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 23-27 are pending as amended on 9/8/2025.
The new rejection set forth below is necessitated by Applicant’s amendment to the claims changing the chemical structure of the imide of general formula (II). 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Any rejections and/or objections made in the previous Office action and not repeated below are hereby withdrawn.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 § 112
The following is a quotation of the first paragraph of 35 U.S.C. 112(a):
(a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
The following is a quotation of the first paragraph of pre-AIA 35 U.S.C. 112:
The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention.
Claims 23-27 are rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the written description requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for applications subject to pre-AIA 35 U.S.C. 112, the inventor(s), at the time the application was filed, had possession of the claimed invention.
New independent claim 23 is identical to previously presented (now cancelled) claim 18, except that the formula for the imide having general formula (II) has been changed to show methyl end groups:
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The previously recited formula (II) showed lines, without specifying that a “CH3” group must be at each line end.
In the previous action, the examiner indicated that it was not clear what structure was intended by the lines in formula (II). See paragraph 8 of the 6/6/2025 action. When line-angle formulas are utilized in organic chemistry shorthand to show the structure of a compound, a carbon atom is assumed to be present at the ends and at intersections of lines, and hydrogen atoms are assumed to complete each of the carbon atom’s four bonds. In a polymer structural formula, a line in combination with, e.g., brackets denoting a repeating unit, can indicate that the shown repeating unit is connected to adjacent units or terminal groups.
The imide precursor of instant formula (I) is not a polymeric structure. Additionally, formula (I) shows a diamine-derived unit on both sides. It is therefore not evident that the imide precursor of formula (I) would convert to a polymeric structure upon heating, as recited in steps (a)-(c)). Note that the structures of general formulas (I) and (II) are characterized as an “imide precursor” and “imide” rather than as a “polyimide precursor” and “polyimide.” Because one would not have recognized instant formula (II) as being a polymeric structural formula, the end of each of the four lines in formula (II) (as shown in the previous claim 18) might have been interpreted by one of ordinary skill as a carbon atom attached to three hydrogen atoms, as in conventional line-angle formula shorthand.
However, as discussed in the previous action (paragraph 8), it is not possible to produce a compound according to general formula (II) having methyl end groups via the conversion of an imide precursor according to instant formula (I). Formula (I) has no methyl end groups, and is produced from compounds (PMDA and diamine) that have no methyl end groups or structure which could result in methyl end groups, as recited in instant steps (a)-(c). Previous claim 18 was therefore rejected as indefinite: while one of ordinary skill would have recognized that the lines in formula (II) must not actually represent methyl groups (i.e., the formula clearly contains an error and/or missing groups), it was not clear what structure was intended (i.e., the ordinary artisan would not have recognized the appropriate correction to the structural formula).
New claim 23 changes formula II to clearly show methyl groups at the end of each line in formula II. Therefore, the claims are no longer indefinite: the structure represented by formula (II) is clear as shown. However, for the reasons previously set forth in paragraph 8 of the 6/6/2025 action, and as discussed in further detail above, there is no description in the specification as filed of a process which would result in an imide as shown in formula (II) having methyl end groups, and, one of ordinary skill would have recognized that the line ends in formula (II) were never intended to represent methyl groups. Because Applicant has not demonstrated that the inventor, at the time the application was filed, had possession of a coated metal article wherein the coating on the metal article comprises an imide according to instant general formula (II) with methyl end groups, the written description requirement of 35 USC 112(a) has not been complied with.
Response to Arguments
Applicant's arguments filed 9/8/2025 have been fully considered.
Applicant argues (p 5) that the structure of formula (II) now “shows two methyl end groups with open bonds (i.e., no ring closures) on each side. Such methyl end groups do not contain specific groups such as shown in formulas (III)-(IV)…”
The argument that “methyl end groups do not contain specific groups” is confusing. A structure according to formula (II) in new claim 23 is not a partial structure. A compound must have two actual methyl groups on each end (as shown in the claim) in order to meet instant general formula (II). Therefore, Applicant’s argument on p 6 that the structure now “makes clear that the ends could be part of any of the organic compounds cited in the specification which contain a methyl group therein” fails to establish what structure was previously intended by formula (II) and raises questions as to what structure(s) Applicant believes to be encompassed by presently recited formula (II).
To further illustrate the difficulty which would be faced by one of ordinary skill in attempting to determine the appropriate correction to the recited structural formula (II), the following discussion is added:
The imide precursor formulas shown in the instant claims and specification do not include amic acid precursor structures which are well known in the art to result from a reaction of dianhydride and diamine. See, for example, the general description of polyimide production from PMDA and diamine in col 3 of Hopkins et al (US 3567504), which shows a reaction of PMDA with a diamine resulting in a polyamic acid (polyamidocarboxylic) precursor:
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In contrast to the structure shown in line 20 of Hopkins above, instant formula (II) shows a partially imidized structure where two units derived from an acid monomer (intended to be derived from PMDA?) are linked by a unit derived from a first diamine monomer. A closed imide ring is depicted on one side of the first diamine unit, while the other side appears to show an amic acid moiety wherein the carboxylic group of the amic acid has reacted with a second diamine monomer. Note that in instant general formula (I) recited in step (a), the ratio of units derived from dianhydride to units derived from diamine is 2:1. The precursor is subsequently converted by heating (with no recitation of any further reaction with additional diamine) to an “imide” according to general formula (II) in step (c), which somehow has a different ratio of dianhydride:diamine units (1:1).
As evidenced by the above discussion, the chemistry and structural formulas recited in the instant claims and specification are not consistent with conventionally known amic acid and imide structures which result from the reaction of PMDA and diamine. Therefore, the examiner maintains that one would not have known what structure was intended to be represented by general formula (II) in previous claim 18. The examiner further maintains that a methyl-terminated structure, as recited in general formula (II) in new claim 23, is not described in the specification as filed.
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 RACHEL KAHN whose telephone number is (571)270-7346. The examiner can normally be reached Monday to Friday, 8-5.
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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