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 Objections
Applicant is advised that should claim 1 be found allowable, claim 11 will be objected to under 37 CFR 1.75 as being a substantial duplicate thereof. When two claims in an application are duplicates or else are so close in content that they both cover the same thing, despite a slight difference in wording, it is proper after allowing one claim to object to the other as being a substantial duplicate of the allowed claim. See MPEP § 608.01(m). In this case, even though claim 1 is directed to a resin composition and claim 11 is directed to a polymer, the body of both claims only recites the exact same polymer.
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 1-14 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.
Regarding claim 1, line 12 of claim 1 recites that R3 represents a hydrogen atom, an alkyl group, or an aryl group; line 19 recites that R5 represents a hydrogen atom, an alkyl group, or an aryl group; and line 22 recites that Rc represents an alkyl group, an aryl group, or a halogen atom. The issue is that each of Formula (I-A), Formula (I-B), and Formula (II) contain two R3, R5 and Rc groups, respectively. It is not clear if both of the substituent groups in one formula must be the same or if they may be different. For the purpose of further examination, the claim will be given its broadest reasonable interpretation and that is that the substituent groups labeled the same in each formula may be different.
Additionally, claim 1 recites the limitation "the formula" in lines 9, 15, 17, 20, and 22. There is insufficient antecedent basis for this limitation in the claim. In lines 1-7 of claim 1, three formulas have been mentioned. It is not clear to which one each of the uses of “the formula” refers. For the purpose of further examination, the use in lines 9 and 15 will be interpreted as Formula (I-A), the use in lines 17 and 20 will be interpreted as Formula (I-B), and the use in line 22 will be interpreted as Formula (II).
Regarding claim 4, this claim recites that Rc of Formula (II-1) has the same meaning as it does in Formula (II) and therefore it has the same clarity issue as set forth above in the rejection of claim 1.
Regarding claim 11, line 12 of claim 11 recites that R3 represents a hydrogen atom, an alkyl group, or an aryl group; line 19 recites that R5 represents a hydrogen atom, an alkyl group, or an aryl group; and line 22 recites that Rc represents an alkyl group, an aryl group, or a halogen atom. The issue is that each of Formula (I-A), Formula (I-B), and Formula (II) contain two R3, R5 and Rc groups, respectively. It is not clear if both of the substituent groups in one formula must be the same or if they may be different. For the purpose of further examination, the claim will be given its broadest reasonable interpretation and that is that the substituent groups labeled the same in each formula may be different.
Additionally, claim 11 recites the limitation "the formula" in lines 9, 15, 17, 20, and 22. There is insufficient antecedent basis for this limitation in the claim. In lines 1-7 of claim 11, three formulas have been mentioned. It is not clear to which one each of the uses of “the formula” refers. For the purpose of further examination, the use in lines 9 and 15 will be interpreted as Formula (I-A), the use in lines 17 and 20 will be interpreted as Formula (I-B), and the use in line 22 will be interpreted as Formula (II).
Regarding claim 12, line 14 of claim 12 recites that R3 represents a hydrogen atom, an alkyl group, or an aryl group; and line 21 recites that R5 represents a hydrogen atom, an alkyl group, or an aryl group. The issue is that each of Formula (I-A) and Formula (I-B) contain two R3and R5 groups, respectively. It is not clear if both of the substituent groups in one formula must be the same or if they may be different. For the purpose of further examination, the claim will be given its broadest reasonable interpretation and that is that the substituent groups labeled the same in each formula may be different.
Additionally, claim 12 recites the limitation "the formula" in lines 11, 17, 19, and 22. There is insufficient antecedent basis for this limitation in the claim. In lines 4-9 of claim 12, three formulas have been mentioned. It is not clear to which one each of the uses of “the formula” refers. For the purpose of further examination, the use in lines 11 and 17 will be interpreted as Formula (I-A), and the use in lines 19 and 22 will be interpreted as Formula (I-B).
Regarding claims 2, 3, 5-10, 13, and 14, these claims depend from a rejected claim and include all of the limitations thereof. Therefore, they are also rejected.
The following is a quotation of 35 U.S.C. 112(d):
(d) ‘812 IN DEPENDENT FORMS.—Subject to subsection (e), a claim in dependent form shall contain a ‘812 to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by ‘812 all the limitations of the claim to which it refers.
The following is a quotation of pre-AIA 35 U.S.C. 112, fourth paragraph:
Subject to the following paragraph [i.e., the fifth paragraph of pre-AIA 35 U.S.C. 112], a claim in dependent form shall contain a ‘812 to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by ‘812 all the limitations of the claim to which it refers.
