DETAILED ACTION
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 .
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 and 5-7 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1 and 3-7 of copending Application No. 18/676480 (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other because copending application ‘480 recites a resin composition, comprising: base resin comprising polyphenylene ether resin, a vinyl copolymer, and an olefin compound, wherein a weight proportion of the base resin in the resin composition is between 15wt% and 20wt%; and hardened resin, wherein a weight proportion of the hardened resin in the resin composition is between 10wt% and 15wt% (claim 1 of ‘480). The amounts fall within the ranges of instant claim 1.
Copending application ‘480 recites a weight proportion of the olefin compound in the base resin is between 15wt% and 20wt%; a weight proportion of the polyphenylene ether resin in the base resin is between 65wt% and 75wt%; and a weight proportion of the vinyl copolymer in the base resin is between 10wt% and 15wt%. These amounts overlap the amounts of instant claim 5. It is well settled that where the prior art describes the components of a claimed compound or compositions in concentrations within or overlapping the claimed concentrations a prima facie case of obviousness is established. See In re Harris, 409 F.3d 1339, 1343, 74 USPQ2d 1951, 1953 (Fed. Cir 2005); In re Peterson, 315 F.3d 1325, 1329, 65 USPQ 2d 1379, 1382 (Fed. Cir. 1997); In re Woodruff, 919 F.2d 1575, 1578 16 USPQ2d 1934, 1936-37 (CCPA 1990); In re Malagari, 499 F.2d 1297, 1303, 182 USPQ 549, 553 (CCPA 1974). It would have been obvious to one of ordinary skill in the art, based on claim 3 of copending application ‘480 to use amounts of polyphenylene ether resin, vinyl resin, and olefinic resin which meet the instant claim limitations of instant claim 5 because “a reference may be relied upon for all that it would have reasonably suggested to one having ordinary skill the art…” Merck & Co. v. Biocraft Laboratories, 874 F.2d 804, 10 USPQ2d 1843 (Fed. Cir.), cert. denied, 493 U.S. 975 (1989). See MPEP 2123.
Copending application ‘480 recites that the resin composition of claim 1 further comprises an initiator, wherein a weight proportion of the initiator in the resin composition is between 0.1wt% and 0.2wt%. This meets instant claim 6.
Copending application ‘480 recites that the resin composition of claim 1 further comprises an inorganic filler material, wherein a weight proportion of the inorganic filler material in the resin composition is between 60wt% and 80wt%. This meets instant claim 7.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
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.
Claim 4 is 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.
Claim 4 recites “wherein the hardened resin adopts only an allyl resin having an isocyanuric acid ring.” It is unclear what the scope of “adopts only” is. The instant specification does not make clear what falls within the scope of “adopts only” and what does not. Therefore, claim 4 is indefinite.
Prior Art
It is noted that the instant specification states that “a hardened resin (can be regarded as a hardener)” in paragraph 19. Thus, a crosslinking agent, which is a hardener, meets “hardened resin” as recited in the instant claims and defined in the instant specification.
It is noted that claim 4 is indefinite and claims 1 and 5-7 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1 and 3-7 of copending Application No. 18/676480 (reference application). However, there are no prior art rejections over the instant claims. The closest prior art, which is discussed below, does not disclose a resin composition comprising a base resin comprising a polyphenylene ether resin, a vinyl copolymer, and an olefinic resin, wherein a weight proportion of the base resin in the resin composition is between 15wt% and 25wt%; and a hardened resin, wherein a weight proportion of the hardened resin in the resin composition is between 5wt% and 15wt%.
Claims 2-3 and 8-10 are objected to as being dependent upon a rejected base claim (claim 1 which is rejected under ODP as indicated above), but would be allowable if rewritten in independent form including all of the limitations of the base claim and any intervening claims.
The closest prior art references are the following: (1) Umehara et al. (US 2018/0312683); (2) Tokiwa et al. (US 2013/0266779); and (3) Fung et al. (US 9,243,132).
Umehara et al. teach a resin composition containing a modified polyphenylene ether copolymer, a high molecular weight compound, and a crosslinking agent, wherein the crosslinking agent is preferably triallyl isocyanurate (¶83). The crosslinking agent meets the “hardened resin” of instant claims 1 and 3-4. The modified polyphenylene ether can be modified with a (meth)acrylate group, making it a methacrylate polyphenylene ether resin (¶37). This meets the polyphenylene ether resin of instant claims 1-2. An expressly named example of high molecular weight compound is butadiene-styrene copolymer (¶78). This meets the vinyl copolymer of the instant claims.
The resin composition of Umehara et al. further comprises from 0.1 to 3 parts by weight (per 100 parts by weight modified polyphenylene ether) of initiator (¶96) and from 40 parts by mass to 200 parts by mass, based on 100 parts by weight modified polyphenylene ether, of an inorganic filler.
A content of the high molecular weight compound, an example of which is butadiene-styrene copolymer, is preferably from 5 to 50 parts by mass and more preferably 10 to 30 parts by mass per 100 parts by mass of modified polyphenylene ether, meaning the polyphenylene ether proportion is greater than the vinyl copolymer proportion.
