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
REQUIREMENT FOR UNITY OF INVENTION
As provided in 37 CFR 1.475(a), a national stage application shall relate to one invention only or to a group of inventions so linked as to form a single general inventive concept (“requirement of unity of invention”). Where a group of inventions is claimed in a national stage application, the requirement of unity of invention shall be fulfilled only when there is a technical relationship among those inventions involving one or more of the same or corresponding special technical features. The expression “special technical features” shall mean those technical features that define a contribution which each of the claimed inventions, considered as a whole, makes over the prior art.
The determination whether a group of inventions is so linked as to form a single general inventive concept shall be made without regard to whether the inventions are claimed in separate claims or as alternatives within a single claim. See 37 CFR 1.475(e).
When Claims Are Directed to Multiple Categories of Inventions:
As provided in 37 CFR 1.475 (b), a national stage application containing claims to different categories of invention will be considered to have unity of invention if the claims are drawn only to one of the following combinations of categories:
(1) A product and a process specially adapted for the manufacture of said product; or
(2) A product and a process of use of said product; or
(3) A product, a process specially adapted for the manufacture of the said product, and a use of the said product; or
(4) A process and an apparatus or means specifically designed for carrying out the said process; or
(5) A product, a process specially adapted for the manufacture of the said product, and an apparatus or means specifically designed for carrying out the said process.
Otherwise, unity of invention might not be present. See 37 CFR 1.475 (c).
Restriction is required under 35 U.S.C. 121 and 372.
This application contains the following inventions or groups of inventions which are not so linked as to form a single general inventive concept under PCT Rule 13.1.
In accordance with 37 CFR 1.499, applicant is required, in reply to this action, to elect a single invention to which the claims must be restricted.
Group I, claim(s) 1, 3-14, and 26-28, drawn to a resin comprising a unit of Chemical Formula 1, or a resin composition comprising the resin of claim 1, or a molded article comprising the resin composition of claim 26.
Group II, claim(s) 15 and 20, drawn to a compound of Chemical Formula 1a.
Group III, claim(s) 24 and 25, drawn to a method for preparing the resin according to claim 1.
The groups of inventions listed above do not relate to a single general inventive concept under PCT Rule 13.1 because, under PCT Rule 13.2, they lack the same or corresponding special technical features for the following reasons:
Groups I-III lack unity of invention because even though the inventions of these groups require the technical feature of a compound comprising a unit of the chemical formula
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, this technical feature is not a special technical feature as it does not make a contribution over the prior art in view of Ono et al. (JP 2002-201262 A, cited in IDS, machine translation in English or untranslated patent used for citation as indicated, made of record on 03/08/2024). Ono teaches a molecule and polycarbonate resin having repeating units (translation [0011]), wherein the repeating unit is a repeating unit represented by chemical formula (translation [0012])
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(untranslated [0013]), which reads on a compound comprising a unit of the chemical formula
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, wherein X1 to X4 are the same as each other, and are each independently O, R1 to R4 are the same as each other, and are each independently an unsubstituted aryl group, and at least one of R1 to R4 is an unsubstituted aryl group, R5 and R6 are the same as or different from each other, and are each independently a substituted or unsubstituted alkylene group, or a substituted or unsubstituted cycloalkylene group, R11 and R12 are the same as each other, and are each independently an unsubstituted alkyl group, R101 and R102 are the same as or different from each other, and are each independently a substituted or unsubstituted alkyl group, a substituted or unsubstituted cycloalkyl group, a substituted or unsubstituted aryl group, or a substituted or unsubstituted heteroaryl group, r101 is 0, and r102 is 0 as claimed.
During a telephone conversation with Lingyan Wang on 09/29/2026 a provisional election was made without traverse to prosecute the invention of Group I, claims 1, 3-14, and 26-28. Affirmation of this election must be made by applicant in replying to this Office action. Claims 15, 20, 24, and 25 are withdrawn from further consideration by the examiner, 37 CFR 1.142(b), as being drawn to a non-elected invention.
Applicant is reminded that upon the cancelation of claims to a non-elected invention, the inventorship must be corrected in compliance with 37 CFR 1.48(a) if one or more of the currently named inventors is no longer an inventor of at least one claim remaining in the application. A request to correct inventorship under 37 CFR 1.48(a) must be accompanied by an application data sheet in accordance with 37 CFR 1.76 that identifies each inventor by his or her legal name and by the processing fee required under 37 CFR 1.17(i).
The examiner has required restriction between product or apparatus claims and process claims. Where applicant elects claims directed to the product/apparatus, and all product/apparatus claims are subsequently found allowable, withdrawn process claims that include all the limitations of the allowable product/apparatus claims should be considered for rejoinder. All claims directed to a nonelected process invention must include all the limitations of an allowable product/apparatus claim for that process invention to be rejoined.
In the event of rejoinder, the requirement for restriction between the product/apparatus claims and the rejoined process claims will be withdrawn, and the rejoined process claims will be fully examined for patentability in accordance with 37 CFR 1.104. Thus, to be allowable, the rejoined claims must meet all criteria for patentability including the requirements of 35 U.S.C. 101, 102, 103 and 112. Until all claims to the elected product/apparatus are found allowable, an otherwise proper restriction requirement between product/apparatus claims and process claims may be maintained. Withdrawn process claims that are not commensurate in scope with an allowable product/apparatus claim will not be rejoined. See MPEP § 821.04. Additionally, in order for rejoinder to occur, applicant is advised that the process claims should be amended during prosecution to require the limitations of the product/apparatus claims. Failure to do so may result in no rejoinder. Further, note that the prohibition against double patenting rejections of 35 U.S.C. 121 does not apply where the restriction requirement is withdrawn by the examiner before the patent issues. See MPEP § 804.01.
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 § 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, 3, 7, 12-14, and 26-28 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Ono et al. (JP 2002-201262 A, cited in IDS, machine translation in English or untranslated patent used for citation as indicated, made of record on 03/08/2024).
Regarding claims 1, 3, and 7, Ono teaches a molecule and polycarbonate resin having repeating units (translation [0011]), wherein the repeating unit is a repeating unit represented by chemical formula (translation [0012])
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(untranslated [0013]), which reads on a resin comprising a unit of Chemical Formula 1: [Chemical Formula 1]
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wherein, in Chemical Formula 1, X1 to X2 are the same as or different from each other, and are each independently O or S, X3 to X4 are the same as each other, and are each independently O, R1 to R4 are the same as each other, and are each independently an unsubstituted aryl group, and at least one of R1 to R4 is an unsubstituted aryl group, R5 and R6 are the same as or different from each other, and are each independently a substituted or unsubstituted alkylene group, or a substituted or unsubstituted cycloalkylene group, R11 and R12 are the same as each other, and are each independently an unsubstituted alkyl group, R101 and R102 are the same as or different from each other, and are each independently a substituted or unsubstituted alkyl group, a substituted or unsubstituted cycloalkyl group, a substituted or unsubstituted aryl group, or a substituted or unsubstituted heteroaryl group, r101 is 0, r102 is 0, La is a direct bond, m and n are each 0, and * means a moiety linked to the main chain of the resin as claimed in claim 1, wherein the unit of Chemical Formula 1 is represented by Chemical Formula 2: [Chemical Formula 2]
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in Chemical Formula 2, X1 to X2 are the same as or different from each other, and are each independently O or S, X3 to X4 are the same as each other, and are each independently O, R1 to R4 are the same as each other, and are each independently an unsubstituted aryl group, R5 and R6 are the same as or different from each other, and are each independently a substituted or unsubstituted alkylene group, or a substituted or unsubstituted cycloalkylene group, R11 and R12 are the same as or different from each other, and are each independently an unsubstituted alkyl group, R101 and R102 are the same as or different from each other, and are each independently a substituted or unsubstituted alkyl group, a substituted or unsubstituted cycloalkyl group, a substituted or unsubstituted aryl group, or a substituted or unsubstituted heteroaryl group, r101 is 0, r102 is 0, La is a direct bond, m and n are each 0, and * means a moiety linked to the main chain of the resin as claimed in claim 3, wherein X1 to X2 are the same as or different from each other, and are each independently O or S, X3 to X4 are the same as each other, and are each independently O, R1 to R4 are the same as each other, and are each independently a monocyclic aryl group having 6 carbon atoms, which is unsubstituted, R5 and R6 are the same as or different from each other, and are each independently a straight-chained or branched alkylene group having 2 to 30 carbon atoms, or a monocyclic or polycyclic cycloalkylene group having 6 to 30 carbon atoms, R11 and R12 are the same as each other, and are each independently a straight-chained alkyl group having 1 carbon atom, r101 and r102 are 0, and La is a direct bond as claimed in claim 7.
