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 .
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.
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.
Claims 1-20 are rejected under 35 U.S.C. 103 as being obvious over Tian et al. (US 2022/0195109) in view of Ingratta et al. (US 2018/0171189).
The applied reference has a common inventor with the instant application. Based upon the earlier effectively filed date of the reference, it constitutes prior art under 35 U.S.C. 102(a)(2).
This rejection under 35 U.S.C. 103 might be overcome by: (1) a showing under 37 CFR 1.130(a) that the subject matter disclosed in the reference was obtained directly or indirectly from the inventor or a joint inventor of this application and is thus not prior art in accordance with 35 U.S.C.102(b)(2)(A); (2) a showing under 37 CFR 1.130(b) of a prior public disclosure under 35 U.S.C. 102(b)(2)(B); or (3) a statement pursuant to 35 U.S.C. 102(b)(2)(C) establishing that, not later than the effective filing date of the claimed invention, the subject matter disclosed and the claimed invention were either owned by the same person or subject to an obligation of assignment to the same person or subject to a joint research agreement. See generally MPEP § 717.02.
Considering Claim 1-4, 6, 7, 12, 13, and 15: Tian et al. teaches a composition comprising a copolymer of diisopropenyl benzene and divinyl benzene (¶0072) having a solubility in a hydrocarbon solvent at 25 ºC of at least 10 weight percent (¶0074), a glass transition temperature of 50 ºC to 300 ºC (¶0074); and a gelt content of less than 5 weight percent (¶0072).
Tian et al. teaches that the comonomer (i.e. the divinyl benzene) aids the chain growth and step growth process (¶0033), and thus the amount of comonomer would be considered to be a result effective variable. It would have been obvious to a person of ordinary skill in the art to have optimized the ratio of the divinyl benenze and diisopropenyl benzene through routine experimentation, and the motivation to do so would have been, as Tian et al. suggests, to control the chain growth and step growth process.
Tian et al. does not teach adding an anti-scorching agent. However, Ingratta et al. teaches 0.5 weight percent of Irganox 1010 (a hindered phenol) to a polyisoalkenyl arene polymer composition (¶0105). Tian et al. and Ingratta et al. are analogous art as they are concerned with the same field of endeavor, namely polyisoalkenyl arene polymers. It would have been obvious to a person of ordinary skill in the art to have added the hindered phenolic compound of Ingratta et al. to the composition of Tian et al., and the motivation to do so would have been, as Ingratta et al. suggests, to reduce the oxidative degradation of the polymer (¶0105).
The Office realizes that all of the claimed effects or physical properties are not positively stated by the reference(s). However, the reference(s) teaches all of the claimed ingredients, in the claimed amounts, and teaches the composition as being made by a substantially similar process. The original specification does not provide any disclosure on how to obtain the claimed properties outside the components of the composition itself. Therefore, the claimed effects and physical properties, i.e. the reduced solution viscosity, would necessarily arise from a composition with all the claimed ingredients in the claimed amounts. "Products of identical chemical composition can not have mutually exclusive properties." In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990). 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. If it is the applicant’s position that this would not be the case: (1) evidence would need to be provided to support the applicant’s position; and (2) it would be the Office’s position that the application contains inadequate disclosure that there is no teaching enabling a person of ordinary skill in the art to obtain the claimed properties with only the claimed ingredients, absent undue experimentation.
Considering Claim 5: Tian et al. teaches the glass transition temperature as preferably being 70 to 150 ºC (¶0074).
Considering Claims 8-11: The Office realizes that all of the claimed effects or physical properties are not positively stated by the reference(s). However, the reference(s) teaches all of the claimed ingredients, in the claimed amounts, and teaches the composition as being made by a substantially similar process. The original specification does not provide any disclosure on how to obtain the claimed properties outside the components of the composition itself. Therefore, the claimed effects and physical properties, i.e. the gel point, would necessarily arise from a composition with all the claimed ingredients in the claimed amounts. "Products of identical chemical composition can not have mutually exclusive properties." In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990). 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. If it is the applicant’s position that this would not be the case: (1) evidence would need to be provided to support the applicant’s position; and (2) it would be the Office’s position that the application contains inadequate disclosure that there is no teaching enabling a person of ordinary skill in the art to obtain the claimed properties with only the claimed ingredients, absent undue experimentation.
Considering Claim 14: Tian et al. teaches number average molecular weight as being 1.2 to 5 kg/mol, the weight average molecular weight as being 3 to 70 kg and the polydispersity as being 3 to 15 (¶0070).
Considering Claims 16, 19, and 20: Tian et al. teaches the cured polymer as having a dielectric constant of 1.5-2.5 and a dissipation factor orf 0.0002 to 0.0007 (¶0098).
