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 § 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 1-7 and 9-11 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, claim 1 recites the limitation "the formula" in line 8 and the limitation “the formulae” in line 12. There is insufficient antecedent basis for these limitations in the claim. Claim 1 sets forth four different formulae in the claim and it is unclear as to which formulae the phrases refer. For the purpose of further examination, the reference in line 8 will be interpreted to refer to Formula (I), and the reference in line 12 will be interpreted to refer to Formula (III-A) and Formula (III-B).
Regarding claim 4, claim 4 recites the limitation "the formula" in line 5. There is insufficient antecedent basis for this limitation in the claim. Claim 1, from which claim 4 depends, sets forth four different formulae in the claim and claim 4 adds another. It is unclear as to which formula the phrase refers. For the purpose of further examination, the limitation in line 5 will be interpreted to refer to Formula (III-A-1).
Regarding claim 7, claim 7 recites the limitation "the formula" in line 9 and the limitation “the formulae” in line 13. There is insufficient antecedent basis for these limitations in the claim. Claim 7 sets forth four different formulae in the claim and it is unclear as to which formulae the phrases refer. For the purpose of further examination, the reference in line 9 will be interpreted to refer to Formula (I), and the reference in line 13 will be interpreted to refer to Formula (III-A) and Formula (III-B).
Regarding claim 9, claim 9 recites the limitation "the formula" in line 10 and the limitation “the formulae” in line 14. There is insufficient antecedent basis for these limitations in the claim. Claim 9 sets forth four different formulae in the claim and it is unclear as to which formulae the phrases refer. For the purpose of further examination, the reference in line 10 will be interpreted to refer to Formula (I), and the reference in line 14 will be interpreted to refer to Formula (III-A) and Formula (III-B).
Regarding claims 2, 3, 5, 6, 10, and 11, these claims depend from a rejected claim and include all of the limitations thereof. Therefore, they are 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 and 11 are rejected under 35 U.S.C. 103 as being unpatentable over Mitsumori (US 2010/0221040) in view of Akizuki et al. (JP 2008-031347) and Murata et al. (US 2020/0325329). For convenience, the citations below for Akizuki et al. are taken from an English language machine translation included herewith.
Regarding claims 1-5 and 11, Mitsumori teaches an electrophotographic photoreceptor comprising an electroconductive substrate, and a charge transport layer and a charge generation layer formed on the substrate. The charge transport layer comprises a charge transport material and a binder resin (¶13). The charge transport layer is obtained by applying a coating solution obtained by dissolving or dispersing a binder resin in a solvent together with the charge transport material, on an electroconductive substrate, followed by drying (¶113). The binder resin is a polyacrylate resin (¶123), which is formed by condensation of a bivalent alcohol having a ring with aromaticity and a bivalent carboxylic acid having a ring with aromaticity (¶124). The bivalent alcohol used for the polyacrylate resin can be 2,2-bis-(4-hydroxyphenyl)-4-methylpentane (¶115, 129) (corresponds to the structural unit represented by Formula (I)). The bivalent carboxylic acid having a ring with aromaticity is particularly preferably biphenyl-4,4'-dicarboxylic acid (¶131) (corresponds to the structural unit represented by Formula (II)). The polyacrylate resin is produced by an interfacial polymerization method (¶132, 133) in which a molecular weight modifier is used such as p-(tert-butyl)phenol (¶137, 138) (corresponds to Formula (III-A-1) wherein Rd is an alkyl group and s is 1).
Mitsumori does not teach a working example in which the polyacrylate resin is formed from biphenyl-4,4'-dicarboxylic acid. However, Akizuki et al. teaches a film-forming resin containing as a main component a polyester composed of a divalent carboxylic acid residue of formula (II), which is 4,4'-biphenyldicarboxylic acid (same as biphenyl-4,4'-dicarboxylic acid), and a divalent phenol residue (¶9, 12, 14). Mitsumori and Akizuki et al. are analogous art because they are from the same field of endeavor as that of the instant invention, namely that of aromatic polyester resins applied 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 select 4,4'-biphenyldicarboxylic acid as the carboxylic acid component, as taught by Akizuki et al., to form the polyacrylate resin, as taught by Mitsumori, and would have been motivated to do so because Akizuki et al. teaches that this acid is particularly preferable in terms of abrasion resistance in a resin that is dissolved in a solvent and applied as a coating film to electronic components including electrophotographic photoreceptors (¶4), and Mitsumori desires a polyacrylate resin to improve mechanical characteristics of the charge transport layer (¶125).
