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
Election/Restrictions
The applicant has elected Species I (claims 1-2 and 6-10) with traverse. Applicant’s election of Group I in the reply is acknowledged. The applicant argued the search of non- elected Groups and Species would be the same, implying no undue burden. Restriction for examination purposes as indicated is proper because all these inventions listed in last action are independent or distinct for the reasons given below and there would be a serious search and examination burden if restriction were not required because one or more of the following reasons apply:
(a) the inventions have acquired a separate status in the art in view of their different classification; (b) the inventions have acquired a separate status in the art due to their recognized divergent subject matter;(c) the inventions require a different field of search (for example, searching different classes/subclasses or electronic resources, or employing different search queries);(d) the prior art applicable to one invention would not likely be applicable to another invention;(e) the inventions are likely to raise different non-prior art issues under 35 U.S.C. 101 and/or 35 U.S.C. 112, first paragraph.
In this particular case, at least one of (a)-(e) applies.
The examiner withdraws the previous election of subspecies Ia to Id in claim 6.
This restriction is made FINAL. The restriction and election of species as stated in the previous office action are repeated here as such.
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.
(a)(2) the claimed invention was described in a patent issued under section 151, or in an
Claim(s) 1-2, 6, 8, and 10 is(are) rejected under 35 U.S.C. 102(a)(1) as being anticipated by Goto et al. (US 20130288041).
As to claims 1-2, 6, 8, and 10, Goto (claims, abs., examples) discloses a process of producing a composition (Ex.9-12, Tables 2 and 5, 247) comprising a solution of bisphenol A and a dispersion of silica (0.51, 1.94, or 4 parts per 100 parts of silica) treated with (3-glycidoxypropyltrimehtoxysilane (meets formula 3 of instant claim 6), a silane coupling agent. One of ordinary skill in the art would at once envisage (3-glycidoxypropyltrimehtoxysilane would inherently undergo the claimed dealcoholization condensation and ring-opening reaction with silica and epoxy due the nature of a silane coupling agent; one of ordinary skill in the art would at once envisage dissolving epoxy resin into the dispersion, because the reference teaches a process of making and raw materials that are indistinguishable from the instant process recited in claims 1-2, 6, 8, and 10. See MPEP § 2112.
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 of this title, 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.
Claim(s) 7 and 9 is (are) rejected under 35 U.S.C. 103 as being unpatentable over Goto et al. (US 20130288041).
Disclosure of Goto is adequately set forth in ¶1 and is incorporated herein by reference.
As to claim 7, Goto (2, 29, 33, 42) teaches bisphenol A and bisphenol F are functionally equivalent epoxies for producing an epoxy composition for producing copper clads, laminates and prepreg with improved adhesion strength. Therefore, it would have been obvious to one of ordinary skill in the art to have replaced bisphenol A in examples with bisphenol F because of their equivalent functionality as primary epoxies. These conditions appear to equally apply to both productions using similar epoxy raw materials. This adaptation would have obviously yielded instantly claimed invention.
As to claim 9, Goto (claim 1, 15) discloses silica to epoxy is 10-400 parts per 100 parts (epoxy would be 25-1000 parts per 100 parts of silica), overlapping with the claimed range. It has been found that where claimed ranges overlap ranges disclosed by the prior art, a prima facie case of obviousness exists - see MPEP 2144.05 I. In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990). Therefore, it would have been obvious to one skilled in the art to have created/selected the claimed compositional elements from the composition disclosed in the Goto since it discloses all applicants' components, values and methods of making.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to SHANE FANG whose telephone number is (571)270-7378. The examiner can normally be reached on Mon-Thurs. 8am-6pm. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Randy Gulakowski can be reached on 571.572.1302. Information regarding the status of an application may be obtained from the Patent Application Information Retrieval (PAIR) system. Status information for published applications may be obtained from either Private PAIR or Public PAIR. Status information for unpublished applications is available through Private PAIR only. For more information about the PAIR system, see http://pair-direct.uspto.gov. Should you have questions on access to the Private PAIR system, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative or access to the automated information system, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/SHANE FANG/Primary Examiner, Art Unit 1766
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