Notice of Pre-AIA or AIA Status
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
DETAILED ACTION
Claim Rejections - 35 USC § 112
The following is a quotation of 35 U.S.C. 112(b):
(b) CONCLUSION.—The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the inventor or a joint inventor regards as the invention.
The following is a quotation of 35 U.S.C. 112 (pre-AIA ), second paragraph:
The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.
Claims 1-11 are rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor (or for applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention.
Claim 1 recites X of Formula (II) represents a hydrogen atom and l represents an integer of 0 to 3 which is confusing. A benzene comprises C6H6 and thus the recited fused benzene would comprise C6H4 due to two carbon atoms are fused. Thus, the recited l represents an integer of 0 to 3 when X is the hydrogen is indefinite.
Deletion of “a hydrogen atom or” is suggested.
Other claims depending on the indefinite claim would be also indefinite.
Claim Rejections - 35 USC § 102 and 35 USC § 103
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.
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 1-3, 5, 10-11 and 13-14 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by JP 2010-053325 A (March 11, 2010) with Machine translation.
The examiner interprets that the recited “a thermosetting resin which has, in a main chain, a benzoxazine ring structure represented by a general formula (I)” of claim 1 would encompass “a thermosetting resin which comprising” permitting other repeating structure such as R1 being a bisaniline M taught by JP.
The transitional term “comprising” is an “open” term, in the sense that it leaves the claim open for the inclusion of unspecified ingredients, “even in major amounts.” Ex parte Davis and Tuukkanen, 80 USPQ 448, 450 (BPAI 1948). MPEP 2111.03
See also North Am. Vaccine, Inc. v. American Cyanamide Co., 7 F.3d 1571, 1585 (Fed. Cir. 1993). Because the term “comprising” is one of enlargement, it can cause a claim to be broader than the invention. See In re Fenton, 451 F.2d 640, 642 (CCPA 1971).
JP teaches a benzoxazine copolymer useful for obtaining a film by coating ([0011] and [0014]) having a Formula (1) in claim 1.
Machine translated JP teaches the instant method (i.e., the instant claim 13) of obtaining a thermosetting resin having a benzoxazine ring structure in a main chain with a Mw of 6090 in Synthesis Example 2 ([0077]) in which mixing bisphenol M, bisaniline M, 1.12-diaminododecane, phenol and paraformaldehyde and a polymerization thereafter is taught. The bisphenol M is known as 1,3-bis(2-(4-hydroxylphenyl)-2-propyl)benzene recited in claim 2 and thus the Synthesis Example 2 of JP would meet claims 1 and 2.
Thus, the instant invention lacks novelty.
Regarding claim 2, bisphenol M used by JP is known as 1,3-bis(2-(4-hydroxylphenyl)-2-propyl)benzene recited in claim 2.
Regarding claim 3, the compound (C) of would be an optional component when n=0.
Regarding claim 5, Machine translated JP teaches a thermosetting composition in [0013].
Regarding claims 10 and 11, Machine translated JP teaches a sheet-like molded product in [0071]. A thermoset sheet-like product has high mechanical and physical properties inherently which would make claim 11 at least obvious.
Regarding claims 13 and 14, Synthesis Example 2 of JP teaches the instant method of claim 13. Claim 14 is optional when a step (s1) is chosen in claim 13.
Claims 1-3, 5, 10, 11 and 13-14 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Katagiri et al. (US 2010/0210810 A1).
The examiner interprets that the recited “a thermosetting resin which has, in a main chain, a benzoxazine ring structure represented by a general formula (I)” of claim 1 would encompass “a thermosetting resin which comprising” permitting other repeating structure such as R1 being a fused cycloaliphatic group taught by Katagiri et al.
