DETAILED ACTION
Pending Claims
Claims 1-16 are pending.
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 .
This application currently names joint inventors. In considering patentability of the claims the examiner presumes that the subject matter of the various claims was commonly owned as of the effective filing date of the claimed invention(s) absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and effective filing dates of each claim that was not commonly owned as of the effective filing date of the later invention in order for the examiner to consider the applicability of 35 U.S.C. 102(b)(2)(C) for any potential 35 U.S.C. 102(a)(2) prior art against the later invention.
Claim Interpretation
The claims are drawn to: (1-11) an epoxy resin, (12-15) a composition thereof, and (16) a method of curing the composition. The epoxy resin is configured to form a phase-separated structure in a cured product, the cured product being obtained by curing the epoxy resin by increasing a temperature of the epoxy resin from an ambient temperature to a curing temperature at a rate of not greater than 20oC/minute. The most comprehensive limitation associated with this configuration is: (4) wherein the at least one phase includes a smectic structure as the liquid crystalline structure, and at least one other phase of the at least two phases includes a nematic structure as the liquid crystalline structure.
The language “configured to form” is similar to the language “adapted for forming”, both of which raise questions as to their limiting effect in a claim (see MPEP 2103 I. C. and MPEP 2111.04 I.). The instant specification is silent regarding what “configured to form” relates to or embraces, other than epoxy materials capable of producing a cured product having the instantly claimed phase-separated structure. Applicant’s working examples 1-6 and 8-10 form a phase separated structure when cured, including a smectic structure and a nematic structure. In addition to the epoxy materials set forth in claim 10, the following epoxy materials would be considered capable of achieving a cured product having the instantly claimed phase-separated structure:
A liquid crystal epoxy monomer having the following structure (see Examples 1-6 & 8-10; claim 11):
PNG
media_image1.png
75
334
media_image1.png
Greyscale
;
A multimer of the liquid crystal monomer and 4,4’-biphenol (see “Resin 1” in Examples 1-4 & 8-10);
A multimer of the liquid crystal monomer and hydroquinone (see “Resin 4” in Examples 5, 6 & 10);
A biphenyl epoxy resin (YX4000H) having the following structure (see “Resin 2” in Examples 1, 2, 5, 6 & 8-10):
PNG
media_image2.png
109
305
media_image2.png
Greyscale
; and
A biphenyl epoxy resin (YL6121H) having the following structure (see “Resin 3” in Examples 3 & 4):
PNG
media_image3.png
114
311
media_image3.png
Greyscale
(where R is a methyl group or a hydrogen atom).
Claim Rejections - 35 USC § 102
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.
Claims 1-4, 6-9, and 12-16 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Seki et al. (JP 2013-194166 A).
Regarding claims 1-4 and 6-9, the biphenyl epoxy resin blend featured in the exemplary embodiments of Seki et al. anticipates claims (1-4 & 6-9) (see “YL6121H” in paragraph 0050: 4,4’-tetramethyl biphenol epoxy resin and 4,4’-biphenol type epoxy resin).
Regarding claims 12, 14, and 15, the curable composition in the exemplary embodiments of Seki et al. anticipates claims (12, 14 & 15) (paragraphs 0050 & 0055-0064).
Regarding claim 13, the curable composition in exemplary embodiment 9 of Seki et al. anticipates claim (13) (paragraph 0062).
Regarding claim 16, the curing protocol in the exemplary embodiments of Seki et al. anticipates claim (16) (paragraph 0051).
Claims 1-4, 6-9, 12, 13, and 15 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Kawate (US 2015/0332984 A1).
Claims 1-4, 6-9, 12, 13, and 15 are rejected under 35 U.S.C. 102(a)(2) as being anticipated by Kawate (US 2015/0332984 A1).
Regarding claims 1-4 and 9, the biphenyl epoxy resin featured in the exemplary embodiments of Kawate anticipates claims (1-4 & 9) (see “YX4000H” in Tables 1 & 2).
Regarding claims 6-8, the epoxy blend featured in the exemplary embodiments of Kawate anticipates claims (6-8) (see “YX4000H”, “YDF870-GS” & “ZX1059” in Tables 1 & 2).