Regarding claim 12, the Office recognizes that all the claimed physical properties are not positively taught by Ono, namely that the resin of claim 1 has a refractive index measured at a wavelength of 589 nm of 1.60 to 1.80. However, Ono teaches all the claimed ingredients, amounts, process steps, and process conditions of the resin of claims 1, 3, and 7 as explained above. Furthermore, the specification of the instant application recites that a refractive index of the resin, which is measured at a wavelength of 589 nm, is 1.60 to 1.80 (p. 37, l. 3-4). Also, Ono teaches that the polycarbonate resin has high refraction with a refractive index of 1.70 or higher (translation [0032]). Therefore, the claimed physical properties would naturally arise from the resin of Ono. When the structure recited in the reference is substantially identical to that of the claims, claimed properties or functions are presumed to be inherent (MPEP 2112.01(I)). Products of identical chemical composition can not have mutually exclusive properties (MPEP 2112.01(II)). If the prior art teaches the identical chemical structure, the properties applicant discloses and/or claims are necessarily present (MPEP 2112.01(II)). Where the claimed and prior art products are identical or substantially identical in structure or composition, or are produced by identical or substantially identical processes, a prima facie case of either anticipation or obviousness has been established. When the PTO shows a sound basis for believing that the products of the applicant and the prior art are the same, the applicant has the burden of showing that they are not (MPEP 2112.01(I)). Therefore, the prima facie case can be rebutted by evidence showing that the prior art products do not necessarily possess the characteristics of the claimed product (MPEP 2112.01(I)).
Regarding claim 13, the Office recognizes that all the claimed physical properties are not positively taught by Ono, namely that the resin of claim 1 has a glass transition temperature (Tg) of 100°C to 260°C. However, Ono teaches all the claimed ingredients, amounts, process steps, and process conditions of the resin of claims 1, 3, and 7 as explained above. Furthermore, the specification of the instant application recites that the resin may have a glass transition temperature (Tg) of 100°C to 260°C (p. 36, l. 13-14). Also, Ono teaches that the polycarbonate resin has a glass transition temperature of 130°C or higher (translation [0032]). Therefore, the claimed physical properties would naturally arise from the resin of Ono. When the structure recited in the reference is substantially identical to that of the claims, claimed properties or functions are presumed to be inherent (MPEP 2112.01(I)). Products of identical chemical composition can not have mutually exclusive properties (MPEP 2112.01(II)). If the prior art teaches the identical chemical structure, the properties applicant discloses and/or claims are necessarily present (MPEP 2112.01(II)). Where the claimed and prior art products are identical or substantially identical in structure or composition, or are produced by identical or substantially identical processes, a prima facie case of either anticipation or obviousness has been established. When the PTO shows a sound basis for believing that the products of the applicant and the prior art are the same, the applicant has the burden of showing that they are not (MPEP 2112.01(I)). Therefore, the prima facie case can be rebutted by evidence showing that the prior art products do not necessarily possess the characteristics of the claimed product (MPEP 2112.01(I)).
Regarding claim 14, the Office recognizes that all the claimed physical properties are not positively taught by Ono, namely that the resin of claim 1 has an Abbe’s Number measured at a wavelength of 589 nm, 486 nm, and 656 nm of 8 to 25. However, Ono teaches all the claimed ingredients, amounts, process steps, and process conditions of the resin of claims 1, 3, and 7 as explained above. Furthermore, the specification of the instant application recites that the Abbe’s Number of the resin, which is measured at a wavelength of 486 nm, 589 nm, and 656 nm may be 8 to 25 (p. 37, l. 9-11). Therefore, the claimed physical properties would naturally arise from the resin of Ono. When the structure recited in the reference is substantially identical to that of the claims, claimed properties or functions are presumed to be inherent (MPEP 2112.01(I)). Products of identical chemical composition can not have mutually exclusive properties (MPEP 2112.01(II)). If the prior art teaches the identical chemical structure, the properties applicant discloses and/or claims are necessarily present (MPEP 2112.01(II)). Where the claimed and prior art products are identical or substantially identical in structure or composition, or are produced by identical or substantially identical processes, a prima facie case of either anticipation or obviousness has been established. When the PTO shows a sound basis for believing that the products of the applicant and the prior art are the same, the applicant has the burden of showing that they are not (MPEP 2112.01(I)). Therefore, the prima facie case can be rebutted by evidence showing that the prior art products do not necessarily possess the characteristics of the claimed product (MPEP 2112.01(I)).
Regarding claims 26 and 27, Ono teaches that the polycarbonate resin can be molded by conventional melt molding, that various molded bodies such as disks and fibers can be obtained by extrusion molding, injection molding, vacuum molding, blow molding, compression molding, and lamination molding (translation [0030]), which reads on a resin composition comprising the resin of claim 1 as claimed, and a molded article comprising the resin composition of claim 26 as claimed.
Regarding claim 28, Ono teaches an optical component comprising the polycarbonate resin, and that optical components are lenses (translation [0001]), which reads on the molded article of claim 27, which is an optical member as claimed.
Claims 1, 12, 13, 14, and 26-28 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Yoshida et al. (JP 2000-227668 A, cited in IDS, machine translation in English or untranslated patent used for citation as indicated, made of record on 02/26/2025).
Regarding claim 1, Yoshida teaches a polycarbonate represented by the general formula, wherein specific examples of the general formula are (translation [0020])
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,
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(untranslated [0023]),
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, and
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(untranslated [0024]), which reads on a resin comprising a unit of Chemical Formula 1: [Chemical Formula 1]
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wherein, in Chemical Formula 1, X1 to X2 are the same as or different from each other, and are each independently O or S, X3 to X4 are the same as each other, and are each independently O, R1 to R4 are the same as each other, and are each independently hydrogen, an unsubstituted alkyl group, or a substituted or unsubstituted aryl group, at least one of R1 to R4 is an unsubstituted alkyl group, or a substituted or unsubstituted aryl group, R5 and R6 are the same as or different from each other, and are each independently a substituted or unsubstituted alkylene group, or a substituted or unsubstituted cycloalkylene group, R11 and R12 are the same as or different from each other, and are each independently an unsubstituted alkyl group, or an unsubstituted aryl group, R101 and R102 are the same as or different from each other, and are each independently a substituted or unsubstituted alkyl group, a substituted or unsubstituted cycloalkyl group, a substituted or unsubstituted aryl group, or a substituted or unsubstituted heteroaryl group, r101 is 0, r102 is 0, La is a direct bond, m and n are each 0, and * means a moiety linked to the main chain of the resin as claimed.
