DETAILED 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 .
Election/Restrictions
2. Restriction to one of the following inventions is required under 35 U.S.C. 121:
I. Claims 1-11, drawn to a phosphorus-containing resin, classified in C07F9/657172.
II. Claims 12-16, drawn to a composition comprising a main resin and the phosphorus-containing resin as additive, classified in C08L2201/02 and C09K2003/1078.
3. The inventions are independent or distinct, each from the other because:
Inventions of Group I and Group II are related as mutually exclusive species in an intermediate-final product relationship. Distinctness is proven for claims in this relationship if the intermediate product is useful to make other than the final product, and the species are patentably distinct (MPEP § 806.05(j)). In the instant case, the intermediate product, i.e. the phosphorus-containing resin, is deemed to be useful by itself as layer in a multilayered laminate, and the inventions are deemed patentably distinct because there is nothing of record to show them to be obvious variants.
Restriction for examination purposes as indicated is proper because all the inventions listed in this action are independent or distinct for the reasons given above and there would be a serious search and/or examination burden if restriction were not required because one or more of the following reasons apply:
They require different areas of search.
Applicant is advised that the reply to this requirement to be complete must include (i) an election of an invention to be examined even though the requirement may be traversed (37 CFR 1.143) and (ii) identification of the claims encompassing the elected invention.
The election of an invention may be made with or without traverse. To reserve a right to petition, the election must be made with traverse. If the reply does not distinctly and specifically point out supposed errors in the restriction requirement, the election shall be treated as an election without traverse. Traversal must be presented at the time of election in order to be considered timely. Failure to timely traverse the requirement will result in the loss of right to petition under 37 CFR 1.144. If claims are added after the election, applicant must indicate which of these claims are readable upon the elected invention.
Should applicant traverse on the ground that the inventions are not patentably distinct, applicant should submit evidence or identify such evidence now of record showing the inventions to be obvious variants or clearly admit on the record that this is the case. In either instance, if the examiner finds one of the inventions unpatentable over the prior art, the evidence or admission may be used in a rejection under 35 U.S.C. 103 or pre-AIA 35 U.S.C. 103(a) of the other invention.
4. During a telephone conversation with Justin King a provisional election was made without traverse to prosecute the invention of Group I, claims 1-11. Affirmation of this election must be made by applicant in replying to this Office action. Claims 12-16 are 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 cancelation of claims to a non-elected invention, the inventorship must be corrected in compliance with 37 CFR 1.48(a) if one or more of the currently named inventors is no longer an inventor of at least one claim remaining in the application. A request to correct inventorship under 37 CFR 1.48(a) must be accompanied by an application data sheet in accordance with 37 CFR 1.76 that identifies each inventor by his or her legal name and by the processing fee required under 37 CFR 1.17(i).
Claim Rejections - 35 USC § 102/103
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.
5. Claims 1-3, 5-11 are rejected under 35 U.S.C. 102(a)(1) as anticipated by or, in the alternative, under 35 U.S.C. 103 as obvious over Lin et al (US 10,544,261).
6. Lin et al discloses an oligomer having the structure of Formula A as follows (col. 4, line 20-col. 5, line10):
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Formula A
wherein P1 denotes:
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R4 are having the formula:
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And m and n are zero (col. 5, lines 10-12).
7. Specifically exemplified the compound of the following formula B (claim 17):
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Formula B
8. Given in the Formula B above “m” and “n” are zero’s,
then the Formula B of Lin et al corresponds to Formula (I) as claimed in instant invention with the following correspondence:
R5 of the claimed compound of Formula (I) being methyl (as to instant claims 1 and 5);
Ar1 and Ar2 corresponding to
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With R8 being -O- and p=1
R7 and R6 being methyl or absent; (as to instant claims 1 and 3);
RA and RB corresponding to
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(as to instant claims 1 and 2).
