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
Possible Status as Continuation-in-Part
This application has PRO 63/375,895 09/16/2022. This application repeats a substantial portion of prior Application 18468814, effectively filed 07/01/2022, and adds additional disclosure not presented in the prior application. This application repeats a substantial portion of prior US 11873369, effectively filed 12/23/2020, and adds additional disclosure not presented in the prior application. Because the applicant adds subject matter not disclosed in the parent patent application, but repeats a substantial portion of the parent's specification, and/or this application names the inventor or at least one joint inventor named in the prior application, it may constitute a continuation-in-part of the prior application. Should applicant desire to claim the benefit of the filing date of the prior application, attention is directed to 35 U.S.C. 120, 37 CFR 1.78, and MPEP § 211 et seq.
The effectively filing date of this application is determined as 09/16/2022.
Election/Restrictions
The applicant has elected Group I (claims 1-5, 8-9, and 11-13) without traverse.
This restriction is made FINAL. See previous action for the reasons of applying restriction.
Claim Rejections - Double Patenting
The nonstatutory double patenting rejection is based on a judicially created doctrine grounded in public policy (a policy reflected in the statute) so as to prevent the unjustified or improper timewise extension of the “right to exclude” granted by a patent and to prevent possible harassment by multiple assignees. A nonstatutory obviousness-type double patenting rejection is appropriate where the conflicting claims are not identical, but at least one examined application claim is not patentably distinct from the reference claim(s) because the examined application claim is either anticipated by, or would have been obvious over, the reference claim(s). See, e.g., In re Berg, 140 F.3d 1428, 46 USPQ2d 1226 (Fed. Cir. 1998); In re Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993); In re Longi, 759 F.2d 887, 225 USPQ 645 (Fed. Cir. 1985); In re Van Ornum, 686 F.2d 937, 214 USPQ 761 (CCPA 1982); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); and In re Thorington, 418 F.2d 528, 163 USPQ 644 (CCPA 1969).
A timely filed terminal disclaimer in compliance with 37 CFR 1.321(c) or 1.321(d) may be used to overcome an actual or provisional rejection based on a nonstatutory double patenting ground provided the conflicting application or patent either is shown to be commonly owned with this application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement.
Effective January 1, 1994, a registered attorney or agent of record may sign a terminal disclaimer. A terminal disclaimer signed by the assignee must fully comply with 37 CFR 3.73(b).
Claim(s) 1-5, 8-9, and 11-13 is (are) rejected on the ground of nonstatutory obviousness-type double patenting as being unpatentable over claims 1, 3-6, and 8-9 of copending Application No. 18/468830. This is a provisional obviousness-type double patenting rejection because the conflicting claims have not in fact been patented.
As to instant claim 1, 830’ (claim 1) discloses a thermosetting composition comprises, based on the total weight of the thermosetting composition: a) a copolymer of (i) a diisoalkenylarene and (ii) a divinylarene containing m-divinylarene and p-divinylarene in a mole ratio of (i) to (ii) of 15:1 to 1:15.
As to instant claim 2, 830’ (claim 3) discloses the amount of m-divinylbenzene and p-divinylbenzene is up to 99 wt. %, based on total weight of the divinylarene.
As to instant claims 3 and 5, 830’ (claim 5-6) discloses 5 to 70 wt. % of polymerized divinylarene in the copolymer and the m-divinylarene is m-divinylbenzene, the p-divinylarene is p-divinylbenzene, and the weight ratio of m-divinylbenzene to p-divinylbenzene is 5:1 to 1:5. The resultant m-divinylbenzene would be expected to yield a range 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.
As to instant claim 4, 830’ (claim 4) discloses the divinylarene further comprises m-ethylvinylbenzene and p-ethylvinylbenzene in an amount of <35 wt. %, based on total weight of the divinylarene .
As to instant claim 8, 830’ (claim 8) discloses the diisoalkenylarene is a diisopropenylbenzene, and wherein the diisopropenylbenzene comprises 75 wt. % m-diisopropenylbenzene, based on total weight of the diisopropenylbenzene
As to instant claim 9, 830’ (claim 9) discloses the diisopropenylbenzene has at least one of: a moisture content of <150 ppm; a 4-tert-buylcatechol content of <120 ppm; and a Hazen (APHA) color of <50 in a solvent having a concentration of 10%, measured according to ASTM D1209.
The claimed properties and intended use of instant claims 1 and 11-13 are met by the same rationale in below ¶3. The rejection has been applied in view of the below 112b rejections.
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.
Claim(s) 1-5, 8-9, and 11-13 (is)are rejected under 35 U.S.C. 112(b) as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor, or for pre-AIA the applicant regards as the invention.
Claim 1 recites the phrase "as described in the specification". Phrases like "as described" don't clearly define these boundaries and force the reader to the specification. Claim 1 recites the limitation of “a copolymer…(b) a divinylarene comprising m-divinylbenzene, p-divinylbenzene, m-ethylvinylbenzene, p-ethylvinylbenzene, and mixtures thereof, which appears to using inappropriate Makush language. It is uncertain whether claim 1 intends to claim a mixture of all these divinylarene species or one of these divinylarene species. In addition, ethylvinylbenzene having one vinyl group is not a species of divinylarene. Claim 1 appears to claim at least one of the divinylarene species, as indicated in instant pgpub [0035] using the phrase of “DVA is selected from…” and “a mixture thereof. The claimed divinylarene has been constructed according to instant pgpub [0035] for examination.
