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 .
None of the foreign priority documents are present in the electronic file.
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 1-18 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.
If claim 1’s chemical formula 1 is intended to represent a repeating unit (due to the brackets), “m” = zero would improbably place a two chalcogens (ie oxygen or sulfur) adjacent to one another by having X3 next to X9 or X10 at the point of repetition.
Claim 1 is directed to a resin having a “unit” of chemical formula 1. This “unit” (when “m”=1) calls for fractional values of “r” and “s”. Any individual “unit” structure cannot have a fractional (non-integer) subscript. For instance, how does one place half of an -C(=O)ArC(=O)- into the “unit”? Conventional nomenclature in polymer science only use fractional subscripts when describing a copolymer as a whole – not any individual unit.
The meaning of the subscripts of the repeat units in applicant’s formulas are unclear/inconsistent. Claim 1’s “a”,”b”, “p”, “q”, “m” and “q” are explicitly integers. However, “r” and “s” are forbidden to be an integers when “m” is one and never in claim 5. The same formula cannot have some subscripts meaning the specific number of repeat units in any individual structure (ie integers), but other subscripts be an overall “average” for all the structures present (ie 0<x<1). Are the claimed formulas specific structures or an “average mole fraction” of the units present?
If claim 3’s chemical formula 1-1 is a repeating unit, it improbably places a two chalcogens (ie oxygen or sulfur) adjacent to one another by having X3 next to X9 or X10.
The chemical formulas of claims 1-3 and 15 appear to lack remnants of the carbonate forming species of applicant’s examples and claim 12.
Claim Rejections - 35 USC § 102
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.
(a)(2) the claimed invention was described in a patent issued under section 151, or in an application for patent published or deemed published under section 122(b), in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention.
Claims 1,3-10,12-14,16 and 17 rejected under 35 U.S.C. 102(a)(2) as being anticipated by Jung 2024/0141100.
The reference (paragraph 249) copolymerizes applicant’s preferred fluorenyl compound of claim 17 with terephthalic dichloride. This corresponds to applicant’s chemical formula 1 with m=0 and p=0.
This polyester has applicant’s Mw, RI, Tg and Abbe value (see table 1).
Claims 1,3-10,12-14 and 16 rejected under 35 U.S.C. 102(a)(1) as being anticipated by the Sakurai article in Polymer Journal.
Sakurai exemplifies polymerizing BPEF, ethylene glycol and dimethylterephthalate (see “experimental”) in various ratios (table 1). The resulting copolyester has units of EG, DMT and BPEF (fig 2). Because the BPET can only react with DMT and the EG can only react with DMT, the copolyester’s structure can be represented by:
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where k is the mole fraction BPEF per total moles of BPEF + EG.
This corresponds to applicant’s Formula 1 with La” being -C(=O)Ph-; X1, X2 and X3 being oxygen; Z1 and Z2 being -CH2CH2- ; L1 and L2 being phenylene, r1 and r2 being zero; La being -C(=O)Ph- ; X9 and X10 being oxygen; Z3 being -CH2CH2- ; a,m,q,b and p being one. When BPEF and EG were used in a 40:60 ratio, applicant’s “r” would be 0.4 and “s” would be 0.6.
In regards to applicant’s dependent claims:
The structure meets applicant’s formula 1-2 of claim 3.
The Mw’s (table I) are within the range of applicant’s claim 6.
The RI (fig 8) is within applicant’s range of claim 7.
Tg’s (table I) are within the range of applicant’s claim 8 when the amount of EG is high.
The Abbe value (table II) meets applicant’s claim 9.
BPEF meets the formula of applicant’s claim 10.
DMT qualifies as applicant’s formula A of claim 12.
Films are made of the copolyester (see Birefringence and Stress Measurement) – meeting applicant’s claim 14.
The endgroups are -OH (fig 2) – meeting applicant’s claim 16.
Claims 1,3,4,8,10 and 12-14 rejected under 35 U.S.C. 102(a)(1) as being anticipated by Ferraro 2010/0239835.
Ferraro depicts (paragraph 23) a polyester corresponding to applicant’s chemical formula 1 with L1 and L2 being phenylene; “a” and “b” being zero; X3 and X4 being oxygen; “m” being zero; “r” and “s” being one; “p” being zero; “La” being -C(=O)Ph-.