Claims 2 and 3 are rejected under 35 U.S.C. 112(d) or pre-AIA 35 U.S.C. 112, 4th paragraph, as being of improper dependent form for failing to further limit the subject matter of the claim upon which it depends, or for failing to include all the limitations of the claim upon which it depends.
Regarding claim 2, claim 2 recites that R2 in Formula (I-A) is a hydrogen atom or an unsubstituted hydrocarbon group. However, in claim 1, from which claim 2 depends, R2 is defined as a hydrogen atom, a linear alkyl group, or an aryl group. The unsubstituted hydrocarbon group could be a branched hydrocarbon or contain a double bond and not fall into either definition of a linear alkyl group or aryl group. Therefore, claim 2 fails to further limit claim 1 from which it depends. For the purpose of further examination, claim 2 will be interpreted that R2 is a hydrogen atom, an unsubstituted linear alkyl group, or an unsubstituted aryl group. Applicant may cancel the claim(s), amend the claim(s) to place the claim(s) in proper dependent form, rewrite the claim(s) in independent form, or present a sufficient showing that the dependent claim(s) complies with the statutory requirements.
Regarding claim 3, this claim depends from a rejected claim and includes all of the limitations thereof. Therefore, it is also rejected.
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.
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.
Claims 1-6, 8, 9, and 14 are rejected under 35 U.S.C. 103 as being unpatentable
over Hirayama et al. (US 2011/0064930).
Regarding claims 1-5, 9, and 14, Hirayama et al. teaches an ester-based polymer produced by interfacial condensation polymerization from a bisphenol and a dicarboxylic acid chloride in the presence of an organic solvent, an alkali, and a catalyst (¶51, 52), the polymer being dissolved in a solvent and applied to a substrate to form a film (coating) (¶119). In Example 3, 0.90 g of 2,2-bis(3,5-dimethyl-4-hydroxyphenyl)-4-methylpentane (bisphenol compound) and 0.03 g of benzyl triethylammonium chloride (catalyst) are dissolved in 15 mL of a 1 M sodium hydroxide solution, and a solution of 0.39 g of 4,4'-biphenyldicarboxylic acid chloride (dicarboxylic acid) and 0.28 g of isophthaloyl chloride in 15 mL of chloroform (solvent) is added to the solution under stirring (¶121). The dicarboxylic acid residue of Example 3 is the residue of 4,4'-biphenyldicarboxylic acid chloride, which corresponds to the structural unit represented by Formula (II) of the instant claims, and also to the structural unit represented by Formula (II-1), wherein r is 0.
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The organic solvent is preferably one that is less miscible with water and capable of dissolving the ester-based polymer, such as dichloromethane, chloroform or 1,2-dichloroethane (¶55), the alkali may be sodium hydroxide (¶56), and the catalyst is preferably a phase transfer catalyst such as benzyl triethylammonium chloride (¶57).
The examples of Hirayama et al. do not teach the bisphenol compound as defined by Formula (I-A) and Formula (I-B). Specifically, the examples use a bisphenol compound which contains a substituent other than R3 on each of the benzene rings. However, Hirayama et al. teaches that other bisphenol compounds may be used to form the polymer such as 2,2-bis(3-methyl-4-hydroxyphenyl)propane, 2,2-bis(3,5-dimethyl-4-hydroxyphenyl)propane, 2,2-bis(3-methyl-4-hydroxyphenyl)butane, 2,2-bis(3-methyl-4-hydroxyphenyl)-4-methylpentane, 2,2-bis(3-sec-butyl-4-hydroxyphenyl)propane, and 2,2-bis(3-cyclohexyl-4-hydroxyphenyl)propane (¶54). The 2,2-bis(3-methyl-4-hydroxyphenyl)-4-methylpentane bisphenol compound corresponds to the structure of Formula (I-A) wherein R1 is an isobutyl group (branched alkyl having 4 or more carbon atoms), R2 is methyl (a linear alkyl group and an unsubstituted hydrocarbon group); each R3 is methyl, and a total number of carbon atoms in R1 and the two R3 substituents is 6.
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At the time of the filing of the instant invention, a person of ordinary skill in the art would have found it obvious to use 2,2-bis(3-methyl-4-hydroxyphenyl)-4-methylpentane as the bisphenol compound in forming the polymer, and would have been motivated to do so because Hirayama et al. teaches that it is a suitable compound to use in the reaction and the bisphenol compounds are art recognized equivalents used for the same purpose and one of ordinary skill in the art would have a reasonable expectation of success in substituting one for the other. MPEP 2144.06 II.
