DETAILED ACTION
Specification
The abstract of the disclosure is objected to because of its undue length. A corrected abstract of the disclosure is required and must be presented on a separate sheet, apart from any other text. See MPEP § 608.01(b).
Applicant is reminded of the proper content of an abstract of the disclosure.
A patent abstract is a concise statement of the technical disclosure of the patent and should include that which is new in the art to which the invention pertains. The abstract should not refer to purported merits or speculative applications of the invention and should not compare the invention with the prior art.
If the patent is of a basic nature, the entire technical disclosure may be new in the art, and the abstract should be directed to the entire disclosure. If the patent is in the nature of an improvement in an old apparatus, process, product, or composition, the abstract should include the technical disclosure of the improvement. The abstract should also mention by way of example any preferred modifications or alternatives.
Where applicable, the abstract should include the following: (1) if a machine or apparatus, its organization and operation; (2) if an article, its method of making; (3) if a chemical compound, its identity and use; (4) if a mixture, its ingredients; (5) if a process, the steps.
Extensive mechanical and design details of an apparatus should not be included in the abstract. The abstract should be in narrative form and generally limited to a single paragraph within the range of 50 to 150 words in length.
See MPEP § 608.01(b) for guidelines for the preparation of patent abstracts.
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 5-7 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 5: Claim 5 is dependent on claim 1, and therefore includes all of the limitations of claim 1. Claim 5 includes the moiety X, which is already defined in claim 1 with a different definition than in claim 5. It is indefinite to have the same moiety defined in two different ways in the same claim. It is suggested to change the name of the X in claim 5.
Claim 5 includes a constituent (B) and/or constituent (C) (lines 1-3). Therefore, the “and/or” after the definition of formula (2) and before the definition of formula (3) is indefinite since either one or the other is already required, the second “and/or” calls into question whether the definitions themselves are optional. For example, a person having ordinary skill in the art could define constituent (B) as the claimed formula (2), but add in a constituent (C) to the resin with a different definition than formula (3) since now the definition is optional. It is suggested to change the second “and/or” to “and”.
The parentheses in claim 5, page 5 of the claims around “wherein, in the formulae…0 to 5000” render the claim indefinite and must be removed. It is unclear if the text within the parentheses is included in the claim and further limits the subject matter of the claim, or whether it is an aside to the claim and is not further limiting. For the purpose of further examination, it is taken that the text within the parentheses further limits the claim. Appropriate correction is required.
Regarding claim 6: The acronyms in claim 6 are undefined. It is suggested to include their definitions from the specification.
Regarding claim 7: Claim 7 is dependent on claim 1, and therefore includes all of the limitations of claim 1. Claim 7 includes the moieties R1, R2, R3 and R4, which are already defined in claim 1 with different definitions than in claim 7. It is indefinite to have the same moiety defined in two different ways in the same claim. It is suggested to change the names of the R1, R2, R3 and R4 in claim 7.
The moiety Rh is undefined in claim 7. For the purpose of further examination, it is taken to be the definition of Rh from claim 5.
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 1-7, 9-11, and 13-15 are rejected under 35 U.S.C. 103 as being unpatentable over Matsui et al. (JP 2018-002895) using the English language machine translation for paragraph citations and the original Japanese document for structure citations below.
Regarding claim 1: Matsui et al. teaches a thermoplastic resin (para. 1) comprising constituent units of a monomer (para. 9) having the structure
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(original Japanese document page 9). R1 and R2 can be aromatic groups having 1-10 carbon atoms (para. 32), which overlap the claimed monomer structure. While Matsui et al. teaches additional unit structures that do not read on the claimed formula, before the effective filing date of the claimed invention a person having ordinary skill in the art would have found it obvious to select aromatic groups from R1 and R2 and would have been motivated to do so since Matsui et al. teaches this compound is an acceptable monomer to achieve the disclosed invention.
Regarding claim 2: Matsui et al. teaches the resin is a polyester or a polyester carbonate resin (para. 12).
Regarding claim 3: Matsui et al. further teaches the monomer
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(Japanese document page 10). Moieties R15 and R16 can be aromatic groups having 1-10 carbon atoms (para. 38), and R17-R24 can be hydrogen atoms (para. 39), which structure overlaps the claimed structure.
Regarding claim 4: Matsui et al. teaches the above structure shown in claim 1 where R3-R10 can be hydrogen (para. 32, while not exactly clear from the translation that hydrogen is an alternative, the chemicals of paragraph 33 contain hydrogen for R3-R10, showing hydrogen is part of the scope). In the structure, K1 and K2 are -COOH, which overlaps the structure of claim 4.