The -C(=O)PhC(=O)- at the far right of Ferraro’s formula would be adjacent to an oxygen (ie applicant’s X9) if the neighboring repeat unit was shown.
Therefore, there is at least one unit of applicant’s chemical formula 1-1.
In regards to applicant’s dependent claims:
Ferraro’s formula also meets claim 3’s chemical formula 1-1.
Ferraro’s polyester is made from 9,9’-bis(4-hydroxyphenyl(fluorene) and iso/terephthalic acids which meet formula 1a of applicant’s claim 10 and formula A of applicant’s claim 12.
Claims 1,3,4,7-10,12-14 and 16 rejected under 35 U.S.C. 102(a)(1) as being anticipated by Yamada 2021/0147621.
Yamada exemplifies (#12) a polyester made from BPD2 and dimethylterephthalate. Such a polyester corresponds to applicant’s chemical formula 1 with L1 and L2 being phenylene; “a” and “b” being one; X1 and X2 being oxygen; Z1 and Z2 being -CH2CH2-; X3 and X4 being oxygen; “m” being zero; “r” and “s” being one; “p” being zero; “La” being -C(=O)Ph-.
The -C(=O)PhC(=O)- necessarily links to the remnants of the BPD2 diol on both sides. Therefore the -C(=O)PhC(=O)- would be adjacent to an oxygen (ie applicant’s X9).
Therefore, there is at least one unit of applicant’s chemical formula 1-1.
In regards to applicant’s dependent claims:
The RI of the cited example is 1.675 (table 2) – meeting applicants claim 7.
The Tg of the cited example is 1720C (table 2) – meeting applicants claim 8.
The Abbe number for the cited example is not reported, but presumably is within applicant’s range (see paragraph 62) – meeting applicant’s claim 9.
Yamada BPD2’s formula also meets claim 10’s chemical formula 1.
Dimethylterephthalate meets formula 1a of applicant’s claim 12.
Because the two monomers present have only -OH and -CO2CH3 terminals, the endgroups of the polyester would be either or both – meeting applicant’s claim 16.
Claims 1-4,7-16 and 18 rejected under 35 U.S.C. 102(a)(1) as being anticipated by Yamada 2021/0147621.
Yamada exemplifies (#15) a polyester made from BPD2, BHEB and NDCM. The BPD2 and NDCM react to form applicant’s chemical formula 1 with L1 and L2 being phenylene; “a” and “b” being one; X1 and X2 being oxygen; Z1 and Z2 being -CH2CH2-; X3 and X4 being oxygen; “m” being zero; “r” and “s” being one; “p” being zero; “La” being -C(=O)naphthyl-.
The -C(=O)naphthylC(=O)- necessarily links to the remnants of the BPD2 and/or BHEB diol on both sides. Therefore the -C(=O)naphthylC(=O)- would be adjacent to an oxygen (ie applicant’s X9).
Therefore, there is at least one unit of applicant’s chemical formula 1-1.
In regards to applicant’s dependent claims:
The BHEB and NDCM react to form applicant’s chemical formula 2 of claim 2 and formula 2-1 of claim 15 with L11 being binaphthyl; “a’ ” and “b’ ” being one; X1 and X2 being oxygen; Z11 and Z12 being -CH2CH2-; X13 and X14 being oxygen; m” being zero; “r’ ” and “s’ ” being one; “p’ ” being zero; “Lb” being -C(=O)naphthyl-.
The -C(=O)naphthylC(=O)- necessarily links to the remnants of either the BHEB or BPD2. Therefore the -C(=O)naphthylC(=O)- would be adjacent to an oxygen (ie applicant’s X15).
Therefore, there is at least one unit of applicant’s chemical formula 2.
The RI of the cited example is 1.679 (table 2) – meeting applicants claim 7.
The Tg of the cited example is 1550C (table 2) – meeting applicants claim 8.
The Abbe number for the cited example is not reported, but presumably is within applicant’s range (see paragraph 62) – meeting applicant’s claim 9.
Yamada BPD2’s formula also meets claim 10’s chemical formula 1.