As stated above, Example 3 of Hirayama et al. uses 0.90 g of 2,2-bis(3,5-dimethyl-4-hydroxyphenyl)-4-methylpentane and 0.39 g of 4,4'-biphenyldicarboxylic acid chloride. Based on the above rejection, 2,2-bis(3-methyl-4-hydroxyphenyl)-4-methylpentane is used as the bisphenol component. The residue of 2,2-bis(3-methyl-4-hydroxyphenyl)-4-methylpentane, C20H24O2, has a formula weight of 296.4 g/mol (Formula II); and the residue of 4,4'-biphenyldicarboxylic acid chloride, Cl4H8O2, has a formula weight of 208.22 g/mol (Formula I-A). These values provide for a content of the structural unit represented by Formula (I-A) of 38% by mass and a content of the structural unit represented by Formula (II) of 62% by mass (calculated by Examiner)1.
Regarding claim 6, it is taught above that each R3 in Formula (I-A) are methyl groups. Further, Formula (I-B) is not a required component of the polymer. Claim 1 requires at least one of the structural units represented by Formula (I-A) or by Formula (I-B), and the polymer of Hirayama et al. as modified above has the structural unit represented by Formula (I-A). Therefore, a structural unit of Formula (I-B) is not required.
Regarding claim 8, this claim further defines the structural unit represented by Formula (I-B), which is not a required component of claim 1. Claim 1 requires at least one of the structural units represented by Formula (I-A) or by Formula (I-B), and the polymer of Hirayama et al. as modified above has the structural unit represented by Formula (I-A). Therefore, this limitation is not required.
Claim 7 is rejected under 35 U.S.C. 103 as being unpatentable over Hirayama et al. (US 2011/0064930) as applied to claim 1 above, and further in view of Murata et al. (US 2020/0325329).
Regarding claim 7, Hirayama et al. teaches the resin composition for coating of claim 1 as set forth above. Hirayama et al. does not teach that R1 has 5 or more carbon atoms as the 2-methylpropyl group of the bisphenol of ¶54 has 4 carbon atoms. However, Murata et al. teaches a polyacrylate resin comprising a dihydric phenol residue shown in general formula (1)
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and an aromatic dicarboxylic acid residue, in which X of general formula (1) represents a linear or branched bivalent hydrocarbon group having 4 to 8, preferably 4 to 7, more preferably 5 to 7 or 4 to 6 carbon atoms (¶32). Specifically, Murata et al. teaches that a compound of general formula (I) is the residue of 1,1-bis(4-hydroxyphenyl)-2-ethylhexane (¶33), which corresponds to the structural unit represented by Formula (I-A) of the instant claims wherein R1 is a 1-ethylpentyl group, which is an unsubstituted chain-like branched alkyl group having 7 carbon atoms, R2 is a hydrogen atom, each R3 is a hydrogen atom, and the total number of carbon atoms in R1 and the two R3 groups is 7. Murata et al. additionally teaches that, in order to form the polyacrylate polymer, the dicarboxylic acid residue may include a residue of a biphenyl dicarboxylic acid such as 4,4'-biphenyldicarboxylic acid (¶49). Hirayama et al. and Murata et al. are analogous art because they are from the same field of endeavor as that of the instant invention, namely that of polyacrylate resins prepared from a dihydric phenol and an aromatic dicarboxylic acid and formed into films by application of a solution of the resin to a substrate. At the time of the filing of the instant invention, a person of ordinary skill in the art would have found it obvious to use 1,1-bis(4-hydroxyphenyl)-2-ethylhexane, as taught by Murata et al., as the bisphenol in the polymer, as taught by Hirayama et al., and would have been motivated to do so in order to obtain a resin having improved solubility properties in non-halogenated organic solvents and improved abrasion-resisting properties (¶32, Abstract). Additionally, compounds which are position isomers (compounds having the same radicals in physically different positions on the same nucleus) or homologs (compounds differing regularly by the successive addition of the same chemical group, e.g., by -CH2- groups) are generally of sufficiently close structural similarity that there is a presumed expectation that such compounds possess similar properties. In re Wilder, 563 F.2d 457, 195 USPQ 426 (CCPA 1977). MPEP 2144.09 II.
Claim 10 is rejected under 35 U.S.C. 103 as being unpatentable over Hirayama et al. (US 2011/0064930) as applied to claim 1 above, and further in view of Azuma et al. (WO 2017/073176). For convenience, the citations below for Azuma et al. are taken from an English language machine translation included herewith.
