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 .
Drawings
New corrected drawings in compliance with 37 CFR 1.121(d) are required in this application because the subject matter along the axes of the various figures is written so small as to be illegible. The requirement for corrected drawings will not be held in abeyance.
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.
Claim 1 and the claims dependent therefrom 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.
Applicant defines as their invention a polyester containing two distinct substructures, or skeletons. The first of these comprises a group R1 said to be a mono- or divalent “aromatic group” and the second comprises a group R2 characterized as a divalent aliphatic group. Upon initial inspection, the Examiner had surmised that R1 was a group derived from a phenol (hydroxyl group directly bonded to a aryl ring) and R2 a group derived from an aliphatic alcohol (hydroxyl group bonded directly to an sp3 hybridized carbon atom). However, it cannot be discounted that an aromatic group is, instead, merely one that contains an aromatic residue but where the oxygen atom bonded to the carbonyl is not necessarily bonded directly to the aryl ring. Thus, the description is inadequate inasmuch as the aforementioned groups R1 and R2 might feature both aromatic- and aliphatic structural attributes. Consider, for example, a polyester derived in part from the following dihydric alcohol compound:
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Because the hydroxyl groups are bonded to an aliphatic carbon atom, it might be presumed that Applicant would regard this compound as having contributed a group R2 but, of course, the compound contains an aryl ring as well and therefore the possibility that Applicant might consider this as a precursor to a group R1 cannot be entirely discounted. Indeed, Applicant is referred to the title/abstract for U.S. Patent # 4,085,091 where the skilled artisan would understand the group R to have been derived from the above diol and it labels this compound as an “aromatic dihydroxy compound” notwithstanding the fact that the alcohol moieties are not bonded to the aromatic ring. U.S. 2017/0145154 also labels a diol compound as aromatic despite the hydroxyl groups being bonded to other than the aromatic framework. See [0015-0016].
The Examiner appreciates, of course, that it is the definition assigned by Applicant that matters in this assessment but the definitions of monovalent- and divalent aromatic groups from page 15 of the Specification are not especially helpful in this regard:
“Specifically, a monovalent aromatic group refers to a group obtained by removing one hydrogen atom from the aromatic ring of an aromatic compound, and a divalent aromatic group refers to a group obtained by removing two hydrogen atoms from the aromatic ring of an aromatic compound.”
As a means of simplifying things, the Examiner is adopting the stance that R1 is a residue derived from a phenol and R2 a residue derived from a compound wherein the hydroxyl groups are attached to a sp3 hybridized carbon atom for the purpose of evaluating the claimed invention against the prior art but clarification of this matter will be needed.
Further describing claim 8, the intent of this claim is not understood. Is not all of (x1) a, “hydroxy compound having both an aromatic hydroxy group and an aliphatic hydroxy group”? What is (x1) in claim 6, if not this?
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.
Claims 1-3, 5, 9, 16-18, and 20 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Inata et al., U.S. Patent # 5,300,621.
Inata teaches polyesters bearing each of the structural units outlined in the abstract. Relevant to the present discussion, alternating units (1) and (2) anticipate skeleton (A) and alternating units (1) and (3) anticipate skeleton (B). Column 4, lines 61-63 indicate that residue (1) is derived from isophthalic acid (in one embodiment) and residues (2) and (3) from hydroquinone and neopentylene glycol respectively. A ratio defining the number of units according to formula (2) relative to those of formula (3) is provided in column 4, line 56 that almost entirely overlaps that of encompassed within claim 3.
Concerning claim 2, Inata mentions as a possible precursor of the prior art polyesters phenol compounds (d) that, by virtue of the presence of only one phenol group would behave a chain terminating groups. See column 5, lines 23-30.
As for claims 9 and 17, the structure depicted in formula (i) is encompassing of a hydroquinone group being polymerized with a dicarboxylic acid where m , y1, and y2 all equal zero and R1b is a phenylene group.
Claims 16 and 18 are further limiting of an embodiment of the claimed invention that didn’t constitute the Examiner’s foundation for rejection of claim 9. That is to say, claim 9 is deemed unpatentable where m, y1 and y2 are all zero and, thus, where the identity of R2 and L would be moot.
