the same as or obvious from a product of the prior art, the claim is unpatentable even though the prior product was made by a different process." In re Thorpe, 777 F.2d 695, 698, 227 USPQ 964, 966 (Fed. Cir. 1985) (citations omitted) (Claim was directed to a novolac color developer. The process of making the developer was allowed. The difference between the inventive process and the prior art was the addition of metal oxide and carboxylic acid as separate ingredients instead of adding the more expensive pre-reacted metal carboxylate. The product-by-process claim was rejected because the end product, in both the prior art and the allowed process, ends up containing metal carboxylate. The fact that the metal carboxylate is not directly added, but is instead produced in-situ does not change the end product.). Furthermore, "[b]ecause validity is determined based on the requirements of patentability, a patent is invalid if a product made by the process recited in a product-by-process claim is anticipated by or obvious from prior art products, even if those prior art products are made by different processes." Amgen Inc. v. F. Hoffman-La Roche Ltd., 580 F.3d 1340, 1370 n 14, 92 USPQ2d 1289, 1312, n 14 (Fed. Cir. 2009). See also Purdue Pharma v. Epic Pharma, 811 F.3d 1345, 117 USPQ2d 1733 (Fed. Cir. 2016). However, in the context of an infringement analysis, a product-by-process claim is only infringed by a product made by the process recited in the claim. Id. at 1370 ( "a product in the prior art made by a different process can anticipate a product-by-process claim, but an accused product made by a different process cannot infringe a product-by-process claim" ).
Furthermore, because the process step does not appear to impart distinctive structural characteristic to the final product, i.e. a compound of formula (A1), the process step of claim 12 is not given patentable weight. See MPEP § 2113:
The structure implied by the process steps should be considered when assessing the patentability of product-by-process claims over the prior art, especially where the product can only be defined by the process steps by which the product is made, or where the manufacturing process steps would be expected to impart distinctive structural characteristics to the final product. See, e.g., In re Garnero, 412 F.2d 276, 279, 162 USPQ 221, 223 (CCPA 1979) (holding "interbonded by interfusion" to limit structure of the claimed composite and noting that terms such as "welded," "intermixed," "ground in place," "press fitted," and "etched" are capable of construction as structural limitations). See also In re Nordt Dev. Co., 881 F.3d 1371,1375-76, 125 USPQ2d 1817, 1820 (Fed. Cir. 2018)(holding "the specification demonstrates that ‘injected molded’ connotes an integral structure," and discussing several cases since Garnero that held "limitations to convey structure even when they also describe a process of manufacture").
Allowable Subject Matter
The subject matter of claims 7-8, 10 and 13-23 is free of prior art references. The closest prior art reference and its teachings have been set forth above.
Regarding claims 7-8, while Horčic teaches compounds of formula (A1) with fluorine substituted arylcarbonyloxy group/s is represented by
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, the reference fails to teach or suggest fluorine substituted arylcarbonyloxy group/s is represented by the instantly claimed formula (F1-1).
Regarding claims 10 and 13-23, Horčic teaches that the compounds are bent-core liquid crystalline dimers designed by a top-to-bottom connection of bent-core central units by a propylenedioxy linking unit. However, the reference fails to teach the compounds in epoxy curing resin agent as recited in the instant claims.
Furthermore, there is no suggestion in Horčic that motivates an ordinary skilled in the art to modify the teachings of the reference and to reasonably arrive at claims 7-8, 10 and 13-23.
Conclusion
Claims 1, 3-6, 9 and 12 are rejected and no claims are allowed.
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.
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/MEDHANIT W BAHTA/ Primary Examiner, Art Unit 1692
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