The transitional term “comprising” is an “open” term, in the sense that it leaves the claim open for the inclusion of unspecified ingredients, “even in major amounts.” Ex parte Davis and Tuukkanen, 80 USPQ 448, 450 (BPAI 1948). MPEP 2111.03
See also North Am. Vaccine, Inc. v. American Cyanamide Co., 7 F.3d 1571, 1585 (Fed. Cir. 1993). Because the term “comprising” is one of enlargement, it can cause a claim to be broader than the invention. See In re Fenton, 451 F.2d 640, 642 (CCPA 1971).
Katagiri et al. teach the instant method (i.e., the instant claim 13) of obtaining a thermosetting resin having a benzoxazine ring structure in a main chain in examples 6 and 9.
Example 6 teaches mixing bisphenol A, 1.12-diaminododecane, TCD-Diamine, phenol and paraformaldehyde and a polymerization thereafter.
Thus, the instant claim 1 lacks novelty.
The bisphenol is known as 2,2-bis-(4-hydroxyphenyl) propane recited in claim 2.
Regarding claim 3, the compound (C) of would be an optional component when n=0.
Regarding claims 5 and 10, Katagiri et al. teach various applications in [0184] which requires a thermosetting composition inherently.
Regarding claim 10, Katagiri et al. teach a laminated sheet in [0184].
Regarding claim 11, Katagiri et al. teach a thermoset grinding stone in [0184] which has high mechanical and physical properties inherently which would make claim 11 at least obvious.
Regarding claims 13 and 14, Synthesis Example 2 of JP teaches the instant method of claim 13. Claim 14 is optional when a step (s1) is chosen in claim 13.
Claims 1-3, 5-7, 10-11 and 13-14 are rejected under 35 U.S.C. 103 as being unpatentable over JP 2008-291070 (Dec. 4, 2008) with Machine translation.
Machine translated JP teaches a thermosetting resin having a benzoxazine ring structure in a main chain in Example A-5 page 6 in which a reaction of bisphenol A, hexamethylenediamine and paraformaldehyde and further reaction of phenol for end-capping is taught.
The instant invention further recites R1 of the recited formula (I) of claim 1 is a linear alkylene having 8 to 12 carbon atoms and at least one of two termini of the main chain is a moiety having Formula (II) over JP.
Machine translated JP teaches and equates the hexamethylenediamine with other diamine such as 1,8-octane diamine, 1,10-decane diamine, 1,11-undacne diamine and 1,12-dodecanediamine in middle of page 6. Thus, further utilization of the 1,8-octane diamine, 1,10-decane diamine, 1,11-undacne diamine and 1,12-dodecanediamine in the Example A-5 in lieu of the hexamethylenediamine would have been obvious.
Thus, it would have been obvious to one skilled in the art before the effective filing date of invention further to utilize the 1,8-octane diamine, 1,10-decane diamine, 1,11-undacne diamine or 1,12-dodecanediamine in the Example A-5 of JP in lieu of the hexamethylenediamine since Machine translated JP teaches and equates the hexamethylenediamine with other diamine such as 1,8-octane diamine, 1,10-decane diamine, 1,11-undacne diamine and 1,12-dodecanediamine 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 the recited terminal group having formula (II) of claim 1 when n=0, the phenol used for end-capping would be expected to yield such terminal group inherently as taught by the first formula taught at top of page 3 of JP.
Since PTO does not have equipment to conduct the test, it is fair to require applicant to shoulder the burden of proving that his material differs from those of JP. See In re Best, 195 USPQ 430, 433 (CCPA 1977). Charles Pfizer & Co. v. FTC, 401 F.2d 574, 579 (6th Cir. 1968). Inherent anticipation does not require that a person of ordinary skill in the art would have recognized the inherent disclosure, Schering Corp. v. Geneva Pharms., Inc., 339 F.3d 1373 (Fed. Cir. 2002). See MPEP 2112.01.
