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 .
Priority
Applicant’s claim for the benefit of a prior-filed application under 35 U.S.C. 119(e) or under 35 U.S.C. 120, 121, 365(c), or 386(c) is acknowledged.
Receipt is acknowledged of certified copies of papers required by 37 CFR 1.55.
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 1-16 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 limitation “a high-molecular compound” in line 1, and claims 2-16 recite the limitation “the high-molecular compound” in line 1, which is indefinite because it is unclear how “high-molecular” limits “compound”, and it is unclear how “high” limits “molecular”. The specification of the instant application recites that in each of these tables, the “molecular weight” column indicates the molecular weights of the high molecular compounds [0063], that the molecular weights of the high-molecular compounds were measured [0064], that the measurement sample was allowed to pass through a column to separate the high-molecular compound in the measurement sample according to the molecular weight [0065], that the high-molecular compound thus separated were allowed to flow in the order in which they were separated, thereby obtaining measurement results reflecting the molecular weight distribution of the high-molecular compounds [0065], that the molecular weights of the high-molecular compounds were calculated [0065], that this is only an exemplary method for measuring the molecular weights of the high-molecular compounds [0065], and that the molecular weight of the high-molecular compound in examples was 1.2×102-8.7×107 [0070-0079]. For further examination of the claims, the limitation “a high-molecular compound” is interpreted as “a compound having a molecular weight of 1.2×102-8.7×107”, and the limitation “the high-molecular compound” is interpreted as “the compound having a molecular weight of 1.2×102-8.7×107”.
Claim Rejections - 35 USC § 102
In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis (i.e., changing from AIA to pre-AIA ) for the rejection will not be considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status.
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 1-5 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Roger et al. (US 2020/0231729 A1, cited in IDS).
Regarding claims 1-4, Roger teaches linear poly(4-vinylpyridine-2.6-dicarboxylic acid having the formula
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[0331], which reads on a high-molecular compound comprising a constitutional unit (U) having a heterocyclic ring, a carbonyl group, and a substituent bonded to the heterocyclic ring, the substituent including at least one group selected from a carboxyl group as claimed, wherein the substituent includes at least one group selected from COOH as claimed, wherein the heterocyclic ring has a nitrogen atom as claimed, wherein the carbonyl group is directly bonded to the heterocyclic ring as claimed. This is because the molecular weight of Roger’s poly(4-vinylpyridine-2.6-dicarboxylic acid is 12.011 * (6 + 1 + (2 + 5 + 1 + 1) * 100) + 1.008 * (5 + (2 + 1 + 2 + 1 + 1) * 100) + 15.999 * (4 * 100) + 14.007 * 100 + 35.45 * 1 = 19,440.37. Roger teaches 4-hydroxypyridine-2,6-dicarboxylic acid having the formula
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[0321], which reads on a high-molecular compound comprising a constitutional unit (U) having a heterocyclic ring, a carbonyl group, and a substituent bonded to the heterocyclic ring, the substituent including at least one group selected from a hydroxyl group, and a carboxyl group as claimed, wherein the substituent includes at least one group selected from OH, and COOH as claimed, wherein the heterocyclic ring has a nitrogen atom as claimed, wherein the carbonyl group is directly bonded to the heterocyclic ring as claimed. This is because the molecular weight of Roger’s 4-hydroxypyridine-2,6-dicarboxylic acid is 12.011 * 7 + 1.008 * 5 + 15.999 * 5 + 14.007 * 1 = 183.119. The specification of the instant application recites that the molecular weight of the high-molecular compound in examples was 1.2×102-8.7×107 [0070-0079], and the molecular weights of Roger’s compounds are within this range.
Regarding claim 5, Roger teaches 4-hydroxypyridine-2,6-dicarboxylic acid having the formula
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[0321], which reads on wherein the constitutional unit (U) includes a constitutional unit (UA) expressed by the following chemical structural formula (A)
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(A) where R1 is each independently selected from COOH, R2 is each independently selected from OH, R3 is each independently selected from H, and H is excluded from the list for least one of R1, R2, or R3 as claimed.