Regarding claim 12, the Office recognizes that all the claimed physical properties are not positively taught by Yoshida, namely that the resin of claim 1 has a refractive index measured at a wavelength of 589 nm of 1.60 to 1.80. However, Yoshida teaches all the claimed ingredients, amounts, process steps, and process conditions of the resin of claim 1 as explained above. Furthermore, the specification of the instant application recites that a refractive index of the resin, which is measured at a wavelength of 589 nm, is 1.60 to 1.80 (p. 37, l. 3-4). Therefore, the claimed physical properties would naturally arise from the resin of Yoshida. When the structure recited in the reference is substantially identical to that of the claims, claimed properties or functions are presumed to be inherent (MPEP 2112.01(I)). Products of identical chemical composition can not have mutually exclusive properties (MPEP 2112.01(II)). If the prior art teaches the identical chemical structure, the properties applicant discloses and/or claims are necessarily present (MPEP 2112.01(II)). Where the claimed and prior art products are identical or substantially identical in structure or composition, or are produced by identical or substantially identical processes, a prima facie case of either anticipation or obviousness has been established. When the PTO shows a sound basis for believing that the products of the applicant and the prior art are the same, the applicant has the burden of showing that they are not (MPEP 2112.01(I)). Therefore, the prima facie case can be rebutted by evidence showing that the prior art products do not necessarily possess the characteristics of the claimed product (MPEP 2112.01(I)).
Regarding claim 13, the Office recognizes that all the claimed physical properties are not positively taught by Yoshida, namely that the resin of claim 1 has a glass transition temperature (Tg) of 100°C to 260°C. However, Yoshida teaches all the claimed ingredients, amounts, process steps, and process conditions of the resin of claim 1 as explained above. Furthermore, the specification of the instant application recites that the resin may have a glass transition temperature (Tg) of 100°C to 260°C (p. 36, l. 13-14). Therefore, the claimed physical properties would naturally arise from the resin of Yoshida. When the structure recited in the reference is substantially identical to that of the claims, claimed properties or functions are presumed to be inherent (MPEP 2112.01(I)). Products of identical chemical composition can not have mutually exclusive properties (MPEP 2112.01(II)). If the prior art teaches the identical chemical structure, the properties applicant discloses and/or claims are necessarily present (MPEP 2112.01(II)). Where the claimed and prior art products are identical or substantially identical in structure or composition, or are produced by identical or substantially identical processes, a prima facie case of either anticipation or obviousness has been established. When the PTO shows a sound basis for believing that the products of the applicant and the prior art are the same, the applicant has the burden of showing that they are not (MPEP 2112.01(I)). Therefore, the prima facie case can be rebutted by evidence showing that the prior art products do not necessarily possess the characteristics of the claimed product (MPEP 2112.01(I)).
Regarding claim 14, the Office recognizes that all the claimed physical properties are not positively taught by Yoshida, namely that the resin of claim 1 has an Abbe’s Number measured at a wavelength of 589 nm, 486 nm, and 656 nm of 8 to 25. However, Ono teaches all the claimed ingredients, amounts, process steps, and process conditions of the resin of claim 1 as explained above. Furthermore, the specification of the instant application recites that the Abbe’s Number of the resin, which is measured at a wavelength of 486 nm, 589 nm, and 656 nm may be 8 to 25 (p. 37, l. 9-11). Therefore, the claimed physical properties would naturally arise from the resin of Yoshida. When the structure recited in the reference is substantially identical to that of the claims, claimed properties or functions are presumed to be inherent (MPEP 2112.01(I)). Products of identical chemical composition can not have mutually exclusive properties (MPEP 2112.01(II)). If the prior art teaches the identical chemical structure, the properties applicant discloses and/or claims are necessarily present (MPEP 2112.01(II)). Where the claimed and prior art products are identical or substantially identical in structure or composition, or are produced by identical or substantially identical processes, a prima facie case of either anticipation or obviousness has been established. When the PTO shows a sound basis for believing that the products of the applicant and the prior art are the same, the applicant has the burden of showing that they are not (MPEP 2112.01(I)). Therefore, the prima facie case can be rebutted by evidence showing that the prior art products do not necessarily possess the characteristics of the claimed product (MPEP 2112.01(I)).
Regarding claim 26, Yoshida teaches a mixture of a compound and the polycarbonate (translation [0020]), which reads on a resin composition comprising the resin of claim 1 as claimed.
Regarding claim 27, Yoshida teaches an electrophotographic photosensitive member having a photosensitive layer on a conductive support, wherein the photosensitive layer comprising a resin (translation [0009]), wherein the electrophotographic photosensitive member contains a resin structural unit, a process cartridge having the electrophotographic photosensitive member, and an electrophotographic apparatus (translation [0009]), wherein the resin is a polyarylate resin (translation [0012]) is present in a mixture with the polycarbonate (translation [0020]), which reads on a molded article comprising the resin composition of claim 26 as claimed.
Regarding claim 28, Yoshida teaches an electrophotographic photosensitive member having a photosensitive layer on a conductive support, wherein the photosensitive layer comprising a resin (translation [0009]), wherein the electrophotographic photosensitive member contains a resin structural unit, a process cartridge having the electrophotographic photosensitive member, and an electrophotographic apparatus (translation [0009]), wherein the resin is a polyarylate resin (translation [0012]) is present in a mixture with the polycarbonate (translation [0020]), wherein the electrophotographic photosensitive member comprises an electrophotographic photoreceptor (translation [0008], [0012]), wherein electrophotographic photoreceptors have optical characteristics (translation [0003]), which reads on the method article of claim 27, which is an optical member 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.
Claims 3-11 are rejected under 35 U.S.C. 103 as being unpatentable over Yoshida et al. (JP 2000-227668 A, cited in IDS, machine translation in English or untranslated patent used for citation as indicated, made of record on 02/26/2025) as applied to claim 1.
Regarding claim 3, Yoshida teaches the resin of claim 1 as explained above. Yoshida teaches a polycarbonate represented by the general formula (translation [0020])
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(untranslated [Claim 4]), wherein R15 to R18 represent an alkyl group having 1 to 5 carbon atoms, or an aryl group, X2 represents -CR19R20- and represents an alkylidene group, R19 and R20 represent an alkyl group or an aryl group (translated [Claim 4]), wherein specific examples of the general formula are (translation [0020])
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(untranslated [0023]), which suggests using an aryl group to substitute for the -CH3 groups bonded to the phenylene groups in Yoshida’s
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, which suggests wherein the unit of Chemical Formula 1 is represented by Chemical Formula 2: [Chemical Formula 2]
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in Chemical Formula 2, X1 to X2 are the same as or different from each other, and are each independently O or S, X3 to X4 are the same as each other, and are each independently O, R1 to R4 are the same as each other, and are each independently un unsubstituted aryl group, R5 and R6 are the same as or different from each other, ad are each independently a substituted or unsubstituted alkylene group, or a substituted or unsubstituted cycloalkylene group, R11 and R12 are the same as each other, and are each independently an unsubstituted alkyl group, R101 and R102 are the same as or different from each other, and are each independently a substituted or unsubstituted alkyl group, a substituted or unsubstituted cycloalkyl group, a substituted or unsubstituted aryl group, or a substituted or unsubstituted heteroaryl group, r101 is 0, r102 is 0, La is a direct bond, and * mean a moiety linked to the main chain of the resin as claimed.
