Notice of Pre-AIA or AIA Status
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
DETAILED ACTION
Claim Rejections - 35 USC § 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.
Claims 1-7 are rejected under 35 U.S.C. 103 as being unpatentable over WO 2016147996 A1 (Sep. 22, 2016) with Machine translation.
WO teaches the instant polyimide resin comprising the recited formula (1) and formula (2) of claim 1 in abstract. Machine translated WO teaches a combination of the polyimide resin and other resins including polyether sulfone resins in a seventh full paragraph of page 14. The polyether sulfone resins would include the recited formula (I) with R4 being a single bond (i.e., basic polyether sulfone recited as formula (I-1) in of claim 4).
Thus, it would have been obvious to one skilled in the art before the effective filing date of invention to obtain a composition comprising the instant polyimide resin comprising the recited formula (1) and formula (2) and polyether sulfone in WO since AWO teaches utilization of a combination with other resins including the polyether sulfone absent showing otherwise.
See In re Mills, 477 F.2d 649, 176 USPQ 196 (CCPA), In re Lamberti, 545 F.2d 747, 750 (CCPA 1976): Reference must be considered for all that it discloses and must not be limited to preferred embodiments or working examples. MPEP 2123.
Regarding claim 2, Machine translated WO teaches a molded article in a lower part of page 14 and a combination of the polyimide resin and polyether sulfone resin would yield a microphase separated structure inherently since the two resins are immiscible.
Regarding claim 3, the molded article of the combination of the polyimide resin and polyether sulfone resin taught by WO would be expected to have the recited properties.
Regarding claims 5 and 6, Machine translated WO teaches a mixing ratio of the polyimide resin and other resin being 1/99 to 99/1 in a eighth full paragraph of page 14.
Regarding claim 7, Machine translated WO teaches a molded article in a lower part of page 14.
Claim 2 is rejected under 35 U.S.C. 103 as being unpatentable over WO 2016147996 A1 (Sep. 22, 2016) with Machine translation as applied to claims 1-7 above, and further in view of JP H10251515 A (Sep. 22, 1998).
Further regarding claim 2, JP teaches a polyimide phase dispersed in the polyethersulfone phase in the form of particles in abstract which would be further evidence that the two resins are immiscible.
Claim 4 is rejected under 35 U.S.C. 103 as being unpatentable over WO 2016147996 A1 (Sep. 22, 2016) with Machine translation as applied to claims 1-7 above, and further in view of EP 3771555 A1 (Feb. 3, 2021).
Regarding the recited polyethersulfone resin of claim 4, such as polyethersulfone resin is known as taught by [0022] and [0027] of EP.
Thus, it would have been obvious to one skilled in the art before the effective filing date of invention further to utilize the polyethersulfone resin taught by EP in WO since the polyether sulfone resins taught by WO would encompass various structure including that taught by EP absent showing otherwise.
Selection of a known material based on its suitability for its intended use is prima facie obvious, see Sinclair & Carroll Co. v. Interchemical Corp., 325 US 327, 65 USPQ 297 (1945). MPEP 2144.07.
The combination of familiar elements according to known methods is likely to be obvious when it does no more than yield predictable results. KSR Co. v. Teleflex Inc., 550 U.S. 398, 416 (2007). MPEP 2141.
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, 2 and 4-7 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1 and 3-6 of copending Application No. 18/044,918 (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other because the polyether sulfone resins having the instantly recited formula (I) with R4 being a single bond (i.e., basic polyether sulfone recited as formula (I-1) in of claim 4) would meet the formula (I) in claim of the copending application.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
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/TAE H YOON/ Primary Examiner, Art Unit 1762
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