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 .
Election/Restrictions
Applicant’s election without traverse of Group I (claims 1-11) in the reply filed on 6/18/2026 is acknowledged.
Groups II-VIII (claims 12-18) are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected invention, there being no allowable generic or linking claim. Election was made without traverse in the reply filed on 6/18/2026.
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 text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action.
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.
Claim(s) 1-11 is/are rejected under 35 U.S.C. 103 as being unpatentable over Tohjima et al (US 20230002547 A1).
Regarding claims 1-4 and 6-7, Tohjima teaches a curable resin composition comprising a compound of formula (1):
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Wherein R represents a hydrocarbon group having 1 to 10 carbon atoms or a halogenated alkyl group; m represents an integer of 0 to 3; n represents a repeating unit and satisfies 1≤n≤20, and p represents a repeating unit and satisfies 0≤p≤20; Y is optional; X can be
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S represents a hydrocarbon group having 1 to 3 carbon atoms; and a represents an integer of 0 to 4 [0011-0013].
Thus, the above formula (1) is the same as the claimed formula (2) in claim 2 when the above a=0, p=0, m=0. The claimed formula (2) meets the claimed formula (1) in claim 1.
Tohjima’s Example 2 teaches a compound which is exactly the same as the claimed formula (2) [0121]:
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Tohjima teaches that the curable composition can comprise an additive which can be styrene-based thermoplastic elastomers such as hydrogenated styrene-isoprene-styrene copolymer [0099], which reads on the claimed styrenic polymer (B) as specified in claims 3-4.
It would have been obvious to one of ordinary skill in the art at the time of filing to select hydrogenated styrene-isoprene-styrene copolymer as the additive in Tohjima’s composition, as it is expressly disclosed as being useful in this capacity. It has been established that selection of a known material based on its suitability for its intended use is prima facie obvious (Sinclair & Carroll Co. v. Interchemical Corp., 325 U.S. 327, 65 USPQ 297 (1945)). See MPEP 2144.07.
Tohjima teaches an active alkene-containing resin [0069] which can be a maleimide resin [0081] which reads on the claimed compound (C) as specified in claims 6-7.
It would have been obvious to one of ordinary skill in the art at the time of filing to select a maleimide resin as the active alkene-containing resin in Tohjima’s composition, as it is expressly disclosed as being useful in this capacity. It has been established that selection of a known material based on its suitability for its intended use is prima facie obvious (Sinclair & Carroll Co. v. Interchemical Corp., 325 U.S. 327, 65 USPQ 297 (1945)). See MPEP 2144.07.
Regarding claim 5, Tohjima teaches that the additive (hydrogenated styrene-isoprene-styrene copolymer) is more preferably 0-700 parts by mass based on 100 parts by mass of the curable resin composition [0099]. This amount overlaps the claimed content of the hydrocarbon-based compound (A) of 20 to 80 parts by mass with respect to 100 parts by mass of a total mass of the hydrocarbon-based compound (A) and the styrenic polymer (B). A prima facie case of obviousness exists where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" (MPEP 2144.05.I).
Regarding claims 8-9, Tohjima teaches that the additive (hydrogenated styrene-isoprene-styrene copolymer) is more preferably 0-700 parts by mass based on 100 parts by mass of the curable resin composition [0099]. Tohjima further teaches that the active alkene-containing resin (maleimide resin) is preferably 0.5-3 times by mass relative to the usage amount of the compound represented by the formula (1) [0070]. Thus, the amount of additive (hydrogenated styrene-isoprene-styrene copolymer) overlaps the claimed content of the styrenic polymer (B) of 5 to 50 parts by mass with respect to 100 parts by mass of a sum of the hydrocarbon-based compound (A), the styrenic polymer (B), and the reactive compound (C); the amount of maleimide resin overlaps the claimed content of the reactive compound (C) of 1 to 40 parts by mass with respect to 100 parts by mass of a sum of the hydrocarbon-based compound (A), the styrenic polymer (B), and the reactive compound (C).
Regarding claim 10, Tohjima teaches that inorganic fillers may be added to the curable resin composition [0098].
Regarding claim 11, Tohjima teaches that the curable resin composition may contain a phosphorus-containing compound as a flame retardation-imparting component [0095].
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to JIANGTIAN XU whose telephone number is (571)270-1621. The examiner can normally be reached Monday-Thursday.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Robert Jones can be reached on (571) 270-7733. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/JIANGTIAN XU/Primary Examiner, Art Unit 1762
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