DETAILED ACTION
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA . Claims 1-10 are currently pending in the application.
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.
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.
Claim 1 recites the following:
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The claim is indefinite because the scope of “hardened resin” lacks clarity. On the one hand, the term “hardened” implies that the components comprised therein are hardened, i.e., cured/crosslinked. On the other hand, the claim recites “comprising …triallyl isocyanurate and maleimide resin”, i.e., comprises components that are hardenable by virtue of the polymerizable double bonds therein . Therefore, it is unclear if the composition comprises a hardened resin formed from a mixture of cyclopentadiene-styrene copolymer resin, a triallyl isocyanurate, and a maleimide resin, or a hardenable resin comprising cyclopentadiene-styrene copolymer resin, a triallyl isocyanurate, and a maleimide resin.
Claims 2-15 are subsumed by rejected base claim 1 and are therefore included in this rejection.
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 1-10 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-10 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 claims 1-3 are as follows:
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Although the copending claims are silent on a base resin comprising polyphenylene ether resin and an olefin compound (reads on olefin resin) within the claimed range in a single embodiment, it would have been to one of ordinary skill in the art to prepare a base resin comprising claimed components in overlapping amounts for preparing the resin composition of claims 1 or 9 of the present invention. Noting that the transitional phrase in claim 1 is open to other unrecited components therein, 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). See MPEP § 2144.05.
Regarding claim 2, although the molecular weight of the maleimide resin is not recited in the copending claims, those portions of the specification which provide support for the patent claims may also be examined and considered when addressing the issue of whether a claim in an application defines an obvious variation of an invention claimed in the patent. In re Vogel, 422 F.2d 438,164 USPQ 619,622 (CCPA 1970). It is noted that the maleimide resin (DIC NE-X9740S) relied upon in the inventive examples of the copending disclosure is the same as that of Example 2 in the present disclosure. Therefore, it would have been obvious to one of ordinary skill in the art to reasonably expect the maleimide resin of the copending claims to have the claimed molecular weight, absent evidence to the contrary.
Regarding claims 3 and 4, copendng claim 2 recites an allylated phenol resin as an olefin compound. In addition, incorporating the discussion on support in the copending specification from the preceding paragraph, paragraph [0025] in the specification discloses that the polyphenylene ether resin includes a methacrylate polyphenylene ether resin, an oligophenylene ether, or a combination thereof, and paragraph [0022] discloses a hardened resin contents as claimed.
Regarding claims 5, 6, 7, 8 and 10, copending claims 4, 5, 9, 8 and 6, respectively, obviate the claimed limitations.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Conclusion
The closest prior art are the following references: Ogiya et al. (JP 2004263099 A, machine translation) and Hsu et al. (US 20220081559 A1).
Ogiya teaches a curable composition comprising (a) polyphenylene ether and (b) a crosslinkable compound comprising a triallyl isocyanurate and/or a bismaleimide triazine resin, and (c) a block copolymer.
Hsu teaches a resin composition that includes 80 parts by weight to 160 parts by weight of a vinyl-containing resin, wherein the vinyl-containing resin includes a vinyl-containing polyphenylene ether resin, a maleimide resin, a triallyl isocyanurate, a vinyl-containing polyolefin resin or a combination thereof.
However, the cited references fail to teach or suggest a resin composition comprising a combination of polyphenylene ether and a olefinic resin (a base resin), and a hardened resin comprising a styrene-cyclopentadiene resin, triallyl isocyanurate and a maleimide resin within the scope of the claimed invention.
Any inquiry concerning this communication or earlier communications from the
examiner should be directed to Satya Sastri at (571) 272 1112. The examiner can be reached Monday-Friday, 9AM-5.30PM (EST). If attempts to reach the examiner by telephone are unsuccessful, the examiner's supervisor, Mr. Robert Jones can be reached at (571)-270-7733. The fax phone number for the organization where this application or proceeding is assigned is (571) 273 8300.
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/Satya B Sastri/
Primary Examiner, Art Unit 1762
Prosecution Insights