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 .
Election/Restrictions
Applicant’s election of group I, claims 1-11 and 20, in the reply filed on August 11, 2026 is acknowledged. Because applicant did not distinctly and specifically point out the supposed errors in the restriction requirement, the election has been treated as an election without traverse (MPEP § 818.01(a)).
Claims 12-19 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected invention, there being no allowable generic or linking claim. Election was made without traverse in the reply filed on August 11, 2026.
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, 3, 5, 7, 10, 11, and 12 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Osawa et al. (JP 2019172803). Note: A machine translation is being used for JP 2019-072803.
Considering Claim 1: Osawa et al. teaches a composition comprising a modified polyphenylene ether resin having terminal modification with styrene or methacrylate groups/unsaturated double bonds (¶0017) and an elastomer comprising a butadiene group (¶0015).
Considering Claims 3 and 5: Osawa et al. teaches the elastomer as preferably being a styrene butadiene copolymer/a polymer of Formula (7) (¶0015).
Considering Claim 7: Osawa et al. teaches the composition as comprising a solvent (¶0037).
Considering Claim 10 and 20: Osawa et al. teaches the ratio of the polyphenylene ether to the butadiene polymer as being 32:37 (Table 1).
Considering Claim 11: Osawa et al. teaches the ratio of the polymers to the solvent as being 45:55 (¶0037).
Claims 2, 4, and 6 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Osawa et al. (JP 2019172803) as applied to claim 1 above, and further in view of the evidence of Chen et al. (ACS Omega, 2018, 3, 6031-6038).
Considering Claims 2 and 4: Osawa et al. teaches the composition of claim 1 as shown above. Osawa et al. teaches the polyphenylene as being OPE-2St-1200 or SA-9000 (¶0017).
Chen teaches the structures of these polymers as being:
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(Figure 1).
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.
This application currently names joint inventors. In considering patentability of the claims the examiner presumes that the subject matter of the various claims was commonly owned as of the effective filing date of the claimed invention(s) absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and effective filing dates of each claim that was not commonly owned as of the effective filing date of the later invention in order for the examiner to consider the applicability of 35 U.S.C. 102(b)(2)(C) for any potential 35 U.S.C. 102(a)(2) prior art against the later invention.
Claims 8 and 9 are rejected under 35 U.S.C. 103 as being unpatentable over Osawa et al. (JP 2019172803) as applied to claim 7 above.
Considering Claims 8 and 9: Osawa et al. teaches the composition of claim 1 as shown above.
Osawa et al. does not teach the claimed viscosity properties. However, viscosity is a well known property effecting the coatability of a film forming composition. As such, it would be considered by a person of ordinary skill in the art to be a result effective variable. It would have been obvious to a person of ordinary skill in the art to have optimized the viscosity properties through the amount of the solvent, and the motivation to do so would have been to control the coatability of the composition during film formation.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
Saito et al. (WO 2021/010431) teaches a composition comprising an unsaturated terminal modified polyphenylene ether and a butadiene polymer (Abstract).
Osumi et al. (US 2022/0251376) teaches a composition comprising an an unsaturated terminal modified polyphenylene ether (¶0018) and a butadiene polymer (Abstract).
Correspondence
Any inquiry concerning this communication or earlier communications from the examiner should be directed to LIAM J HEINCER whose telephone number is (571)270-3297. The examiner can normally be reached M-F 7:30-5:00.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Mark Eashoo can be reached at 571-272-1197. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/LIAM J HEINCER/Primary Examiner, Art Unit 1767
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