9. In the alternative, based on the teachings of Lin et al, it would have been obvious to a one of ordinary skill in the art to choose and the compound of Formula A above, or Formula B above having “m” and “n” as zeros for Ar1 and Ar2, and the substituents as cited in paragraph 8 above, since it would be obvious to choose material based on its suitability, thereby arriving at the present invention. Case law holds that the selection of a known material based on its suitability for its intended use supports prima facie obviousness. Sinclair & Carroll Co vs. Interchemical Corp., 325 US 327, 65 USPQ 297 (1045). Case law holds that the mere substitution of an equivalent (something equal in value or meaning, as taught by analogous prior art) is not an act of invention; where equivalency is known to the prior art, the substitution of one equivalent for another is not patentable. See In re Ruff 118 USPQ 343 (CCPA 1958).
10. Since the compounds of Formula A above, and specifically of Formula B above having “m” and “n” values as zeros are essentially the same as those claimed in instant invention, therefore, said compounds will inherently have, or alternatively, would be reasonably expected to have the properties, including peaks of the proton magnetic resonance spectrum and of the Fourier-transform IR spectrum, and further the amount of phosphorus, as those claimed inn instant invention (as to instant claims 6-11), especially since the compound of Formula B comprises vinyl C=C bonds as ending groups (as to instant claim 9), C-O of aromatic compound and P-O-Ph bond of DOPO-based skeleton (as to instant claims 10-11).
The above rejections were made in the sense of in re Fitzgerald (205 USPQ 594). (CAFC ) based on presumption that the properties governing the claimed resin, if not taught, may be very well met by the resins of Lin’261, since the resins of Lin’261 are essentially the same and made in essentially the same manner as applicants’ compositions, wherein the burden to show that it is not the case is shifted to applicants; or in the sense of In re Spada, 911 F 2d 705, 709 15 USPQ 1655, 1658 (Fed. Cir. 1990), which settles that when the claimed compositions are not novel, they are not rendered patentable by recitation of properties, whether or not these properties are shown or suggested in prior art. Where the claimed and prior art products are identical or substantially identical in structure or composition, or are produced by identical or substantially identical processes, a prima facie case of either anticipation or obviousness has been established. In re Best, 562 F.2d 1252, 1255, 195 USPQ 430, 433 (CCPA 1977). MPEP 2112.01(I). Since PTO cannot conduct experiments the proof of burden is shifted to the applicants to establish an unobviousness difference, see In re Best, 562 F.2d 1252, 195 USPQ 430 (CCPA 1977). See MPEP § 2112.01.
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.
11. Claims 1-11 are rejected under 35 U.S.C. 103 as being unpatentable over Lin et al (US 10,544,261; Lin’261) in view of Lin et al (US 2009/0258997; Lin‘997).
12. The discussion with respect to Lin et al (US 10,544,261, Lin’261) set forth in paragraphs 5-10 above, is incorporated here by reference.
13. Though Lin’261 discloses the compounds of Formula A being produced from the compounds of Formula C below with R1 being an alkyl:
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Formula C
Lin’261 does not recite the substituent R1 being an aryl, corresponding to the claimed Ar3.
14. However, Lin‘997 discloses phosphorus-containing compounds of the Formula D below:
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Compound D
Wherein A and B are -OH and D is C1-6 alkyl (claim 1).