Claim 20 is of essentially the same scope as claim 1 given that it merely defines an intended use of the polyester resin.
Claims 1-3, 5, 9-10, 19, and 20 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Sugimoto et al., U.S. Patent Application Publication No. 2015/0024322.
Applicant is directed to Production Examples 1 and 4 where there is described the preliminary formation of a target ethylene oxide adduct of a bisphenol and an acknowledged by-product wherein only one of the two phenol groups is ethoxylated, and their subsequent polymerization with terephthalic acid. The target compound, ethoxylated at both phenol groups, would, upon being reacted with terephthalic acid, provide skeleton (B) whereas the by-product compound reacts with the same to provide skeleton (A). Benzoic acid is a precursor that furnishes end groups complying with skeleton (A) as required by claim 2. Ethylene oxide is the source of groups R2 in skeleton (B) and, of course, contains two carbon atoms consistent with claims 5 and 16.
As for claim 9, the target product is encompassed within formula (i) where y1 and y1 are 1, m is zero, R1b is the bis-aryl framework of bisphenol A, and R2 is CH2CH2.
Paragraph [0183] indicates that the polyester derived from the EO adduct mixture of production Example 1 has a number-average molecular weight of 2,300 g/mol (claim 19). Given the molecular weight of the residues contributed by the ethoxylated bisphenol A and terephthalic acid, and also that of the benzoic acid terminal group, it can be verified mathematically that the average number of units (i) will be about 8 thereby satisfying claim 10.
Claim 20 is of essentially the same scope as claim 1 given that it merely defines an intended use of the polyester resin.
As for claim 21, paragraph [0015] states that the composition, of which the polyester summarized in Production Example 4 constitutes a part, contains a second polyester compound. Claim 21 does not require that (X) and (Y) be crosslinkable with one another and the second polyester may be regarded as a thermosetting resin as claim 22 requires, even if there is no stated intend to crosslink it.
Regarding claim 23, the ratio of first and second polyesters is 1:1 in Example 1 of Table 2.
Concerning claim 24, filler particles fulfilling the role of a fluidizer, are contemplated in [0172].
Claims 26 and 27 are essentially not of a different scope than claim 21 insofar as they merely set forth an intended use of the composition.
As for claims 28-29, the polyester mixture and various adjuvants taught thereafter are used to formulate toner compositions that are applied to substrates such as paper [0177] (sheet-like fiber substrate) and forming a discontinuous layer on the paper support.
Allowable Subject Matter
Claims 4, 6-8, 11-15 and 25, and 30-35 would be allowable if rewritten to overcome the rejection(s) under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), 2nd paragraph, set forth in this Office action and to include all of the limitations of the base claim and any intervening claims.
The polymer disclosed in claim 6 and depicted in claim 12, from which several other claims depend, is one that is endcapped with a phenol. The polymers of Sugimoto are, instead, terminated with a carboxylic acid compound. It was tempting to hold polymers derived from similar monomers, but where an excess of the dicarboxylic acid was used such that the terminating compound would necessarily be a monohydric alcohol/phenol as obvious. However, there is no mention of the use of aromatic phenols with only a single hydroxyl group anywhere in the reference. Paragraph [0024] mentions aliphatic monohydric alcohols. In neither case do either of the references mention the employment of the anticipatory polyesters for the production of printed wiring boards/semiconductor packages.
JP 2009-205165 is the most conceptually similar disclosure for its description of an epoxy-based encapsulant comprising a polyester crosslinker and where the crosslinker is derived from a phenol, aromatic dicarboxylic acid, and phenol resin. However, there is no mention of partially alkoxylating the phenol resin so that it would feature both skeletons (A) and (B) nor does the prior art seem to explain why a skilled practitioner of that invention would be motivated to do so.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to MARC S ZIMMER whose telephone number is (571)272-1096. The examiner can normally be reached M-F 8:30-5:00.
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March 12, 2026
/MARC S ZIMMER/Primary Patent Examiner, Art Unit 1765