Mitsumori does not teach a working example in which the bivalent alcohol of the polyacrylate resin is 2,2-bis(4-hydroxyphenyl)-4-methylpentane. However, Murata et al. teaches a polyacrylate resin used to form a film and a laminate (¶1) comprising a dihydric phenol residue shown in general formula (1), in which X represents a linear or branched bivalent hydrocarbon group having 4 to 8 carbon atoms, and teaches that from a viewpoint of a water vapor barrier property, 2,2-bis(4-hydroxyphenyl)-4-methylpentane is preferable (¶33). Mitsumori 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 aromatic polyester resins applied 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 select 2,2-bis(4-hydroxyphenyl)-4-methylpentane, as taught by Murata et al., as the bivalent alcohol of the polyacrylate resin, as taught by Mitsumori, and would have been motivated to do so because Murata et al. teaches that this dihydric phenol is preferable and that the resulting polyacrylate resin is excellent in heat-resisting properties, abrasion-resisting properties, and solubility properties in non-halogenated organic solvents (¶1, 33).
A polyacrylate resin formed from substantially equimolar amounts (because one residue of divalent acid reacts with one residue of divalent alcohol) of 2,2-bis(4-hydroxyphenyl)-4-methylpentane and biphenyl-4,4'-dicarboxylic acid, as suggested by the combined teachings above, contains 56.3% by mass of the structural unit represented by Formula (I) and 43.7% by mass of the structural unit represented by Formula (II) (calculated by Examiner)1. Therefore, the contents of 10% by mass or more and 20% by mass or more are met.
Regarding claim 6, Mitsumori teaches that the charge transport layer is obtained by applying a coating solution obtained by dissolving or dispersing a binder resin in a solvent together with the charge transport material, on an electroconductive substrate, followed by drying (¶113). The charge transport material is represented by formula (I), which is an aromatic ring-containing compound containing a benzene ring (a functional material) (¶46, 60). The content of the charge transport material with respect to 100 parts by mas of binder resin is from 20 to 90 parts by mass (¶140). This provides a mass ratio of the content of the binder resin to a content of the charge transport material of 83.3:16.7 to 52.6:47.4 (calculated by Examiner)2.
Claims 7 and 10 are rejected under 35 U.S.C. 103 as being unpatentable over Mitsumori (US 2010/0221040) in view of Akizuki et al. (JP 2008-031347) and Murata et al. (US 2020/0325329). For convenience, the citations below for Akizuki et al. are taken from an English language machine translation included herewith.
Regarding claims 7 and 10, Mitsumori teaches an electrophotographic photoreceptor comprising an electroconductive substrate, and a charge transport layer and a charge generation layer formed on the substrate. The charge transport layer comprises a charge transport material and a binder resin (¶13). The charge transport layer is obtained by applying a coating solution obtained by dissolving or dispersing a binder resin in a solvent together with the charge transport material, on an electroconductive substrate, followed by drying (¶113). The binder resin is a polyacrylate resin (¶123), which is formed by condensation of a bivalent alcohol having a ring with aromaticity and a bivalent carboxylic acid having a ring with aromaticity (¶124). The bivalent alcohol used for the polyacrylate resin can be 2,2-bis-(4-hydroxyphenyl)-4-methylpentane (¶115, 129) (corresponds to the structural unit represented by Formula (I)). The bivalent carboxylic acid having a ring with aromaticity is particularly preferably biphenyl-4,4'-dicarboxylic acid (¶131) (corresponds to the structural unit represented by Formula (II)). The polyacrylate resin is produced by an interfacial polymerization method (¶132, 133) in which a molecular weight modifier is used such as p-(tert-butyl)phenol (¶137, 138) (corresponds to Formula (III-A-1) wherein Rd is an alkyl group and s is 1).