Regarding claim 10, Hirayama et al. teaches the resin composition for coating of claim 1 as set forth above. Hirayama et al. does not teach that the resin composition for coating further comprises a functional material consisting of an aromatic ring-containing compound containing a benzene ring in a mass ratio of the content of the polymer to the content of the functional material of 90:10 to 50:50. However, Azuma et al. teaches a photosensitive layer of an electrophotographic photoreceptor containing a charge generating agent, a charge transporting agent, and a binder resin (Page 3, lines 34-35). The binder resin comprises a polyacrylate resin obtained by polycondensing an aromatic diol and an aromatic dicarboxylic acid, wherein the aromatic dicarboxylic acid is 4,4'-dicarboxydiphenyl ether or 4,4'-dicarboxybiphenyl (Page 7, lines 1-13). The charge transporting agent, or the hole transferring agent, are exemplified by chemical formulas (CTM-1) to (CTM-9) (see original document for structures) (Page 5, lines 55-59), which are aromatic ring-containing compounds containing a benzene ring and correspond to the functional material of claim 10. Azuma et al. teaches that the content of the hole transferring agent is preferably 10 parts by mass or more and 200 parts by mass or less, more preferably 20 parts by mass or more and 100 parts by mass or less, with respect to 100 parts by mass of the binder resin (Page 6, lines 17-19). These amounts correspond to a mass ratio of the binder resin to the hole transferring agent of from 90.9:9.1 to 33.3:66.7, and more preferably of from 83.3:16.7 to 50:50 (calculated by Examiner)2. In a working example, 50 parts by mass of the charge transporting agent (CTM-1) as a hole transporting agent, and 100 parts by mass of a polyacrylate resin (Resin-I), as a binder resin, are added to a solvent to prepare a charge transport layer coating solution (Page 10, lines 38-43). This specific example provides a mass ratio of the polymer to the functional material of 66.7:33.3 (calculated by Examiner; 100/150 = 66.7 and 50/150 = 33.3).
Hirayama et al. and Azuma et al. are analogous art because they are from the same field of endeavor as that of the instant invention, namely that of polyacrylate resins prepared from a dihydric phenol and an aromatic dicarboxylic acid and applied from solution to a substrate to form a coating film. At the time of the filing of the instant invention, a person of ordinary skill in the art would have found it obvious to include a charge transporting agent in an amount of 10 to 200 parts by mass per 100 parts by mass of the resin, as taught by Azuma et al., in the resin composition for coating, as taught by Hirayama et al., and would have been motivated to do so in order to improve the abrasion resistance of the coating formed therefrom (Page 6, lines 21-25).
Claims 11 and 13 are rejected under 35 U.S.C. 103 as being unpatentable over Hirayama et al. (US 2011/0064930).
Regarding claim 11, Hirayama et al. teaches an ester-based polymer produced by interfacial condensation polymerization from a bisphenol and a dicarboxylic acid chloride in the presence of an organic solvent, an alkali, and a catalyst (¶51, 52), the polymer being dissolved in a solvent and applied to a substrate to form a film (coating) (¶119). In Example 3, 0.90 g of 2,2-bis(3,5-dimethyl-4-hydroxyphenyl)-4-methylpentane (bisphenol compound) and 0.03 g of benzyl triethylammonium chloride (catalyst) are dissolved in 15 mL of a 1 M sodium hydroxide solution, and a solution of 0.39 g of 4,4'-biphenyldicarboxylic acid chloride (dicarboxylic acid) and 0.28 g of isophthaloyl chloride in 15 mL of chloroform (solvent) is added to the solution under stirring (¶121). The dicarboxylic acid residue of Example 3 is the residue of 4,4'-biphenyldicarboxylic acid chloride, which corresponds to the structural unit represented by Formula (II) of the instant claims, and also to the structural unit represented by Formula (II-1), wherein r is 0.
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The organic solvent is preferably one that is less miscible with water and capable of dissolving the ester-based polymer, such as dichloromethane, chloroform or 1,2-dichloroethane (¶55), the alkali may be sodium hydroxide (¶56), and the catalyst is preferably a phase transfer catalyst such as benzyl triethylammonium chloride (¶57).