Yoshida does not teach a specific embodiment wherein the unit of Chemical Formula 1 is represented by Chemical Formula 2. Before the effective filing date of the claimed invention, one of ordinary skill in the art would have found it obvious to use an aryl group to substitute for the -CH3 groups bonded to the phenylene groups in Yoshida’s
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. The proposed modification would read on wherein the unit of Chemical Formula 1 is represented by Chemical Formula 2: [Chemical Formula 2]
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in Chemical Formula 2, X1 to X2 are the same as or different from each other, and are each independently O or S, X3 to X4 are the same as each other, and are each independently O, R1 to R4 are the same as each other, and are each independently un unsubstituted aryl group, R5 and R6 are the same as or different from each other, and are each independently a substituted or unsubstituted alkylene group, or a substituted or unsubstituted cycloalkylene group, R11 and R12 are the same as each other, and are each independently an unsubstituted alkyl group, R101 and R102 are the same as or different from each other, and are each independently a substituted or unsubstituted alkyl group, a substituted or unsubstituted cycloalkyl group, a substituted or unsubstituted aryl group, or a substituted or unsubstituted heteroaryl group, r101 is 0, r102 is 0, La is a direct bond, and * mean a moiety linked to the main chain of the resin as claimed. One of ordinary skill in the art would have been motivated to do so because it would have been obvious to try with a reasonable expectation of success and/or because it would have been beneficial for providing a species of polycarbonate that is suitable for Yoshida’s polycarbonate because Yoshida teaches that the polycarbonate is represented by the general formula (translation [0020])
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(untranslated [Claim 4]), wherein R15 to R18 represent an alkyl group having 1 to 5 carbon atoms, or an aryl group, X2 represents -CR19R20- and represents an alkylidene group, R19 and R20 represent an alkyl group or an aryl group (translated [Claim 4]), wherein specific examples of the general formula are (translation [0020])
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(untranslated [0023]). Examples of rationales that may support a conclusion of obviousness include "Obvious to try" – choosing from a finite number of identified, predictable solutions, with a reasonable expectation of success (MPEP 2143(I)(E)).
Regarding claim 4, Yoshida teaches the resin of claim 1 as explained above. Yoshida teaches a polycarbonate represented by the general formula (translation [0020])
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(untranslated [Claim 4]), wherein R15 to R18 represent an alkyl group having 1 to 5 carbon atoms, or an aryl group, X2 represents -CR19R20- and represents an alkylidene group, R19 and R20 represent an alkyl group or an aryl group (translated [Claim 4]), wherein specific examples of the general formula are (translation [0020])
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, and
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(untranslated [0023]), which suggests using an aryl group to substitute for the -CH3 groups bonded to the phenylene groups and using an aryl group to substitute for one of the -CH3 groups bonded to the -C(CH3)2- group in Yoshida’s
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or using an aryl group to substitute for the -CH3 groups bonded to the phenylene groups and for the -H groups bonded to the phenylene groups at the position closest to the ether groups in Yoshida’s
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, which suggests wherein the unit of Chemical Formula 1 is represented by Chemical Formula 3: [Chemical Formula 3]
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in Chemical Formula 3, X1 to X2 are the same as or different from each other, and are each independently O or S, X3 to X4 are the same as each other, and are each independently O, R1 to R4 are the same as each other, and are each independently a substituted or unsubstituted aryl group, R5 and R6 are the same as or different from each other, and are each independently a substituted or unsubstituted alkylene group, or a substituted or unsubstituted cyclolalkylene group, R11 is an unsubstituted alkyl group, R12 is a substituted or unsubstituted aryl group, R101 and R102 are the same as or different from each other, and are each independently a substituted or unsubstituted alkyl group, a substituted or unsubstituted cycloalkyl group, a substituted or unsubstituted aryl group, or a substituted or unsubstituted heteroaryl group, r101 is 0, r102 is 0, La is a direct bond, and * means a moiety linked to the main chain of the resin as claimed.
Yoshida does not teach a specific embodiment wherein the unit of Chemical Formula 1 is represented by Chemical Formula 3. Before the effective filing date of the claimed invention, one of ordinary skill in the art would have found it obvious to use an aryl group to substitute for the -CH3 groups bonded to the phenylene groups and to use an aryl group to substitute for one of the -CH3 groups bonded to the -C(CH3)2- group in Yoshida’s
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or to use an aryl group to substitute for the -CH3 groups bonded to the phenylene groups and the -H groups bonded to the phenylene groups at the position closest to the ether groups in Yoshida’s
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. The proposed modification would read on wherein the unit of Chemical Formula 1 is represented by Chemical Formula 3: [Chemical Formula 3]
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in Chemical Formula 3, X1 to X2 are the same as or different from each other, and are each independently O or S, X3 to X4 are the same as each other, and are each independently O, R1 to R4 are the same as each other, and are each independently a substituted or unsubstituted aryl group, R5 and R6 are the same as or different from each other, and are each independently a substituted or unsubstituted alkylene group, or a substituted or unsubstituted cyclolalkylene group, R11 is an unsubstituted alkyl group, R12 is a substituted or unsubstituted aryl group, R101 and R102 are the same as or different from each other, and are each independently a substituted or unsubstituted alkyl group, a substituted or unsubstituted cycloalkyl group, a substituted or unsubstituted aryl group, or a substituted or unsubstituted heteroaryl group, r101 is 0, r102 is 0, La is a direct bond, and * means a moiety linked to the main chain of the resin as claimed. One of ordinary skill in the art would have been motivated to do so because it would have been obvious to try with a reasonable expectation of success and/or because it would have been beneficial for providing a species of polycarbonate that is suitable for Yoshida’s polycarbonate because Yoshida teaches that the polycarbonate is represented by the general formula (translation [0020])
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(untranslated [Claim 4]), wherein R15 to R18 represent an alkyl group having 1 to 5 carbon atoms, or an aryl group, X2 represents -CR19R20- and represents an alkylidene group, R19 and R20 represent an alkyl group or an aryl group (translated [Claim 4]), wherein specific examples of the general formula are (translation [0020])
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, and
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(untranslated [0023]). Examples of rationales that may support a conclusion of obviousness include "Obvious to try" – choosing from a finite number of identified, predictable solutions, with a reasonable expectation of success (MPEP 2143(I)(E)).
