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 .
Claims 1-20 are pending and being examined.
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.
Claim(s) 1 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by JP H03-200255 A to Oie et al. (hereinafter Oie).
Regarding claim 1, Oie teaches a compound having the formula (49)
PNG
media_image1.png
157
297
media_image1.png
Greyscale
(page 10), which meets the polyphenol compound having resorcinol and an ortho-xylylene skeleton center.
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.
The factual inquiries for establishing a background for determining obviousness under 35 U.S.C. 103 are summarized as follows:
1. Determining the scope and contents of the prior art.
2. Ascertaining the differences between the prior art and the claims at issue.
3. Resolving the level of ordinary skill in the pertinent art.
4. Considering objective evidence present in the application indicating obviousness or nonobviousness.
Claim(s) claim 1 is/are rejected under 35 U.S.C. 103 as being unpatentable over US 2006/0119018 A1 to Watanabe et al. (hereinafter Watanabe).
Regarding claim 1, Watanabe teaches a binder composition comprising a phenolic resin and a crosslinking agent (See abstract), wherein the phenolic resin is obtained from resorcinol and formalin (Example 1, para 109). The phenolic resin of example 1 is crosslinked by a mixture of para-xylene glycol and formalin (Example 11, para 119). Watanabe further teaches that suitable crosslinking agents include ortho-xylene glycol (para 39 and claim 3), which can react with a carbon atom at an ortho- and/or para-position of a phenolic hydroxy group to undergo polymer crosslinking (para 39). The above crosslinked product of the resorcinol, formalin, and ortho-xylene glycol meets the claimed reaction product of resorcinol and orthoxylylene skeleton compounds.
It would have been obvious to one ordinarily skilled in the art before the effective date of the claimed invention to use ortho-xylene glycol for the crosslinking agent of Example 11 in Watanabe because Watanabe further teaches that the ortho-xylene glycol is a suitable crosslinking agents (para 39 and claim 3), which can react with a carbon atom at an ortho- and/or para-position of a phenolic hydroxy group to undergo polymer crosslinking (para 39).
Allowable Subject Matter
Claims 2-20 are objected to as being dependent upon a rejected base claim, but would be allowable if rewritten in independent form including all of the limitations of the base claim and any intervening claims.
The following is a statement of reasons for the indication of allowable subject matter:
The closest prior art listed above do not teach the claimed formula (1) of claim 2.
The next closest prior art is JP H09-095522 A to Mogi. (hereinafter Mogi). Mogi teaches the phenol resin having the formula (3)
PNG
media_image2.png
243
451
media_image2.png
Greyscale
(para 15).
Mogi does not each the ortho-xylylene skeleton and does not teach the claimed formula (1) of claim 2.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to HA S NGUYEN whose telephone number is (571)270-7395. The examiner can normally be reached Mon-Fri, Flex schedule 7:30am-4:00pm.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Randy Gulakowski can be reached at (571)272-1302. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/HA S NGUYEN/Primary Examiner, Art Unit 1766
Prosecution Insights