Mitsumori does not teach a working example in which the polyacrylate resin is formed from biphenyl-4,4'-dicarboxylic acid. However, Akizuki et al. teaches a film-forming resin containing as a main component a polyester composed of a divalent carboxylic acid residue of formula (II), which is 4,4'-biphenyldicarboxylic acid (same as biphenyl-4,4'-dicarboxylic acid), and a divalent phenol residue (¶9, 12, 14). Mitsumori and Akizuki et al. are analogous art because they are from the same field of endeavor as that of the instant invention, namely that of aromatic polyester resins applied 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 select 4,4'-biphenyldicarboxylic acid as the carboxylic acid component, as taught by Akizuki et al., to form the polyacrylate resin, as taught by Mitsumori, and would have been motivated to do so because Akizuki et al. teaches that this acid is particularly preferable in terms of abrasion resistance in a resin that is dissolved in a solvent and applied as a coating film to electronic components including electrophotographic photoreceptors (¶4), and Mitsumori desires a polyacrylate resin to improve mechanical characteristics of the charge transport layer (¶125).
Mitsumori does not teach a working example in which the bivalent alcohol of the polyacrylate resin is 2,2-bis(4-hydroxyphenyl)-4-methylpentane. However, Murata et al. teaches a polyacrylate resin used to form a film and a laminate (¶1) comprising a dihydric phenol residue shown in general formula (1), in which X represents a linear or branched bivalent hydrocarbon group having 4 to 8 carbon atoms, and teaches that from a viewpoint of a water vapor barrier property, 2,2-bis(4-hydroxyphenyl)-4-methylpentane is preferable (¶33). Mitsumori 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 aromatic polyester resins applied 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 select 2,2-bis(4-hydroxyphenyl)-4-methylpentane, as taught by Murata et al., as the bivalent alcohol of the polyacrylate resin, as taught by Mitsumori, and would have been motivated to do so because Murata et al. teaches that this dihydric phenol is preferable and that the resulting polyacrylate resin is excellent in heat-resisting properties, abrasion-resisting properties, and solubility properties in non-halogenated organic solvents (¶1, 33).
A polyacrylate resin formed from substantially equimolar amounts (because one residue of divalent acid reacts with one residue of divalent alcohol) of 2,2-bis(4-hydroxyphenyl)-4-methylpentane and biphenyl-4,4'-dicarboxylic acid, as suggested by the combined teachings above, contains 56.3% by mass of the structural unit represented by Formula (I) and 43.7% by mass of the structural unit represented by Formula (II) (calculated by Examiner)3. Therefore, the contents of 10% by mass or more are met.
Claim 8 is rejected under 35 U.S.C. 103 as being unpatentable over Sakurai et al. (US 2005/0209404) in view of Akizuki et al. (JP 2008-031347). For convenience, the citations below for Akizuki et al. are taken from an English language machine translation included herewith.
Regarding claim 8, Sakurai et al. teaches a method for producing a polyacrylate by polycondensation of a bisphenol compound and 2,6-naphthalenedicarboxylic acid or 4,4'-biphenyldicarboxylic acid (corresponds to Formula (II)) (¶51). The polycondensation is an interfacial polycondensation method performed in a two-phase system of an aqueous alkaline solution and water-immiscible organic solvent by using the dicarboxylic acid compound as an acid chloride (¶52) (corresponds to mixing a mixture containing an aqueous alkaline solution of a dihydric phenol and an organic solvent with a dicarboxylic acid chloride). In Synthesis Example 1, the dihydric phenol, tetrabutylammonium chloride, dichloromethane and water are put into a reaction vessel and stirred, after which the dicarboxylic acid chloride was added as powder (a solid dicarboxylic acid chloride) and washed out with dichloromethane; and aqueous sodium hydroxide is thereafter added dropwise (¶59). A monofunctional substance may be added during the polymerization as a molecular weight controlling agent, examples of which include monovalent phenols such as phenol, cresol and p-(tert-butyl)phenol (Formula III-A) and monovalent acid chlorides such as benzoyl chloride (¶54).