Regarding claims 5 and 9, Yoshida teaches the resin of claim 1 as explained above. Yoshida teaches a polycarbonate represented by the general formula (translation [0020])
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(untranslated [Claim 4]), wherein R15 to R18 represent an alkyl group having 1 to 5 carbon atoms, or an aryl group, X2 represents -CR19R20- and represents an alkylidene group, R19 and R20 represent an alkyl group or an aryl group (translated [Claim 4]), wherein specific examples of the general formula are (translation [0020])
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(untranslated [0024]), wherein an aryl group represents a phenyl group or a naphthyl group (translation [0010]), which suggests using a naphthyl group to substitute for the phenyl groups in Yoshida’s
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, which suggests wherein the Chemical Formula 1 is represented by Chemical Formula 4: [Chemical Formula 4]
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in Chemical Formula 4, X1 to X2 are the same as or different from each other, and are each independently O or S, X3 to X4 are the same as each other, and are each independently O, R1 and R3 are the same as each other, and are each independently an unsubstituted aryl group having 10 carbon atoms, R2 and R4 are the same as each other, and are each independently hydrogen, R5 and R6 are the same as or different from each other, and are each independently a substituted or unsubstituted alkylene group, or a substituted or unsubstituted cycloalkylene group, R11 and R12 are the same as each other, and are reach independently an unsubstituted alkyl group, R101 and R102 are the same as or different from each other, and are each independently a substituted or unsubstituted alkyl group, a substituted or unsubstituted cycloalkyl group, a substituted or unsubstituted aryl group, or a substituted or unsubstituted heteroaryl group, r101 is 0, r102 is 0, La is a direct bond, m and n are each 0, and * means a moiety linked to the main chain of the resin as claimed in claim 5, wherein X1 to X2 are the same as or different from each other, and are each independently O or S, X3 to X4 are the same each other, and are each independently O, R1 and R3 are the same as each other, and are each independently a polycyclic aryl group having 10 carbon atoms, which is unsubstituted, R2 and R4 are the same as each other, and are each independently hydrogen, R5 and R6 are the same as or different from each other, and are each independently a straight-chained, or a substituted or unsubstituted straight-chained or branched alkyl group having 1 to 30 carbon atoms, which is unsubstituted or substituted with a monocyclic or polycyclic aryl group having 6 to 30 carbon atoms, R11 and R12 are the same as each other, and are each independently a straight-chained alkyl group having 1 carbon atom, r101 and r102 are 0, and La is a direct bond as claimed in claim 9.
Yoshida does not teach a specific embodiment wherein the Chemical Formula 1 is represented by Chemical Formula 4, wherein the variables are as claimed. Before the effective filing date of the claimed invention, one of ordinary skill in the art would have found it obvious to use a naphthyl group to substitute for the phenyl groups in Yoshida’s
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. The proposed modification would read on wherein the Chemical Formula 1 is represented by Chemical Formula 4: [Chemical Formula 4]
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in Chemical Formula 4, X1 to X2 are the same as or different from each other, and are each independently O or S, X3 to X4 are the same as each other, and are each independently O, R1 and R3 are the same as each other, and are each independently an unsubstituted aryl group having 10 carbon atoms, R2 and R4 are the same as each other, and are each independently hydrogen, R5 and R6 are the same as or different from each other, and are each independently a substituted or unsubstituted alkylene group, or a substituted or unsubstituted cycloalkylene group, R11 and R12 are the same as each other, and are reach independently an unsubstituted alkyl group, R101 and R102 are the same as or different from each other, and are each independently a substituted or unsubstituted alkyl group, a substituted or unsubstituted cycloalkyl group, a substituted or unsubstituted aryl group, or a substituted or unsubstituted heteroaryl group, r101 is 0, r102 is 0, La is a direct bond, m and n are each 0, and * means a moiety linked to the main chain of the resin as claimed in claim 5, wherein X1 to X2 are the same as or different from each other, and are each independently O or S, X3 to X4 are the same each other, and are each independently O, R1 and R3 are the same as each other, and are each independently a polycyclic aryl group having 10 carbon atoms, which is unsubstituted, R2 and R4 are the same as each other, and are each independently hydrogen, R5 and R6 are the same as or different from each other, and are each independently a straight-chained, or a substituted or unsubstituted straight-chained or branched alkyl group having 1 to 30 carbon atoms, which is unsubstituted or substituted with a monocyclic or polycyclic aryl group having 6 to 30 carbon atoms, R11 and R12 are the same as each other, and are each independently a straight-chained alkyl group having 1 carbon atom, r101 and r102 are 0, and La is a direct bond as claimed in claim 9. One of ordinary skill in the art would have been motivated to do so because it would have been obvious to try with a reasonable expectation of success and/or because it would have been beneficial for providing a species of polycarbonate that is suitable for Yoshida’s polycarbonate because Yoshida teaches that the polycarbonate is represented by the general formula (translation [0020])
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(untranslated [Claim 4]), wherein R15 to R18 represent an alkyl group having 1 to 5 carbon atoms, or an aryl group, X2 represents -CR19R20- and represents an alkylidene group, R19 and R20 represent an alkyl group or an aryl group (translated [Claim 4]), wherein specific examples of the general formula are (translation [0020])
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(untranslated [0024]), wherein an aryl group represents a phenyl group or a naphthyl group (translation [0010]). Examples of rationales that may support a conclusion of obviousness include "Obvious to try" – choosing from a finite number of identified, predictable solutions, with a reasonable expectation of success (MPEP 2143(I)(E)).
Regarding claim 6, Yoshida teaches the resin of claim 1 as explained above. Yoshida teaches a polycarbonate represented by the general formula (translation [0020])
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(untranslated [Claim 4]), wherein R15 to R18 represent an alkyl group having 1 to 5 carbon atoms, or an aryl group, X2 represents -CR19R20- and represents an alkylidene group, R19 and R20 represent an alkyl group or an aryl group (translated [Claim 4]), wherein specific examples of the general formula are (translation [0020])
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untranslated [0023]),
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(untranslated [0024]), which suggests using an aryl group to substitute for the -H groups in the phenylene groups at the positions nearest the ether groups in Yoshida’s
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or using an aryl group to substitute for the
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group in Yoshida’s
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, which suggests wherein the unit of Chemical Formula 1 is represented by Chemical Formula 5: [Chemical Formula 5]
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in Chemical Formula 5, X1 to X2 are the same as or different from each other, and are each independently O or X, X3 to X4 are the same as each other, and are each independently O, R1 and R3 are the same as each other, and are each independently an unsubstituted aryl group, R2 and R4 are the same as each other, and are each independently hydrogen or an unsubstituted alkyl group, R5 and R6 are the same as or different from each other, and are each independently a substituted or unsubstituted alkylene group, or a substituted or unsubstituted cycloalkylene group, R11 is an unsubstituted alkyl group, R12 is an unsubstituted aryl group, R101 and R102 are the same as or different from each other, and are each independently a substituted or unsubstituted alkyl group, a substituted or unsubstituted cycloalkyl group, a substituted or unsubstituted aryl group, or a substituted or unsubstituted heteroaryl group, r101 is 0, r102 is 0, La is a direct bond, m and n are each 0, and * means a moiety linked to the main chain of the resin as claimed.
