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 § 101
35 U.S.C. 101 reads as follows:
Whoever invents or discovers any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof, may obtain a patent therefor, subject to the conditions and requirements of this title.
Claims 17-19 are rejected under 35 U.S.C. 101 because the claimed invention is directed to non-statutory subject matter. The claim(s) does/do not fall within at least one of the four categories of patent eligible subject matter because the recited “A use of” is not one of the four categories. The examiner suggests “A method of using” instead.
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.
Claim 18 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.
The recited “or the polycarbonate-based resin composition of claim 1” would lack an antecedent basis in claim 1.
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.
Claim 10 is rejected under 35 U.S.C. 102(a)(1) as being anticipated by Mauz et al. (US 4,007,282).
Mauz et al. teach 3,3-Bis(4’-hydroxy-3’-tert.-butyl-phenyl)butanoic acid cyclohexyl ester in Example 9 falling within scope of the recited dihydric phenol having formula (ii).
Thus, claim 10 lacks novelty.
Claim 10 is rejected under 35 U.S.C. 102(a)(1) as being anticipated by Patel et al. (Synthesis of Halogen Substituted Derivatives of 4,4-Bis(4-hydroxyphenyl_pentanoic Acid and Their Antifungal Properties, Journal of Pharmaceutical Sciences, Vol. 56, No.10, 1967, pages 1326-1328).
Patel et al. teach the instant compound as Ex. 7 of Table I in which X being Br (i.e., the instant R11 and R12 with c and d being each 2) and R being cyclohexyl (i.e., the instant R13) are taught.
Thus, claim 10 lacks novelty.
Claims 1-15 and 17-19 are rejected under 35 U.S.C. 103 as being unpatentable over JP 3704251 B2 (July 29, 2005) with Machine translation.
Machine translated JP teaches a polycarbonate useful for automobile parts, electronic and electrical parts and optical materials and a production method in [0001].
JP teaches a general formula (I) at page 1 and Machine translated JP teaches the following definitions:
Y1 to Y8 include a saturated aliphatic hydrocarbon group having 1 to 10 carbon atoms, a halogen or alkoxy group in [0006]. Y9 and Y10 include a cyclohexyl group or a carboxylic acid in [0007].
Thus, it would have been obvious to one skilled in the art before the effective filing date of invention to utilize the formula (I) with the above discussed substitutions for obtaining a polycarbonate which would make claims 1 and 5 obvious 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 JP teaches copolycarbonates further utilizing 2,2-bis-(4-hydroxy-3,5-dimethylphenyl) propane, for example, in [0010].
Regarding claims 3-4, it would have been obvious to one skilled in the art to utilize the formula (I) as a main component with a large amount.
Regarding claim 6, a cyclohexyl group taught by JP meets claim 6.
Regarding claim 7, Machine translated JP teaches a viscosity average molecular weight of 15,000 to 100,000 in [0011].
Regarding claims 8 and 9, JP teaches polycarbonates falling with scope of claim 1 and thus polycarbonates taught by JP is expected to have the recited transmittance inherently, especially since polycarbonates are known as transparent polymers in the art.
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 claims 10 and 19, formula (I) taught by JP before reaction with an acid would make the recited dihydric phenol of claim 10 obvious and EP teaches polycarbonates therefrom.
Regarding claims 11 and 19, Machine translated JP teaches a method of polymerization in [0014-0015] and utilization a polycarbonate oligomer and bisphenol in presence of a water-insoluble organic solvent and aqueous sodium hydroxide solution in [0021]. Thus, further utilization of dihydric phenol of claim 10 discussed above in lieu of the bisphenol used in [0021] of Machine translated JP would have been obvious to one skilled in the art since JP teaches the dihydric phenol of claim 10. 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.
Regarding claims 12-15 and 17-18, Machine translated JP teaches a polycarbonate useful for automobile parts, electronic and electrical parts and optical materials in [0001]. The recited “for use” of claim 13 is an intended use which has no probative value and automobile component parts and optical materials would have a property of a scratch-resistant inherently which would make claims 17-18 obvious.
