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 .
Status of Claims
Claims 1-20 are pending in the current application.
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 1-20 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.
Claim 1 recites the transitional phrase “essentially including.” This transitional phrase renders the claim indefinite. Transitional phrases commonly include “comprising,” “consisting of,” and “consisting essentially of.” Other terminology is acceptable (such as “including,” “containing,” or “characterized by” being synonymous with “comprising”). The term “essentially” is known and follows the closed-type transitional phrase “consisting” to permit claim scope to include specific materials or steps that do not materially affect the basic and novel characteristics of the claimed invention. See MPEP 2111.03. However, the term “essentially” preceding the open-ended-type transitional phrase “including” adds ambiguity, and is not commonly accepted with an established meaning. Therefore, the transitional phrase “essentially including” renders the scope of the claim indefinite. For the purposes of examination, claim 1 is interpreted as instead reciting “(B) an epoxy resin comprising a 4-amino-3-methylphenol-type epoxy resin.”
Claims 3 and 5 are indefinite as the recitation of possible elements is not properly claimed in the alternative. Treatment of claims reciting alternatives is not governed by the particular format used (e.g., alternatives may be set forth as "a material selected from the group consisting of A, B, and C" or "wherein the material is A, B, or C"). See, e.g., the Supplementary Examination Guidelines for Determining Compliance with 35 U.S.C. 112 and for Treatment of Related Issues in Patent Applications ("Supplementary Guidelines"), 76 Fed. Reg. 7162, 7166 (February 9, 2011). Alternative expressions are permitted if they present no uncertainty or ambiguity with respect to the question of scope or clarity of the claims. A Markush grouping is a closed group of alternatives, i.e., the selection is made from a group "consisting of" (rather than "comprising" or "including") the alternative members. Abbott Labs., 334 F.3d at 1280, 67 USPQ2d at 1196. If a Markush grouping requires a material selected from an open list of alternatives (e.g., selected from the group "comprising" or "consisting essentially of" the recited alternatives), the claim should generally be rejected under 35 U.S.C. 112(b) as indefinite because it is unclear what other alternatives are intended to be encompassed by the claim. If a claim is intended to encompass combinations or mixtures of the alternatives set forth in the Markush grouping, the claim may include qualifying language preceding the recited alternatives (such as "at least one member" selected from the group), or within the list of alternatives (such as "or mixtures thereof"). Id. at 1281. See MPEP 2173.05(h).
For the purposes of examination, claim 3 is interpreted as reciting “at least one selected from the group consisting of formulas (Y-1) to (Y-9) below: ….”
For the purposes of examination, claim 5 is interpreted as reciting “at least one selected from the group consisting of (C-1) to (C-4) below: ….”
Correction is required.
Claims 2, 4, and 6-20 are also rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, since these claims depend from the claims rejected above and do not remedy the aforementioned deficiencies.
Claim Rejections - 35 USC § 103
In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis (i.e., changing from AIA to pre-AIA ) for the rejection will not be considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status.
The following is a quotation of 35 U.S.C. 103 which forms the basis for all obviousness rejections set forth in this Office action:
A patent for a claimed invention may not be obtained, notwithstanding that the claimed invention is not identically disclosed as set forth in section 102, if the differences between the claimed invention and the prior art are such that the claimed invention as a whole would have been obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art to which the claimed invention pertains. Patentability shall not be negated by the manner in which the invention was made.
The factual inquiries for establishing a background for determining obviousness under 35 U.S.C. 103 are summarized as follows:
1. Determining the scope and contents of the prior art.
2. Ascertaining the differences between the prior art and the claims at issue.
3. Resolving the level of ordinary skill in the pertinent art.
4. Considering objective evidence present in the application indicating obviousness or nonobviousness.
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 1-20 are rejected under 35 U.S.C. 103 as being unpatentable over Chiba et al. (JP 2019-077804 A, herein English machine translation utilized for all citations) in view of Deguchi et al. (US 2015/0175799 A1).
Regarding Claim 1, Chiba teaches a curable resin composition comprising at least one epoxy resin, a cyanate ester, and an amine-based latent curing agent (Chiba, [0008]-[0012]). Chiba teaches an epoxy resin can be any compound having at least one epoxy group in the molecule, and can have three epoxy groups (Chiba, [0017]-[0019]).
Chiba remains silent regarding an epoxy resin comprising a 4-amino-3-methylphenol-type epoxy resin.
Deguchi, however, teaches a curable resin composition comprising a polyfunctional epoxy component having three glycidyl (epoxy) groups, a cyanic acid ester (i.e., a cyanate ester), and a curing agent; where the polyfunctional epoxy component includes compounds such as compound (a-2) having a 4-amino-3-methylphenol-type epoxy structure (Deguchi, Abstract, [0027]-[0037]). It would have been obvious to one of ordinary skill in the art to have selected and to have tried compound (a-2) as a polyfunctional epoxy component from the finite number of specific examples disclosed by Deguchi with a predictable and reasonable expectation of success (MPEP 2143).