Sakurai et al. does not teach that the mixture with which the solid dicarboxylic acid chloride is mixed contains an alkaline aqueous solution of the dihydric phenol at the time of the mixing, the aqueous sodium hydroxide of Synthesis Example 1 being added after the acid chloride. However, Akizuki et al. teaches that in the interfacial polymerization the dihydric phenol, the end-capping agent, sodium hydroxide, and the polymerization catalyst are first dissolved in pure water to prepare the aqueous phase (¶61), and the acid chloride is thereafter contacted with that previously prepared alkaline aqueous phase (¶61). Sakurai et al. and Akizuki 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 aromatic polyester resins by interfacial polycondensation of a dihydric phenol with an aromatic dicarboxylic acid chloride. At the time of the filing of the instant invention, a person of ordinary skill in the art would have found it obvious to prepare the alkaline aqueous solution of the dihydric phenol before adding the solid 4,4'-biphenyldicarbonyl chloride to the mixture, as taught by Akizuki et al., in the process, as taught by Sakurai et al., and would have been motivated to do so because Akizuki et al. teaches that this order of preparation gives a coating resin with high abrasion resistance and low corrosiveness (¶95).
Claim 9 is rejected under 35 U.S.C. 103 as being unpatentable over Sakurai et al. (US 2005/0209404) and Akizuki et al. (JP 2008-031347) as applied to claim 8 above, and further in view of Murata et al. (US 2020/0325329).
Regarding claim 9, Sakurai et al. and Akizuki et al. teach the method of claim 8 as set forth above. These references do not teach that the polymer produced comprises the structural unit represented by Formula (I), or that a content of the structural unit represented by Formula (I) and Formula (II) are each present in 10% by mass or more. However, Murata et al. teaches a polyacrylate resin used to form a film and a laminate (¶1) comprising a dihydric phenol residue shown in general formula (1), in which X represents a linear or branched bivalent hydrocarbon group having 4 to 8 carbon atoms, and teaches that from a viewpoint of a water vapor barrier property, 2,2-bis(4-hydroxyphenyl)-4-methylpentane is preferable (¶33). Sakurai 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 aromatic polyester resins produced by interfacial polycondensation and used as film-forming or binder resins. At the time of the filing of the instant invention, a person of ordinary skill in the art would have found it obvious to select 2,2-bis(4-hydroxyphenyl)-4-methylpentane, as taught by Murata et al., as the bisphenol compound, as taught by Sakurai et al., and would have been motivated to do so because Murata et al. teaches that this dihydric phenol is preferable and that the resulting polyacrylate resin is excellent in heat-resisting properties, abrasion-resisting properties, and solubility properties in non-halogenated organic solvents (¶1, 33).
A polyacrylate resin formed from substantially equimolar amounts (because one residue of divalent acid reacts with one residue of divalent alcohol) of 2,2-bis(4-hydroxyphenyl)-4-methylpentane and biphenyl-4,4'-dicarboxylic acid, as suggested by the combined teachings above, contains 56.3% by mass of the structural unit represented by Formula (I) and 43.7% by mass of the structural unit represented by Formula (II) (calculated by Examiner)4. Therefore, the contents of 10% by mass or more are met.
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 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); 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 reference 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 11 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1, 4, 5, 9, 10, and 14 of copending Application No. 18/493,812 (the reference application) in view of Mitsumori (US 2010/0221040) and Murata et al. (US 2020/0325329).