Claims 1-6 and 15 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Goutsis et al. (US 2019/0167534 A1).
Regarding claims 1-6, Goutsis teaches 2,6-dipicolinic acid [0103], which reads on a high-molecular compound comprising a constitutional unit (U) having a heterocyclic ring, a carbonyl group, and a substituent bonded to the heterocyclic ring, the substituent including at least one group selected from a carboxyl group as claimed, wherein the substituent includes at last one group selected from COOH as claimed, wherein the heterocyclic ring has a nitrogen atom as claimed, wherein the carbonyl group is directly bonded to the heterocyclic ring as claimed, wherein the constitutional unit (U) includes a constitutional unit (UA) expressed by the following chemical structural formula (A)
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(A) wherein R1 is each independently selected from COOH, R2 and R3 are each independently selected from H, and H is excluded from the list for at least one of R1, R2, or R3 as claimed, wherein in the chemical structural formula (A), R3 is H, R1 is COOH, and R2 is H as claimed. This is because the molecular weight of Goutsis’s 2,6-dipicolinic acid is 12.011 * 7 + 1.008 * 5 + 15.999 * 4 + 14.007 * 1 = 167.12. The specification of the instant application recites that the molecular weight of the high-molecular compound in examples was 1.2×102-8.7×107 [0070-0079], and the molecular weight of Goutsis’s compound is within this range.
Regarding claim 15, Goutsis teaches a coloring film comprising at least one acid [0102], wherein the acid is the 2,6-dipicolinic acid [0103], which reads on a film containing the high-molecular compound of claim 1 as claimed.
Claims 1-6, 8-13 and 15 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Shindo (JP 2011-075610 A, machine translation in English used for citation).
Regarding claims 1-4, Shindo teaches pyrimidine-4,5-dicarboxylic acid [0104], pyrrole-2,4-dicarboxylic acid, pyridine-2,3-dicarboxylic acid, pyridine-2,4-dicarboxylic acid, pyridine-2,6-dicarboxylic acid, pyridazine-3,4-dicarboxylic acid, or pyridazine-3,5-dicarboxylic acid [0105], which reads on a high-molecular compound comprising a constitutional unit (U) having a heterocyclic ring, a carbonyl group, and a substituent bonded to the heterocyclic ring, the substituent including at least one group selected from a carboxyl group as claimed, wherein the substituent includes at least one group selected from COOH as claimed, wherein the heterocyclic ring has a nitrogen atom as claimed, wherein the carbonyl group is directly bonded to the heterocyclic ring as claimed. This is because the molecular weight of Shindo’s pyrimidine-4,5-dicarboxylic acid is 12.011 * 6 + 1.008 * 4 + 15.999 * 4 + 14.007 * 2 = 168.108, the molecular weight of Shindo’s pyrrole-2,4-dicarboxylic acid is 12.011 * 5 + 1.008 * 5 + 15.999 * 4 + 14.007 * 1 = 143.098, the molecular weight of Shindo’s pyridine-2,3-dicarboxylic acid, pyridine-2,4-dicarboxylic acid, and pyridine-2,6-dicarboxylic acid is 12.011 * 7 + 1.008 * 5 + 15.999 * 4 + 14.007 * 1 = 167.12, and the molecular weight of Shindo’s pyridazine-3,4-dicarboxylic acid and pyridazine-3,5-dicarboxylic acid is 12.011 * 6 + 1.008 * 4 + 15.999 * 4 + 14.007 * 2 = 168.108. The specification of the instant application recites that the molecular weight of the high-molecular compound in examples was 1.2×102-8.7×107 [0070-0079], and the molecular weights of Shindo’s compounds are within this range.