The Office realizes that all of the claimed effects or physical properties are not positively stated by the reference(s). However, the reference(s) teaches all of the claimed ingredients, in the claimed amounts, and teaches the composition as being made by a substantially similar process. The original specification does not provide any disclosure on how to obtain the claimed properties outside the components of the composition itself. Therefore, the claimed effects and physical properties, i.e. the gel content, would necessarily arise from a composition with all the claimed ingredients in the claimed amounts. "Products of identical chemical composition can not have mutually exclusive properties." In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990). 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. If it is the applicant’s position that this would not be the case: (1) evidence would need to be provided to support the applicant’s position; and (2) it would be the Office’s position that the application contains inadequate disclosure that there is no teaching enabling a person of ordinary skill in the art to obtain the claimed properties with only the claimed ingredients, absent undue experimentation.
Considering Claim 17: Tian et al. does not teach the curing temperature relative to the curing temperature without an anti-scorching agent. However, the instant claims are product by process claims. "[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). See MPEP § 2113.
Considering Claim 18: The Office realizes that all of the claimed effects or physical properties are not positively stated by the reference(s). However, the reference(s) teaches all of the claimed ingredients, in the claimed amounts, and teaches the composition as being made by a substantially similar process. The original specification does not provide any disclosure on how to obtain the claimed properties outside the components of the composition itself. Therefore, the claimed effects and physical properties, i.e. the swelling content, would necessarily arise from a composition with all the claimed ingredients in the claimed amounts. "Products of identical chemical composition can not have mutually exclusive properties." In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990). 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. If it is the applicant’s position that this would not be the case: (1) evidence would need to be provided to support the applicant’s position; and (2) it would be the Office’s position that the application contains inadequate disclosure that there is no teaching enabling a person of ordinary skill in the art to obtain the claimed properties with only the claimed ingredients, absent undue experimentation.
Claims 1-15 are rejected under 35 U.S.C. 103 as being unpatentable over Ingratta et al. (US 2018/0171189) in view of Takeda et al. (JP 61-228054). Note: A machine translation of JP 61-228054 is being used for JP 61-228054.
Considering Claims 1-7, 12, 13, 15: Ingratta et al. teaches a composition comprising a polymer resin made from a polyisoprenyl arene monomer (¶0042) and Irganox 1010 (a hindered phenol) (¶0105). Ingratta et al. teaches the glass transition temperature as being 50 to 150 ºC (¶0018). Ingratta et al. teaches the resin as being hydrocarbon solvent soluble (¶0023). Ingratta et al. teaches the polymer as being linear with little crosslinking (¶0054-55) and thus the gel content would be below 5% by weight.
Ingratta et al. does not teach the polymer as being a copolymer of an isoalkenyl arene and a divinyl arene. However, Takeda et al. teaches forming a polymer comprising both divinylbenzene and diisopropenylbenzene (Abstract). As the monomers would control the reaction rate and thus the molecular weight of the polymer, a person of ordinary skill in the art would consider the amount of each monomer to be a result effective variable. It would have been obvious to a person of ordinary skill in the art to have used the combination of divinylbenzene and diisopropenyl in the polymer of Ingratta et al., as in Takeda et al., and the motivation to do so would have been, as Takeda et al. suggests, they are functionally equivalent.
The Office realizes that all of the claimed effects or physical properties are not positively stated by the reference(s). However, the reference(s) teaches all of the claimed ingredients, in the claimed amounts, and teaches the composition as being made by a substantially similar process. The original specification does not provide any disclosure on how to obtain the claimed properties outside the components of the composition itself. Therefore, the claimed effects and physical properties, i.e. the reduced solution viscosity, and the solubility as measured by the claim, would necessarily arise from a composition with all the claimed ingredients in the claimed amounts. "Products of identical chemical composition can not have mutually exclusive properties." In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990). 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. If it is the applicant’s position that this would not be the case: (1) evidence would need to be provided to support the applicant’s position; and (2) it would be the Office’s position that the application contains inadequate disclosure that there is no teaching enabling a person of ordinary skill in the art to obtain the claimed properties with only the claimed ingredients, absent undue experimentation.
Considering Claims 8-11: The Office realizes that all of the claimed effects or physical properties are not positively stated by the reference(s). However, the reference(s) teaches all of the claimed ingredients, in the claimed amounts, and teaches the composition as being made by a substantially similar process. The original specification does not provide any disclosure on how to obtain the claimed properties outside the components of the composition itself. Therefore, the claimed effects and physical properties, i.e. the gel point, would necessarily arise from a composition with all the claimed ingredients in the claimed amounts. "Products of identical chemical composition can not have mutually exclusive properties." In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990). 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. If it is the applicant’s position that this would not be the case: (1) evidence would need to be provided to support the applicant’s position; and (2) it would be the Office’s position that the application contains inadequate disclosure that there is no teaching enabling a person of ordinary skill in the art to obtain the claimed properties with only the claimed ingredients, absent undue experimentation.
Considering Claim 14: Ingratta et al. teaches an example with an Mn of 1.15 kg/mol, Mw of 3.28 kg/mol, and a polydispersity of 2.85 (Table 1).
Correspondence
Any inquiry concerning this communication or earlier communications from the examiner should be directed to LIAM J HEINCER whose telephone number is (571)270-3297. The examiner can normally be reached M-F 7:30-5:00.
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/LIAM J HEINCER/Primary Examiner, Art Unit 1767