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 .
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.
Claims 1-13 are rejected under 35 U.S.C. 103 as being unpatentable over Chang et al., U.S. Patent Application Publication No. 2025/0011594 in view of Seki et al., WO 2024/203532.
The applied reference has a common inventor with the instant application. Based upon the earlier effectively filed date of the reference, it constitutes prior art under 35 U.S.C. 102(a)(2).
This rejection under 35 U.S.C. 103 might be overcome by: (1) a showing under 37 CFR 1.130(a) that the subject matter disclosed in the reference was obtained directly or indirectly from the inventor or a joint inventor of this application and is thus not prior art in accordance with 35 U.S.C.102(b)(2)(A); (2) a showing under 37 CFR 1.130(b) of a prior public disclosure under 35 U.S.C. 102(b)(2)(B); or (3) a statement pursuant to 35 U.S.C. 102(b)(2)(C) establishing that, not later than the effective filing date of the claimed invention, the subject matter disclosed and the claimed invention were either owned by the same person or subject to an obligation of assignment to the same person or subject to a joint research agreement. See generally MPEP § 717.02.
Chang et al. teach compositions comprising the claimed vinyl-functional polyphenylene ether (PPE) and terpolymer in the abstract, but not the compound adhering to formula (1). See also Tables 1 and 2 and the accompanying description of materials utilized in [0088-0108]. There is admittedly, though, no mention of the incorporation of a polymer conforming with formula (I) of claim 1.
Seki et al., is directed to a composition that comprises a polymer anticipatory of compound (1) in claim 1, a polyphenylene ether bearing ethylenically-unsaturated, terminal groups, and a terpolymer of divinylbenzene, styrene, and ethylvinylbenzene. (It is not inconsequential that Chang actually summarizes the results of a comparative example, comparative example 2, also comprising a combination of a vinyl-functional PPE and divinylbenzene/styrene/ethylvinylbenzene and establishes that the comparative composition has a meaningfully lower dielectric constant and dissipation factor than do similarly-constituted ones where divinylbenzene/styrene/ethylene terpolymers are used instead. See paragraphs [0123-0124] and [0125] where it is indicated that a difference in Dk1 of ≥ 0.02 represents a significant different in dielectric constant and a difference in Df1 values ≥ 0.00010 represents a significant difference in dissipation factor.) Relevant to the present discussion, paragraph [0029] indicates that an amount of the polymer anticipatory of compound (1) should be between 5 and 40 parts relative to 100 total parts of the composition, or 5-40 wt.% of the total. This amount, it is noted, encompasses that stipulated in claim 1 where the amount of the compound adhering to formula (1) can be present in quantities as low as 20/(100 + 20 + 60) = 0.11(100) = 11% and as high as 60/180 = 0.33(100) = 33 wt.%. In the case where the claimed ranges “overlap or lie inside ranges disclosed by the prior art” a prima facie case of obviousness exists. In re Wertheim, 541 F.2d 257, 191
USPQ 90 (CCPA 1976).
That same passage of Seki, paragraph [0029], states that a resin composition comprising vinyl-functional PPE and divinylbenzene/styrene/ethylvinylbenzene terpolymer cannot acquire excellent dielectric characteristics when the amount of the polymer correlated with compound (1) of claim 1 is present in quantities smaller than those indicated. Given the compositional parallels between those described by Chang and Seki, one of ordinary skill has a reasonable expectation that the compositions of Chang would benefit in a similar manner (enhanced dielectric properties) by having the polymer compound of formula (1) added thereto, and in similar amounts.
As for claims 2 and 3, the commercial PPE polymers [0088-0091] used in the practice of Chang’s invention, are anticipatory of the limitations of these claims.
Paragraph [0043] of Chang discloses a terpolymer of identical makeup to that defined in claim 4. Paragraph [0045] contemplates adding the same non-essential polymers as are recited in claim 5. Paragraph [0046] states that the polyolefin other than the divinylbenzene/styrene/ethylene terpolymer may be added in amounts corresponding to 1 to 30 parts, it being understood that this figure is relative to 100 parts of the PPE. This range is, of course, strongly overlapping with the corresponding ranges set forth in claims 6, 9, and 11. The polyolefin other than the divinylbenzene/styrene/ethylene terpolymer may be selected from those outlined in [0047-0049] and these passages mention all the same permutations of a polyolefin listed in claims 7, 8, and 10.
As for claim 12, the same adjuvants are contemplated in paragraph [0061] of Chang. Like the compositions of the instant Specification and claims, those of the prior art also have utility in making prepregs, laminates, etc. See [0013].
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 1-5 and 12-13 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1 and 4-9 of copending Application No. 18/232,281 (reference application) in view of Seki et al., WO 2024/203532. Although the claims at issue are not identical, they are not patentably distinct from each other.
Co-pending claim 1 teaches a composition comprising both the claimed vinyl-containing PPE and terpolymer recited in instant claim 1. It is acknowledged that the co-pending claims do not mention the compound represented by formula (1).
Seki et al., is directed to a composition that comprises a polymer anticipatory of compound (1) in claim 1, a polyphenylene ether bearing ethylenically-unsaturated terminal groups, and a divinylbenzene/styrene/ethylvinylbenzene terpolymer. Further, paragraph [0029] indicates that an amount of the polymer anticipatory of compound (1) should be between 5 and 40 parts relative to 100 total parts of the composition, or 5-40 wt.% of the total. This amount, it is noted, encompasses that stipulated in instant claim 1 where the amount of the compound adhering to formula (1) can be present in quantities as low as 20/(100 + 20 + 60) = 0.11(100) = 11% and as high as 60/180 = 0.33(100) = 33 wt.%. In the case where the claimed ranges “overlap or lie inside ranges disclosed by the prior art” a prima facie case of obviousness exists. In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976).
That same passage of Seki, paragraph [0029], states that a resin composition comprising vinyl-functional PPE and divinylbenzene/styrene/ethylvinylbenzene terpolymer cannot acquire excellent dielectric characteristics when the amount of the polymer correlated with compound (1) of claim 1 is present in quantities smaller than those indicated. Given the compositional parallels between that claimed by Chang and disclosed in Seki, one of ordinary skill has a reasonable expectation that the compositions of Chang would benefit in a similar manner (enhanced dielectric properties) by having the polymer compound of formula (1) added thereto, and in similar amounts.
Co-pending claims 4, 5, 6, 7, 8, and 9 are further limiting of co-pending claim 1 in exactly- or much the same manner as instant claims 2, 3, 4, 5, 12, and 13 are further limiting of instant claim 1.
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 MARC S ZIMMER whose telephone number is (571)272-1096. The examiner can normally be reached M-F 8:30-5:00.
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September 19, 2026
/MARC S ZIMMER/Primary Patent Examiner, Art Unit 1765
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