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
In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis (i.e., changing from AIA to pre-AIA ) for the rejection will not be considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status.
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.
Claim(s) 10-20 is/are rejected under 35 U.S.C. 103 as being unpatentable over Patil et al. (US 2022/0145065).
Regarding claims 10-11 and 17: Patil et al. (US ‘065) discloses a method of preparing epoxy resin compositions [abstract; 0076] comprising combining epoxy resin, epoxy resin curing agent and a functionalized polyetherimide having a reactive end group (ex. amine) [0004] at a temperature of 70 oC to 200 oC [0076]. Patil et al. (US ‘065) discloses Ex. 6 [Ex. 6; 0096-0097] was prepared by mixing 15 wt% (based on 100 wt% epoxy) of the amine terminated polyetherimide of Example 1 [Ex. 1; 0091] and DGEBA (bisphenol A diglycidyl ether [Table 1]) at 140 oC until the polyetherimide was completely dissolved. DDS (4,4’-diaminophenyl sulfone; curing agent [0026; Table 1]) was added to the epoxy mixture at 140 oC and allowed to dissolve [Ex. 6; 0095-0097]. Patil et al. (US ‘065) discloses curing at 140 oC to 220 oC [Ex. 6; 0090; 0095-0096; Table 2].
While Patil et al. (US ‘065) discloses mixing at 140 oC in Ex. 6, Patil et al. (US ‘065) discloses preparing the composition at 70 oC to 200 oC [0076]. In the case where the claimed ranges “overlap or lie inside ranges disclosed by the prior art” a prima facie case of obviousness exists. 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); In re Geisler, 116 F.3d 1465, 1469-71, 43 USPQ2d 1362, 1365-66 (Fed. Cir. 1997) [See MPEP 2144.05].
Patil et al. (US ‘065) discloses the addition of polysulfones [0075].
Patil et al. (US ‘065) does not specifically disclose Ex. 6 containing a polysulfone. However, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have included a polysulfone based on the invention of Patil et al. (US ‘065), and would have been motivated to do so since Patil et al. (US ‘065) suggests that the composition can contain polysulfones [0075]. Additionally, “It is prima facie obvious to combine two compositions each of which is taught by the prior art to be useful for the same purpose, in order to form a third composition to be used for the very same purpose.... [T]he idea of combining them flows logically from their having been individually taught in the prior art.” In re Kerkhoven, 626 F.2d 846, 850, 205 USPQ 1069, 1072 (CCPA 1980) (citations omitted) [see MPEP 2144.06].
Patil et al. (US ‘065) does not specifically disclose adding the polysulfone after mixing the epoxy resin and polyetherimide. However, a prima facie case of obviousness exists where changes in the sequence of adding ingredients derived from the prior art process steps. Ex parte Rubin, 128 USPQ 440 (Bd. App. 1959). See also In re Burhans, 154 F.2d 690, 69 USPQ 330 (CCPA 1946) (selection of any order of performing process steps is prima facie obvious in the absence of new or unexpected results); In re Gibson, 39 F.2d 975, 5 USPQ 230 (CCPA 1930) (Selection of any order of mixing ingredients is prima facie obvious.) [See MPEP 2144.04].
Regarding claim 12: Patil et al. (US ‘065) discloses Patil et al. (US ‘065) discloses the addition of polysulfones by formation of a blend with the polyetherimide [0075].
When faced with a mixture, one of ordinary skill in the art would be motivated by common sense to select a 1:1 ratio (thereby affording Ex. 6 with 7.5 wt% (based on 100 wt% epoxy) of the polysulfone and 7.5 wt% of the polyetherimide), a ratio that falls within the presently claimed amount, absent evidence of unexpected or surprising results. Case law holds that "[h]aving established that this knowledge was in the art, the examiner could then properly rely... on a conclusion of obviousness, 'from common knowledge and common sense of the person of ordinary skill in the art within any specific hint or suggestion in a particular reference." (see In re Bozek, 416 F.2d 1385, 1390, 163 USPQ 545, 549 (CCPA 1969)) [MPEP 2143].
Regarding claims 13-14: Patil et al. (US ‘065) discloses the amine terminated polyetherimide of Example 1 was prepared by reacting BPA-DA and MPD (m-phenylenediamine [Table 1]), and correcting the reaction mixture with MPD [Ex. 1; 0091].
Regarding claim 15: Patil et al. (US ‘065) discloses the polyetherimide can be formed from C1-40 organic diamines [0037; 0042; 0044], such as ethylene diamine and m-phenylenediamine [0044].
