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 .
Indefiniteness Rejection
2. 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.
3. Claims 1-14 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.
With respect to claim 1, within the definitions of the R variables, the two occurrences of “may” render the claims indefinite, because the language denoted by “may” is not definitive. It is unclear if or to what extent the language denoted by “may” is optional.
Prio Art Rejection
4. 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.
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.
5. Claims 1-11 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by JP H06248066 A.
JP H06248066 A discloses within Example 2 (see paragraphs [0062] and [0063] within the English translation) a polycarbonate copolymer produced by reacting 61 g (0.27 mol) of 2,2-bis(4-hydroxyphenyl)propane, corresponding to applicants’ formula (3), 15 g (0.06 mol) of 2,2-bis(3-methyl-4-hydroxyphenyl)propane, corresponding to applicants’ formulas (1) and (4), and 12 g (0.06 mol) of 4,4'-dihydroxybiphenyl, corresponding to applicants’ formula (2). The molar ratio of 4,4'-dihydroxybiphenyl to 2,2-bis(3-methyl-4-hydroxyphenyl)propane is 1. The content of 4,4'-dihydroxybiphenyl derived units in the copolymer is about 15 mol%; the content of 2,2-bis(3-methyl-4-hydroxyphenyl)propane derived units in the copolymer is about 15 mol%, and the content of 2,2-bis(4-hydroxyphenyl)propane derived units in the copolymer is about 69 mol%. Regarding claim 6, since the resulting polycarbonate composition constitutes mixtures of various polycarbonate polymers having the claimed structures but varying in such properties as individual chain molecular weight, to the extent claimed, the composition constitutes a blend of polymers and the claim is met. Regarding claims 7-9, since the copolymer is produced from the same diol reactants in the same amounts as claimed, the resulting properties are inherently possessed by the polycarbonate. .
6. Claims 12-14 are rejected under 35 U.S.C. 103 as being unpatentable over JP H06248066 A in view of Ohira et al. (US 2022/0049092 A1) .
JP H06248066 A discloses within Example 2 (see paragraphs [0062] and [0063] within the English translation) a polycarbonate copolymer produced by reacting 61 g (0.27 mol) of 2,2-bis(4-hydroxyphenyl)propane, corresponding to applicants’ formula (3), 15 g (0.06 mol) of 2,2-bis(3-methyl-4-hydroxyphenyl)propane, corresponding to applicants’ formulas (1) and (4), and 12 g (0.06 mol) of 4,4'-dihydroxybiphenyl, corresponding to applicants’ formula (2). The molar ratio of 4,4'-dihydroxybiphenyl to 2,2-bis(3-methyl-4-hydroxyphenyl)propane is 1. The content of 4,4'-dihydroxybiphenyl derived units in the copolymer is about 15 mol%; the content of 2,2-bis(3-methyl-4-hydroxyphenyl)propane derived units in the copolymer is about 15 mol%, and the content of 2,2-bis(4-hydroxyphenyl)propane derived units in the copolymer is about 69 mol%.
7. Though the primary reference discloses the production of films, the reference fails to disclose injection or extrusion molded products; however, the use of injection or extrusion molding to process polycarbonate polymer was known at the time of invention as evidenced by Ohira et al. within paragraph [0122]. Accordingly, the position is taken that utilizing such processing methods to produce products from the polycarbonate of the primary reference would have been obvious.
Conclusion
8. 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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/RABON A SERGENT/Primary Examiner, Art Unit 1765
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