Yoshida does not teach a specific embodiment wherein the unit of Chemical Formula 1 is represented by Chemical Formula 5. Before the effective filing date of the claimed invention, one of ordinary skill in the art would have found it obvious to use an aryl group to substitute for the -H groups in the phenylene groups at the positions nearest the ether groups in Yoshida’s
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or to use an aryl group to substitute for the
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group in Yoshida’s
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. The proposed modification would read on wherein the unit of Chemical Formula 1 is represented by Chemical Formula 5: [Chemical Formula 5]
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in Chemical Formula 5, X1 to X2 are the same as or different from each other, and are each independently O or X, X3 to X4 are the same as each other, and are each independently O, R1 and R3 are the same as each other, and are each independently an unsubstituted aryl group, R2 and R4 are the same as each other, and are each independently hydrogen or an unsubstituted alkyl group, R5 and R6 are the same as or different from each other, and are each independently a substituted or unsubstituted alkylene group, or a substituted or unsubstituted cycloalkylene group, R11 is an unsubstituted alkyl group, R12 is an unsubstituted aryl group, R101 and R102 are the same as or different from each other, and are each independently a substituted or unsubstituted alkyl group, a substituted or unsubstituted cycloalkyl group, a substituted or unsubstituted aryl group, or a substituted or unsubstituted heteroaryl group, r101 is 0, r102 is 0, La is a direct bond, m and n are each 0, and * means a moiety linked to the main chain of the resin as claimed. One of ordinary skill in the art would have been motivated to do so because it would have been obvious to try with a reasonable expectation of success and/or because it would have been beneficial for providing a species of polycarbonate that is suitable for Yoshida’s polycarbonate because Yoshida teaches that the polycarbonate is represented by the general formula (translation [0020])
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(untranslated [Claim 4]), wherein R15 to R18 represent an alkyl group having 1 to 5 carbon atoms, or an aryl group, X2 represents -CR19R20- and represents an alkylidene group, R19 and R20 represent an alkyl group or an aryl group (translated [Claim 4]), wherein specific examples of the general formula are (translation [0020])
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untranslated [0023]),
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(untranslated [0024]). Examples of rationales that may support a conclusion of obviousness include "Obvious to try" – choosing from a finite number of identified, predictable solutions, with a reasonable expectation of success (MPEP 2143(I)(E)).
Regarding claim 7, Yoshida teaches a polycarbonate represented by the general formula (translation [0020])
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(untranslated [Claim 4]), wherein R15 to R18 represent an alkyl group having 1 to 5 carbon atoms, or an aryl group, X2 represents -CR19R20- and represents an alkylidene group, R19 and R20 represent an alkyl group or an aryl group (translated [Claim 4]), wherein specific examples of the general formula are (translation [0020])
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(untranslated [0023]) and
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(untranslated [0024]), wherein an aryl group represents a phenyl group (translation [0010]), which suggests using a phenyl group to substitute for the -CH3 groups bonded to the phenylene groups in Yoshida’s
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, which suggests wherein X1 to X2 are the same as or different from each other, and are each independently O or S, X3 to X4 are the same as each other, and are each independently O, R1 to R4 are the same as each other, and are each independently a monocyclic aryl group having 6 carbon atoms, which is unsubstituted, R5 and R6 are the same as or different from each other, and are each independently a straight-chained or branched alkylene group having 2 to 30 carbon atoms, or a monocyclic or polycyclic cycloalkylene group having 6 to 30 carbon atoms, R11 and R12 are the same as each other, and are each independently a straight-chained alkyl group having 1 carbon atom, r101 and r102 is 0, and La is a direct bond as claimed.
Yoshida does not teach a specific embodiment wherein the variables are as claimed. Before the effective filing date of the claimed invention, one of ordinary skill in the art would have found it obvious to use a phenyl group to substitute for the -CH3 groups bonded to the phenylene groups in Yoshida’s
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. The proposed modification would read on wherein X1 to X2 are the same as or different from each other, and are each independently O or S, X3 to X4 are the same as each other, and are each independently O, R1 to R4 are the same as each other, and are each independently a monocyclic aryl group having 6 carbon atoms, which is unsubstituted, R5 and R6 are the same as or different from each other, and are each independently a straight-chained or branched alkylene group having 2 to 30 carbon atoms, or a monocyclic or polycyclic cycloalkylene group having 6 to 30 carbon atoms, R11 and R12 are the same as each other, and are each independently a straight-chained alkyl group having 1 carbon atom, r101 and r102 is 0, and La is a direct bond as claimed. One of ordinary skill in the art would have been motivated to do so because it would have been obvious to try with a reasonable expectation of success and/or because it would have been beneficial for providing a species of polycarbonate that is suitable for Yoshida’s polycarbonate because Yoshida teaches that the polycarbonate is represented by the general formula (translation [0020])
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(untranslated [Claim 4]), wherein R15 to R18 represent an alkyl group having 1 to 5 carbon atoms, or an aryl group, X2 represents -CR19R20- and represents an alkylidene group, R19 and R20 represent an alkyl group or an aryl group (translated [Claim 4]), wherein specific examples of the general formula are (translation [0020])
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(untranslated [0023]) and
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(untranslated [0024]), wherein an aryl group represents a phenyl group (translation [0010]). Examples of rationales that may support a conclusion of obviousness include "Obvious to try" – choosing from a finite number of identified, predictable solutions, with a reasonable expectation of success (MPEP 2143(I)(E)).
Regarding claim 8, Yoshida teaches a polycarbonate represented by the general formula (translation [0020])
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(untranslated [Claim 4]), wherein R15 to R18 represent an alkyl group having 1 to 5 carbon atoms, or an aryl group, X2 represents -CR19R20- and represents an alkylidene group, R19 and R20 represent an alkyl group or an aryl group (translated [Claim 4]), wherein specific examples of the general formula are (translation [0020])
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,
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(untranslated [0023]), and
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(untranslated [0024]), wherein an aryl group represents a phenyl group (translation [0010]), which suggests using a phenyl group to substitute for the -CH3 groups bonded to the phenylene groups and using a phenyl group to substitute for one of the -CH3 groups bonded to the -C(CH3)2- group in Yoshida’s
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or using a phenyl group to substitute for the -CH3 groups bonded to the phenylene groups and for the -H groups bonded to the phenylene groups at the position closest to the ether groups in Yoshida’s
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, which suggests wherein X1 to X2 are the same as or different from each other, and are each independently O or S, X3 to X4 are the same as each other, and are each independently O, R1 to R4 are the same as each other, and are each independently a monocyclic aryl group having 6 carbon atoms, which is unsubstituted, R5 and R6 are the same as or different from each other, and are each independently a straight-chained or branched alkylene group having 2 to 30 carbon atoms, or a monocyclic or polycyclic cycloalkylene group having 6 to 30 carbon atoms, R11 is a straight-chained alkyl group having 1 carbon atom, R12 is a monocyclic aryl group having 6 carbon atoms, which is unsubstituted, r101 and r102 are 0, and La is a direct bond as claimed.
Yoshida does not teach a specific embodiment wherein the variables are as claimed. Before the effective filing date of the claimed invention, one of ordinary skill in the art would have found it obvious to use a phenyl group to substitute for the -CH3 groups bonded to the phenylene groups and to use a phenyl group to substitute for one of the -CH3 groups bonded to the -C(CH3)2- group in Yoshida’s
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or to use a phenyl group to substitute for the -CH3 groups bonded to the phenylene groups and the -H groups bonded to the phenylene groups at the position closest to the ether groups in Yoshida’s
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. The proposed modification would read on wherein X1 to X2 are the same as or different from each other, and are each independently O or S, X3 to X4 are the same as each other, and are each independently O, R1 to R4 are the same as each other, and are each independently a monocyclic aryl group having 6 carbon atoms, which is unsubstituted, R5 and R6 are the same as or different from each other, and are each independently a straight-chained or branched alkylene group having 2 to 30 carbon atoms, or a monocyclic or polycyclic cycloalkylene group having 6 to 30 carbon atoms, R11 is a straight-chained alkyl group having 1 carbon atom, R12 is a monocyclic aryl group having 6 carbon atoms, which is unsubstituted, r101 and r102 are 0, and La is a direct bond as claimed. One of ordinary skill in the art would have been motivated to do so because it would have been obvious to try with a reasonable expectation of success and/or because it would have been beneficial for providing a species of polycarbonate that is suitable for Yoshida’s polycarbonate because Yoshida teaches that the polycarbonate is represented by the general formula (translation [0020])
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(untranslated [Claim 4]), wherein R15 to R18 represent an alkyl group having 1 to 5 carbon atoms, or an aryl group, X2 represents -CR19R20- and represents an alkylidene group, R19 and R20 represent an alkyl group or an aryl group (translated [Claim 4]), wherein specific examples of the general formula are (translation [0020])
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,
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(untranslated [0023]), and
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(untranslated [0024]), wherein an aryl group represents a phenyl group (translation [0010]). Examples of rationales that may support a conclusion of obviousness include "Obvious to try" – choosing from a finite number of identified, predictable solutions, with a reasonable expectation of success (MPEP 2143(I)(E)).