15. Thus, given a compound of Formula A or B of Lin’261 having R1 as aryl group is desired, it would have been obvious to a one of ordinary skill in the art to combine the teachings of Lin’261 and Lin‘997, and to choose and use, or obvious to try to choose and use the compound of Formula D of Lin‘997 having aryl as R1 to form the compounds Formula A or B of Lin’261, since it would be obvious to choose material based on its suitability, thereby arriving at the present invention (as to instant claims 1 and 4). Case law holds that the selection of a known material based on its suitability for its intended use supports prima facie obviousness. Sinclair & Carroll Co vs. Interchemical Corp., 325 US 327, 65 USPQ 297 (1045). Case law holds that the mere substitution of an equivalent (something equal in value or meaning, as taught by analogous prior art) is not an act of invention; where equivalency is known to the prior art, the substitution of one equivalent for another is not patentable. See In re Ruff 118 USPQ 343 (CCPA 1958). The key to supporting any rejection under 35 USC 103 is the clear articulation of the reason(s) why the claimed invention would have been obvious. The Supreme Court in KSR noted that the analysis supporting a rejection under 35 USC 103 should be made explicit. The Court quoting In re Kahn, 441 F.3d 977, 988, 78 USPQ2d 1329, 1336 (Fed. Cir. 2006), stated that "‘[R]ejections on obviousness cannot be sustained by mere conclusory statements; instead, there must be some articulated reasoning with some rational underpinning to support the legal conclusion of obviousness.’" KSR, 550 U.S. at 418, 82 USPQ2d at 1396. Exemplary rationales that may support a conclusion of obviousness include:
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(A) Combining prior art elements according to known methods to yield predictable results;
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(B) Simple substitution of one known element for another to obtain predictable results;
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(C) Use of known technique to improve similar devices (methods, or products) in the same way;
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(D) Applying a known technique to a known device (method, or product) ready for improvement to yield predictable results;
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(E) "Obvious to try" – choosing from a finite number of identified, predictable solutions, with a reasonable expectation of success;
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(F) Known work in one field of endeavor may prompt variations of it for use in either the same field or a different one based on design incentives or other market forces if the variations are predictable to one of ordinary skill in the art; (G) Some teaching, suggestion, or motivation in the prior art that would have led one of ordinary skill to modify the prior art reference or to combine prior art reference teachings to arrive at the claimed invention. MPEP 2141
16. Since the compounds of Lin’261 in view of Lin‘997 having the Formula A above, and specifically of Formula B above having “m” and “n” values as zeros are essentially the same as those claimed in instant invention, therefore, said compounds will intrinsically and necessarily have, or would be reasonably expected to have the properties, including peaks of the proton magnetic resonance spectrum and of the Fourier-transform IR spectrum, and further the amount of phosphorus, as those claimed inn instant invention (as to instant claims 6-11), especially since the compound of Formula B comprises vinyl C=C bonds as ending groups (as to instant claim 9), C-O of aromatic compound and P-O-Ph bond of DOPO-based skeleton (as to instant claims 10-11). Where the claimed and prior art products are identical or substantially identical in structure or composition, or are produced by identical or substantially identical processes, a prima facie case of either anticipation or obviousness has been established. In re Best, 562 F.2d 1252, 1255, 195 USPQ 430, 433 (CCPA 1977). MPEP 2112.01(I). Since PTO cannot conduct experiments the proof of burden is shifted to the applicants to establish an unobviousness difference, see In re Best, 562 F.2d 1252, 195 USPQ 430 (CCPA 1977). See MPEP § 2112.01.
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 obviousness-type 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); 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 conflicting 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.
Effective January 1, 1994, a registered attorney or agent of record may sign a terminal disclaimer. A terminal disclaimer signed by the assignee must fully comply with 37 CFR 3.73(b).
17. Claims 1-11 are rejected on the ground of nonstatutory obviousness-type double patenting as being unpatentable over claims 1-8 of U.S. Patent No. 10,544,261 in view of Lin et al (US 2009/0258997; Lin’997). Although the conflicting claims are not identical, they are not patentably distinct from each other because of the following reasons.
18. US patent 10,544,261 claims an oligomer having the formula (2):
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And
R4 denotes:
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19. Specifically claimed is a compound of formula B:
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Formula B
Wherein m and n maybe zeros.
20. Since the compounds of Formula (2) above, and specifically of Formula B above having “m” and “n” values as zeros are essentially the same as those claimed in instant invention, therefore, said compounds will inherently have, or alternatively, would be reasonably expected to have the properties, including a peak of the proton magnetic resonance spectrum and the Fourier-transform IR spectrum, and further the amount of phosphorus, as those claimed inn instant invention (as to instant claims 6-11), especially since the compound of Formula B comprises vinyl C=C bonds as ending groups (as to instant claim 9), C-O of aromatic compound and P-O-Ph bond of DOPO-based skeleton (as to instant claims 10-11).