Regarding claim 12, 13, and 15, the exemplary embodiments of Kawate anticipate claim (12, 13 & 15) (see “YX4000H”, “CG1200G” & “alumina” in Tables 1 & 2).
Claims 1-6, 9-12, 14, and 15 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Katagi et al. (WO 2016/104772 A1 or US 2017/0349695 A1). Note: all citations are directed to the equivalent US 2017/0349695 A1.
Regarding claims 1-6 and 9, the “epoxy resin monomer 1” and the multimers thereof featured in the exemplary embodiments of Katagi et al. anticipate claims (1-5 & 9) (see paragraph 0210; Example 1 in paragraphs 0216-0229; Example 2 in paragraphs 0230-0242; Example 3 in paragraphs 0243-0255). In addition the combination of “epoxy resin 2” and “triphenylmethane type epoxy resin” in Example 5 of Katagi et al. anticipates claims (1-6 & 9) (see paragraphs 0270, 0230, 0216 & 0210).
Regarding claims 10 and 11, the “epoxy resin monomer 1” featured in the exemplary embodiments of Katagi et al. anticipates claims (10 & 11) (see paragraph 0210; Example 1 in paragraphs 0216-0229; Example 2 in paragraphs 0230-0242; Example 3 in paragraphs 0243-0255).
Regarding claim 12, 14, and 15, the “molding materials” featured in the exemplary embodiments of Katagi et al. anticipate claims (12, 14 & 15) (see Example 1 in paragraphs 0223-0229; Example 2 in paragraphs 0237-0242; Example 3 in paragraphs 0250-0255; Example 5 in paragraphs 0270-0274).
Claims 1-4 and 9-15 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Asaumi et al. (US Pat. No. 9,242,948).
Claims 1-4 and 9-15 are rejected under 35 U.S.C. 102(a)(2) as being anticipated by Asaumi et al. (US Pat. No. 9,242,948).
Regarding claims 1-4 and 9-11, the claimed diepoxy compound of Asaumi et al. anticipates claims (1-4 & 9-11) (see claims 1-2).
Regarding claim 12-15, the claimed composition of Asaumi et al. anticipates claim (12-15) (see claims 9-11 & 14-16).
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 10 is rejected under 35 U.S.C. 103 as being unpatentable over Seki et al. (JP 2013-194166 A).
Regarding claim 10, the teachings of Seki et al. are as set forth above and incorporated herein. The exemplary embodiments of Seki et al. fail to disclose the epoxy resins (monomeric diglycidyl ether resins) of claim (10). However, the general teachings of Seki et al. disclose mesogenic resins of formula (1), which obviously embrace the monomeric diglycidyl ether resins of claim (10) (see paragraphs 0024-0025).
Claim 14 is rejected under 35 U.S.C. 103 as being unpatentable over Kawate (US 2015/0332984 A1).
Regarding claim 14, the teachings of Kawate are as set forth above and incorporated herein. The exemplary embodiments of Kawate are formulated with a dicyandiamide (amine-based) curing agent. Accordingly, these embodiments fail to disclose: (14) an aromatic compound at the curing agent. However, the general teachings of Kawate contemplate the use of various curing agents, including aromatic amines, aromatic anhydrides, and polyphenols (see paragraph 0041).
Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to formulate the composition of Kawate with an aromatic curing agent because: (a) the exemplary embodiments of Kawate are formulated with a dicyandiamide (amine-based) curing agent; and (b) the general teachings of Kawate contemplate the use of various curing agents, including aromatic amines, aromatic anhydrides, and polyphenols.
Claims 6-8 are rejected under 35 U.S.C. 103 as being unpatentable over Asaumi et al. (US Pat. No. 9,242,948).
Regarding claims 6-8, the teachings of Asaumi et al. are as set forth above and incorporated herein. Asaumi et al. contemplate compositions containing an epoxy resin blend of their claimed epoxy compound and an additional epoxy compound (see column 11, line 53-57). These additional epoxy compounds include biphenol-based epoxy compounds and bisphenol-based epoxy compounds (see column 11, lines 58-62). These blends of Asaumi et al. would have obviously satisfied claims (6-8).
Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to formulate the compositions of Asaumi et al. with the instantly claimed epoxy blends because: (a) Asaumi et al. contemplate compositions containing an epoxy resin blend of their claimed epoxy compound and an additional epoxy compound; and (b) these additional epoxy compounds of Asaumi et al. include biphenol-based epoxy compounds and bisphenol-based epoxy compounds.
Double Patenting
The nonstatutory double patenting rejection is based on a judicially created doctrine grounded in public policy (a policy reflected in the statute) so as to prevent the unjustified or improper timewise extension of the “right to exclude” granted by a patent and to prevent possible harassment by multiple assignees. A nonstatutory double patenting rejection is appropriate where the conflicting claims are not identical, but at least one examined application claim is not patentably distinct from the reference claim(s) because the examined application claim is either anticipated by, or would have been obvious over, the reference claim(s). See, e.g., In re Berg, 140 F.3d 1428, 46 USPQ2d 1226 (Fed. Cir. 1998); In re Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993); In re Longi, 759 F.2d 887, 225 USPQ 645 (Fed. Cir. 1985); In re Van Ornum, 686 F.2d 937, 214 USPQ 761 (CCPA 1982); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Thorington, 418 F.2d 528, 163 USPQ 644 (CCPA 1969).
A timely filed terminal disclaimer in compliance with 37 CFR 1.321(c) or 1.321(d) may be used to overcome an actual or provisional rejection based on nonstatutory double patenting provided the reference application or patent either is shown to be commonly owned with the examined application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. See MPEP § 717.02 for applications subject to examination under the first inventor to file provisions of the AIA as explained in MPEP § 2159. See MPEP § 2146 et seq. for applications not subject to examination under the first inventor to file provisions of the AIA . A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
The filing of a terminal disclaimer by itself is not a complete reply to a nonstatutory double patenting (NSDP) rejection. A complete reply requires that the terminal disclaimer be accompanied by a reply requesting reconsideration of the prior Office action. Even where the NSDP rejection is provisional the reply must be complete. See MPEP § 804, subsection I.B.1. For a reply to a non-final Office action, see 37 CFR 1.111(a). For a reply to final Office action, see 37 CFR 1.113(c). A request for reconsideration while not provided for in 37 CFR 1.113(c) may be filed after final for consideration. See MPEP §§ 706.07(e) and 714.13.
The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The actual filing date of the application in which the form is filed determines what form (e.g., PTO/SB/25, PTO/SB/26, PTO/AIA /25, or PTO/AIA /26) should be used. A web-based eTerminal Disclaimer may be filled out completely online using web-screens. An eTerminal Disclaimer that meets all requirements is auto-processed and approved immediately upon submission. For more information about eTerminal Disclaimers, refer to www.uspto.gov/patents/apply/applying-online/eterminal-disclaimer.
Claims 1-4 and 9-14 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-9, 13, and 14 of U.S. Patent No. 11,466,119. Although the claims at issue are not identical, they are not patentably distinct from each other because:
Regarding claims 1-4 and 9-11, the epoxy compound of formula (B) in patented claim 14 anticipates claims (1-4 & 9-11).
Further regarding claims 1-4, the biphenyl epoxy compound in patented claims 1-4, 13, and 14 obviously satisfies claims (1-4).
Regarding claims 12-14, the composition in patented claims 5-9 obviously satisfies claim (12-14).
Claims 1-4, 5, 6, and 9-14 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-10 of U.S. Patent No. 11,440,990. Although the claims at issue are not identical, they are not patentably distinct from each other because:
Regarding claims 1-4 and 9-11, the multimer (at least two mesogenic structures) in patented claims 1-6 anticipates claims (1-4 & 9). The monomer is patented claim 5 anticipates claims (1-4 & 9-11).
Regarding claims 5 and 6, patented claims 3-6 anticipate claims (5 & 6).
Regarding claim 12-14, patented claims 7-10 anticipate claim (12). Patented claims 9-10 anticipate claims (13 & 14).
Claims 1-4, 9, and 12 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-6 of U.S. Patent No. 11,015,020.
Claims 13 and 14 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-6 of U.S. Patent No. 11,015,020 in view of Asaumi et al. (US Pat. No. 9,242,948).
Although the claims at issue are not identical, they are not patentably distinct from each other because:
Regarding claims 1-4 and 9, the multimer of patented claims 1-4 anticipates claims (1-4 & 9).