Regarding claim 10, Yoshida teaches a polycarbonate represented by the general formula (translation [0020])
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(untranslated [Claim 4]), wherein R15 to R18 represent an alkyl group having 1 to 5 carbon atoms, or an aryl group, X2 represents -CR19R20- and represents an alkylidene group, R19 and R20 represent an alkyl group or an aryl group (translated [Claim 4]), wherein specific examples of the general formula are (translation [0020])
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untranslated [0023]),
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(untranslated [0024]), wherein an aryl group represents a phenyl group (translation [0010]), which suggests using a phenyl group to substitute for the -H groups in the phenylene groups at the positions nearest the ether groups in Yoshida’s
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or using a phenyl group to substitute for the
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group in Yoshida’s
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, which suggests wherein X1 to X2 are the same as or different from each other, and are each independently O or S, X3 to X4 are the same as each other, and are each independently O, R1 and R3 are the same as each other, and are each independently a monocyclic aryl group having 6 carbon atoms, which is unsubstituted, R2 and R4 are the same as each other, and are each independently hydrogen, or a straight-chained alkyl group having 1 carbon atom, R5 and R6 are the same as or different from each other, and are each independently a straight-chained or branched alkylene group having 2 to 30 carbon atoms, or a monocyclic or polycyclic cycloalkylene group having 6 to 30 carbon atoms, R11 is a straight-chained alkyl group having 1 carbon atom, R12 is a monocyclic aryl group having 6 carbon atoms, which is unsubstituted, r101 and r102 are 0, and La is a direct bond as claimed.
Yoshida does not teach a specific embodiment wherein the variables are as claimed. Before the effective filing date of the claimed invention, one of ordinary skill in the art would have found it obvious to use a phenyl group to substitute for the -H groups in the phenylene groups at the positions nearest the ether groups in Yoshida’s
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or to use a phenyl group to substitute for the
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group in Yoshida’s
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. The proposed modification would read on wherein X1 to X2 are the same as or different from each other, and are each independently O or S, X3 to X4 are the same as each other, and are each independently O, R1 and R3 are the same as each other, and are each independently a monocyclic aryl group having 6 carbon atoms, which is unsubstituted, R2 and R4 are the same as each other, and are each independently hydrogen, or a straight-chained alkyl group having 1 carbon atom, R5 and R6 are the same as or different from each other, and are each independently a straight-chained or branched alkylene group having 2 to 30 carbon atoms, or a monocyclic or polycyclic cycloalkylene group having 6 to 30 carbon atoms, R11 is a straight-chained alkyl group having 1 carbon atom, R12 is a monocyclic aryl group having 6 carbon atoms, which is unsubstituted, r101 and r102 are 0, and La is a direct bond as claimed. One of ordinary skill in the art would have been motivated to do so because it would have been obvious to try with a reasonable expectation of success and/or because it would have been beneficial for providing a species of polycarbonate that is suitable for Yoshida’s polycarbonate because Yoshida teaches that the polycarbonate is represented by the general formula (translation [0020])
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(untranslated [Claim 4]), wherein R15 to R18 represent an alkyl group having 1 to 5 carbon atoms, or an aryl group, X2 represents -CR19R20- and represents an alkylidene group, R19 and R20 represent an alkyl group or an aryl group (translated [Claim 4]), wherein specific examples of the general formula are (translation [0020])
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untranslated [0023]),
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(untranslated [0024]), wherein an aryl group represents a phenyl group (translation [0010]). Examples of rationales that may support a conclusion of obviousness include "Obvious to try" – choosing from a finite number of identified, predictable solutions, with a reasonable expectation of success (MPEP 2143(I)(E)).
Regarding claim 11, Yoshida teaches the resin of claim 1 as explained above. Yoshida teaches that the molecular weight of the polycarbonate represented by the general formula is not particularly limited but is preferably Mv = 20,000 to 80,000 (translation [0020]), which reads on the resin of claim 1, which as a weight average molecular weight (Mw) of greater than 0 g/mol.
Yoshida does not teach that the resin of claim 1 has a weight average molecular weight (Mw) of 10,000 g/mol to 200,000 g/mol. Before the effective filing date of the claimed invention, one of ordinary skill in the art would have found it obvious to select the molecular weight and weight average molecular weight of Yoshida’s polycarbonate to be 20,000 g/mol to 80,000 g/mol. The proposed modification would read on the resin of claim 1, which as a weight average molecular weight (Mw) of 20,000 g/mol to 80,000 g/mol as claimed. One of ordinary skill in the art would have been motivated to do so because it would have been beneficial for providing molecular weights that are suitable for Yoshida’s polycarbonate and/or because it would have been obvious to try with a reasonable expectation of success because Yoshida teaches that the molecular weight of the polycarbonate represented by the general formula is not particularly limited but is preferably Mv = 20,000 to 80,000 (translation [0020]). Examples of rationales that may support a conclusion of obviousness include "Obvious to try" – choosing from a finite number of identified, predictable solutions, with a reasonable expectation of success (MPEP 2143(I)(E)).
Claim 11 is rejected under 35 U.S.C. 103 as being unpatentable over Ono et al. (JP 2002-201262 A, cited in IDS, machine translation in English or untranslated patent used for citation as indicated, made of record on 03/08/2024) as applied to claim 1.
Regarding claim 11, Ono teaches the resin of claim 1 as explained above. Ono teaches that there is no particular restriction on the molecular weight of the polycarbonate resin, that it can be set to any molecular weight depending on the use and processing method (translation [0028]), that the polycarbonate resin can be molded by conventional melting molding, and that various molded bodies such as disks and fibers can be obtained by extrusion molding, injection molding, vacuum molding, blow molding, compression molding, and lamination molding (translation [0030]), which reads on the resin of claim 1, which has a weight average molecular weight (Mw) of greater than 0 g/mol.
Ono does not teach that the resin of claim 1 has a weight average molecular weight (Mw) of 10,000 g/mol to 200,000 g/mol. Before the effective filing date of the claimed invention, one of ordinary skill in the art would have found it obvious to optimize a weight average molecular weight of Ono’s polycarbonate resin to be from 10,000 g/mol to 200,000 g/mol. The proposed modification would read on the resin of claim 1, which has a weight average molecular weight (Mw) of 10,000 g/mol to 200,000 g/mol as claimed. One of ordinary skill in the art would have been motivated to do so because it would have been beneficial for optimizing suitability of Ono’s polycarbonate resin for molding by conventional melting molding and suitability of Ono’s polycarbonate resin for various molded bodies obtained by molding Ono’s polycarbonate resin because Ono teaches that there is no particular restriction on the molecular weight of the polycarbonate resin, that it can be set to any molecular weight depending on the use and processing method (translation [0028]), that the polycarbonate resin can be molded by conventional melt molding, and that various molded bodies such as disks and fibers can be obtained by extrusion molding, injection molding, vacuum molding, blow molding, compression molding, and lamination molding (translation [0030]), which means that a weight average molecular weight of Ono’s polycarbonate resin in g/mol would have affected suitability of Ono’s polycarbonate resin for molding by conventional melting molding and suitability of Ono’s polycarbonate resin for various molded bodies obtained by molding Ono’s polycarbonate resin.