The examples of Hirayama et al. do not teach the bisphenol compound as defined by Formula (I-A) and Formula (I-B). Specifically, the examples use a bisphenol compound which contains a substituent other than R3 on each of the benzene rings. However, Hirayama et al. teaches that other bisphenol compounds may be used to form the polymer such as 2,2-bis(3-methyl-4-hydroxyphenyl)propane, 2,2-bis(3,5-dimethyl-4-hydroxyphenyl)propane, 2,2-bis(3-methyl-4-hydroxyphenyl)butane, 2,2-bis(3-methyl-4-hydroxyphenyl)-4-methylpentane, 2,2-bis(3-sec-butyl-4-hydroxyphenyl)propane, and 2,2-bis(3-cyclohexyl-4-hydroxyphenyl)propane (¶54). The 2,2-bis(3-methyl-4-hydroxyphenyl)-4-methylpentane bisphenol compound corresponds to the structure of Formula (I-A) wherein R1 is an isobutyl group (branched alkyl having 4 or more carbon atoms), R2 is methyl (a linear alkyl group and an unsubstituted hydrocarbon group); each R3 is methyl, and a total number of carbon atoms in R1 and the two R3 substituents is 6.
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At the time of the filing of the instant invention, a person of ordinary skill in the art would have found it obvious to use 2,2-bis(3-methyl-4-hydroxyphenyl)-4-methylpentane as the bisphenol compound in forming the polymer, and would have been motivated to do so because Hirayama et al. teaches that it is a suitable compound to use in the reaction and the bisphenol compounds are art recognized equivalents used for the same purpose and one of ordinary skill in the art would have a reasonable expectation of success in substituting one for the other. MPEP 2144.06 II.
As stated above, Example 3 of Hirayama et al. uses 0.90 g of 2,2-bis(3,5-dimethyl-4-hydroxyphenyl)-4-methylpentane and 0.39 g of 4,4'-biphenyldicarboxylic acid chloride. Based on the above rejection, 2,2-bis(3-methyl-4-hydroxyphenyl)-4-methylpentane is used as the bisphenol component. The residue of 2,2-bis(3-methyl-4-hydroxyphenyl)-4-methylpentane, C20H24O2, has a formula weight of 296.4 g/mol (Formula II); and the residue of 4,4'-biphenyldicarboxylic acid chloride, Cl4H8O2, has a formula weight of 208.22 g/mol (Formula I-A). These values provide for a content of the structural unit represented by Formula (I-A) of 38% by mass and a content of the structural unit represented by Formula (II) of 62% by mass (calculated by Examiner)3.
Regarding claim 13, Hirayama et al. teaches that the polymer can be used as a coating on a substrate to form a film (¶119).
Claim 12 is rejected under 35 U.S.C. 103 as being unpatentable over Hirayama et al. (US 2011/0064930) in view of Sakurai et al. (US 2005/0209404).
Regarding claim 12, Hirayama et al. teaches an ester-based polymer produced by interfacial condensation polymerization from a bisphenol and a dicarboxylic acid chloride in the presence of an organic solvent, an alkali, and a catalyst (¶51, 52), the polymer being dissolved in a solvent and applied to a substrate to form a film (coating) (¶119). In Example 3, 0.90 g of 2,2-bis(3,5-dimethyl-4-hydroxyphenyl)-4-methylpentane (bisphenol compound) and 0.03 g of benzyl triethylammonium chloride (catalyst) are dissolved in 15 mL of a 1 M sodium hydroxide solution, and a solution of 0.39 g of 4,4'-biphenyldicarboxylic acid chloride (dicarboxylic acid) and 0.28 g of isophthaloyl chloride in 15 mL of chloroform (solvent) is added to the solution under stirring (¶121). The dicarboxylic acid residue of Example 3 is the residue of 4,4'-biphenyldicarboxylic acid chloride, which corresponds to the structural unit represented by Formula (II) of the instant claims, and also to the structural unit represented by Formula (II-1), wherein r is 0, and Formula (II-2).
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The organic solvent is preferably one that is less miscible with water and capable of dissolving the ester-based polymer, such as dichloromethane, chloroform or 1,2-dichloroethane (¶55), the alkali may be sodium hydroxide (¶56), and the catalyst is preferably a phase transfer catalyst such as benzyl triethylammonium chloride (¶57).
The examples of Hirayama et al. do not teach the bisphenol compound as defined by Formula (I-A) and Formula (I-B). Specifically, the examples use a bisphenol compound which contains a substituent other than R3 on each of the benzene rings. However, Hirayama et al. teaches that other bisphenol compounds may be used to form the polymer such as 2,2-bis(3-methyl-4-hydroxyphenyl)propane, 2,2-bis(3,5-dimethyl-4-hydroxyphenyl)propane, 2,2-bis(3-methyl-4-hydroxyphenyl)butane, 2,2-bis(3-methyl-4-hydroxyphenyl)-4-methylpentane, 2,2-bis(3-sec-butyl-4-hydroxyphenyl)propane, and 2,2-bis(3-cyclohexyl-4-hydroxyphenyl)propane (¶54). The 2,2-bis(3-methyl-4-hydroxyphenyl)-4-methylpentane bisphenol compound corresponds to the structure of Formula (I-A) wherein R1 is an isobutyl group (branched alkyl having 4 or more carbon atoms), R2 is methyl (a linear alkyl group and an unsubstituted hydrocarbon group); each R3 is methyl, and a total number of carbon atoms in R1 and the two R3 substituents is 6.