Regarding claim 5 and 6, Shindo teaches pyridine-2,3-dicarboxylic acid, pyridine-2,4-dicarboxylic acid, or pyridine-2,6-dicarboxylic acid [0105], which reads on wherein the constitutional unit (U) includes a constitutional unit (UA) expressed by the following chemical structural formula (A)
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(A) wherein R1 is each independently selected from COOH, and R2 and R3 are each independently selected from H, or R1 and R3 are each independently selected from H, and R2 is each independently selected from COOH, or R1 and R2 are each independently selected from H, and R3 is each independently selected from COOH, and H is excluded from the list for least one of R1, R2, or R3 as claimed, wherein in the chemical structural formula (A), R1 is H, R2 is COOH, and R3 is H, or R2 is H, R3 is COOH, and R1 is H, or R3 is H, R1 is COOH, and R2 is H as claimed.
Regarding claims 8 and 9, Shindo teaches pyrrole-2,4-dicarboxylic acid [0105], wherein the constitutional unit (U) includes a constitutional unit (UB) expressed by the following chemical structural formula (B)
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(B) where R1 is each independently selected from COOH, R2 is each independently selected from H, and H is excluded from the list for at least one of R1 or R2 as claimed, wherein in the chemical structural formula (B), R1 is COOH, and R2 is H as claimed.
Regarding claim 10, Shindo teaches pyridazine-3,4-dicarboxylic acid or pyridazine-3,5-dicarboxylic acid [0105], which reads on wherein the constitutional unit (U) includes a constitutional unit (UC1) expressed by the following chemical structural formula (C1)
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(C1) where R1 is each independently selected from COOH, and R2 is each independently selected from H, or R1 is each independently selected from H, and R2 is each independently selected from COOH, and H is excluded from the list for at least one of R1 or R2 as claimed.
Regarding claim 11, Shindo teaches pyridazine-3,4-dicarboxylic acid [0105], which reads on wherein in the chemical structural formula (C1), R1 is COOH, and R2 is H as claimed.
Regarding claims 12 and 13, Shindo teaches pyrimidine-4,5-dicarboxylic acid [0104], which reads on wherein the constitutional unit (U) includes a constitutional unit (UC2) expressed by the following chemical structural formula (C2)
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(C2) where R1 is each independently selected from COOH, and R2 is each independently selected from H, or R1 is each independently selected from H, and R2 is each independently selected from COOH, and H is excluded from the list for at least one of R1 or R2 as claimed, wherein in the chemical structural formula (C2), R1 is COOH, and R2 is H as claimed.
Regarding claim 15, Shindo teaches a resin film obtained by forming a resin film on a substrate using a radiation-sensitive resin composition [0117], wherein the radiation-sensitive resin composition contains a compound having an acidic group [0098], wherein it is preferably that the number of acidic groups be two or more, and particularly preferable that it be two [0104], wherein compounds having two acidic groups include pyrrole-2,4-dicarboxylic acid, pyridine-2,3-dicarboxylic acid, pyridine-2,4-dicarboxylic acid, pyridine-2,6-dicarboxylic acid, pyridazine-3,4-dicarboxylic acid, pyridazine-3,5-dicarboxylic acid [0105], or pyrimidine-4,5-dicarboxylic acid [0104], which reads on a film containing the high-molecular compound of claim 1 as claimed.
Claims 1-5 and 7 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Nakadera et al. (US 5,587,265).
Regarding claims 1-5 and 7, Nakadera teaches pyridine-2,3,4,6-tetracarboxylic acid (5:25-26), which reads on a high-molecular compound comprising a constitutional unit (U) having a heterocyclic ring, a carbonyl group, and a substituent bonded to the heterocyclic ring, the substituent including at least one group selected from a carboxyl group as claimed, wherein the substituent includes at least one group selected from COOH as claimed, wherein the heterocyclic ring has a nitrogen atom as claimed, wherein the carbonyl group is directly bonded to the heterocyclic ring as claimed, wherein the constitutional unit (U) includes a constitutional unit (UA) expressed by the following chemical structural formula (A)
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(A) wherein R1, R2, and R3 are each independently selected from COOH, and H is excluded from the list for least one of R1, R2, or R3 as claimed, wherein in the chemical structural formula (A), R1 is COOH, and each of R2 and R3 is same as R1 as claimed. This is because the molecular weight of Nakadera’s pyridine-2,3,4,6-tetracarboxylic acid is 12.011 * 9 + 1.008 * 5 + 15.999 * 8 + 14.007 * 1 = 255.138. The specification of the instant application recites that the molecular weight of the high-molecular compound in examples was 1.2×102-8.7×107 [0070-0079], and the molecular weights of Nakadera’s compound is within this range.
