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 .
Claim Rejections - 35 USC § 112
Claims 18 and 19 is 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.
In claim 18, it is unclear which claim such is dependent from given that “15 to 18” has been lined through.
In claim 19, it is unclear what is meant by “method of claim 15 to 18”. That is, it is unclear whether the claimed subject matter pertains to each of the recited claims.
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.
(a)(2) the claimed invention was described in a patent issued under section 151, or in an application for patent published or deemed published under section 122(b), in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention.
Claim 15 is rejected under 35 U.S.C. 102 (a1) and (a2) as being anticipated by US 2005/0064336 (Miyabe).
Miyabe discloses a curable composition comprising an unsaturated group-containing multi-branched compound obtained by the reaction of:
(a) a compound containing at least two epoxy groups such as a bifunctional epoxy compound (meets Applicants’ diepoxy (a) and x equivalents thereof);
(b) a compound containing at least three carboxyl groups (meets Applicants’ polycarboxylic acid bearing at least three carboxylic acid groups (c) and y2 equivalents thereof); and
(c) an unsaturated monocarboxylic acid (meets Applicants’ unsaturated carboxylic acid (b) and z2 equivalents thereof),
wherein the molar ratio of the carboxyl groups in compound (b) to epoxy groups in compound (a) is in the range of 0.1 ≤ 1 [0063] and the molar ratio of the carboxyl groups in compound (c) to epoxy groups in compound (a) is in the range of 0.1 ≤ 10 [0064] (e.g., abstract, [0038-0041], [0051], [0057-0059], [0062-0064], [0076-0077], [0086-0091], [0098], examples, claims).
In Example 1 [0146-0147], Miyabe expressly discloses a method of preparing a curable multi-branched compound comprising
(i) a first step of reacting:
(a) 10.6 parts of a bixylenol type epoxy resin (meets Applicants’ diepoxy (a) and undefined number of moles x); and
(b) 1.4 parts of 1.3.5-benzenetricarboxylic acid (meets Applicants’ polycarboxylic acid bearing at least three carboxylic acid groups (c) and undefined number of moles y2) to provide an epoxy-capped prepolymer; and
(ii) a second step of further reacting with:
(c) 5.2 parts of methacrylic acid (meets Applicants’ unsaturated carboxylic acid (b) and undefined number of moles y1).
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 1-19 are rejected under 35 U.S.C. 103 as being unpatentable over US 2005/0064336 (Miyabe) described hereinabove.
Miyabe discloses a curable composition comprising an unsaturated group-containing multi-branched compound obtained by the reaction of:
(a) a compound containing at least two epoxy groups such as a bifunctional epoxy compound (meets Applicants’ diepoxy (a));
(b) a compound containing at least three carboxyl groups (meets Applicants’ polycarboxylic acid bearing at least three carboxylic acid groups (c)); and
(c) an unsaturated monocarboxylic acid (meets Applicants’ unsaturated carboxylic acid (b)),
wherein the molar ratio of the carboxyl groups in compound (b) to epoxy groups in compound (a) is in the range of 0.1 ≤ 1 [0063] and the molar ratio of the carboxyl groups in compound (c) to epoxy groups in compound (a) is in the range of 0.1 ≤ 10 [0064] (e.g., abstract, [0038-0041], [0051], [0057-0059], [0062-0064], [0076-0077], [0086-0091], [0098], examples, claims). In Example 1 [0146-0147], Miyabe expressly discloses a curable multi-branched compound obtained by the reaction of:
(a) 10.6 parts of a bixylenol type epoxy resin (meets Applicants’ diepoxy (a));
(b) 1.4 parts of 1.3.5-benzenetricarboxylic acid (meets Applicants’ polycarboxylic acid bearing at least three carboxylic acid groups (c)); and
(c) 5.2 parts of methacrylic acid (meets Applicants’ unsaturated carboxylic acid (b))
In essence, Miyabe differs from claims 1 and 17 in not expressly describing the molar ratio of epoxy groups of component (a) to total carboxyl groups of components (b) and (c). Miyabe, however, discloses the molar ratio of the carboxyl groups in compound (b) to epoxy groups in compound (a) is in the range of 0.1 ≤ 1 [0063] and the molar ratio of the carboxyl groups in compound (c) to epoxy groups in compound (a) is in the range of 0.1 ≤ 10. Thus, it would have been within the purview of Miyabe’s inventive disclosure, and obvious to one having ordinary skill in the art, to optimize the molar ratio of epoxy groups to total carboxyl groups such that it falls within the presently claimed range of from 1:1.1 to 1:0.90 with the reasonable expectation of success in accordance with the desired ultimate properties, e.g., molecular weight, coating properties, number of polymerizable groups. In general, differences in concentrations do not support the patentability of subject matter encompassed by the prior art unless there is evidence indicating criticality for the claimed ranges. “Where the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation”, In re Aller, 105 USPQ 233.
