DETAILED ACTION
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
Applicants' arguments have been fully considered. Rejections and/or objections not reiterated from previous office actions are hereby withdrawn due to Applicant's amendments and/or arguments. The following rejections and/or objections are either reiterated or newly applied.
NEW REJECTIONS: NECESSITATED BY AMENDMENT
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.
Claims 1-2 and 6 are rejected under 35 U.S.C. 103 as being unpatentable over US 20120111621 A1 (Ohigashi et al.) in view of US 20060128865 A1 (Kodama et al.).
Re claim 1, Ohigashi discloses a composition comprising epoxy resin [16], maleimide resin [33], curing agent [115], second filler that includes silica particles [19], and first filler that includes magnesium hydroxide [209].
Ohigashi fails to disclose the silica treated magnesium hydroxide; however, Kodama teaches a [1, 21] silica treated magnesium oxide treated as claimed [64] for at least good wear resistance and flame retardancy.
It would have been obvious to one having ordinary skill in the art to have modified the composition of Ohigashi at the time of the effective filing date to have added to magnesium oxide as claimed for at least good wear resistance and flame retardancy as taught by Kodama.
Re claim 2, see [115-116], Ohigashi.
Re claim 6, Ohigashi doesn’t teach the amount of silica treated magnesium hydroxide as claimed.
Kodama teaches [87-89] 2 to 20 wt% overlapping the parts by mass as claimed for sufficient flame retardancy.
In the case where the claimed ranges “overlap or lie inside ranges disclosed by the prior art” a prima facie case of obviousness exists. In reWertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In reWoodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990). See MPEP 2144.05.
It would have been obvious to one of ordinary skill in the art at the time the invention was made to have added the composition selected from the overlapping portion of the ranges of parts by weight silica-magnesium hydroxide as claimed having sufficient flame retardancy taught by the reference because overlapping ranges have been held to establish prima facie obviousness. MPEP 2144.05.
Re claims 7, and 9-11, see [36-42].
Re claim 8, see [265].
Claims 3-5 and 13 are rejected under 35 U.S.C. 103 as being unpatentable over US 20120111621 A1 (Ohigashi et al.) in view of US 20060128865 A1 (Kodama et al.) and further in view of US 20210261768 A1 (Watanabe).
Re claims 3 and 13, the combination doesn’t teach a phosphorous-containing compound as claimed.
[0019], Watanabe teaches The resin composition according to (10), wherein the component (E) comprises a phosphorous type flame retardant having one or more phenolic hydroxyl groups [127, 166] in a similar compound for flame retardant purpose. Watanabe teaches dicyandiamide [97] as a curing accelerator.
It would have been obvious to one having ordinary skill in the art to have modified the composition at the time of the effective filing date to have added phosphorus phenolic compound for at least flame retardancy as taught by Watanabe.
Re claims 4-5, the combination doesn’t teach the composition claimed.
Watanabe Example 15 uses at least 30 parts epoxy (overlapping ranges) and [40] maleimide, and curing agent [32]-[33] for having superior smear removal property.
In the case where the claimed ranges “overlap or lie inside ranges disclosed by the prior art” a prima facie case of obviousness exists. In reWertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In reWoodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990). See MPEP 2144.05.
It would have been obvious to one of ordinary skill in the art at the time the invention was made to have added the composition selected from the overlapping portion of the ranges of parts by weight epoxy for having superior smear removal property taught by the reference because overlapping ranges have been held to establish prima facie obviousness. MPEP 2144.05.
Claim 12 is rejected under 35 U.S.C. 103 as being unpatentable over US 20120111621 A1 (Ohigashi et al.) in view of US 20060128865 A1 (Kodama et al.) and further in view of US 20100096173 Fujino et al.
The combination is relied upon above.
Re claim 12, the combination fails to teach dicyandiamide and polyfunctional phenolic compound.
Further Fujino teaches a polyfunctional phenolic compound for a mix of 2 or more used for curing and also dicyandiamide [48-49] for giving the cured product with high adhesion.
It would have been obvious to one having ordinary skill in the art to have modified the composition at the time of the effective filing date to have added polyfunctional phenolic compound for curing and dicyandiamide for accelerating curing.
Claim 14 is rejected under 35 U.S.C. 103 as being unpatentable over US 20120111621 A1 (Ohigashi et al.) in view of US 20060128865 A1 (Kodama et al.) and further in view of US 20170233578 (Oohori).
The combination is relied upon above.
The combination is silent to the magnesium hydroxide covered with silica.
Oohori teaches the magnesium hydroxide covered with silica [9-10, 33] for controlling gloss and light.
It would have been obvious to one having ordinary skill in the art to have modified the composition at the time of the effective filing date to have added magnesium hydroxide covered with silica to optimize the gloss.
Response to Arguments
Applicant’s arguments have been considered but are moot because the amendment of the new claims are mitigated by the new references. See the action above. Regarding the silica surface treatment process argument, process limitations are not germane to product claims. Kodama and Ohigashi are combinable as a prima facie case for the reasons set forth above and doesn’t need to be the same reasons/problem as applicant points to.
The reason or motivation to modify the reference may often suggest what the inventor has done, but for a different purpose or to solve a different problem. It is not necessary that the prior art suggest the combination to achieve the same advantage or result discovered by applicant. In re Linter, 458 F.2d 1013, 173 USPQ 560 (CCPA 1972) (discussed below); In re Dillon, 919 F.2d 688, 16 USPQ2d 1897 (Fed. Cir. 1990), cert. denied, 500 U.S. 904 (1991) (discussed below). Although Ex parte Levengood, 28 USPQ2d 1300, 1302 (Bd. Pat. App. & Inter. 1993) states that obviousness cannot be established by combining references “without also providing evidence of the motivating force which would impel one skilled in the art to do what the patent applicant has done” (emphasis added), reading the quotation in context it is clear that while there must be motivation to make the claimed invention, there is no requirement that the prior art provide the same reason as the applicant to make the claimed invention.
Conclusion
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any nonprovisional extension fee (37 CFR 1.17(a)) pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the mailing date of this final action.
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to TAMRA L. DICUS whose telephone number is (571)272-2022. The examiner can normally be reached M-F 8:00 am 4:00 pm.
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, Callie Shosho can be reached on 571-272-1123. 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.
TAMRA L. DICUS
Primary Examiner
Art Unit 1787
/TAMRA L. DICUS/Primary Examiner, Art Unit 1787
Prosecution Insights