Claims 1-6, 8, 9, and 12-15 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Tabata et al. (JP 2007-320989 A, machine translation in English used for citation).
Regarding claims 1, 2, and 4, Tabata teaches a polyester having a weight-average molecular weight of 500 to 2,000,000, comprising an aromatic polyhydric alcohol residue and an aromatic polycarboxylic acid, its acid halide, or acid anhydride residue [0007], wherein the upper limit of the number-average molecular weight is preferably 1,000,000, while the lower limit is preferably 1,000 [0018], wherein the aromatic polyhydric alcohol residues and aromatic polycarboxylic acid, its acid halide, or acid anhydride residues contained in the polyester are obtained by reacting an aromatic polyhydric alcohol with an aromatic polycarboxylic acid, its acid halide, or acid anhydride during the production of the polyester [0019], wherein examples of aromatic polycarboxylic acids include 2,5-thiophene dicarboxylic acid dimethyl, 3,4-thiophene dicarboxylic acid dimethyl, 2,5-cis-tetrahydroxthiophenedicarboxylic acid dimethyl, 2,6-cis-tetrahydrothiopyrandicarboxylic acid dimethyl, 2,4-pyrroldicarboxylic acid dimethyl, 2,5-pyrroldicarboxylic acid dimethyl, 3,4-pyrroldicarboxylic acid dimethyl, 2,3-pyridine dicarboxylate dimethyl, 2,4-pyridine dicarboxylate dimethyl, 2,5-pyridine dicarboxylate dimethyl, 2,6-pyridinedicarboxylic acid dimethyl, 3,4-pyridinedicarboxylic acid dimethyl, 4,8-quinoline dicarboxylic acid dimethyl, 4,8-quinoline dicarboxylic acid dimethyl, 5,6-quinoline dicarboxylic acid dimethyl, 2,3-pyrazinedicarboxylic acid dimethyl, 2,5-pyrazinedicarboxylic acid dimethyl, or 2,6-pyrazinedicarboxylic acid dimethyl [0021], which reads on a high-molecular compound comprising a constitutional unit (U) having a heterocyclic resin, a carbonyl group, and a substituent bonded to the heterocyclic ring, the substituent include at least one selected from an alkyl group as claimed, wherein the substituent includes at least one group selected from CH3 as claimed, wherein the carbonyl group is directly bonded to the heterocyclic ring as claimed. This is because the specification of the instant application recites that the molecular weight of the high-molecular compound in examples was 1.2×102-8.7×107 [0070-0079], and the molecular weight of Tabata’s polyester is within this range.
Regarding claim 3, Tabata teaches that examples of aromatic polycarboxylic acids include 2,4-pyrroldicarboxylic acid dimethyl, 2,5-pyrroldicarboxylic acid dimethyl, 3,4-pyrroldicarboxylic acid dimethyl, 2,3-pyridine dicarboxylate dimethyl, 2,4-pyridine dicarboxylate dimethyl, 2,5-pyridine dicarboxylate dimethyl, 2,6-pyridinedicarboxylic acid dimethyl, 3,4-pyridinedicarboxylic acid dimethyl, 4,8-quinoline dicarboxylic acid dimethyl, 4,8-quinoline dicarboxylic acid dimethyl, 5,6-quinoline dicarboxylic acid dimethyl, 2,3-pyrazinedicarboxylic acid dimethyl, 2,5-pyrazinedicarboxylic acid dimethyl, or 2,6-pyrazinedicarboxylic acid dimethyl [0021], which reads on wherein the heterocyclic ring has a nitrogen atom as claimed
Regarding claims 5 and 6, Tabata teaches that examples of aromatic polycarboxylic acids include 2,5-pyridine dicarboxylate dimethyl [0021], which reads on wherein the constitutional unit (U) includes a constitutional unit (UA) expressed by the following chemical structural formula (A)
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(A) where R1, R2, and R3 are each independently selected from H, and CH3, and H is excluded form the list for least one of R1, R2, or R3 as claimed, wherein in the chemical structural formula (A), R1 is H, R2 is CH3, and R3 is same as R2, or R2 is H, R3 is CH3, and R1 is same as R3, or R3 is H, R1 is CH3, and R2 is same as R1 as claimed.
