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.
Claim(s) 1-15 is/are rejected under 35 U.S.C. 103 as being unpatentable over White (US 4,495,333) in view of White (4,238,584).
White ‘333 teaches block copolymers of polyphenylene oxide and polystyrene (abstract) where the polyphenylene oxide has an intrinsic viscosity of 0.05-0.5 dl/g (col. 5, ln. 63-68) which overlaps the claimed range. Polystyrene is a hydrocarbon resin.
White ‘333 does not explicitly recite the intrinsic viscosity is measured at 25˚C in chloroform. However, White ‘333 states the polyphenylene oxide is formed according to the procedure of US ‘4,238,584 (col. 7, ln. 19-22) which measures the intrinsic viscosity in chloroform at 25˚C (col. 7, ln. 20-25). It would have been obvious to one of ordinary skill in the art that the intrinsic viscosity of the polyphenylene oxide of White ‘333 is measured at 25˚C in chloroform because this is the standard that references White ‘584 uses and White ‘333 cites to White ‘584.
White ‘333 teaches block copolymers having structures such as AZC and BZCZB and longer structures (col. 2, ln. 10-11) where A and B correspond to polyphenylene oxide and Z corresponds to a coupling agent and C corresponds to a polystyrene (col. 2, ln. 20-25). Thus, AZC is a diblock copolymer and BZCZB is a triblock copolymer which meets claim 8. While White ’333 does not explicitly recite a triblock having the polystyrene as the end blocks. However, White ‘333 teaches various combinations and alternating arrangements are included (col. 2, ln. 26-35) and it would have been obvious to one of ordinary skill in the art that this would include CBC copolymers (corresponding to the claimed B-A-B copolymers) because there are only two arrangements for a triblock copolymer.
White ‘333 teaches the polyphenylene oxide has the structure
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118
170
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where n is preferably 40-170 (col. 2, ln. 55-col. 3, ln. 4). When the R groups are methyl (col. 7, ln. 19-26), each repeat unit has a molecular weight of 120, which gives a molecular weight of 4,800-20,400 and overlaps the Mn of claim 4. White does not explicitly recite the number average, however, one of ordinary skill in the art would have instantly envisaged the number average molecular weight as there are a finite types of molecular weights for polymers (number average, weight average, and z-average). A genus may be so small that, when considered in light of the totality of the circumstances, it would anticipate the claimed species or subgenus. See MPEP 2105, In re Petering, 301 F.2d 676, 133 USPQ 275 (CCPA 1962).
White ‘333 teaches intrinsic viscosity which overlap claimed ranges. It is well settled that where prior art describes the components of a claimed compound or compositions in concentrations within or overlapping the claimed concentrations a prima facie case of obviousness is established. See MPEP 2144.05; In re Harris, 409, F3.d 1339, 1343, 74 USPQ2d 1951, 1953 (Fed. Cir 2005); In re Peterson, 315 F.3d 1325, 1329, 65 USPQ 3d 1379, 1382 (Fed. Cir 1997); In re Woodruff, 919 F.2d 1575, 1578, 16 USPQ2d 1934, 1936-37 (CCPA 1990); In re Malagari, 499 F.2d 1297, 1303, 182 USPQ 549, 553 (CCPA 1974). In light of the cited patent case law, it would have been obvious to one of ordinary skill in the art to use a range within the claimed range because a reference may be relied upon for all that it would have reasonably suggested to one having ordinary skill the art and White ‘333 suggests the intrinsic viscosity. A person of ordinary skill would be motivated to use the claimed amount, based on the teachings of White ‘333. See MPEP 2123.
White ‘333 teaches an example of the polyphenylene oxide is poly(2,6-dimethyl-1,4-phenylene oxide) (col. 7, ln. 19-25) which is derived from 2,6-dimethyl-phenol and meets claims 5 and 7. Polystyrene contains aromatic groups which are unsaturated and meets claims 6 and 7.
White ’333 teaches the polystyrene and polyphenylene oxide are combined together (col. 7, ln. 60-68) which meets claim 11. White ‘333 teaches adding a coupling agent (col. 2, ln. 24; col. 4, ln. 32-60) which meets claim 12. White ‘333 teaches crosslinked copolymers (abstract) which correspond to a cured composition and meets claim 13. White ‘333 teaches the composition is used an article such as a film, sheet, fiber, and laminate (abstract) which meets the limitations of claim 14.
White ‘333 the block copolymer has the structure BZCZB (col. 2, ln. 10-11) where B is
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122
332
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(col. 3, ln. 15-40) resulting in the block copolymer having hydroxyl end groups and meets claim 10.
Claim 15 is recited in the product by process format by use of the language “manufactured from a varnish composition” Case law holds that:
Even though product-by-process claims are limited by and defined by the process, determination of patentability is based on the product itself. The patentability of a product does not depend on its method of production. If the product in the product-by-process claim is the same as or obvious from a product of the prior art, the claim is unpatentable even though the prior product was made by a different process. See In re Thorpe, 777 F.2d 695, 698, 227 USPQ 964, 966 (Fed. Cir. 1985).
To the extent that the process limitations in a product-by-process claim do not carry weight absent a showing of criticality, the reference discloses the claimed product in the sense that the prior art product structure is seen to be no different from that indicated by the claims.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to ROBERT C BOYLE whose telephone number is (571)270-7347. The examiner can normally be reached Monday-Thursday, 10am-4pm.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Arrie (Lanee) Reuther can be reached at (571)270-7026. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/ROBERT C BOYLE/Primary Examiner, Art Unit 1764