Claim 16 is rejected under 35 U.S.C. 103 as being unpatentable over JP 3704251 B2 (July 29, 2005) with Machine translation as applied to claims1-15 and 17-19 above, and further in view of Machine translated JP 2006103599 A (April 20, 2006) or JP 2004155270 A (June 3,2004) with Machine translation.
Regarding claim 16, Machine translated JP 3704251 B2 teaches a polycarbonate useful for automobile parts.
An outer surface of an automobile part comprising polycarbonate resin is known as taught by a second full paragraph from bottom of page 5 of Machine translated JP 2006103599 A.
Machine translated JP 2004155270 A teaches that a first component 4 and a second component 5 of a visor (see Fig. 3 of JP) comprises polycarbonate in [0019].
Thus, it would have been obvious to one skilled in the art before the effective filing date of invention to obtain automobile parts comprising the polycarbonate as an outer surface taught by Machine translated JP 2006103599 A or JP 2004155270 A in Machine translated JP 3704251 B2 absent showing otherwise.
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.
Claims 1-6, 8-10 and 12-19 are rejected under 35 U.S.C. 103 as being unpatentable over EP 0372323 A2 (Nov. 24, 1989).
EP teaches polycarbonate resins comprising chain units of formula (II) having E and R groups at page 3. EP teaches that E includes trivalent hydrocarbon radicals containing 1 to 15 carbon atoms in lines 40-41 of page 2 and C (and thus yielding CH) as the E would have been obvious. EP teaches that R is a hydrocarbyl group including alkyls, cyclopentyl and cyclohexyl in lines 13-25 of page 3 with a preferred cycloalkyl group and thus choosing the cyclopentyl or cyclohexyl as the R would have been obvious.
Thus, it would have been obvious to one skilled in the art before the effective filing date of invention to obtain a polycarbonate resin comprising chain units of formula (II) with C as E and the cyclopentyl or cyclohexyl as R in EP since EP teaches such modifications 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 claims 2-4, EP further teaches copolycarbonate resins comprising a mixture of formula (IV) and formula (VII) with a mole ratio of 1 to 99 and 99-1 in lines 11-14 of page 6 and the formula (IV) taught at pages 4-5 would meet the recited formula (i) of claim 2 and would encompass the recited ratio of claim 3 and 4.
Regarding claims 5-6, cyclopentyl or cyclohexyl as R taught in EP meets claims 5-6.
Regarding claims 8 and 9, EP teaches polycarbonates falling with scope of claim 1 and thus polycarbonates taught by EP is expected to have the recited transmittance inherently, especially since polycarbonates are known as transparent polymers in the art.
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 EP. 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 claims 10 and 19, formula (II) taught by EP before reaction with an acid would make the recited dihydric phenol of claim 10 obvious EP teaches polycarbonates therefrom.
Regarding claims 12-15 and 17-18, EP teaches molded articles such as automobile component parts in lines 11-17 of page 2. The recited “for use” of claim 13 is an intended use which has no probative value and automobile component parts would have a property of a scratch-resistant inherently which would make claims 16-18 obvious.
Claim 7 is rejected under 35 U.S.C. 103 as being unpatentable over EP 0372323 A2 (Nov. 24, 1989) as applied to claims 1-6, 8-10, 12-15 and 17-19 above, and further in view of KR 20030007787 A (Jan. 23, 2003).
Regarding claim 7, EP teaches a weight average molecular weight of 10,000 to 200,000 at bottom of page 3.
The instant claim further recites a viscosity average molecular weight of 10,000 to 100,000 over EP.
KR teaches polycarbonate having a viscosity average molecular weight of 10,000 to 100,000 at page 4.
Thus, it would have been obvious to one skilled in the art before the effective filing date of invention to obtain a polycarbonate having a viscosity average molecular weight of 10,000 to 100,000 taught by KR in EP before crosslinking since a polycarbonate having a viscosity average molecular weight of 10,000 to 100,000 is well known as taught by KR absent showing otherwise.
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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