Regarding claim 12, patented claims 5-6 anticipate claim (12).
Regarding claims 13 and 14, the teachings of Asaumi et al. demonstrate that the instantly claimed curing agents are recognized in the art as suitable curing agents for this type of epoxy-based formulation (see claims 9-11). In light of this, it has been found that the selection of a known material based on its suitability for its intended use supports a prima facie obviousness determination – see MPEP 2144.07.
Claims 1-6 and 9-12 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 3 and 6 of U.S. Patent No. 10,988,585.
Claims 13 and 14 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 3 and 6 of U.S. Patent No. 10,988,585 in view of Asaumi et al. (US Pat. No. 9,242,948).
Although the claims at issue are not identical, they are not patentably distinct from each other because:
Regarding claims 1-4 and 9-12, the oligomer and monomer of patented claims 3 and 6 anticipate claims (1-4 & 9-11). Patented claims 3 and 6 also anticipate claim (12).
Regarding claims 5 and 6, the epoxy blend of patented claim 6 anticipates claims (5 & 6).
Regarding claims 13 and 14, the teachings of Asaumi et al. demonstrate that the instantly claimed curing agents are recognized in the art as suitable curing agents for this type of epoxy-based formulation (see claims 9-11). In light of this, it has been found that the selection of a known material based on its suitability for its intended use supports a prima facie obviousness determination – see MPEP 2144.07.
Claims 1-6 and 9-11 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 2-5 of U.S. Patent No. 10,920,010.
Claims 12-14 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 2-5 of U.S. Patent No. 10,920,010 in view of Asaumi et al. (US Pat. No. 9,242,948).
Although the claims at issue are not identical, they are not patentably distinct from each other because:
Regarding claims 1-6 and 9-11, the reaction product and monomer of patented claims 2-5 anticipate claims (1-6 & 9-11).
Regarding claims 12-14, teachings of Asaumi et al. demonstrate that these epoxy resin materials are known to be combined with the instantly claimed curing agents to form curable compositions and cured materials (see claims 9-11). In light of this, it has been found that the selection of a known material based on its suitability for its intended use supports a prima facie obviousness determination – see MPEP 2144.07.
Claims 1-4 and 9-11 are rejected on the ground of nonstatutory double patenting as being unpatentable over claim 9 of U.S. Patent No. 10,800,872.
Claims 12-14 are rejected on the ground of nonstatutory double patenting as being unpatentable over claim 9 of U.S. Patent No. 10,800,872 in view of Asaumi et al. (US Pat. No. 9,242,948).
Although the claims at issue are not identical, they are not patentably distinct from each other because:
Regarding claims 1-4 and 9-11, the multimer and monomer of patented claim 9 anticipates claims (1-4 & 9-11).
Regarding claims 12-14, teachings of Asaumi et al. demonstrate that these epoxy resin materials are known to be combined with the instantly claimed curing agents to form curable compositions and cured materials (see claims 9-11). In light of this, it has been found that the selection of a known material based on its suitability for its intended use supports a prima facie obviousness determination – see MPEP 2144.07.
Claims 1-6 and 9-11 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 5-8 of U.S. Patent No. 11,919,995.
Claims 12-14 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 5-8 of U.S. Patent No. 11,919,995 in view of Asaumi et al. (US Pat. No. 9,242,948).
Although the claims at issue are not identical, they are not patentably distinct from each other because:
Regarding claims 1-4, 6, and 9-11, patented claims 5-8 anticipate claims (1-4, 6 & 9-11).
Regarding claim 5, patented claims 5-8 obviously satisfy claim (5).
Regarding claims 12-14, teachings of Asaumi et al. demonstrate that these epoxy resin materials are known to be combined with the instantly claimed curing agents to form curable compositions and cured materials (see claims 9-11). In light of this, it has been found that the selection of a known material based on its suitability for its intended use supports a prima facie obviousness determination – see MPEP 2144.07.
Communication
Any inquiry concerning this communication or earlier communications from the examiner should be directed to MICHAEL J FEELY whose telephone number is (571)272-1086. The examiner can normally be reached Monday-Friday 8am-5pm.
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.
/MICHAEL J FEELY/Primary Examiner, Art Unit 1766
January 9, 2026