Claim 11 recites the phrase " thermosetting composition is cured at a temperature of 120 to 220° C”. It is uncertain whether claim 11 intends to claim a thermosetting composition or a cured thermosetting composition. For examination purpose, the limitation has been considered as “intended use”.
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) 1-2, 4, 8, and 11-13 is (are) rejected under 35 U.S.C. 103 as being unpatentable over Kawabe et al. (JP 2007332273, machine translation provided).
As to claim 1, Kawabe (abs., example, claims, 1, 11, 13-14, , 35-41, 59, 80) discloses a thermosetting (21) composition comprising an exemplary copolymer comprising 28.5 mols divinylbenzene, 1.5 moles of ethylvinylbenzene, and 10.0 moles of styrene (Ex.1, 66). Kawabe (40) further discloses m and p isomers of divinylbenzene are favorable for material availability. Kawabe (41) further discloses m and p isomers of ethylvinylbenzene improves processibility and solubility. Kawabe (39) further discloses 1,3-diisopropenylbenzene and its isomers, as multifunctional vinyl comonomers, improve heat resistance.
Therefore, as to claim 1, it would have been obvious to one of ordinary skill in the art to have modified the copolymer of Ex.1, utilized m- and -p divinylbenzene and m- and -p ethylvinylbenzene, and replaced styrene with 1,3-diisopropenylbenzene, because the resultant copolymer would meet the claimed one and yield improved heat resistance, solubility, and processibity. The resultant molar ratio of diisopropenylbenzene to divinylbenzene would be (10: (1.5+28.5=30)=1:3), falling within the claimed range of 15:1 to 1:15 of claim 1.
As to claims 2 and 4, the resultant wt% of m- and -p divinylbenzene would be 95% and the resultant wt% of m- and -p ethylvinylbenzene would be 5% as calculated:
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As to claim 8, 1,3-diisopropenylbenzene can be 100 wt%.
As to claim 11, Kawabe (56) implies crosslinking the copolymer above 120 °C, overlapping with the claimed range of 120-220 °C. 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. Kawabe’s composition would be expected to be capable of performed the claimed intended use of curing at 120-220 °C.
The Kawabe is silent on the claimed property of Dk, Df, Gel content, Swelling content, thermal conductivity, and peel strength of claims 1 and 11-13. Accordingly, the examiner recognizes that not all of the claimed effects or physical properties are positively stated by the references. However, the references teach a thermoset composition containing the claimed components in the claimed amounts prepared by substantially similar components and curing temperature. Therefore, one of ordinary skill would have a reasonable expectation that the claimed effects and physical properties, i.e. Dk, Df, Gel content, Swelling content, thermal conductivity, and peel strength, would necessarily flow from a composition containing all of the claimed components in the claimed amounts prepared by a substantially similar process. Where the claimed and prior art products are identical or substantially identical in structure or composition, or are produced by identical or substantially identical processes, a prima facie case of either anticipation or obviousness has been established. See In re Best, 562 F.2d 1252, 1255, 195 USPQ 430, 433 (CCPA 1977); In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990); see also MPEP § 2112.01(I)-(II). If it is the applicant’s position that this would not be the case: (1) applicant must provide evidence to support the applicant’s position, and (2) it would be the examiner’s position that the application contains inadequate disclosure on how to obtain the claimed effects or properties with only the claimed components in the claimed amounts by the disclosed or claimed process.
Claim(s) 3 and 5 is (are) rejected under 35 U.S.C. 103(a) as being unpatentable over Kawabe et al. (JP 2007332273, machine translation provided) in view of Arai et al. (US 20020161130).
Disclosure of Kawabe is adequately set forth in ¶3 and is incorporated herein by reference.
Kawabe is silent on the claimed weight ratio of m-divinylbenzene.
Arai (248, 287) teaches a commercially available (from Aldrich) divinylbenzene comprising m and p divinylbenzene (m:p=7:3 by weight), falling within the claimed range of 5:1 to 1:5 and >50 wt% of m-divinylbenzene.
Therefore, as to claims 3 and 5, it would have been obvious to one of ordinary skill in the art to utilized the m, p divinylbenzene isomers form Aldrich because of the commercial availability.
Claim(s) 9 is (are) rejected under 35 U.S.C. 103(a) as being unpatentable over Kawabe et al. (JP 2007332273, machine translation provided) in view of Tanimoto et al. (JP 2010143854, machine translation provided).
Disclosure of Kawabe is adequately set forth in ¶3 and is incorporated herein by reference.
Kawabe is silent on the claimed moisture content of < 150 ppm of diisopropenylbenzene.
Solving the same problem of Kawabe (55) lowering manufacturing cost, Tanimoto (abs., claims, 1, 5, 7, 15) discloses a high yield and efficiency process of producing high purity diisopropenylbenzene (Ex. 5, 99%) excluding water (0 ppm).
Therefore, as to claim 9, it would have been obvious to one of ordinary skill in the art to have modified the copolymer disclosed by Kawabe and utilized the diisopropenylbenzene of Tanimoto, because the resultant copolymer would yield improved yield due to the improved purity of Tanimoto’s diisopropenylbenzene.
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