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 office action is responsive to the Amendment and Remarks filed 2 July 2026, wherein claims 3 and 4 were canceled. Subsequently, claims 1 and 5-12 remain pending and presently under consideration in this application.
Response to Amendment
The objection of claims 3 and 4 as set forth in paragraph 6 of the previous office action on the merits, is hereby withdrawn in view of applicant’s cancellation of the same.
The objection of claims 1, 5, 6, and 12, as set forth in paragraph 6 of the previous office action on the merits, is hereby withdrawn in view of applicant’s amendments to the same.
The rejection of claim 1 under 35 U.S.C. 112(b) or 35 U.S.C. 112(pre-AIA ), second paragraph, as set forth in paragraph 9 of the previous office action on the merits, is hereby withdrawn in view of applicant’s amendments to the same.
The rejection of claims 3 and 4 under 35 U.S.C. 112(b) or 35 U.S.C. 112(pre-AIA ), second paragraph, as respectively set forth in paragraphs 10 and 11 of the previous office action on the merits, is hereby withdrawn in view of applicant’s cancellation of the same.
Applicant’s amendments to each of claims 5, 6, and 12, i.e., simply adding the phrase “as defined in claim 1”, fails to satisfactorily address the rejection of claim under 35 U.S.C. 112(b) or 35 U.S.C. 112(pre-AIA ), second paragraph, as respectively set forth in paragraphs 12, 13, and 14 of the previous office action on the merits.
Applicants have amended the base independent claim 1 as follows and argue that said amendment sufficiently distinguishes the liquid crystal composition of the present claims from that of the prior art of record:
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which introduces new considerations under 35 U.S.C. 112(b) or 35 U.S.C. 112(pre-AIA ), second paragraph, as follows.
Response to Arguments
Applicant's arguments filed 2 July 2026 in response to each of the objection of claims 3 and 4 as set forth in paragraph 6 of the previous office action on the merits, as well as the rejection of claims under 35 U.S.C. 112(b) or 35 U.S.C. 112(pre-AIA ), second paragraph, as set forth in paragraphs 9-11 of the previous office action on the merits, are moot as the aforementioned rejections have been withdrawn.
Applicant's arguments filed 2 July 2026 in response to the rejection of claims 5, 6, and 12 under 35 U.S.C. 112(b) or 35 U.S.C. 112(pre-AIA ), second paragraph, as respectively set forth in paragraphs 12, 13, and 14 of the previous office action on the merits, said arguments to the effect that applicants “believe that the § 112(b) rejection is overcome by the amendments”, have been fully considered but they are not persuasive. Please refer to the following paragraphs 18-20 for additional information.
Applicant's arguments filed 2 July 2026 with respect to the rejection of claims under 35 U.S.C. 102(a)(1) over Sawada (TW 202112887), as set forth in paragraph 17 of the previous office action on the merits, said argument essentially to the effect that Sawada does not teach an isophthalic acid structural unit of formula (VI), as is now claimed in amended claim 1, have been fully considered and are persuasive. The aforementioned rejection has been withdrawn.
Applicant's arguments filed 2 July 2026 with respect to the rejection of claims under 35 U.S.C. 102(a)(1) over Konishi et al. (WO 2020/039878), as set forth in paragraph 18 of the previous office action on the merits, said argument essentially to the effect that does not teach a hydroxy-naphthoic acid structural unit of formula (II), as is now claimed in amended claim 1, have been fully considered and are persuasive. The aforementioned rejection has been withdrawn.
Applicant's arguments filed 2 July 2026 with respect to the rejection of claims under 35 U.S.C. 102(a)(1) over Akiyama et al. (WO 2015/178500 A1), as set forth in paragraph 19 of the previous office action on the merits, said argument essentially to the effect that does not teach a hydroxy-naphthoic acid structural unit of formula (II), as is now claimed in amended claim 1, have been fully considered and are persuasive. The aforementioned rejection has been withdrawn.
Applicant’s arguments filed 2 July 2026 with respect to the alleged allowability of the claims have been considered but are moot because the arguments with respect to the rejection of claims under 35 U.S.C. 102(a)(1) do not apply to the rejection under 35 U.S.C. 103 necessitated by amendment, as set forth in the following paragraph 23.
Claim Rejections - 35 USC § 112
The following is a quotation of 35 U.S.C. 112(b):
(b) CONCLUSION.—The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the inventor or a joint inventor regards as the invention.
The following is a quotation of 35 U.S.C. 112 (pre-AIA ), second paragraph:
The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.
Claims 1 and 5-12 are rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor (or for applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention.