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, 3-14, and 26-28 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-10 and 14-16 of copending Application No. 18/703,805 (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other because the copending application claims a resin comprising a unit represented by Chemical Formula 1: [Chemical Formula 1]
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. Wherein in Chemical Formula 1; X1 to X6 are the same as or different from each other, and are each independently O or S, R1 and R3 are the same as or different from each other, and are each independently a phenyl group which is substituted with a cyano group, or a substituted or unsubstituted alkyl group, a substituted or unsubstituted aryl group having 10 or more carbon atoms, or a substituted or unsubstituted heteroaryl group, R2 and R4 are the same as or different from each other, and are each independently hydrogen, a substituted or unsubstituted alkyl group, a substituted or unsubstituted aryl group, or a substituted or unsubstituted heteroaryl group, R5 to R6 are the same as or different from each other, and are each independently a substituted or unsubstituted alkylene group, or a substituted or unsubstituted cycloalkylene group, R7 is a direct bond, a substituted or unsubstituted alkyl group, or a substituted or unsubstituted cycloalkylene group, R11 and R12 are the same as or different from each other, and are each independently a substituted or unsubstituted alkyl group, a substituted cycloalkyl group, a substituted or unsubstituted aryl group, or a substituted or unsubstituted heteroaryl group, R101 and R102 are the same as or different from each other, and are each independently hydrogen, a substituted or unsubstituted alkyl group, a substituted or unsubstituted cycloalkyl group, a substituted or unsubstituted aryl group, or a substituted or unsubstituted heteroaryl group, La and La’ are the same as or different from each other, and are each independently a direct bond, or -C(=O)-L, L is a substituted or unsubstituted arylene group, r101 is 1 or 2, and when r101 is 2, each occurrence of R101 is the same as or different from each other, r102 is 1 or 2, and when r102 is 2, each occurrence of R102 is the same as or different from each other, m and n are the same as or different from each, and are each independently an integer that is 1, p is an integer from 0 to 6, when m, n, and p are each 2 or higher, each occurrence of R6-X4, X3-R5, and R7-X6 is the same as or different from each other, respectively, t is 0, when t is 0, r and s are 1, and La is -C(=O)-L, and * means a moiety linked to the main chain of the resin (claim 1), which reads on a resin comprising a unit of Chemical Formula 1: [Chemical Formula 1]
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wherein, in Chemical Formula 1, X1 to X4 are the same as or different from each other, and are each independently O or S, R1 to R4 are the same as or different from each other, and are each independently hydrogen, a substituted or unsubstituted alkyl group, a substituted or unsubstituted aryl group, or a substitute or unsubstituted heteroaryl group, and at least one of R1 to R4 is a substituted or unsubstituted alkyl group, a substituted or unsubstituted aryl group, or a substituted or unsubstituted heteroaryl group, R5 and R6 are the same as or different from each other, and are each independently a substituted or unsubstituted alkylene group, or a substitute or unsubstituted cycloalkylene group, R11 and R12 are the same as or different from each other, and are each independently a substituted or unsubstituted alkyl group, a substituted or unsubstituted cycloalkyl group, a substituted or unsubstituted aryl group, or a substituted or unsubstituted heteroaryl group, R101 and R102 are the same as or different from each other, and are each independently a substituted or unsubstituted alkyl group, a substituted or unsubstituted cycloalkyl group, a substituted or unsubstituted aryl group, or a substituted or unsubstituted heteroaryl group, r101 is 0, 1, or 2, and when r101 is 2, two R101’s are the same as or different from each other, r102 is 0, 1, or 2, and when r102 is 2, two R102 is 2, two R102’s are the same as or different from each other, La is a direct bond, or -C(=O)-L’, L’ is a substituted or substituted arylene group, m and n are each 1, and * means a moiety linked to the main chain of the resin as claimed.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Claims 1, 3-14, and 26-28 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-9 and 13-15 of copending Application No. 18/703,095 (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other because the copending application claims a polycarbonate resin comprising a unit represented by Chemical Formula 1: [Chemical Formula 1]
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in Chemical Formula 1, X1 to X4 are the same as or different from each other, and are each independently O or S, R1 and R3 are the same as or different from each other, and are each independently a phenyl group which is substituted with a cyano group, or a substituted or unsubstituted alkyl group, a substituted or unsubstituted aryl group having 10 or more carbon atoms, a substituted or unsubstituted heteroaryl group, R2 and R4 are the same as or different from each other, and are each independently hydrogen, a substituted or unsubstituted alkyl group, a substituted or unsubstituted aryl group, or a substituted or unsubstituted heteroaryl group, R5 and R6 are the same as or different from each other, and are each independently a substituted or unsubstituted alkylene group, or a substituted or unsubstituted cycloalkylene group, R11 and R12 are the same as or different from each other, and are reach independently a substituted or unsubstituted alkyl group, a substituted or unsubstituted cycloalkyl group, a substituted or unsubstituted aryl group, or a substituted or unsubstituted heteroaryl group, R101 and R102 are the same as or different from each other, and are each independently hydrogen, a substituted or unsubstituted alkyl group, a substituted or unsubstituted cycloalkyl group, a substituted or unsubstituted aryl group, or a substituted or unsubstituted heteroaryl group, r101 is 1 or 2, and when r101 is 2, two R101’s are the same as or different from each other, r102 is 1 or 2, and when r102 is 2, two R102’s are the same as or different from each other, m and n are each independently an integer from 0 to 1, p is an integer from 1 to 6, when m, n, and p are each independently 2 or higher, each occurrence of R6-X4, X3-R5, and R6-X4-C(O) is the same as or different from each other, respectively, and * means a moiety linked to the main chain of the resin (claim 1), which reads on a resin comprising a unit of Chemical Formula 1: [Chemical Formula 1]
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480
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wherein, in Chemical Formula 1, X1 to X4 are the same as or different from each other, and are each independently O or S, R1 to R4 are the same as or different from each other, and are each independently hydrogen, a substituted or unsubstituted alkyl group, a substituted or unsubstituted aryl group, or a substituted or unsubstituted heteroaryl group, and at least one of R1 to R4 is a substituted or unsubstituted alkyl group, a substituted or unsubstituted aryl group, or a substituted or unsubstituted heteroaryl group, R5 and R6 are the same as or different from each other, and are each independently a substituted or unsubstituted alkylene group, or a substituted or unsubstituted cycloalkylene group, R11 and R12 are the same as or different from each other, and are each independently a substituted or unsubstituted alkyl group, a substituted or unsubstituted cycloalkyl group, a substituted or unsubstituted aryl group, or a substituted or unsubstituted heteroaryl group, R101 and R102 are the same as or different from each other, and are each independently a substituted or unsubstituted alkyl group, a substituted or unsubstituted cycloalkyl group, a substituted or unsubstituted aryl group, or a substituted or unsubstituted heteroaryl group, r101 is 0, 1, or 2, and when r101 is 2, two R101’s are the same as or different from each other, r102 is 0, 1, or 2, and when r102 is 2, two R102’s are the same as or different from each other, La a is a direct bond, m and n are each 0 or 1, and * means a moiety linked to the main chain of the resin as claimed.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
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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