Regarding claims 1 and 4, claims 1 and 4 of the reference application teach a resin composition for coating comprising: a polymer having at least one of a structural unit represented by Formula (I-A) or a structural unit represented by Formula (I-B), and having a structural unit represented by Formula (II), wherein, in the polymer, a total of respective contents of the structural unit represented by Formula (I-A) and the structural unit represented by Formula (I-B) is 10% by mass or more, and a content of the structural unit represented by Formula (II) is 10% by mass or more, wherein
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in Formula (I-B), R4 represents a hydrogen atom, a linear alkyl group, or an aryl group, n is an integer of 2 to 20, and R5 represents a hydrogen atom, an alkyl group, or an aryl group, and a substituent other than R5 is not present on the two benzene rings shown in Formula (I-B), and
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in Formula (II-1), Rc represents an alkyl group, an aryl group, or a halogen atom, and r is an integer of 0 to 4. When r is 0 in Formula (II-1), the structure reads on Formula (II) in the instant claims.
Claims 1 and 4 of the reference application do not teach that the alkyl chain in Formula (I-B) is an isobutyl group. However, Murata et al. teaches a polyacrylate resin used to form a film and a laminate (¶1) comprising a dihydric phenol residue shown in general formula (1), in which X represents a linear or branched bivalent hydrocarbon group having 4 to 8 carbon atoms, and teaches that from a viewpoint of a water vapor barrier property, 2,2-bis(4-hydroxyphenyl)-4-methylpentane is preferable (¶33). The reference 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 aromatic polyester resins applied 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 select 2,2-bis(4-hydroxyphenyl)-4-methylpentane, as taught by Murata et al., as the bisphenol compound, as taught by the reference application, and would have been motivated to do so because Murata et al. teaches that this dihydric phenol is preferable and that the resulting polyacrylate resin is excellent in heat-resisting properties, abrasion-resisting properties, and solubility properties in non-halogenated organic solvents (¶1, 33).
Claims 1 and 4 of the reference application do not teach a structure of Formula (III-A) or Formula (III-B) included in the polymer. However, Mitsumori teaches a binder resin that is a polyacrylate resin (¶123), which is formed by condensation of a bivalent alcohol having a ring with aromaticity and a bivalent carboxylic acid having a ring with aromaticity (¶124). The bivalent alcohol used for the polyacrylate resin can be 2,2-bis-(4-hydroxyphenyl)-4-methylpentane (¶115, 129), the bivalent carboxylic acid having a ring with aromaticity is particularly preferably biphenyl-4,4'-dicarboxylic acid (¶131), and the polyacrylate resin is produced by an interfacial polymerization method (¶132, 133) in which a molecular weight modifier is used such as p-(tert-butyl)phenol (¶137, 138) (corresponds to Formula (III-A-1) wherein Rd is an alkyl group and s is 1). The reference application and Mitsumori are analogous art because they are from the same field of endeavor as that of the instant invention, namely that of aromatic polyester resins applied 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 add a molecular weight modifier such as p-(tert-butyl)phenol, as taught by Mitsumori, to the polyacrylate polymer, as taught by the reference application, and would have been motivated to do so in order to control the molecular weight of the polymer in order to ensure that the polymer has the appropriate mechanical strength and viscosity for proper coating (¶139).
Regarding claim 2, a mass content of 10% by mass or more also reads on a mass content of 20% by mass or more due to overlapping ranges.
Regarding claim 3, claim 5 of the reference application teaches that the content of the structural unit represented by Formula (II-1) in the polymer is 20% by mass or more.
Regarding claim 5, claim 9 of the reference application teaches that the resin composition further comprises a solvent.
Regarding claim 6, claim 10 of the reference application teaches that the resin composition further comprises 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 14 of the reference application teaches a method for forming a coating film, comprising coating a substrate with the resin composition for coating according to claim 1.
This is a provisional nonstatutory double patenting rejection.
Claims 7 and 10 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 11 and 13 of copending Application No. 18/493,812 (the reference application) in view of Mitsumori (US 2010/0221040) and Murata et al. (US 2020/0325329).
