DETAILED ACTION
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
REQUIREMENT FOR UNITY OF INVENTION
As provided in 37 CFR 1.475(a), a national stage application shall relate to one invention only or to a group of inventions so linked as to form a single general inventive concept (“requirement of unity of invention”). Where a group of inventions is claimed in a national stage application, the requirement of unity of invention shall be fulfilled only when there is a technical relationship among those inventions involving one or more of the same or corresponding special technical features. The expression “special technical features” shall mean those technical features that define a contribution which each of the claimed inventions, considered as a whole, makes over the prior art.
The determination whether a group of inventions is so linked as to form a single general inventive concept shall be made without regard to whether the inventions are claimed in separate claims or as alternatives within a single claim. See 37 CFR 1.475(e).
WHEN CLAIMS ARE DIRECTED TO MULTIPLE CATEGORIES OF INVENTIONS
As provided in 37 CFR 1.475(b), a national stage application containing claims to different categories of invention will be considered to have unity of invention if the claims are drawn only to one of the following combinations of categories:
(1) A product and a process specially adapted for the manufacture of said product; or
(2) A product and process of use of said product; or
(3) A product, a process specially adapted for the manufacture of the said product, and a use of the said product; or
(4) A process and an apparatus or means specifically designed for carrying out the said process; or
(5) A product, a process specially adapted for the manufacture of the said product, and an apparatus or means specifically designed for carrying out the said process.
Otherwise, unity of invention might not be present. See 37 CFR 1.475(c).
Restriction is required under 35 U.S.C. 121 and 372.
This application contains the following inventions or groups of inventions which are not so linked as to form a single general inventive concept under PCT Rule 13.1.
In accordance with 37 CFR 1.499, applicant is required, in reply to this action, to elect a single invention to which the claims must be restricted.
Group I, claim(s) 1-7, 12-17, drawn to a curable resin composition.
Group II, claim(s) 8, 18-19, drawn to a cured product.
Group III, claims 9, 20, drawn to a varnish.
Group IV, claim 10, drawn to a prepreg.
Group V, claim 11, drawn to a circuit board.
The groups of inventions listed above do not relate to a single general inventive concept under PCT Rule 13.1 because, under PCT Rule 13.2, they lack unity a priori as there is no subject matter common to all claims.
During a telephone conversation with James Armstrong on 6/3/2026 a provisional election was made without traverse to prosecute the invention of Group I, claims 1-7, 12-17. Affirmation of this election must be made by applicant in replying to this Office action. Claims 8-11, 18-20 withdrawn from further consideration by the examiner, 37 CFR 1.142(b), as being drawn to a non-elected invention.
Applicant is reminded that upon the cancellation of claims to a non-elected invention, the inventorship must be amended in compliance with 37 CFR 1.48(b) if one or more of the currently named inventors is no longer an inventor of at least one claim remaining in the application. Any amendment of inventorship must be accompanied by a request under 37 CFR 1.48(b) and by the fee required under 37 CFR 1.17(i).
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 1-7, 12-17 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 pre-AIA the applicant regards as the invention.
Claims 1, 4-7 recite structures with a “-” which can represent an open single bond, or a methyl group. For purposes of expediting prosecution, it is interpreted as an open single bond “ -- * ” which does not connect to a hydrogen atom. In formula (1) and (1-1), the terminal C atom does not connect to three hydrogen atoms.
Claim 1 recites A and B1 and/or B2 which can be interpreted as either (A and B1) and/or B2 or A and (B1 and/or B2). Clarification is required. For purposes of expediting prosecution, it is interpreted as A and (B1 and/or B2).
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.
The factual inquiries set forth in Graham v. John Deere Co., 383 U.S. 1, 148 USPQ 459 (1966), that are applied 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.
Claims 1-4, 6-7, 12, 16-17 is/are rejected under 35 U.S.C. 103 as being unpatentable over Uchida (JP2020100759).
In setting forth this rejection a machine translation of JP2020100759 has been relied upon and all citations to paragraph numbers in the discussion below are with respect to the machine translation.