It is noted that the component described as being present in the highest amount in Umehara et al., is the inorganic filler, which can be present in an amount of 200 parts by weight per 100 parts by weight of modified polyphenylene resin. This means the lowest amount of modified polyphenylene which can be present in the resin composition of Umehara, is 33wt%. This is outside the range of instant claim 1, which requires that the total amount of base resin, comprising all of polyphenylene ether, vinyl copolymer and olefinic, resin, is from 15wt% to 25wt%.
Tokiwa et al. teach a curable resin composition comprising a polyphenylene ether (A), a monomer (B), and an initiator (C), wherein the total of (A) and (B) is 100 parts by mass and 10 to 70 parts by mass of the 100 is monomer (B), and the initiator is present in an amount of 1 to 10 parts by mass. See ¶118. This means the polyphenylene ether is present in an amount of from 30 to 90 parts by mass, monomer (B) is present in an amount of from 10 to 70 parts by mass, and the initiator is present in an amount of from 1 to 10 parts by mass. Tokiwa et al. teaches that resin composition can further comprise additional resins including polymers of ethylene and propylene, which are olefinic resins, as well as styrene-butadiene (vinyl) copolymers, in preferable amount of 20 to 70 parts by mass per 100 parts by mass of the total amount of polyphenylene ether (A) and monomer (B). See ¶119. A specifically named example of monomer (B) is triallyl isocyanurate (¶38), which is a crosslinking agent and corresponds to the instantly claimed “hardened resin.” It is noted that the instant specification states that “a hardened resin (can be regarded as a hardener)” in paragraph 19. Thus, a crosslinking agent, which is a hardener, meets “hardened resin” as recited in the instant claims and defined in the instant specification. The curable composition can further comprise a filler (¶120).
Tokiwa teaches that the curable resin composition can be combined with solvent such that the amount of curable resin composition is 5 to 95 parts by mass per 100 parts by mass of varnish, the varnish of which is solvent plus curable resin composition. This makes the total of curable resin composition 5 to 95wt%. Of this, 10 to 70 parts by mass is the monomer (B), per total of (A) plus (B) being equivalent to 100 parts by mass, meaning the amount of monomer (B), which is the triallyl isocyanurate, which meets instant claims 3-4, is 0.5wt% to 66.5wt%, which overlaps the amount in instant claim 1. The amount of polyphenylene ether resin (A) would be 30 to 90 parts per total of (A) plus (B) being equivalent to 100 parts by mass, meaning the amount of polyphenylene ether resin (A) is 1.5wt% to 85.5wt%. The amount of additional resin, of which olefinic resins and styrene-butadiene copolymers are examples, is 20 to 70 parts by mass per 100 parts by mass of (A) plus (B), meaning the amount of additional resins is from 1wt% to 66.35wt%.
Tokiwa fails to teach a motivation to use both olefinic resins and styrene butadiene copolymers together in the same composition. Tokiwa fails to teach that combination of the additional resins can be utilized, let alone specific amounts of the additional resins which would result in the total amount of additional resins and polyphenylene ether resins being 15wt% to 25wt%. It would not have been obvious to one of ordinary skill in the art to produce a “base resin” comprising polyphenylene ether resin together with both a vinyl copolymer and an olefinic copolymer, let alone in a total amount of 15 to 25wt% as required by the instantly claimed invention.
Fung et al. teach a material comprising a resin mixture, the resin mixture comprising (a) 0 to 15wt% of a polybutadiene resin; (b) 10 to 40wt% of a low-molecular weight polybutadiene resin (a vinyl resin);(c) 5 to 25wt% of a polyphenylene ether resin; (d) 0.1 to 50wt% of an inorganic powder (filler); (e) 10 to 35wt% of a flame retardant; (f) 2 to 10wt% of a crosslinking agent (“hardened resin”); (g) 1 to 10wt% of a binding promoter; and (h) 0.1-3wt% of a curing promoter, wherein (a) through (c) make up 30 to 60wt%. See col. 2, lines 29-60. The polyphenylene either resin is modified with, for example, methacrylate groups (col. 4, lines 56-67). An expressly named example of cross-linking agent is triallyl isocyanurate, which meets instant claims 3-4.
The amount of vinyl resin (polybutadiene), polyphenylene ether, and olefinic resin (a, b, and c) in Fung et al. is outside the range required for instant claim 1. Claim 1 requires an amount of polyphenylene ether resin, an amount of vinyl copolymer, and an amount of olefinic resin in a range of 15wt% to 25wt% of the resin composition, while Fung et al. specifically teaches that the combination of their vinyl resin, polyphenylene ether, and olefinic resin as described above is in the range of 30 to 60wt% of the resin mixture.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to K. B BOYLE whose telephone number is (571)270-7338. The examiner can normally be reached 8:30 am to 5pm, Monday - Friday.
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/K. BOYLE/Primary Examiner, Art Unit 1766
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