Regarding claim 7, claim 11 of the reference application teaches a resin composition for coating comprising: a polymer having at least one of a structural unit represented by Formula (I-A) or a structural unit represented by Formula (I-B), and having a structural unit represented by Formula (II), wherein, in the polymer, a total of respective contents of the structural unit represented by Formula (I-A) and the structural unit represented by Formula (I-B) is 10% by mass or more, and a content of the structural unit represented by Formula (II) is 10% by mass or more, wherein
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in Formula (I-B), R4 represents a hydrogen atom, a linear alkyl group, or an aryl group, n is an integer of 2 to 20, and R5 represents a hydrogen atom, an alkyl group, or an aryl group, and a substituent other than R5 is not present on the two benzene rings shown in Formula (I-B), and
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in Formula (II), Rc represents an alkyl group, an aryl group, or a halogen atom, and r is an integer of 0 to 4.
While claim 4 does not depend from claim 11, it teaches Formula (II-1) as
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.
When r is 0 in Formula (II-1), the structure reads on Formula (II) in the instant claims. One of ordinary skill in the art would have found it obvious to use the structure of Formula (II-1) in the polymer of instant claim 7 and would have been motivated to do so because the reference application teaches it as suitable for use and a more specific version of Formula (II).
Claim 11 of the reference application does not teach that the alkyl chain in Formula (I-B) is an isobutyl group. However, Murata et al. teaches a polyacrylate resin used to form a film and a laminate (¶1) comprising a dihydric phenol residue shown in general formula (1), in which X represents a linear or branched bivalent hydrocarbon group having 4 to 8 carbon atoms, and teaches that from a viewpoint of a water vapor barrier property, 2,2-bis(4-hydroxyphenyl)-4-methylpentane is preferable (¶33). The reference 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 aromatic polyester resins applied 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 select 2,2-bis(4-hydroxyphenyl)-4-methylpentane, as taught by Murata et al., as the bisphenol compound, as taught by the reference application, and would have been motivated to do so because Murata et al. teaches that this dihydric phenol is preferable and that the resulting polyacrylate resin is excellent in heat-resisting properties, abrasion-resisting properties, and solubility properties in non-halogenated organic solvents (¶1, 33).
Claim 11 of the reference application does not teach a structure of Formula (III-A) or Formula (III-B) included in the polymer. However, Mitsumori teaches a binder resin that is a polyacrylate resin (¶123), which is formed by condensation of a bivalent alcohol having a ring with aromaticity and a bivalent carboxylic acid having a ring with aromaticity (¶124). The bivalent alcohol used for the polyacrylate resin can be 2,2-bis-(4-hydroxyphenyl)-4-methylpentane (¶115, 129), the bivalent carboxylic acid having a ring with aromaticity is particularly preferably biphenyl-4,4'-dicarboxylic acid (¶131), and the polyacrylate resin is produced by an interfacial polymerization method (¶132, 133) in which a molecular weight modifier is used such as p-(tert-butyl)phenol (¶137, 138) (corresponds to Formula (III-A-1) wherein Rd is an alkyl group and s is 1). The reference application and Mitsumori are analogous art because they are from the same field of endeavor as that of the instant invention, namely that of aromatic polyester resins applied 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 add a molecular weight modifier such as p-(tert-butyl)phenol, as taught by Mitsumori, to the polyacrylate polymer, as taught by the reference application, and would have been motivated to do so in order to control the molecular weight of the polymer in order to ensure that the polymer has the appropriate mechanical strength and viscosity for proper coating (¶139).
Regarding claim 10, claim 13 of the reference application teaches a coating film comprising: the polymer according to claim 11.
This is a provisional nonstatutory double patenting rejection.
Claims 8 and 9 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claim 12 of copending Application No. 18/493,812 (the reference application) in view of Mitsumori (US 2010/0221040) and Murata et al. (US 2020/0325329).