As to claim 2, Miyabe discloses that the molar ratio of the carboxyl groups in compound (b) to epoxy groups in compound (a) is at most 1 [0063].
As to claim 3, it would have been within the purview of Miyabe’s inventive disclosure, and obvious to one having ordinary skill in the art, to optimize the molar ratio of carboxyl groups of component (b) to carboxyl groups of component (c) such that it falls within the presently claimed range of at most 1:1.5 with the reasonable expectation of success in accordance with the desired ultimate properties, e.g., molecular weight, coating properties, number of polymerizable groups.
As to claims 4, 5 and 19, Miyabe uses a bixylenol type epoxy resin, i.e., a bisphenol-type epoxy resin, in Example 1. Miyabe also discloses that alicyclic epoxy resins can be suitably used [0077].
As claim 6, Miyabe discloses that aliphatic epoxy resins such as diglycidyl ethers of adipic acid can be suitably used [0077].
As claim 7, Miyabe discloses that diglycidyl ethers of bisphenol A, S and F can be suitably used [0077].
As to claims 8 and 9, in Example 1, Miyabe uses methacrylic acid as the unsaturated monocarboxylic acid.
As to claim 10, Miyabe discloses that a polycarboxylic acid having four carboxyl groups can also be used [0094].
As to claim 11, given that Miyabe discloses tricarboxylic acids and tetracarboxylic acids as functional alternatives [0094], it would have been within the purview of one having ordinary skill in the art to use a combination of the two for their expected additive effect.
As to claim 12, Miyabe uses 1.3.5-benzenetricarboxylic acid in Example 1.
As to claim 13, it is within the purview of Miyabe’s inventive disclosure to formulate multi-branched compounds exclusively from (a) a compound containing at least two epoxy groups such as a bifunctional epoxy compound (meets Applicants’ diepoxy (a)), (b) a compound containing at least three carboxyl groups (meets Applicants’ polycarboxylic acid bearing at least three carboxylic acid groups (c)), and (c) an unsaturated monocarboxylic acid (meets Applicants’ unsaturated carboxylic acid (b)).
As to claim 14, it is within the purview of Miyabe’s inventive disclosure [0118-0121], and obvious to one having ordinary skill in the art, to further incorporate an inhibitor and/or an ethylenically unsaturated compound for the expected additive effect.
As to claims 15 and 16, Miyabe discloses that the diepoxy compound (a) is first reacted with polycarboxylic acid containing at least three carboxyl groups (b) to obtain an epoxy-capped prepolymer followed by reaction with the unsaturated carboxylic acid (c). It would have been within the purview of Miyabe’s inventive disclosure, and obvious to one having ordinary skill in the art, to optimize the equivalent ratio of epoxy groups to total carboxyl groups such that it falls within that presently claimed with the reasonable expectation of success in accordance with the desired ultimate properties.
As to claim 18, Miyabe discloses the molar ratio of the carboxyl groups in compound (c) to epoxy groups in compound (a) is preferably in the range of 0.1 ≤ 5 [0064]. It would have been within the purview of Miyabe’s inventive disclosure, and obvious to one having ordinary skill in the art, to optimize the carboxyl groups in compound (c) to epoxy groups in compound (a) such that it falls within that presently claimed with the reasonable expectation of success in accordance with the desired ultimate properties.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Ana L Woodward whose telephone number is (571)272-1082. The examiner can normally be reached M-F 8am-5pm.
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/ANA L. WOODWARD/Primary Examiner, Art Unit 1765
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