Regarding claims 8 and 9, Tabata teaches that examples of aromatic polycarboxylic acids include 2,5-pyrroldicarboxylic acid dimethyl [0021], which reads on wherein the constitutional unit (U) includes a constitutional unit (UB) expressed by the following chemical structural formula (B)
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(B) where R1 and R2 are each independently selected from CH3, and H is excluded from the list for at least one of R1 or R2 as claimed, wherein in the chemical structural formula (B), R1 is CH3, and R2 is same as R1 as claimed.
Regarding claims 12 and 13, Tabata teaches that examples of aromatic polycarboxylic acids include 2,5-pyrazinedicarboxylic acid dimethyl [0021], which reads on wherein the constitutional unit (U) includes a constitutional unit (UC2) expressed by the following chemical structural formula (C2)
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(C2) wherein R1 and R2 are each independently selected from CH3, and H is excluded from the list for at least one of R1 or R2 as claimed, wherein in the chemical structural formula (C2), R1 is CH3, and R2 is same as R1 as claimed.
Regarding claim 14, Tabata teaches molding the polyester [0006], that the polyester can be used in eyeglass lenses, and imaging lenses [0046], which reads on a molding composition containing the high-molecular compound of claim 1 as claimed.
Regarding claim 15, Tabata teaches that the polyester can be used in coatings [0046], which reads on a film containing the high-molecular compound of claim 1 as claimed.
Claim Rejections - 35 USC § 103
In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis (i.e., changing from AIA to pre-AIA ) for the rejection will not be considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status.
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.
Claim 16 is rejected under 35 U.S.C. 103 as being unpatentable over Tabata et al. (JP 2007-320989 A, machine translation in English used for citation) as applied to claim 1, and further in view of Barbey et al. (US 4,654,249).
Regarding claim 16, Tabata teaches the high-molecular compound of claim 1 as explained above. Tabata teaches that the polyester exhibits excellent dielectric properties and that it can be used in electrical and electronic materials [0046].
Tabata does not teach a capacitor including a dielectric layer containing a high-molecular compound of claim 1. However, Barbey teaches that films can be used as dielectric layers in capacitors (5:13-14), wherein the films are biaxially drawn polyester films (1:7-8). Tabata and Barbey are analogous art because both references are in the same field of endeavor of a high-molecular compound comprising a constitutional unit (U) having a carbonyl group. Before the effective filing date of the claimed invention, one of ordinary skill in the art would have found it obvious to prepare capacitors comprising dielectric layers that are biaxially drawn polyester films comprising Tabata’s polyester, as suggested by Barbey. The proposed modification would read on a capacitor including a dielectric layer containing a high-molecular compound of claim 1 as claimed. One of ordinary skill in the art would have been motivated to do so because Barbey teaches that a polyester is beneficial for being useful in biaxially drawn polyester films (1:7-8), and that the biaxially drawn polyester films are beneficial for being useful as dielectric layers in capacitors (5:13-14), and because Tabata teaches that the polyester exhibits excellent dielectric properties and that it can be used in electrical and electronic materials [0046], which means that Tabata’s polyester would have been beneficial for being useful in biaxially drawn polyester films, and that the biaxially drawn polyester films are beneficial for being useful as dielectric layers in capacitors, which would have been beneficial for an additional utility for Tabata’s polyester.
Correspondence
Any inquiry concerning this communication or earlier communications from the examiner should be directed to DAVID KARST whose telephone number is (571)270-7732. The examiner can normally be reached Monday-Friday 8:00 AM-5:00 PM.
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/DAVID T KARST/Primary Examiner, Art Unit 1767
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