Regarding claims 8 and 9, claim 12 of the reference application teaches a method for producing a polymer, 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, wherein the polymer includes at least one of a structural unit represented by Formula (I-A) or a structural unit represented by Formula (I-B) and a structural unit represented by Formula (II-2), a total of respective contents of the structural unit represented by Formula (I-A) and the structural unit represented by Formula (I-B) is 10% by mass or more, and a content of the structural unit represented by Formula (II-2) is 10% by mass or more, wherein
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176
382
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in Formula (I-B), R4 represents a hydrogen atom, a linear alkyl group, or an aryl group, n is an integer of 2 to 20, and R5 represents a hydrogen atom, an alkyl group, or an aryl group, and a substituent other than R5 is not present on the two benzene rings shown in Formula (I-B), and
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154
306
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.
Claim 12 of the reference application does not teach that the alkyl chain in Formula (I-B) is an isobutyl group. However, Murata et al. teaches a polyacrylate resin used to form a film and a laminate (¶1) comprising a dihydric phenol residue shown in general formula (1), in which X represents a linear or branched bivalent hydrocarbon group having 4 to 8 carbon atoms, and teaches that from a viewpoint of a water vapor barrier property, 2,2-bis(4-hydroxyphenyl)-4-methylpentane is preferable (¶33). The reference 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 aromatic polyester resins applied 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 select 2,2-bis(4-hydroxyphenyl)-4-methylpentane, as taught by Murata et al., as the bisphenol compound, as taught by the reference application, and would have been motivated to do so because Murata et al. teaches that this dihydric phenol is preferable and that the resulting polyacrylate resin is excellent in heat-resisting properties, abrasion-resisting properties, and solubility properties in non-halogenated organic solvents (¶1, 33).
Claim 12 of the reference application does not teach a structure of Formula (III-A) or Formula (III-B) included in the polymer. However, Mitsumori teaches a binder resin that is a polyacrylate resin (¶123), which is formed by condensation of a bivalent alcohol having a ring with aromaticity and a bivalent carboxylic acid having a ring with aromaticity (¶124). The bivalent alcohol used for the polyacrylate resin can be 2,2-bis-(4-hydroxyphenyl)-4-methylpentane (¶115, 129), the bivalent carboxylic acid having a ring with aromaticity is particularly preferably biphenyl-4,4'-dicarboxylic acid (¶131), and the polyacrylate resin is produced by an interfacial polymerization method (¶132, 133) in which a molecular weight modifier is used such as p-(tert-butyl)phenol (¶137, 138) (corresponds to Formula (III-A-1) wherein Rd is an alkyl group and s is 1). The reference application and Mitsumori are analogous art because they are from the same field of endeavor as that of the instant invention, namely that of aromatic polyester resins applied 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 add a molecular weight modifier such as p-(tert-butyl)phenol, as taught by Mitsumori, to the polyacrylate polymer, as taught by the reference application, and would have been motivated to do so in order to control the molecular weight of the polymer in order to ensure that the polymer has the appropriate mechanical strength and viscosity for proper coating (¶139).
This is a provisional nonstatutory double patenting rejection.
Correspondence
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/ANGELA C SCOTT/Primary Examiner, Art Unit 1767
1 The structural unit of Formula (I) is C18H20O2 having a formula weight of 268.35, and the structural unit of Formula (II) is C14H8O2 having a formula weight of 208.22. This provides a total weight of 476.57. (268.35/476.57)*100 = 56.3% and (208.22/476.57)*100 = 43.7%.
2 100 parts of resin and 20 parts of charge transport material: 100/120 = 83.3; 20/120 = 16.7; 100 parts of resin and 90 parts of charge transport material: 100/190 = 52.6; 90/190 = 47.4
3 The structural unit of Formula (I) is C18H20O2 having a formula weight of 268.35, and the structural unit of Formula (II) is C14H8O2 having a formula weight of 208.22. This provides a total weight of 476.57. (268.35/476.57)*100 = 56.3% and (208.22/476.57)*100 = 43.7%.
4 The structural unit of Formula (I) is C18H20O2 having a formula weight of 268.35, and the structural unit of Formula (II) is C14H8O2 having a formula weight of 208.22. This provides a total weight of 476.57. (268.35/476.57)*100 = 56.3% and (208.22/476.57)*100 = 43.7%.
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