Uchida teaches a curable composition comprising 29.9-88wt% a compound A methacrylic modified polyphenylene ether and 2-40 wt% of a copolymer C [0007, 0013, 0016]. The compound A is represented by the formula
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, wherein R1-R4 are preferably a hydrogen atom, methyl, ethyl or a phenyl group, Y represents a methylene group, or a dimethylmethylene group; Z represents a carbonyl group; n is an integer from 1 to 100; m is an integer from 1 to 100; and n+m is an integer from 2 to 200 [0014, 0069]. The copolymer C is a copolymer of butadiene, styrene and divinylbenzene [0020-0021], the structural unit derived from divinylbenzene reads on the claimed formula (2-1). The mass ratio of compound A and copolymer C overlaps the claimed range.
Uchida does not expressly name a single embodiment having the claimed composition. However, each of the components of the composition is described in the reference. Therefore, it would have been obvious to a person of ordinary skill in the art at the time of the present invention to have made any of the compositions suggested by the reference, including the claimed composition, thereby arriving at the presently claimed invention.
Claims 1-3, 6-7, 12, 16-17 is/are rejected under 35 U.S.C. 103 as being unpatentable over Hayashi et al (WO 2014157131).
In setting forth this rejection a machine translation of WO 2014157131 has been relied upon and all citations to paragraph numbers in the discussion below are with respect to the machine translation.
Hayashi teaches a curable composition comprising 5-84wt% of a copolymer A and 5-84wt% of a component B of a (meth)acrylate having a fluorene skeleton represent by the formula
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, wherein m and n can be 0 and k+l can be 2-4, copolymer A has a reactive vinyl group derived from divinylbenzene (pages 3-5, 11, 13, 15, 18). Copolymer A reads on the claimed structure (2-1). The mass ratio of compound A and copolymer C overlaps the claimed range.
Hayashi does not expressly name a single embodiment having the claimed composition. However, each of the components of the composition is described in the reference. Therefore, it would have been obvious to a person of ordinary skill in the art at the time of the present invention to have made any of the compositions suggested by the reference, including the claimed composition, thereby arriving at the presently claimed invention.
Claims 1-3, 6-7, 12, 16-17 is/are rejected under 35 U.S.C. 103 as being unpatentable over Tagami et al (US2021/0247546, equivalent with WO2020090598).
Tagami teaches a curable composition comprising a (meth)acrylate compound and a monomer [0052, 0056-0057]. The content of the acrylate compound is 50-99 wt% and has a formula of
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[claim 4, 0082]. The monomer can be vinyl compounds such as styrene etc [0067]. The content of the monomer is 0.01-50st% [0069].
Tagami does not expressly name a single embodiment having the claimed composition. However, each of the components of the composition is described in the reference. Therefore, it would have been obvious to a person of ordinary skill in the art at the time of the present invention to have made any of the compositions suggested by the reference, including the claimed composition, thereby arriving at the presently claimed invention.
Allowable Subject Matter
Claims 5, 13-15 would be allowable if rewritten to overcome the rejection(s) under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), 2nd paragraph, set forth in this Office action and to include all of the limitations of the base claim and any intervening claims.
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 claims at issue 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); and 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 a nonstatutory double patenting ground provided the reference application or patent either is shown to be commonly owned with this application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
The USPTO internet Web site contains terminal disclaimer forms which may be used. Please visit http://www.uspto.gov/forms/. The filing date of the application will determine what form 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 http://www.uspto.gov/patents/process/file/efs/guidance/eTD-info-I.jsp.
Claims 1-7, 12-17 provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-5 of copending Application No.18/707,154. Although the claims at issue are not identical, they are not patentably distinct from each other because ‘154 claims a curable composition comprising a structure of formula 3 and a structure of formula 4.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Claims 1-7, 12-17 provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-5 of copending Application No.18/725,335. Although the claims at issue are not identical, they are not patentably distinct from each other because ‘335 claims a curable composition comprising a structure 1 terminated with methacryloyloxy group and a structure 2 terminated with a vinylbenzyl ether group.
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 WENWEN CAI whose telephone number is (571)270-3590. The examiner can normally be reached on M-F 9am-6pm.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Joseph Del Sole can be reached on (571)272-1130. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/WENWEN CAI/
Primary Examiner, Art Unit 1763
Prosecution Insights