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 .
DETAILED ACTION
Claim Rejections - 35 USC § 112
The following is a quotation of 35 U.S.C. 112(b):
(b) CONCLUSION.—The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the inventor or a joint inventor regards as the invention.
The following is a quotation of 35 U.S.C. 112 (pre-AIA ), second paragraph:
The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.
Claims 4 and 5 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.
Claims 4 and 5 are directed to an oligomer obtained be reacting the biomass epoxy resin composition of claim 1 with other reactant reactant(s). The biomass epoxy resin composition of claim 1 already comprise a self-polymerization polymer and thus the recited reaction would at least yield a polymer, not the oligomer, and thus claims are confusing.
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.
Claims 6-9 are rejected under 35 U.S.C. 103 as being unpatentable over Marotta et al. (Green approaches in the synthesis of furan-based diepoxy monomers, RSC Adv., 2018, 8, pages 16330-16335) in view of Lewis et al. (US 4,176,142) and CA 1246272 A (Dec. 6, 1988).
Although the instant claim 6 recites a method of forming biomass epoxy resin composition, the recited reaction sequences would yield a product encompassing a monomeric diglycidyl ether of 2,5-furandicarboxylic acid as evidenced by claim 10 reciting further formation of an oligomer.
Marotta et al. teach a reaction mechanism in the glycidylation of FDCA in Scheme 1. The Scheme 1 teaches a reaction of FDCA and epichlohydrin at 90oC for ring opening and an addition of an alkaline (i.e., NaOH) for ring closing thereof.
The instant invention further recites a reaction time for the ring-opening reaction and presence of a catalyst comprising 0.8-8 parts by weight of triphenyl phosphine and 0.01 to 0.1 parts by weight of 4-methoxyphenol over Marotta et al.
Utilization of the triphenyl phosphine as a catalyst for obtaining the epoxy is known as taught by Lewis et al. (lines 16-25 of col. 7).
Utilization of the 4-methoxyphenol (p-methoxyphenol) as a polymerization inhibitor is also known as taught by CA (lines 3-10, page 14).
Thus, it would have been obvious to one skilled in the art before the effective filing date of invention to utilize the art well known catalyst (i.e., triphenyl phosphine) taught by Lewis et al. and polymerization inhibitor (p-methoxyphenol) taught by CA in Marotta et al. since Marotta et al. teach a monomeric diepoxy requiring the polymerization inhibitor inherently and since the catalyst would be needed for the reaction FDCA and epichlohydrin taught by Marotta et al. absent showing otherwise.
Selection of a known material based on its suitability for its intended use is prima facie obvious, see Sinclair & Carroll Co. v. Interchemical Corp., 325 US 327, 65 USPQ 297 (1945). MPEP 2144.07.
The combination of familiar elements according to known methods is likely to be obvious when it does no more than yield predictable results. KSR Co. v. Teleflex Inc., 550 U.S. 398, 416 (2007). MPEP 2141.
Regarding the recited reaction time for the ring-opening reaction and 0.8-8 parts by weight of triphenyl phosphine and 0.01 to 0.1 parts by weight of 4-methoxyphenol: When patentability is predicated upon a change in a condition of a prior art composition, such as a change in concentration or in temperature, or both, the burden is on Applicant to establish with objective evidence that the change is critical, i.e., it leads to a new unexpected result. It is not inventive to discover the optimum or workable ranges by routine experimentation when the general conditions of a claim are disclosed in the prior art. See In re Woodruff, 919 F.2d 1575, 1578 (Fed. Cir. 1990); In re Aller, 220 F.2d 454, 456 (CCPA 1955). MPEP 2144.05.
Thus, one ordinary skilled in the art would have been able to find the recited reaction time for the ring-opening reaction and 0.8-8 parts by weight of triphenyl phosphine and 0.01 to 0.1 parts by weight of 4-methoxyphenol without undue experimentation and since utilization of a small amount of the catalyst and polymerization inhibitor is known to one skilled in the art.
Regarding claim 7, Marotta et al. teach epichlohydrin used in the instant invention which would meet the recited biomass material.
Regarding claims 8 and 9, Marotta et al. teach the same furan-based diepoxy monomers claimed and thus they are expected to have the recited properties inherently.
Since PTO does not have equipment to conduct the test, it is fair to require applicant to shoulder the burden of proving that his material differs from those of Marotta et al. In re Best, 195 USPQ 430, 433 (CCPA 1977).
Inherent anticipation does not require that a person of ordinary skill in the art would have recognized the inherent disclosure. Schering Corp. v. Geneva Pharms., Inc., 339 F.3d 1373 (Fed. Cir. 2002). MPEP 2112.
Whether the rejection is based on “inherency” under 35 U.S.C. 102, or “prima facie obviousness” under 35 U.S.C. 103, jointly or alternatively, the burden of proof is the same. In re Fitzgerald, 619 F.2d 67, 70 (CCPA 1980) (quoting) In re Best, 562 F.2d 1252, 1255 (CCPA 1977). MPEP 2183.
CLAIM ALLOWANCE
CN 102952253 A (March 6, 2013) (Machine translation is enclosed) is considered a closet prior art as to claim 1. CN teaches epoxy resin based on 2,5-furandicarboxylic acid, preparation method and application thereof in abstract. Claim 1 of CN teaches a polymer having a structure meeting the instant structure comprising a repeating unit n, but fails to fairly teach or suggest the instantly recited additional diglycidyl ether of 2,5-furandicarboxylic acid.
Thus, claims 1-3 are allowed.
CLAIM OBJECTION
Claims 10 and 11 are 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.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to TAE H YOON whose telephone number is (571)272-1128. The examiner can normally be reached Mon-Fri.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Robert Jones can be reached at (571)270-7733. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/TAE H YOON/ Primary Examiner, Art Unit 1762
Prosecution Insights