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At the time of the filing of the instant invention, a person of ordinary skill in the art would have found it obvious to use 2,2-bis(3-methyl-4-hydroxyphenyl)-4-methylpentane as the bisphenol compound in forming the polymer, and would have been motivated to do so because Hirayama et al. teaches that it is a suitable compound to use in the reaction and the bisphenol compounds are art recognized equivalents used for the same purpose and one of ordinary skill in the art would have a reasonable expectation of success in substituting one for the other. MPEP 2144.06 II.
As stated above, Example 3 of Hirayama et al. uses 0.90 g of 2,2-bis(3,5-dimethyl-4-hydroxyphenyl)-4-methylpentane and 0.39 g of 4,4'-biphenyldicarboxylic acid chloride. Based on the above rejection, 2,2-bis(3-methyl-4-hydroxyphenyl)-4-methylpentane is used as the bisphenol component. The residue of 2,2-bis(3-methyl-4-hydroxyphenyl)-4-methylpentane, C20H24O2, has a formula weight of 296.4 g/mol (Formula II); and the residue of 4,4'-biphenyldicarboxylic acid chloride, Cl4H8O2, has a formula weight of 208.22 g/mol (Formula I-A). These values provide for a content of the structural unit represented by Formula (I-A) of 38% by mass and a content of the structural unit represented by Formula (II) of 62% by mass (calculated by Examiner)4.
Hirayama et al. does not teach that the 4,4'-biphenyldicarbonyl chloride is mixed with the mixture containing the alkaline aqueous solution of dihydric phenol and the organic solvent as a solid, the 4,4'-biphenyldicarboxylic acid chloride of Example 3 being added as a solution in chloroform. However, Sakurai et al. teaches the production of a polyacrylate by an interfacial polycondensation method performed in a two-phase system of an aqueous alkaline solution and a water-immiscible organic solvent using a dicarboxylic acid compound in the form of an acid chloride (¶52). In Synthesis Example 1, the bisphenol compound, tetrabutylammonium chloride, dichloromethane and water are placed in a reaction vessel and stirred, and the dicarboxylic acid chloride is then added as powder (¶59). Sakurai et al. further teaches that the dicarboxylic acid compound may be 4,4'-biphenyldicarboxylic acid, which is designated X-2, and teaches polyacrylates P-4, P-5 and P-6 in which X-2 is the sole dicarboxylic acid component in a molar ratio of 100/100 (¶55, 56, Table 1).
Hirayama et al. and Sakurai et al. are analogous art because they are from the same field of endeavor as that of the instant invention, namely that of the production of polyacrylates from a dihydric phenol and an aromatic dicarboxylic acid chloride by interfacial polycondensation. At the time of the filing of the instant invention, a person of ordinary skill in the art would have found it obvious to add the 4,4'-biphenyldicarboxylic acid chloride as a powder, as taught by Sakurai et al., in the process for producing the polymer, as taught by Hirayama et al., and would have been motivated to do so in order to obtain a polymer of higher molecular weight where the solubility of the dicarboxylic acid chloride in the water-immiscible organic solvent is low (¶53).
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 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 ‘812 claim(s) because the examined application claim is either anticipated by, or would have been obvious over, the ‘812 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); 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 nonstatutory double patenting provided the ‘812 application or patent either is shown to be commonly owned with the examined application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. See MPEP § 717.02 for applications subject to examination under the first inventor to file provisions of the AIA as explained in MPEP § 2159. See MPEP § 2146 et seq. for applications not subject to examination under the first inventor to file provisions of the AIA . A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
The filing of a terminal disclaimer by itself is not a complete reply to a nonstatutory double patenting (NSDP) rejection. A complete reply requires that the terminal disclaimer be accompanied by a reply requesting reconsideration of the prior Office action. Even where the NSDP rejection is provisional the reply must be complete. See MPEP § 804, subsection I.B.1. For a reply to a non-final Office action, see 37 CFR 1.111(a). For a reply to final Office action, see 37 CFR 1.113(c). A request for reconsideration while not provided for in 37 CFR 1.113(c) may be filed after final for consideration. See MPEP §§ 706.07(e) and 714.13.