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Deguchi – compound (a-2)
Since Chiba and Deguchi both disclose curable resin compositions comprising polyfunctional epoxy resins, cyanate esters, and curing agents, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have utilized Deguchi’s compound (a-2) as an epoxy resin having three epoxy groups in Chiba’s composition to yield a curable resin that exhibits excellent coating properties, low tack properties, flexibility, high heat resistance, superior insulating properties, and excellent heat dissipation as taught by Deguchi (Deguchi, [0017]-[0020], [0046]-[0048], [0161]).
Regarding Claims 2 and 3, modified Chiba teaches the cyanate ester includes structures of formulae 2-1 and 2-2 that satisfy claimed formulae (1) and (2), respectively (Chiba, [0008]-[0010], [0024]-[0027], [0030], formulae 2-1, 2-2).
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Chiba – Formula 2-1
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Chiba – Formula 2-2
Regarding Claims 4, 10, and 11, modified Chiba teaches the amine-based latent curing agent is an active hydrogen-containing amine-based latent curing agent (Chiba, [0031]-[0043]).
Regarding Claim 5, modified Chiba teaches the active hydrogen-containing amine-based latent curing agent is a modified amine obtained by reacting an epoxy compound with an amine compound having an active hydrogen in the molecule (Chiba, [0031]-[0043]).
Regarding Claims 6, 12, 13, 14, and 15, modified Chiba teaches the polyfunctional epoxy component having three glycidyl groups (compound a-2) is included preferably from 10-90% by mass relative to all epoxy resin components (Chiba, [0019]; Deguchi, [0052]). Chiba teaches the cyanate ester is included in an amount of 10-1,000 parts by mass per 100 parts by mass of the total of all epoxy resin components (Chiba, [0030]). Taking a basis of 100 parts by mass of the total of all epoxy resin components, compound a-2 is included in a range of 10-90 parts by mass and the cyanate ester is included in an amount of 10-1,000 parts by mass; where this yields a range of compound a-2 of 1 to 900 parts by mass with respect to 100 parts by mass of cyanate ester resin (10/1,000 normalized to per 100cyanate yields 1/100=1 to 90/10 normalized to per 100cyanate yields 900/100=900). Modified Chiba’s range encompasses the claimed ranges of 1 to 200 parts by mass, and therefore, renders obvious the claimed ranges (MPEP 2144.05).
Regarding Claims 7, 16, 17, 18, 19, and 20, modified Chiba teaches the curable resin composition is measured with an E-type viscometer and preferably has a viscosity of less than 100 Pa*s at 25oC at 20 rpm, where the viscosity is kept low to achieve good workability (Chiba, [0062]-[0066], Tables 1-2). Although modified Chiba measures viscosity at 20 rpm rather than the claimed 10 rpm and does not discuss measuring viscosity rate increase after standing at 40oC for 72 hours, one of ordinary skill in the art would readily understand that modified Chiba’s viscosity range of less than 100 Pa*s is substantially similar to the claimed initial viscosity range of 70 Pa*s or less, because both are closely related values pertaining to substantially identical curable resin compositions comprising epoxy resins, cyanate esters, and latent curing agents and exhibiting low viscosity to achieve good workability for use within adhesives. 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. In re Best, 562 F.2d 1252, 1255, 195 USPQ 430, 433 (CCPA 1977) (MPEP 2112.01). If modified Chiba’s viscosity values were measured at the same rpm value and let stand at 40oC for 72 hours as the claimed invention, one of ordinary skill in the art would expect modified Chiba’s curable resin composition viscosity values to be substantially similar to the claimed ranges where any differences would be minor and obvious. Therefore, modified Chiba’s viscosity values are considered to render obvious the claimed ranges of initial viscosity and viscosity increase rate with a predictable and reasonable expectation of success (MPEP 2143, MPEP 2112.01, MPEP 2144.05, I). Moreover, it would have been obvious to attain low viscosity within the claimed ranges to achieve good workability as taught by Chiba (Chiba, [0066]).
Regarding Claim 8, modified Chiba teaches a cured product obtained by curing the curable resin composition according to claim 1 (Chiba, [0001], [0007], [0011], [0013], [0016]).
Regarding Claim 9, modified Chiba teaches an adhesive comprising the curable resin composition according to claim 1 (Chiba, [0001], [0007], [0012]-[0013], [0053]).
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to ELI D STRAH whose telephone number is (571)270-7088. The examiner can normally be reached M-F 9 am - 7 pm.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Aaron Austin can be reached at 571-272-8935. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/Eli D. Strah/Primary Examiner, Art Unit 1782