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 12 January 2026, wherein claim 2 was canceled and claim 12 was newly added. Subsequently, claims 1 and 3-12 are pending and presently under consideration in this application.
Response to Amendment
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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.
Response to Arguments
Applicant's arguments filed 12 January 2026, with respect to the rejection of claims under 35 U.S.C. 102(a)(1) over each of Konishi et al. and Akiyama et al., as respectively set forth in paragraphs 4 and 5 of the previous office action on the merits, said argument essentially to the effect that the claimed liquid crystal polyester resin as is now claimed is distinguished from that of the prior art of record, have been fully considered but are not persuasive. Assuming arguendo that applicant’s rewrite and/or amend the claims to overcome the rejection under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as set forth in the following paragraph 10, then the aforementioned rejections may be withdrawn.
Applicant’s arguments filed 12 January 2026 with respect to the alleged allowability of the claims have been considered but are moot because the arguments do not apply to any of the objections, the rejections under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, and/or the newly added rejection under 35 U.S.C. 102(a)(1) in the current office action.
Claim Objections
Each of claims 1, 3-6 and 12 are objected to because of the following informalities:
superfluous punctuation, as exemplified by “…” in “… (a)”. Appropriate correction is required.
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 3-12 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 (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 that the claimed liquid crystal polyester resin comprises “a structural unit derived from aromatic hydroxycarboxylic acid, a structural unit derived from aromatic diol, and a structural unit derived from aromatic dicarboxylic acid, wherein a content of the structural unit derived from aromatic hydroxycarboxylic acid is 15 to 80 mol %, a content of the structural unit derived from aromatic diol is 2 to 40 mol %, a content of the structural unit derived from aromatic dicarboxylic acid is 2 to 40 mol %, relative to 100 mol % of the total structural unit of the liquid crystal polyester resin”, and the amended claim also recites that the claimed liquid crystal polyester resin comprises
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, 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 the claimed liquid crystal polyester resin.
Claim 3 is rejected as being vague and indefinite when it recites
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followed by formulae (II) and (IV); the scope of the protection sought is not clear in light of the recitation in amended claim 1 of
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, and, since claim 1 has been amended to recite the structural formulae of (II) and (IV). Claim 3 fails to particularly point out and distinctly claim the contents of the claimed liquid crystal polyester resin.
Claim 4 is rejected as being vague and indefinite when it recites
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followed by formulae (I) through (V); the scope of the protection sought is not clear in light of the recitation in amended claim 1 of
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, and, since claim 1 already recites the structural formulae of (I) through (V). Claim 4 fails to particularly point out and distinctly claim the contents of the claimed liquid crystal polyester resin.
Claim 5 is rejected as being vague and indefinite when it recites
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; the scope of the protection sought is not clear in light of the recitation in amended claim 1 of
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. Claim 5 fails to particularly point out and distinctly claim the contents of the claimed liquid crystal polyester resin.
Claim 6 is rejected as being vague and indefinite when it recites
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; the scope of the protection sought is not clear in light of the recitation in amended claim 1 of
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. Claim 6 fails to particularly point out and distinctly claim the contents of the claimed liquid crystal polyester resin.
Newly added claim 12 is rejected as being vague and indefinite when it recites
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the scope of the protection sought is not clear in light of the recitation in amended claim
1 of
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, and the recitation in claim 4, from which it depends, of
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. Newly added 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 § 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.
Claims 1 and 3-12 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Sawada (TW 202112887).
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 is now 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 is now 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 is now 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 is now 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 is now claimed, i.e.,
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.
Claims 1 and 3-12 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Konishi et al. (WIPO Patent NO. WO 2020/039878).
The claims and examples of Konishi et al. teach a liquid crystal polyester resin comprising a structural unit derived from aromatic hydroxycarboxylic acid, a structural unit derived from aromatic diol, and a structural unit derived from aromatic dicarboxylic acid, wherein a content of the structural unit derived from aromatic hydroxycarboxylic acid is 15 to 80 mol %, a content of the structural unit derived from aromatic diol is 2 to 40 mol %, a content of the structural unit derived from aromatic dicarboxylic acid is 2 to 40 mol %, relative to 100 mol % of the total structural unit of the liquid crystal polyester resin. Although Konishi et al. does not expressly state that the liquid crystal polyester resin has “a temperature sensitivity coefficient measured of 0.020 or less, and B(x) of −35 to −15° C” as recited in the present claims, a chemical composition and its properties are inseparable, and as such, therefore, if the prior art teaches the identical chemical structure, the properties applicant discloses and/or claims are necessarily present. [MPEP 2112.01 In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990)].
Claims 1 and 3-12 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Akiyama et al. (WO 2015/178500 A1).
The abstract and claims of Akiyama et al. teach a liquid crystal polyester resin comprising a structural unit derived from aromatic hydroxycarboxylic acid, a structural unit derived from aromatic diol, and a structural unit derived from aromatic dicarboxylic acid, wherein a content of the structural unit derived from aromatic hydroxycarboxylic acid is 20 to 70 mol %, a content of the structural unit derived from aromatic diol is 15 to 40 mol %, a content of the structural unit derived from aromatic dicarboxylic acid is 15 to 40 mol %, relative to 100 mol % of the total structural unit of the liquid crystal polyester resin. Although Akiyama et al. does not expressly state that the liquid crystal polyester resin has “a temperature sensitivity coefficient measured of 0.020 or less, and B(x) of −35 to −15° C” as recited in the present claims, a chemical composition and its properties are inseparable, and as such, therefore, if the prior art teaches the identical chemical structure, the properties applicant discloses and/or claims are necessarily present. [MPEP 2112.01 In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990)].
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.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Mark F Huff can be reached at 571-272-1385. 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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