Detailed Office 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 .
Objection to the Abstract
2. The abstract of the disclosure is objected to because the structure of the benzoxazine compound and definitions of the variables therein should be set forth, since the structure is a fundamental characteristic of the inventive composition. 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).
Claim Rejections - 35 USC § 112
3. 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.
4. Claims 1-10 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.
Firstly, with respect to claim 1, regarding the Markush group specifying a metal of component (c), improper Markush group language has been used; the language, “selected from the group consisting of” should be used as opposed to “selected from among”.
Secondly, with respect to claim 4, the use of the word, “type”, in association with the claimed epoxy resin species renders the claim indefinite, because “type” so extends the scope of the language that the metes and bounds of the claim cannot be determined.
Prior Art Rejections
5. 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.
6. Claims 1, 7, and 9 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Eguchi et al. (US 2010/0204433 A1).
Eguchi et al. disclose a polymerizable composition comprising an ester containing benzoxazine, corresponding applicant’s claimed component (A), claimed structure (1), (see abstract and paragraphs [0022]-[0049] within Eguchi et al.), wherein the composition may additionally comprise a curing accelerator corresponding to applicant’s component (C) (see paragraph [0124] within Eguchi et al.). Furthermore, regarding claim 9, the compositions are disclosed as being excellent in heat resistance and suitable for electronic applications and heat resistant binders (see paragraphs [0022] and [0128]-[0130]; therefore, the application of heat or heating to the cured composition is inherently disclosed, adequate to meet claim 9 to the extent claimed.
7. Claims 5 and 6 are rejected under 35 U.S.C. 103 as being unpatentable over Eguchi et al. (US 2010/0204433 A1).
Eguchi et al. disclose a polymerizable composition comprising an ester containing benzoxazine, corresponding applicant’s claimed component (A), claimed structure (1), (see abstract and paragraphs [0022]-[0049] within Eguchi et al.), wherein the composition may additionally comprise a curing accelerator corresponding to applicant’s component (C) (see paragraph [0124] within Eguchi et al.).
8. Though Eguchi et al. fail to disclose the quantity range of claim 5, given the latitude afforded by the disclosures of the use of other components, such as epoxy resins and additives (see paragraphs [0114]-[0117]) and the breadth of applicant’s claimed range, the position is taken that it would have been obvious to formulate compositions having the claimed amount of component (A). Furthermore, though Eguchi et al. fail to disclose the quantity range of claim 6, in view of the mass range disclosed within paragraph [0125], the position is taken that determining a molar amount of component (C) to promote curing, corresponding to that claimed, would have required only routine experimentation and therefore would have been obvious.
9. Claims 1, 3, 4, and 7-10 are rejected under 35 U.S.C. 103 as being unpatentable over Eguchi et al. (US 2010/0204433 A1) in view of Shimono et al. (US 2017/0101532 A1).
Eguchi et al. disclose a polymerizable composition comprising an ester containing benzoxazine, corresponding applicant’s claimed component (A), claimed structure (1), (see abstract and paragraphs [0022]-[0049] within Eguchi et al.), wherein the composition may additionally comprise a curing accelerator corresponding to applicant’s component (C) (see paragraph [0124] within Eguchi et al.). Furthermore, regarding claim 9, the compositions are disclosed as being excellent in heat resistance and suitable for electronic applications and heat resistant binders (see paragraphs [0022] and [0128]-[0130]; therefore, the application of heat or heating to the cured composition is intrinsically disclosed, adequate to meet claim 9 to the extent claimed.
10. Though Eguchi et al. disclose the use of an epoxy resin as a preferred additional component within paragraph [0114], the reference is silent regarding the use of specific epoxy resins corresponding to claimed component (B), claimed formula (2); however, the use of such epoxy resins as those claimed within benzoxazine compositions was known at the time of invention, as evidenced by the disclosure within paragraph [0079] of Shimono et al. Accordingly, the position is taken that it would have been obvious to use the clamed epoxy resins as the epoxy resin component of the primary reference, so as to arrive at the instant invention. Regarding claims 8 and 10, though the primary reference is silent regarding the incorporation of fibers into the composition of the primary reference, the incorporation of fibers into curable benzoxazine compositions was known at the time of invention, as evidenced by the teachings of Shimono et al. within paragraphs [0142]-[0147]. Accordingly, the position is taken that it would have been obvious to incorporate such reinforcing fibers into the composition of the primary reference, so as to arrive at the instant invention and obtain curable compositions that possess enhance physical properties once cured.
Allowable Subject Matter
11. Claim 2 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.
Conclusion
12. Any inquiry concerning this communication or earlier communications from the examiner should be directed to Rabon A Sergent whose telephone number is (571)272-1079. The examiner can normally be reached on Monday through Friday from 9:00 AM until 5:00 PM, ET.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Heidi Riviere Kelley, can be reached at telephone number 571-270-1831. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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Examiner interviews are available via a variety of formats. See MPEP § 713.01. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) Form at https://www.uspto.gov/InterviewPractice.
/RABON A SERGENT/ Primary Examiner, Art Unit 1765
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