Regarding claim 5: Matsui et al. further teaches
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(Japanese document page 10), which overlaps claimed formula (3), where Y1 is fluorene, claimed A and B are disclosed R11 and R12, which are a hydrocarbon group having 1-4 carbon atoms (para. 35), the definition of claimed Rd and Rc overlap the definition of disclosed R13 and R14.
Regarding claim 6: Matsui et al. teaches 9,9-bis[4-(2-hydroxyethoxy)phenyl]fluorene/BPEF (para. 36).
Regarding claim 7: Matsui et al. teaches phthalic acid (para. 41), which has the structure of the eleventh formula of claim 7.
Regarding claim 9: Matsui et al. teaches a refractive index of 1.65-1.7 (para. 24).
Regarding claim 10: Matsui et al. teaches an Abbe number of 17-25 (para. 28).
Regarding claim 11: Matsui et al. teaches a glass transition temperature of 128-160 °C (para. 24).
Regarding claims 13 and 14: Matsui et al. teaches an optical member such as an optical lens (para. 1).
Regarding claim 15: Matsui et al. teaches an optical film (para. 29).
Claim 8 is rejected under 35 U.S.C. 103 as being unpatentable over Matsui et al. (JP 2018-002895) using the English language machine translation for paragraph citations and the original Japanese document for structure citations below as applied to claim 1 set forth above and in view of Liou et al. “Preparation and Properties of New Polyarylates from 2,2’-Bis(p-carboxyphenoxy)biphenyl or 2,2’-Bis(p-carboxyphenoxy)-1,1’-binaphthyl and Various Bisphenols”, Polymer journal, 1994.
Regarding claim 8: Matsui et al. teaches the basic claimed resin as set forth above. Not disclosed is the weight average molecular weight. However, Liou et al. teaches a similar resin with a weight average molecular weight of 24,000-390,000 (table I), which overlaps the claimed range. Matsui et al. and Liou et al. are analogous art since they are both concerned with the same field of endeavor, namely resins made with a naphthyl group and aromatic group backbone. Before the effective filing date of the claimed invention a person having ordinary skill in the art would have found it obvious to use the high molecular weight of Liou et al. for the resins of Matsui et al. and would have been motivated to do so because Matsui et al. teaches that it is desired to obtain a high molecular weight.
Claim 12 is rejected under 35 U.S.C. 103 as being unpatentable over Matsui et al. (JP 2018-002895) as applied to claim 1 set forth above and in view of Miyauchi et al. (JP 2019-131513) using the English language machine translation for paragraph citations and the original Japanese document for structure citations below.
Regarding claim 12: Matsui et al. teaches a thermoplastic resin (para. 1) comprising constituent units of a monomer (para. 9) having the structure
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(original Japanese document page 9). R1 and R2 can be aromatic groups having 1-10 carbon atoms (para. 32), which overlap the claimed monomer structure. While Matsui et al. teaches additional unit structures that do not read on the claimed formula, before the effective filing date of the claimed invention a person having ordinary skill in the art would have found it obvious to select aromatic groups from R1 and R2 and would have been motivated to do so since Matsui et al. teaches this compound is an acceptable monomer to achieve the disclosed invention.
Matsui et al. does not teach this monomer as a modifier in a thermoplastic resin. However, Miyauchi et al. teaches the other monomer disclosed by Matsui et al. used as an additive for an optical resin (para. 1). Matsui et al. and Miyauchi et al. are analogous art since they are both concerned with the same field of endeavor, namely resins for molding optical products such as lenses. Before the effective filing date of the claimed invention a person having ordinary skill in the art would have found it obvious to use the other monomer of Matsui et al. as an additive like in Miyauchi et al. and would have been motivated to do so since Miyauchi et al. teaches naphthyl compounds that have a high refractive index and heat resistance can be used both as the resin and also as a reactive additive such as a curing agent.
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.
Claim 1, 2, 5, 8, 9, 10, 11, and 13 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claim 19, 23, 24, 26, 27, 28, 29, 31, and 32 of copending Application No. 19/132,577 (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other because claim 19 of the copending application claims a thermoplastic resin comprising a structural unit that overlaps in scope with the structural unit of the instant claim 1. Claims 23 and 24 of the copending overlap in scope with claim 5 of the instant, claim 26 of the copending overlaps with claim 9 of the instant, claim 27 of the copending overlaps with claim 10 of the instant, claim 28 of the copending overlaps with claim 11 of the instant and claim 29 of the copending overlaps with claim 8 of the instant. Claim 31 of the copending overlaps with claim 2 of the instant and claim 32 of the copending overlaps with claim 13 of the instant.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Megan McCulley whose telephone number is (571)270-3292. The examiner can normally be reached Monday - Friday 9-5:30.
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/MEGAN MCCULLEY/Primary Examiner, Art Unit 1767
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