Whether the rejection is based on “inherency” under 35 U.S.C. 102, or “prima facie obviousness” under 35 U.S.C. 103, jointly or alternatively, the burden of proof is the same. In re Fitzgerald, 619 F.2d 67, 70 (CCPA 1980) (quoting) In re Best, 562 F.2d 1252, 1255 (CCPA 1977). MPEP 2183.
Regarding claim 3, the compound (C) would be an optional component when n=0.
Regarding claim 5, Machine translated JP teaches a thermosetting composition in an upper portion of page7.
Regarding claims 6 and 10, Machine translated JP teaches “the thermosetting resin has moldability before curing” and “even if it has been molded before curing and cured by applying heat (cured molded body) below “[Molded body]” of page 7 which would meet claim 6.
Regarding claims 7 and 11, Machine translated JP teaches that the instant thermosetting resin has a benzoxazine ring structure in a main chain which would have been obvious as discussed above and that it has been molded before curing. Machine translated JP teaches that thermosetting resins good mechanical strength at a lower section of page 1. Thus, an uncured molded thermosetting composition and a molded product taught by JP would be expected to have the recited properties.
Regarding claims 13 and 14, the above discussed modification to the Example A-5 page 6 would make claim 13 obvious. Claim 14 is optional when a step (s1) is chosen in claim 13.
Claims 8, 9 and 12 are rejected under 35 U.S.C. 103 as being unpatentable over JP 2008-291070 (Dec. 4, 2008) with Machine translation as applied to claims 1-3, 5-7, 10-11 and 13-14 above, and further in view of Machine translated CN 102781897 A (Nov. 14, 2012).
Regarding claims 8 and 9, a thermosetting resin having benzoxazine rings has formability even before curing and it can be partially cured (e.g., prepreg) as taught by [0202] of Machine translated CN.
Thus, it would have been obvious to one skilled in the art before the effective filing date of invention further partially cure a molded product before curing taught by JP with teaching of CN since JP teaches an uncured molded product and curing and since an intermediate partially cured product is known as taught by CN and since the partial curing would be expected to yield a cured molded product having a stable dimension due to its pre-shrunk by the partial curing absent showing otherwise.
An uncured molded product and a partially cured molded product of JP would be expected to have the recited property of claim 12 inherently.
Since PTO does not have equipment to conduct the test, it is fair to require applicant to shoulder the burden of proving that his material differs from those of JP or JP and CN thereof. See In re Best, 195 USPQ 430, 433 (CCPA 1977). Charles Pfizer & Co. v. FTC, 401 F.2d 574, 579 (6th Cir. 1968). Inherent anticipation does not require that a person of ordinary skill in the art would have recognized the inherent disclosure, Schering Corp. v. Geneva Pharms., Inc., 339 F.3d 1373 (Fed. Cir. 2002). See MPEP 2112.01.
Whether the rejection is based on “inherency” under 35 U.S.C. 102, or “prima facie obviousness” under 35 U.S.C. 103, jointly or alternatively, the burden of proof is the same. In re Fitzgerald, 619 F.2d 67, 70 (CCPA 1980) (quoting) In re Best, 562 F.2d 1252, 1255 (CCPA 1977). MPEP 2183.
EXAMINER’S COMMENT
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. WO 2010130627 A1 (Nov. 18, 2010) with Machine translation teaches a polymerizable benzoxazine compound substituted with (poly)oxyalkylene group at page 2. Machine translated WO teaches that (poly)oxyalkylene group provides aqueous composition useful as a surfactant for a coating composition in middle of page 3. The Examiner does not see any motivation to modify the above prior art teaching molded articles used for the rejections with (poly)oxyalkylene group providing water dispersibility/solubility taught by WO.
Thus, claim 4 would be allowable if rewritten or amended to overcome the rejection(s) under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), 2nd paragraph, set forth in this Office action.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to TAE H YOON whose telephone number is (571)272-1128. The examiner can normally be reached Mon-Fri.
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/TAE H YOON/Primary Examiner, Art Unit 1762
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