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 § 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 and 5-10 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by JP H08-005959 (Jan. 24, 1996) with Machine translation submitted by applicant.
Machine translated JP teaches a process to product a polycyanoaryl ether (i.e., polyether nitrile) by reacting 26.059 g of 2,6-dichloro benzonitrile, 16.516 g of resorcinol in an aqueous solution comprising 17.49 g of sodium carbonate at temperature of 20oC to 200oC over a period of 40 minutes in example 7.
JP teaches a reduced viscosity of 1.12 g/dl at I hour, a reduced viscosity of 1.23 dl/g at 1.5 hours, a reduced viscosity of 1.26 dl/g at 2 hours, a reduced viscosity of 1.21 dl/g at 2.5 hours and a reduced viscosity of 1.11 dl/g at 3 hours in table 2 and figure 2. The reduced viscosity of 1.21 dl/g at 2.5 hours and reduced viscosity of 1.11 dl/g at 3 hours are decreased after reaching the reduced viscosity of 1.26 dl/g at 2 hours
Thus, the instant claim 1 lacks novelty.
Resorcinol taught by JP meets the recited aromatic dihydroxy compound (I) of claims 5 and 6. 2,6-dichloro benzonitrile taught by JP meets the recited dihalobenzonitrile compound (II) of claim 5.
A molar ratio of 2,6-dichloro benzonitrile and resorcinol for the example 7 is 1:1 meeting claims 7 and 10.
The amount of sodium ions in the sodium carbonate used in the example 7 is 2.5 times the amount of the resorcinol meeting claim 8.
Regarding claim 9, JP teaches the instant method of a continued polymerization atter reaching the reduced viscosity of 1.26 g/dl at 2 hours and thus, the polyether nitrile obtained from example 7 of JP would be expected to have the recited Mw and Mn/Mw of claim 9 since JP teaches a long polymerization time which would be expected to yield a higher molecular weight (Mw). 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. In re Best, 195 USPQ 430, 433 (CCPA 1977). 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). MPEP 2112.
Claims 1 and 5-10 are rejected under 35 U.S.C. 103 as being unpatentable over JP H08-005959 (Jan. 24, 1996) with Machine translation submitted by applicant.
Regarding other recited aromatic dihydroxy compound (I) of claims 5 and 6, Machine translated JP teaches various aromatic dihydroxy compound (I) in a second full paragraph of page 4 and thus further utilization of such aromatic dihydroxy compound (I) in example 7 of JP would have been obvious.
Regarding other recited dihalobenzonitrile compound (II) of claim 5, Machine translated JP teaches various dihalobenzonitrile compound (II) at top of page 4 and thus further utilization of such dihalobenzonitrile compound (II) in example 7 of JP would have been obvious.
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.
Claims 1 and 5-10 are rejected under 35 U.S.C. 103 as being unpatentable over JP H08-005959 (Jan. 24, 1996) with Machine translation submitted by applicant in view of Kimura et al. (US 2002/0007039 A1 (Jan. 17, 2002).
Further regarding claim 9, Kimura et al. teach polycyanoaryl ethers (i.e., polyether nitrile) having improved heat-resistance and the radiation resistance in [0005] and [0011]. Kimura et al. teach various polycyanoaryl ethers (i.e., polyether nitrile) having the recited Mw and Mw/Mn of claim 9 in examples 1-4 and 7 in table 1 of Kimura et al.
Thus, it would have been obvious to one skilled in the art before the effective filing date of invention to obtain polycyanoaryl ethers (i.e., polyether nitrile) having the recited Mw and Mw/Mn taught by examples 1-4 and 7 of Kimura et al. in JP since Kimura et al. teach that polycyanoaryl ethers (i.e., polyether nitrile) having the recited Mw and Mw/Mn would yield improved heat-resistance and the radiation resistance and since both JP and Kimura et al. teach a material for electronic applications absent showing otherwise.
CLAIM OBJECTION
Claims 2-4 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 since none of the prior art in any combination fairly teaches or suggests the instantly recited continued reaction to decrease a reduced viscosity after reaching beyond 1.5 or higher.
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/TAE H YOON/ Primary Examiner, Art Unit 1762
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