An express suggestion to substitute one equivalent component or process for another is not necessary to render such substitution obvious. In re Fout, 675 F.2d 297, 213 USPQ 532 (CCPA 1982) [see MPEP 2144.06].
Regarding claim 16: Patil et al. (US ‘065) discloses 15% excess epoxy per NH group of DDS {ratio of amine to epoxy of ~ 0.87} [0026; 0095-0096].
Regarding claims 18-20: Patil et al. (US ‘065) discloses the basic claimed method [as set forth above with respect to claim 10].
The claimed effects and physical properties, i.e. the resin matrix comprises both an island phase and a co-continuous phase [instant claim 18]; an average particle size of the island phase in the resin matrix is 300 nm to 2 μm [instant claim 19]; an average particle size of the co-continuous phase in the resin matrix is 500 nm to 2 μm, would implicitly be achieved, as “Products of identical chemical composition can not 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) [see MPEP 2112.01].
Allowable Subject Matter
Claims 1 and 4-9 are allowable.
The following is a statement of reasons for the indication of allowable subject matter: While Patil et al. (US 2022/0145065) discloses epoxy resin compositions [abstract] comprising an epoxy resin, an epoxy resin curing agent, a functionalized polyetherimide having a reactive end group (ex. amine) [0004], and a polysulfone [0075], Patil et al. (US ‘065) does not disclose an epoxy resin containing 10-20 wt% polysulfone and 4-10 wt% functionalized polyetherimide (wt% based on 100 wt% epoxy) with sufficient specificity. Such a reconstruction of the claims would be based on improper hindsight reasoning.
Response to Arguments
Applicant's arguments filed 6/11/26 have been fully considered but they are not persuasive. The rejection of claims 10-20 based upon Patil et al. (US 2022/0145065) is maintained.
Patil et al. (US ‘065) was relied on for disclosing a method of preparing an epoxy resin composition [abstract; 0076] comprising combining epoxy resin, epoxy resin curing agent and a functionalized polyetherimide having a reactive end group (ex. amine) [0004] at a temperature of 70 oC to 200 oC [0076]. Patil et al. (US ‘065) discloses the addition of polysulfones [0075].
Patil et al. (US ‘065) does not specifically disclose adding the polysulfone after mixing the epoxy resin and polyetherimide. However, a prima facie case of obviousness exists where changes in the sequence of adding ingredients derived from the prior art process steps. Ex parte Rubin, 128 USPQ 440 (Bd. App. 1959). See also In re Burhans, 154 F.2d 690, 69 USPQ 330 (CCPA 1946) (selection of any order of performing process steps is prima facie obvious in the absence of new or unexpected results); In re Gibson, 39 F.2d 975, 5 USPQ 230 (CCPA 1930) (Selection of any order of mixing ingredients is prima facie obvious.) [See MPEP 2144.04].
While paragraphs [0051-0052] of the instant application appears to provide unexpected results, however, paragraphs [0051-0052] represent specific embodiments and are not commensurate in scope with the breadth of the method included in claim 10. It is not possible for the examiner to conclude the embodiments of paragraphs [0051-0052] represent unexpected results over the prior art of record [see also MPEP 716.01(c), 716.02(d), 2145; In re Lindner, 457 F.2d 506, 509, 173 USPQ 356, 359 (CCPA 1972); In re Lindner, 457 F.2d 506, 508, 173 USPQ 356, 358 (CCPA 1972)].
Additionally, to establish unexpected results over a claimed range, applicants should compare a sufficient number of tests both inside and outside the claimed range to show the criticality of the claimed range. In re Hill, 284 F.2d 955, 128 USPQ 197 (CCPA 1960) [see MPEP 716.02(d)]. See also In re Lindner, 457 F.2d 506, 509, 173 USPQ 356, 359 (CCPA 1972).
Whether the unexpected results are the result of unexpectedly improved results or a property not taught by the prior art, the “objective evidence of non-obviousness must be commensurate in scope with the claims which the evidence is offered to support.” In other words, the showing of unexpected results must be reviewed to see if the results occur over the entire claimed range. In re Clemens, 622 F.2d 1029, 1036, 206 USPQ 289, 296 (CCPA 1980) [See MPEP 716.02(d)].
Conclusion
THIS ACTION IS MADE FINAL. Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any nonprovisional extension fee (37 CFR 1.17(a)) pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the mailing date of this final action.
Correspondence
Any inquiry concerning this communication or earlier communications from the examiner should be directed to MICHAEL F PEPITONE whose telephone number is (571)270-3299. The examiner can normally be reached on 7:00 AM - 3:30 PM.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Mark Eashoo can be reached on 571-272-1197. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/MICHAEL F PEPITONE/Primary Examiner, Art Unit 1767
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