Detailed Office Action
Notice of Pre-AIA or AIA Status
1. 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
2. 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.
3. Claims 3, 4, and 8 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 3, it is not possible to operate for the full scope of the claim, because the values at the upper end of the claimed range cannot be realized in view of the 25 wt% endpoint of claim 1.
Regarding claim 4, it is unclear to what is being referred by the language, “in the respective polyisocyanate”; for example, it is unclear if the language refers to one of the classes of claimed polyisocyanate or to a specific polyisocyanate molecule.
Regarding claim 8, applicants have failed to specify the temperature condition for the viscosity; it is unclear if the viscosity is relative to the curing temperature of claim 7 or some other temperature. This issue must be resolved due to the extreme temperature sensitivity of viscosities.
4. The following is a quotation of 35 U.S.C. 112(d):
(d) REFERENCE IN DEPENDENT FORMS.—Subject to subsection (e), a claim in dependent form shall contain a reference 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 reference 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 reference 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 reference all the limitations of the claim to which it refers.
5. Claim 14 is 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. Claim 14 fails to further limit the subject matter of claim 11. 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.
Prior Art Rejections
6. The following is a quotation of the appropriate paragraphs of 35 U.S.C. 102 that form the basis for the rejections under this section made in this Office action:
A person shall be entitled to a patent unless –
(a)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention.
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.
7. Claims 1, 3, 4, and 6 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Hocke et al. (US 2019/0144592 A1).
Hocke et al. disclose within Examples 5-12, the trimerization of polyisocyanate blends of aliphatic polyisocyanate and cycloaliphatic polyisocyanate in the presence of potassium acetate, a trimerization catalyst, wherein glass fibers are present as a filler. In view of the disclosed quantity used for each polyisocyanate, amounts of each polyisocyanate fall within the claimed ranges of claims 1 and 3. Also, see paragraphs [0169], [0170], and [0173]-[0175] for discussion of the specific polyisocyanates employed within the examples.
8. Claim 2 is rejected under 35 U.S.C. 103 as being unpatentable over by Hocke et al. (US 2019/0144592 A1).
Hocke et al. disclose within Examples 5-12, the trimerization of polyisocyanate blends of aliphatic polyisocyanate and cycloaliphatic polyisocyanate in the presence of potassium acetate, a trimerization catalyst, wherein glass fibers are present as a filler. In view of the disclosed quantity used for each polyisocyanate, amounts of each polyisocyanate fall within the claimed ranges of claims 1 and 3. Also, see paragraphs [0169], [0170], and [0173]-[0175] for discussion of the specific polyisocyanates employed within the examples. Though the examples fail to utilize solvent, the use of solvent within the compositions is disclosed within paragraph [0130], and the position is taken that it would have been obvious to use solvent in the claimed amount for its known functions of controlling viscosity and promoting mixing of components.
9. Claims 1-14 are rejected under 35 U.S.C. 103 as being unpatentable over by WO 2020/152107 A1 (US 2022/0041792 A1 being an English language equivalent) in view of Hocke et al. (US 2019/0144592 A1).
WO 2020/152107 A1 disclose the production of prepregs, semifinished materials, and cured materials, wherein the trimerization of polyisocyanates, including aliphatic and cycloaliphatic polyisocyanates, is controlled through the selection of catalyst and reaction conditions. Applicants’ catalyst of claim 5 is disclosed within paragraph [0074] of the US equivalent. Furthermore, see paragraphs [0005]+, [0060] and [0116]-[0149] within the US equivalent for discussion of the process of making the prepregs and the aliphatic and cycloaliphatic polyisocyanates. Regarding claims 8 and 9, using viscosity build or monitoring reactant consumption to determine the state of curing/reaction would have been obvious in view of the disclosures within paragraphs [0140] and [0141], the disclosures of which are concerned with such determinations.
10. The primary reference fails to disclose the use of the claimed polyisocyanates in the claimed amounts; however, Hocke et al. disclose within Examples 5-12, the trimerization of polyisocyanate blends of aliphatic polyisocyanate and cycloaliphatic polyisocyanate, wherein glass fibers are present as a filler. In view of the disclosed quantity used for each polyisocyanate, amounts of each polyisocyanate fall within the claimed ranges of claims 1 and 3. Also, see paragraphs [0169], [0170], and [0173]-[0175] for discussion of the specific polyisocyanates employed within the examples. Accordingly, given the aliphatic and cycloaliphatic polyisocyanate disclosures within the primary reference and their clear relevance to the polyisocyanate species employed within the secondary reference, the position is taken that it would have been obvious to employ the aliphatic and cycloaliphatic polyisocyanates in the claimed amounts, so as to arrive at the instant invention. Regarding claim 2, though the primary reference fails to disclose the use of solvent, the use of solvent within the analogous compositions of the secondary reference is disclosed within paragraph [0130]; accordingly, the position is taken that it would have been obvious to use solvent within the compositions of the primary reference in the claimed amount for its known functions of controlling viscosity and promoting mixing of components.
11. Claims 15 is rejected under 35 U.S.C. 103 as being unpatentable over by WO 2020/152107 A1 (US 2022/0041792 A1 being an English language equivalent) in view of Hocke et al. (US 2019/0144592 A1) and further in view of Esbelin et al. (US 2015/0158967 A1) .
WO 2020/152107 A1 disclose the production of prepregs, semifinished materials, and cured materials, wherein the trimerization of polyisocyanates, including aliphatic and cycloaliphatic polyisocyanates, is controlled through the selection of catalyst and reaction conditions. Applicants’ catalyst of claim 5 is disclosed within paragraph [0074] of the US equivalent. Furthermore, see paragraphs [0005]+, [0060] and [0116]-[0149] within the US equivalent for discussion of the process of making the prepregs and the aliphatic and cycloaliphatic polyisocyanates.
12. The primary reference fails to disclose the use of the claimed polyisocyanates in the claimed amounts; however, Hocke et al. disclose within Examples 5-12, the trimerization of polyisocyanate blends of aliphatic polyisocyanate and cycloaliphatic polyisocyanate, wherein glass fibers are present as a filler. In view of the disclosed quantity used for each polyisocyanate, amounts of each polyisocyanate fall within the claimed range of claim 1. Also, see paragraphs [0169], [0170], and [0173]-[0175] for discussion of the specific polyisocyanates employed within the examples. Accordingly, given the aliphatic and cycloaliphatic polyisocyanate disclosures within the primary reference and their clear relevance to the polyisocyanate species employed within the secondary reference, the position is taken that it would have been obvious to employ the aliphatic and cycloaliphatic polyisocyanates in the claimed amounts, so as to arrive at the instant invention.
13. Regarding claim 15, though the primary reference fails to disclose the production of such items as the claimed printed circuit board, the production of such items using polyisocyanurate prepregs was known at the time of invention, as evidenced by paragraph [0091] of Esbelin et al. Accordingly, the position is taken that it would have been obvious make the claimed items in accordance with the combined teachings of the primary and secondary references.
Conclusion
14. Any inquiry concerning this communication or earlier communications from the examiner should be directed to Rabon A Sergent whose telephone number is (571)272-1079. The examiner can normally be reached on Monday through Friday from 9:00 AM until 5:00 PM, ET.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Heidi Riviere Kelley, can be reached at telephone number 571-270-1831. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/RABON A SERGENT/Primary Examiner, Art Unit 1765