The above rejections were made in the sense of in re Fitzgerald (205 USPQ 594). (CAFC ) based on presumption that the properties governing the claimed resin, if not taught, may be very well met by the resins of US patent 10,544,261, since the resins of US patent 10,544,261 are essentially the same and made in essentially the same manner as applicants’ compositions, wherein the burden to show that it is not the case is shifted to applicants; or in the sense of In re Spada, 911 F 2d 705, 709 15 USPQ 1655, 1658 (Fed. Cir. 1990), which settles that when the claimed compositions are not novel, they are not rendered patentable by recitation of properties, whether or not these properties are shown or suggested in prior art. Where the claimed and prior art products are identical or substantially identical in structure or composition, or are produced by identical or substantially identical processes, a prima facie case of either anticipation or obviousness has been established. In re Best, 562 F.2d 1252, 1255, 195 USPQ 430, 433 (CCPA 1977). MPEP 2112.01(I). Since PTO cannot conduct experiments the proof of burden is shifted to the applicants to establish an unobviousness difference, see In re Best, 562 F.2d 1252, 195 USPQ 430 (CCPA 1977). See MPEP § 2112.01.
21. Though US patent 10,544,261 claims the compounds of Formula (2) being produced from the compounds of Formula C below with R1 being an alkyl:
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Formula C
US patent 10,544,261 does not recite the substituent R1 being an aryl, corresponding to the claimed Ar3.
22. However, Lin‘997 discloses phosphorus-containing compounds of the Formula D below:
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Compound D
Wherein A and B are -OH and D is C1-6 alkyl (claim 1).
23. Thus, given a compound of Formula (2) or B of US patent 10,544,261 having R1 as aryl group is desired, it would have been obvious to a one of ordinary skill in the art to combine the teachings of US patent 10,544,261 and Lin‘997, and to choose and use, or obvious to try to choose and use the compound of Formula D of Lin‘997 having aryl as R1 to form the compounds Formula (2) or B of US patent 10,544,261, since it would be obvious to choose material based on its suitability, thereby arriving at the present invention. Case law holds that the selection of a known material based on its suitability for its intended use supports prima facie obviousness. Sinclair & Carroll Co vs. Interchemical Corp., 325 US 327, 65 USPQ 297 (1045). Case law holds that the mere substitution of an equivalent (something equal in value or meaning, as taught by analogous prior art) is not an act of invention; where equivalency is known to the prior art, the substitution of one equivalent for another is not patentable. See In re Ruff 118 USPQ 343 (CCPA 1958).
24. Claims 1-11 are directed to an invention not patentably distinct from claims 1-8 of U.S. Patent No. 10,544,261 in view of Lin et al (US 2009/0258997; Lin’997).
Specifically, see the discussion in paragraphs 16-23 above.
The U.S. Patent and Trademark Office normally will not institute an interference between applications or a patent and an application of com-mon ownership (see MPEP Chapter 2300). Commonly assigned US 10,544,261, discussed above, would form the basis for a rejection of the noted claims under 35 U.S.C. 103(a) if the commonly assigned case qualifies as prior art under 35 U.S.C. 102(e), (f) or (g) and the conflicting inventions were not commonly owned at the time the invention in this application was made. In order for the examiner to resolve this issue, the assignee can, under 35 U.S.C. 103(c) and 37 CFR 1.78(c), either show that the conflicting inventions were commonly owned at the time the invention in this application was made, or name the prior inventor of the conflicting subject matter.
A showing that the inventions were commonly owned at the time the invention in this application was made will preclude a rejection under 35 U.S.C. 103(a) based upon the commonly assigned case as a reference under 35 U.S.C. 102(f) or (g), or 35 U.S.C. 102(e) for applications pending on or after December 10, 2004.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to IRINA KRYLOVA whose telephone number is (571)270-7349. The examiner can normally be reached 9am-5pm EST M-F.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Arrie Lanee Reuther can be reached at 571-270-7026. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/IRINA KRYLOVA/Primary Examiner, Art Unit 1764
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