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 .
Election/Restrictions
Applicant's election with traverse of Group I (claims 20-23) in the reply filed on 05/07/2026 is acknowledged. The traversal is on the ground(s) that there is no serious burden placed on the Examiner. This is not found persuasive because the inventions would require a different field of search which would be a serious burden to the Examiner.
The requirement is still deemed proper and is therefore made FINAL.
Claim Rejections - 35 USC § 112
Claims 20-23 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. Independent claim 20, “A resin composition, wherein two or more kinds of polyetherimide resins (A),” the use of the word, “kind” so extends the scope of the expression as to render it objectionably 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.
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 20-23 are rejected under 35 U.S.C. 103 as being unpatentable over WO 2019/168009.
To further advance the prosecution of this invention, HAYASHI et al. (U.S. Publication No. 2020/0377681, hereinafter HAYASHI), which is an English equivalent of WO 2019/168009 will be used in the rejection.
Regarding claims 20-23, HAYASHI teaches a fiber-reinforced thermoplastic resin prepreg comprises a matrix resin comprising polyarylketone resin and a polyetherimide resin, and carbon fiber (Abstract). The polyetherimide resin included in the matrix resin is commercially available polyetherimide resins such as a polyetherimide resin having the structural unit represented by Formula (3) including Ultem 1000 and 1010 produced by SABIC and a polyetherimide resin having the structural represented by Formula (1) including Ultem CRS5011 and Ultem CRS5001 produced by SABIC [0072]. As discussed in the present specification, “Ultem CRS5001” reads on polyetherimide resin (A-1) (p. 19, [0039]) and “Ultem CRS5011” reads on a polyetherimide resin (A-2) (p. 20, [0042]).
The polyetherimide resin represented by Formula (1) and a polyetherimide resin having a structural unit different from represented by Formula (1) are used in combination [0073]. Formula (1) and Formula (3) has the following structures:
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[0025, 0032, and 0074].
The polyetherimide resin having the structural unit represented by Formula (1) has a melt volume rate (MVR; preset temperature of 360oC. load of 5kg) and is 1 cm3/10 minutes to 10 cm3/10 minutes measured according to ISO 1133 [0029-0030].
A proportion of the structural unit represented by Formula (1) in the polyetherimide resin (100% by mass) having the structural unit represented by Formula (1) is 50% by mass to 100% by mass, more preferably 70% by mass to 100% by mass, and particularly preferably 95% by mass to 100% by mass [0075] (which reads in 85 mass% or greater). Note: Formula (1) reads on polyetherimide resins (A) of the present invention.
A shaped article (e.g., film (Example 1; [0091-0092]) obtained by shaping the fiber-reinforced thermoplastic resin prepreg according to any one of 1 to 11 ([0039-0040 and [0088-0089]).
However, HAYASHI does not explicitly teach in Formula (a), m is a number of 5 to 1,500.
Given the present specification teaches “Ultem CRS5001” reads on polyetherimide resin (A-1) (p. 19, [0039]) and “Ultem CRS5011” reads on a polyetherimide resin (A-2) (p. 20, [0042]) which HAYASHI teaches, therefore, it would have been obvious to a person of ordinary skill in the art to have assume the polyetherimide resin (A-1) and (A-2) would intrinsically have m as a number of 5 to 1,500 as claimed. The courts have held that “a compound and all its properties are mutually inseparable,” In re Papesch, 315F.2d 381, 137 USPQ 42, 51 (CCPA 1963). Further, attention is drawn to MPEP 2112.01, which states that “products of identical chemical composition cannot 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,” In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990).
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to DEVE V HALL whose telephone number is (571)270-7738. The examiner can normally be reached M-F, 9 am-5 pm, EST.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Joseph Del Sole can be reached at (571) 272-1130. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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DEVE V. HALL
Primary Examiner
Art Unit 1763
/DEVE V HALL/Primary Examiner, Art Unit 1763
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