The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The actual filing date of the application in which the form is filed determines what form (e.g., PTO/SB/25, PTO/SB/26, PTO/AIA /25, or PTO/AIA /26) should be used. A web-based eTerminal Disclaimer may be filled out completely online using web-screens. An eTerminal Disclaimer that meets all requirements is auto-processed and approved immediately upon submission. For more information about eTerminal Disclaimers, refer to www.uspto.gov/patents/apply/applying-online/eterminal-disclaimer.
Claims 1-6 and 8-14 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-11 of copending Application No. 18/493,812 (“the ‘812 application”) in view of Hirayama et al. (US 2011/0064930).
Regarding claims 1, 2, and 4, claim 1 of the ‘812 application teaches a resin composition for coating, comprising a polymer having a structural unit represented by Formula (I), a structural unit represented by Formula (II), and a terminal structure represented by Formula (III-A) or (III-B), wherein, in the polymer, a content of the structural unit represented by Formula (I) is 10% by mass or more, and a content of the structural unit represented by Formula (II) is 10% by mass or more,
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in the formula, Me represents methyl,
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The structural unit represented by Formula (I) of the ‘812 application is the residue of 2,2-bis(4-hydroxyphenyl)-4-methylpentane, and the structural unit represented by Formula (II) of the ‘812 application is the 4,4'-biphenylenedicarbonyl unit, which is the structural unit represented by Formula (II) and by Formula (II-I) of the instant claims, wherein r is 0. In terms of Formula (I-A) of the instant claims, the structural unit represented by Formula (I) of the ‘812 application is one in which R1 is a 2-methylpropyl group, which is an unsubstituted chain-like branched alkyl group having 4 carbon atoms, R2 is a methyl group, and each R3 is a hydrogen atom, so that the total number of carbon atoms in R1 and the two R3 groups is 4.
Claim 1 of the ‘812 application does not teach that the total number of carbon atoms in R1 and the two R3 groups is 6 or more, as required by claim 1 of the instant application. However, Hirayama et al. teaches an ester-based polymer of a bisphenol and 4,4'-biphenyldicarboxylic acid chloride (¶53, 121) in which the bisphenol may be 2,2-bis(3-methyl-4-hydroxyphenyl)-4-methylpentane (¶54), and teaches that the ring substituents R3 and R5 of formula (I) of Hirayama et al. are preferably a straight-chain or branched alkyl group of l to 4 carbon atoms while R4 and R6 each represent a hydrogen atom (¶40), and that when R3 to R6 are substituents an ester-based polymer with high solubility in solvents is provided (¶40, 42, 43). The ’812 application and Hirayama et al. are analogous art because they are from the same field of endeavor as that of the instant invention, namely that of polyacrylate resins prepared from a dihydric phenol and an aromatic dicarboxylic acid and formed into films by application of a solution of the resin to a substrate. At the time of the filing of the instant invention, a person of ordinary skill in the art would have found it obvious to provide a methyl group on each of the two benzene rings, as taught by Hirayama et al., of the structural unit represented by Formula (I), as taught by the ‘812 application, and would have been motivated to do so in order to provide an ester-based polymer having high solubility in solvents (¶40, 42, 43).
Regarding claim 3, claim 2 of the ‘812 application teaches that the content of the structural unit represented by Formula (I) in the polymer is 20% by mass or more.
Regarding claim 5, claim 3 of the ‘812 application teaches that the content of the structural unit represented by Formula (II) in the polymer is 20% by mass or more.
Regarding claim 6, claim 1 of the ‘812 application as modified by Hirayama et al. above provides a methyl group as each R3, which is an alkyl group having 1 to 4 carbon atoms, so that at least one of the two R3 groups is an alkyl group having 1 to 4 carbon atoms.
Regarding claim 8, this claim further defines the structural unit represented by Formula (I-B), which is not a required component of claim 1 because claim 1 requires at least one of the structural unit represented by Formula (I-A) or the structural unit represented by Formula (I-B). Therefore, this limitation is not required.
Regarding claim 9, claim 5 of the ‘812 application teaches a resin composition for coating further comprising a solvent.
Regarding claim 10, claim 6 of the ‘812 application teaches a resin composition for coating further comprising a functional material consisting of an aromatic ring-containing compound containing a benzene ring, wherein a mass ratio of a content of the polymer to a content of the functional material is polymer/functional material = 90:10 to 50:50.