NDCM meets formula 1a of applicant’s claim 12 with Ar1 being naphthyl.
BHEB qualifies as applicant’s claim 11 and 18 compound.
Because the monomers present have only -OH and -CO2CH3 terminals, the endgroups of the polyester would be either or both – meeting applicant’s claim 16.
Claims 1-16 and 18 rejected under 35 U.S.C. 102(a)(1) and (a)(2) as being anticipated by Yamada 2021/0002420.
Yamada exemplifies (#2) polymerizing BNEB, BHEB, EG and BCMB which can be depicted as:
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Because the BNEF can only react with BCMB, the BHEB can only react with BCMB and the EG can only react with BCMB, the copolyester’s structure can be represented as three repeating units:
-(BCMB-BNEF)α-(BCMB- BHEB)β- (BCMB-EG)γ-
where α, β, γ are the mole fractions of BNEF, BHEB and EG based on all three diols used.
The –(BCMB-BNEF)- is the left side of applicant’s Chemical formula 1 with m=1 and La” being the substituted arylene:
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and the BNEF providing applicant’s fluorenyl units with L1 and L2 being naphthyl; X1 and X2 being oxygen; Z1 and Z2 being -CH2CH2-; “a” and “b” being one and r1 and r2 being zero.
The -(BCMB-EG)- is the right side of applicant’s formula 1 with La being the same substituted arylene above; X9 and X10 being oxygen and Z3 being -CH2CH2-.
In regards to applicant’s dependent claims:
The -(BCMB- BHEB)- provides the left side of applicant’s formula 2 of claim 2 (and claim 15’s formula 2-1) with -(BCMB-EG)- forming the right side in much the same manner as explained above.
The Mw of the cited example is not reported. However the specific viscosity is said to be 0.26 (table 1) in 0.7g/100ml methylene chloride (paragraph 154). The specific viscosity is related to Mv by the formula (see paragraph 173-179 of Umeki 2024/0010834):
Ƞsp/c =0.000123Mv.83
0.26/0.7 = 0.000123Mv.83
Mv = ~16,000g/mol
Based on the above, Mw is expected to be within the broad range of applicant’s claim 6.
The RI of the cited example is 1.683 (table 1) – meeting applicant’s claim 7.
The Tg of the cited example is 1470C (table 1) – meeting applicant’s claim 8.
The Abbe number of the cited example is 17.9 – meeting applicant’s claim 9.
The BNEF qualifies as applicant’s formula 1a of claim 10.
The BHEB qualifies as applicant’s formula 1a of claim 11 (and claim 18) with a’ and b’ being one.
The BCMB qualifies as applicant’s formula A of claim 12 with Ar1 being a substituted arylene.
Because the monomers present have only -OH and -CO2H terminals, the endgroups of the polyester would be either or both – meeting applicant’s claim 16.
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.
Claim 17 rejected under 35 U.S.C. 103 as being unpatentable over Yamada 2021/0002420.
Yamada applies as explained above.
BNEF lacks naphthyl substitution on the fluorenyl ring.
However, Yamada is not limited to BNEF as the fluorenyl compound.
As depicted in Yamada’s paragraph 90, the fluorenyl compound may be substituted with an “aryl” group. Yamada (paragraph 54) intends “aromatic” to include naphthyl groups. When Yamada’s “m” is zero, “n” is one and R4 is naphthyl, applicant’s compound results.
It would have been obvious to employ such naphthyl substituted BNEF as Yamada’s fluorenyl compound.
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 1-8 and 10-18 rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-15 of U.S. Patent No. 12497484. Although the claims at issue are not identical, they are not patentably distinct from each other because the patent also claims polyesters and polyestercarbonates. The instant claims are broader in the sense that the patent’s Chemical formula 1 need not be present.
Claims 1,3-8,10,12-14,16 and 17 provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-20 of copending Application No.18-273398 (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other because instant claim 1’s chemical formula 1 corresponds to the copending application’s chemical formula 1 when the instant claim’s m=0 and p=0.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to DAVID J BUTTNER whose telephone number is (571)272-1084. The examiner can normally be reached M-F 9-3pm.
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/DAVID J BUTTNER/Primary Examiner, Art Unit 1765 7/23/26
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