Amended claim 1 is rejected as being vague and indefinite when it recites “0.01 ≤ [VI] ≤ 10 (e)” and “[VI]/[II] <1 (f)” (emphasis added); the scope of the protection sought is not clear. A broad range or limitation together with a narrow range or limitation that falls within the broad range or limitation (in the same claim) may be considered indefinite if the resulting claim does not clearly set forth the metes and bounds of the patent protection desired. See MPEP § 2173.05(c). In the present instance, amended claim 1 recites the broad recitation “0.01 ≤ [VI] ≤ 10 (e)”, and the claim also recites “[VI]/[II] <1 (f)” which is the narrower statement of the range/limitation. The claim(s) are considered indefinite because there is a question or doubt as to whether the feature introduced by such narrower language is (a) merely exemplary of the remainder of the claim, and therefore not required, or (b) a required feature of the claims. Amended claim 1 fails to particularly point out and distinctly claim the contents of [VI] in the claimed liquid crystal polyester resin.
Amended claim 5 is rejected as being vague and indefinite when it recites “wherein requirement (m) is further satisfied: 0 < [III]/[IV] <1.5 (m)” (emphasis added); the scope of the protection sought by [III]/[IV] being “0” is not clear in light of the recitation in amended claim 1 of “2 ≤ [III]+[IV] ≤ 35 (c)”. Claim 5 fails to particularly point out and distinctly claim the contents of the claimed liquid crystal polyester resin.
Amended claim 6 is rejected as being vague and indefinite when it recites “99 ≤ [I]+[II]+[IV]+[V]+[VI] ≤100 (n), where [I] to [VI] respectively represent a content (mol %) of structural units (I) to (VI)“ (emphasis added); the scope of the protection sought by “(n)” and “of structural units (I) to (VI)“ is not clear in light of the amendment to claim 1 reciting “2 ≤ [III]+[IV] ≤ 35 (c)”, in part since “[III]” is absent from “(n)”, yet included in “structural units (I) to (VI)“. Claim 6 fails to particularly point out and distinctly claim the contents of the claimed liquid crystal polyester resin.
Amended claim 12 is rejected as being vague and indefinite when it recites
“1 ≤ [III] ≤ 25 (p)”, “1 ≤ [IV] ≤ 25 (q)” , and “2 ≤ [III]+[IV] ≤ 35 (o)” (emphasis added); the scope of the protection sought is not clear in light of the recitation in amended claim 1 of “2 ≤ [III]+[IV] ≤ 35 (c)” (emphasis added), and the recitation therein claim 12 of “2 ≤ [III]+[IV] ≤ 35 (o)”. For instance, if the content of each of [III] and [IV] is 25, then [III] + [IV] is outside the range recited in each of “(c)” recited in claim 1 and of “(o)” recited in claim 12. Claims 12 fails to particularly point out and distinctly claim the contents of the claimed liquid crystal polyester resin.
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.
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 and 5-12 are rejected under 35 U.S.C. 103 as being unpatentable over
Sawada (TW 202112887) in view of Okamoto et al. (U.S. Patent No. 7,063,892).
The abstract, examples and claims of Sawada teach a liquid crystal polyester resin characterized by comprising a structural unit inclusive of that of the present formula (I), as represented therein by
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, in an amount as claimed, i.e.,
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, a structural unit inclusive of that of the present formula (II), as represented therein by
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, in an amount as claimed, i.e.,
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, a structural unit inclusive of that of the present formula (III), as represented therein by
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, in an amount as claimed, i.e.,
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, a structural unit inclusive of that of the present formula (IV), as represented therein by
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, in an amount as claimed, i.e.,
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, and a structural unit inclusive of that of the present formula (V), as represented therein by
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, in an amount as claimed, i.e.,
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. However, Sawada does not expressly illustrate the inventive liquid crystal polyester resin further comprising an aromatic dicarboxylic acid structural unit inclusive of that of the present formula (VI), as is now claimed.
Okamoto et al. is relied upon for its teaching of a liquid crystal polyester resin characterized by comprising a 2-hydroxy-6-naphthoic acid repeating unit, an aromatic diol repeating unit, and an aromatic dicarboxylic acid repeating unit inclusive of the present formula (VI) as is now claimed.
It would have been obvious to one of ordinary skill in the requisite art at the time the invention was filed to include an aromatic dicarboxylic acid repeating unit inclusive of the present formula (VI) as is now claimed, as taught in Okamoto et al., in the liquid crystal polyester resin of Sawada, with reasonable expectations of achieving, absent object evidence to the contrary, the advantages taught therein, as well as those associated with the use thereof a liquid crystal polyester resin characterized by comprising an aromatic dicarboxylic acid repeating unit inclusive of the present formula (VI) as is now claimed.
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.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Geraldina Visconti whose telephone number is (571)272-1334. The examiner can normally be reached Monday-Friday, 8:00am-4:30pm.
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, Anthony J Zimmer can be reached at (571)270-3591. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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GERALDINA VISCONTI
Primary Examiner
Art Unit 1737
/GERALDINA VISCONTI/Primary Examiner, Art Unit 1737
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