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 .
DETAILED ACTION
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 1-13 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.
In line 2 of claim 1, “(iii).” should be “(iii),”.
In line 3 of claim 1, “The --- or more.” should be “the --- or more,”.
In lines 4 and 7 of claim 1, “The --- structure.” should be “the --- structure, and”.
In line 2 of claim 4, “contains, as” should be “further contains, as the”.
In line 2 of claim 5, “as” should be “as the”.
Other claims depend from the indefinite claim 1 would be also indefinite.
Claim Rejections - 35 USC § 102
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.
Claims 1-2 and 4-13 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by WO 2010/038733 A1 (April 8, 2010, 66 pages) with Machine translation.
WO teaches an adhesive resin composition comprising polyesters comprising obtained from 20 wt.% of terephthalic acid, 70 wt.% of 1,4-hexanedicarboxylic acid,10 wt.% of fumaric acid (i.e., the instant diacid (d)), 18 wt.% of ethylene glycol (i.e., the instant diol (a)) and 82 wt.% of 1,2-propylene glycol (i.e., the instant a diol (c)) as Example G of Table 1. Please see lines 20 and 26 of page 7 and a second full paragraph from bottom of page 19 of the Machine translation for English reactants for Japanese reactants shown in the Table 1 of WO.
Although the English abstract of WO does not teach the recited acid value of 100 eq/ton or more of claim 1, the polyester of the Example G would be expected to have the acid value of 100 eq/ton or more since WO teaches utilization of same reactants used in the instant invention. Since PTO does not have equipment to conduct the test, it is fair to require applicant to shoulder the burden of proving that his material differs from those of WO. See In re Best, 195 USPQ 430, 433 (CCPA 1977). Charles Pfizer & Co. v. FTC, 401 F.2d 574, 579 (6th Cir. 1968). Inherent anticipation does not require that a person of ordinary skill in the art would have recognized the inherent disclosure, Schering Corp. v. Geneva Pharms., Inc., 339 F.3d 1373 (Fed. Cir. 2002). See MPEP 2112.01.
The instantly recited “An adhesive resin composition containing (i.e., comprising) would permit presence of other component such as a polyurethane (d) taught by WO. The transitional term “comprising” is an “open” term, in the sense that it leaves the claim open for the inclusion of unspecified ingredients, “even in major amounts.” Ex parte Davis and Tuukkanen, 80 USPQ 448, 450 (BPAI 1948). MPEP 2111.03
See also North Am. Vaccine, Inc. v. American Cyanamide Co., 7 F.3d 1571, 1585 (Fed. Cir. 1993). Because the term “comprising” is one of enlargement, it can cause a claim to be broader than the invention. See In re Fenton, 451 F.2d 640, 642 (CCPA 1971).
Thus, the instant claim 1 lacks novelty.
Regarding claim 2, WO teaches utilization of same reactants used in the instant invention and thus the example G of WO would meet the claim.
Regarding claim 4, the terephthalic acid and 1,4-hexanedicarboxylic acid would meet the recited polycarboxylic acid having a benzene skeleton and alicyclic polycarboxylic acid, respectively.
Regarding claim 5, 10 wt.% of fumaric acid used in the Example G would fall within scope of 5-20 mol% of claim 5.
Regarding claim 6, the Machine translated WO teaches employing a catalyst in the last paragraph of page 6.
Regarding claim 7, WO teaches utilization of same reactants used in the instant invention and thus the example G of WO would be expected to meet the claim.
Regarding claims 8-10, WO teaches an adhesive agent, an adhesive sheet and a laminate for a print circuit board in abstract.
Regarding claims 11-13, the Machine translated WO teaches utilization of the adhesive for various plastic films and metals in Technical Field and Background-Art of page 2. The adhesive laminated plastic film taught by WO would meet the packaging material of claim 11 since the film can be used as a wrapper inherently.
Further, the recited “for ---” of claims 12 and 13 would be an intended use which would have little probative value and an adhesive laminated plastic film of WO would meet claims 12 and 13.
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 1-13 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-13 of copending Application No. 18/685,313 (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other because the polyester recited in claim 1 of the copending application would inherently require dicarboxylic acid as evidenced by an unsaturated dicarboxylic acid of claim 5. The instantly recited mol% of claim 5 would have been obvious to one skilled in the art.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Claims 1-13 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-13 of copending Application No. 18/681,172 (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other because the polyester recited in claim 1 of the copending application would encompass an acid value of 100 eq/ton or more as evidenced by claim 2 and would inherently require dicarboxylic acid as evidenced by an unsaturated dicarboxylic acid of claim 6. The instantly recited mol% of claim 5 would have been obvious to one skilled in the art.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Claims 1-7 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-7 of copending Application No. 18/275,500 (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other because the polyester recited in claim 1 of the copending application would encompass an adhesive resin composition inherently.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Claims 1-7 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-7 of copending Application No. 18/275,492 (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other because the polyester recited in claim 1 of the copending application would inherently require dicarboxylic acid as evidenced by an unsaturated dicarboxylic acid of claim 5. The instantly recited mol% of claim 5 would have been obvious to one skilled in the art.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
EXAMINER’S COMMENT Regarding claim 3, Machine translated WO 2010/038733 A1 teaches employing 5 to 30 parts by mass of an epoxy compound at bottom of page 6 and the instant specification teaches that “substantially no curing agent” would mean “less than 1 part by mass” in para. [0035].
Applicant failed to submit a certified English translation of the Japanese Foreign Priority document and thus the effective filing date of the instant application would be September 8, 2022 for the PCT application. Thus, although WO 2022/168910 A1 (Aug. 11, 2022, equivalent to US 2024/0110005 A1 (Apr. 4, 2024)) is published before the September 8, 2022 for the PCT application, WO is published in Japanese which is not available as a valid prior art.
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/TAE H YOON/ Primary Examiner, Art Unit 1762
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