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 .
Claims 1, 6, 7, 9 and 21-25 are pending as amended on 3/24/2026. Claims 9, 22, 24 and 25 stand withdrawn from consideration as being drawn to a nonelected invention.
No new grounds of rejection have been made. Therefore, this action is properly made final.
Any rejections and/or objections made in the previous Office action and not repeated below are hereby withdrawn. The text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office Action.
Claim Rejections - 35 USC § 103
Claim(s) 1, 6, 7, 21 and 23 stand rejected under 35 U.S.C. 103 as being unpatentable over Moriuchi et al (US 2010/0140557) in view of Kondo et al (US 2019/0153158) and Tanaka et al (JP 2012040836A; included machine translation cited herein). The reasons are the same as previously made of record on 12/11/2025.
Response to Arguments
Applicant's arguments filed 3/24/2026 have been fully considered.
Applicant argues (p 8, first paragraph) that Moriuchi does not disclose that the unit of the mixing ratio of BPDA:BPADA is a molar ratio. However, Moriuchi provides a series of working examples (see Table 5) wherein the ratio of BPDA:BPADA is varied within the range disclosed in [0031] of Moriuchi. It is clear from the column headings in Table 5 (and from the description thereof in [0077]) that the ratios are molar ratios, and that therefore the range in [0031] of Moriuchi is a range of molar ratios.
Applicant argues (pp 8-10) that Working Examples in the instant specification demonstrate that the claimed ranges are advantageous. These arguments were previously addressed in paragraph 29 of the action mailed on 12/11/2025 (incorporated here by reference), and in the examiner’s answer dated 6/21/2024. The discussion on pages 13-24 of the examiner’s answer is relevant to the rejection set forth above, and is therefore incorporated here by reference.
Applicant argues (p 10, and first paragraph of p 11) that the cited prior art references are silent with respect to MEK resistance. However, the rejection of record does not rely on any cited prior art reference for an explicit teaching or disclosure of MEK resistance. See paragraphs 21 and 22 of the 12/11/2025 action, which addresses how the cited prior art suggests a polyimide which exhibits the claimed MEK resistance.
Applicant argues (p 11) that Kondo teaches using a fluorine-containing diamine to provide improved solubility, and that therefore one would expect a polyimide formed from monomers that include TFMB to have a reduced solvent resistance. Applicant argues that there would be no expectation that the recited monomer combination would achieve advantageous solvent resistance when wetted with MEK.
However, as set forth in the rejection of record, Kondo teaches that if the amount of sulfonyl diamine is too small, solubility decreases, while if the amount is too large, the resin is colored and transparency decreases [0016]. Kondo further teaches that by using a fluorine-containing diamine in addition to a sulfonyl group-containing diamine, the transparency and solubility of the polyimide resin tend to be improved [0017]. In other words, Kondo teaches both sulfonyl diamine and fluorine-containing diamine as being associated with an improvement in solubility. Based on Kondo’s teaching, one would have expected polyimides having different contents of sulfonyl diamines and fluorine-containing diamines to have different solubilities in any given solvent, however, one would not have had any clear expectation as to whether increasing the content of fluorine-containing diamine relative to sulfonyl diamine would increase or decrease the solubility and solvent resistance of a polyimide in any particular solvent.
Further discussion of MEK resistance and unexpected results is found starting on p 14 of the Examiner’s Answer dated 6/21/2024. Applicant’s argument that the claimed combination of monomers achieves advantageous/unexpected results is unpersuasive for the same reasons set forth previously on pp 14-20 of the Examiner’s Answer.
Conclusion
THIS ACTION IS MADE FINAL. 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 RACHEL KAHN whose telephone number is (571)270-7346. The examiner can normally be reached Monday to Friday, 8-5.
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.
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/RACHEL KAHN/ Primary Examiner, Art Unit 1766
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