Regarding claim 11, claim 7 of the ‘812 application teaches a polymer comprising a structural unit represented by Formula (I), a structural unit represented by Formula (II), and a terminal structure represented by Formula (III-A) or (III-B), wherein a content of the structural unit represented by Formula (I) is 10% by mass or more and a content of the structural unit represented by Formula (II) is 10% by mass or more.
Regarding claim 12, claim 8 of the ‘812 application teaches a method for producing a polymer having a structural unit represented by Formula (II), the method comprising a step of mixing a mixture containing an alkaline aqueous solution of dihydric phenol and an organic solvent with solid 4,4'-biphenyldicarbonyl chloride, and claim 9 of the ‘812 application teaches that the polymer is a polymer comprising a structural unit represented by Formula (I), a structural unit represented by Formula (II), and a terminal structure represented by Formula (IIIA) or (III-B), wherein a content of the structural unit represented by Formula (I) is 10% by mass or more and a content of the structural unit represented by Formula (II) is 10% by mass or more.
Regarding claim 13, claim 10 of the ‘812 application teaches a coating film comprising the polymer according to claim 7 of the ‘812 application.
Regarding claim 14, claim 11 of the ‘812 application teaches a method for forming a coating film comprising coating a substrate with the resin composition for coating according to claim 1 of the ‘812 application.
This is a provisional nonstatutory double patenting rejection.
Claim 7 is provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-11 of copending Application No. 18/493,812 (“the ‘812 application”) in view of Hirayama et al. (US 2011 /0064930) as applied to claim 1 above, and further in view of Murata et al. (US 2020/0325329).
Regarding claim 7, claim 1 of the ‘812 application in view of Hirayama et al. teaches the resin composition for coating of claim 1 as set forth above, but does not teach that R1 has 5 or more carbon atoms. However, Murata et al. teaches a polyacrylate resin comprising a dihydric phenol residue in which X represents a linear or branched bivalent hydrocarbon group having 4 to 8, preferably 4 to 7, more preferably 5 to 7 carbon atoms, and that when the carbon number of X is smaller than 4 a water vapor-barrier property and/or solubility properties in non-halogenated organic solvents are deteriorated (¶32). Murata et al. teaches that the dihydric phenol may be 1,1-bis(4-hydroxyphenyl)-2-ethylhexane (¶33), the residue of which corresponds to the structural unit represented by Formula (I-A) of the instant claims wherein R1 is a 1-ethylpentyl group having 7 carbon atoms. The ‘812 application and Murata et al. are analogous art because they are from the same field of endeavor as that of the instant invention, namely that of polyacrylate resins prepared from a dihydric phenol and an aromatic dicarboxylic acid and formed into films by application of a solution of the resin to a substrate. At the time of the filing of the instant invention, a person of ordinary skill in the art would have found it obvious to use 1,1-bis(4-hydroxyphenyl)-2-ethylhexane, as taught by Murata et al., as the dihydric phenol to form the polymer, as taught by the ‘812 application, and would have been motivated to do so in order to obtain a resin having improved solubility properties in non-halogenated organic solvents and improved abrasion-resisting properties (¶32, Abstract).
This is a provisional nonstatutory double patenting rejection.
Correspondence
Any inquiry concerning this communication or earlier communications from the examiner should be directed to ANGELA C SCOTT whose telephone number is (571)270-3303. The examiner can normally be reached Monday-Friday, 8:30-5:00, EST.
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/ANGELA C SCOTT/Primary Examiner, Art Unit 1767
1(0.9 g/296.4 g/mol) = 0.00304 mol; (0.39 g/208.22 g/mol) = 0.00187 mol for a total of 0.00491 mol; then, (0.00304/0.00491)*100 = 62%; (0.00187/0.00491)*100 = 38%.
2100/(100+10) = 90.9 and 10/(100+10) = 9.1; 100/(100+200) = 33.3 and 200/(100+200) = 66.7; 100/(100+20) = 83.3 and 20/(100+20) = 16.7; 100/(100+100) = 50 and 100/(100+100) = 50.
3(0.9 g/296.4 g/mol) = 0.00304 mol; (0.39 g/208.22 g/mol) = 0.00187 mol for a total of 0.00491 mol; then, (0.00304/0.00491)*100 = 62%; (0.00187/0.00491)*100 = 38%.
4(0.9 g/296.4 g/mol) = 0.00304 mol; (0.39 g/208.22 g/mol) = 0.00187 mol for a total of 0.00491 mol; then, (0.00304/0.00491)*100 = 62%; (0.00187/0.00491)*100 = 38%.
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