DETAILED ACTION
This is being sent out to correct typographical errors in the Non-Final mailed on 8/26/2026 and explicitly address claims 19 and 20.
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 § 112
The following is a quotation of 35 U.S.C. 112(d):
(d) REFERENCE IN DEPENDENT FORMS.—Subject to subsection (e), a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
The following is a quotation of pre-AIA 35 U.S.C. 112, fourth paragraph:
Subject to the following paragraph [i.e., the fifth paragraph of pre-AIA 35 U.S.C. 112], a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
Claims 12-16 are rejected under 35 U.S.C. 112(d) or pre-AIA 35 U.S.C. 112, 4th paragraph, as being of improper dependent form for failing to further limit the subject matter of the claim upon which it depends, or for failing to include all the limitations of the claim upon which it depends.
Claims 12-16 recite the resin further comprising a polyfunctional maleimide compound. However, claims 12-16 depend from claim 1 which already states the resin comprises a polyfunctional maleimide compound. Therefore, claims 12-16 fail to further limit claim 1.
Applicant may cancel the claim(s), amend the claim(s) to place the claim(s) in proper dependent form, rewrite the claim(s) in independent form, or present a sufficient showing that the dependent claim(s) complies with the statutory requirements.
Claim Rejections - 35 USC § 102
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.
Claim(s) 17-19 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Gouri, Polym Int 50:403-413 (2001).
Gouri teaches a resin (abstract) of diallyl bisphenol A with bis-maleimido phenoxy phenyl propane (Scheme 3) which forms an ene-adduct
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104
812
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(Scheme 3).
This is an allyl containing bisphenol resin having allyl groups and corresponds to formula (I) of claim 17 where T is -C(CH3)2-, R1 is either H,
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42
68
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or
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38
106
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where R2 is derived from a bismaleimide. The ene product of Gouri has the allyl group and maleimide residue in the ortho positions and thus meets claim 18. The structure taught in Gouri meets the structure in claim 19 of
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164
246
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where R3 is
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122
466
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.
Allowable Subject Matter
Claims 1-11 are allowed.
Claims 12-16 would be allowable if rewritten to overcome the rejection(s) under 112 set forth in this Office action and to include all of the limitations of the base claim and any intervening claims.
Claim 20 is 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 1 recites an allyl containing bisphenol resin having a FTIR peak A at 1615-1765 cm-1, a peak B at 1615-1765 cm-1, a peak C at 1155-1265cm-1 where the peak areas have a ratio of A/C + C/B = 1.20 to 1.60. Claims 2-16 depend from claim 1 and includes the same subject matter.
Claim 20 recites an allyl containing bisphenol resin of claim 17 where the ratio of area A254 to the total is 15% or less.
The instant specification provides having the ratios within the claimed ranges and comparative examples CE1-CE7 outside the range. Attention is directed to CE4 and CE5, which are identical to example 1 except of the reaction time of 0.5 and 1 hour instead of 2 hours. Attention is direct to CE2 which reacts for 2 hours, but uses a bisphenol A with two allyls. Thus, the claimed properties are not only dependent on the reactants (as shown by CE2) but also the reaction conditions (CE4 and CE5). Therefore, the claimed properties are not necessarily present and an inherency position would not be proper.
Relevant prior art includes Gouri, Polym Int 50:403-413 (2001), Zahir (US 4,100,140), Kramer (CA 2010907), and Zhang (US 2019/0144632).
Gouri teaches a resin (abstract) of diallyl bisphenol A with bis-maleimido phenoxy phenyl propane (Scheme 3). Gouri does not explicitly recite the FTIR of the products or the peak area ratios. The claimed property is not necessarily present and an inherency position would not be proper.
Zahir teaches reacting polymaleimides with alkenylphenol ethers (abstract) which include diallyl bisphenol A compounds (col. 7). Zahir does not explicitly recite the FTIR of the products or the peak area ratios. The claimed property is not necessarily present and an inherency position would not be proper.
Kramer teaches reacting diallyl bisphenols with bismaleimides (pg. 11). Kramer does not explicitly recite the FTIR of the products or the peak area ratios. The claimed property is not necessarily present and an inherency position would not be proper.
Zhang teaches reacting diallyl bisphenols with bismaleimides (¶ 145-147). Zhang teaches FTIR of the product (Fig. 1). Zhang does not explicitly recite the FTIR of the products or the peak area ratios. The claimed property is not necessarily present and an inherency position would not be proper.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to ROBERT C BOYLE whose telephone number is (571)270-7347. The examiner can normally be reached Monday-Thursday, 10am-4pm.
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/ROBERT C BOYLE/Primary Examiner, Art Unit 1764
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