DETAILED ACTION
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 .
Election/Restrictions
Claims 19-20 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected invention, there being no allowable generic or linking claim. Election was made without traverse in the reply filed on 9/18/2024.
Response to Amendment
The amendment filed on 1/12/2026 has been entered. Claim(s) 1 is/are currently amended. Claims 21-26 are new. Claim(s) 1-26 is/are pending with claim(s) 19-20 withdrawn from consideration. Claim(s) 1-18 and 21-26 is/are under examination in this office action.
Response to Arguments
Applicant's argument filed on 1/12/2026, with respect to 103 rejection has been fully considered but is not persuasive.
Applicant argued that among the very large listing of co-solvents at paragraph [0017], only N- methylcaprolactam is mentioned as a potential caprolactam-derived solvent and further, in the preferred solvents listed in paragraph [0018], N-methylcaprolactam is not disclosed. Still further, no caprolactam-derived solvents are used in any of the working examples of Kelly. Thus, Kelly fails to disclose or teach with sufficient specificity the use of caprolactam- derived solvents according to the formula of claim 1 in wire coating applications. JP'705 fails to disclosure the coding of wires. One of ordinary skill in the art, having knowledge of Kelly and JP'705 but no knowledge of the present invention, would not be motivated to combine such references in the manner relied on by the Examiner. Specifically, the skilled person would need to select the application of wire coating among the large number of applications disclosed in Kelly and then select the type of solvent disclosed in JP'705, which is entirely silent as to the coating of wires. Still further, the disclosure of N-methylcaprolactam as a solvent, which is buried within the disclosure of Kelly as to potential co-solvents, does not provide a sufficient pointer for the skilled person to be motivated to investigate use of the solvents of the type disclosed in JP'705.
In response, disclosed examples and preferred embodiments do not constitute a teaching away from a broader disclosure or nonpreferred embodiments; and patents are relevant as prior art for all they contain; nonpreferred and alternative embodiments constitute prior art (see MPEP 2123). Since Kelly generally teaches N-methylcaprolactam as a co-solvent, it would have been obvious to one of ordinary skill in the art at the time of filing to select N-methylcaprolactam as the co-solvent in Kelly’s composition, as it is expressly disclosed as being useful in this capacity. It has been established that selection of a known material based on its suitability for its intended use is prima facie obvious (Sinclair & Carroll Co. v. Interchemical Corp., 325 U.S. 327, 65 USPQ 297 (1945)). See MPEP 2144.07. While there may be some degree of unpredictability, conclusive proof of efficacy is not required to show a reasonable expectation of success. Obviousness does not require absolute predictability. See MPEP 2143.02. Additionally, when a reference relied upon makes obvious all of the elements of the claimed invention, the reference is presumed to be operable. See MPEP 2121. The 103 rejection involves selection of materials expressly identified by Kelly as being suitable for their intended purpose. While the rejection may lack absolute predictability, the recognition of the suitability of these materials and the presumed operability of the prior art creates a reasonable expectation of success.
While not expressively mentioning a wire coating, Wataru (JP'705) teaches that the product is widely used in the fields of electric and electronic devices, as an insulating layer, a protective film due to its high heat resistance, mechanical strength, dimensional stability, flame retardancy [0002-0003]. This is in the same field of endeavor as Kelly who teaches application in electronic device to provide heat-resistant, chemical-resistant, sliding characteristics and insulating characteristics [0011, 0029, 0036].
Applicant argued that solvents according to the claimed formula are particularly effective in solvating resins for compositions for coating wires and, in particular the coating compositions are formulated with solvents that operate to advantageously replace predicate solvents such as and N-methylpyrrolidone which have been subject to regulatory pressure. In other words, the present invention provides novel and unexpectedly beneficial coating compositions for wire substrates employing solvents which function as well as, if not better than, predicate solvents such as N-methylpyrrolidone for example.
In response, applicant seems to emphasize unexpected result of the claimed product. To establish unexpected results over a claimed range, applicants should compare a sufficient number of tests both inside and outside the claimed range to show the criticality of the claimed range. In re Hill, 284 F.2d 955, 128 USPQ 197 (CCPA 1960), MPEP 716.02(d). However, applicant did not provide such comparison.
Claim Rejections - 35 USC § 103
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.
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.
The text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action.
The factual inquiries for establishing a background for determining obviousness under 35 U.S.C. 103 are summarized as follows:
1. Determining the scope and contents of the prior art.
2. Ascertaining the differences between the prior art and the claims at issue.
3. Resolving the level of ordinary skill in the pertinent art.
4. Considering objective evidence present in the application indicating obviousness or nonobviousness.
This application currently names joint inventors. In considering patentability of the claims the examiner presumes that the subject matter of the various claims was commonly owned as of the effective filing date of the claimed invention(s) absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and effective filing dates of each claim that was not commonly owned as of the effective filing date of the later invention in order for the examiner to consider the applicability of 35 U.S.C. 102(b)(2)(C) for any potential 35 U.S.C. 102(a)(2) prior art against the later invention.
Claim(s) 1-5, 12-14, 16-18 and 24-26 is/are rejected under 35 U.S.C. 103 as being unpatentable over Kelly et al (US 20150299513 A1) in view of Wataru et al (JPH1129705A).
Regarding claims 1 and 3, Kelly teaches a wire coating for electronics [0011]. Therefore, a coated wire comprising a wire and coating disposed on the surface of the wire is obvious.
Kelly teaches that the coating composition comprising at least one polyamideimide resin, at least one aprotic dialkylamide solvent and at least one co-solvent [abstract] such as N-methylcaprolactam and N-(methoxypropyl) pyrrolidone [0017] which dissolve the polyamideimide resin [0020].
The polyamideimide resin reads on the claimed polyamide imide resin.
Kelly does not teach that the cosolvent has the claimed general formula.
In the same field of endeavor, Wataru teaches a polyimide solution used for electric materials as an insulating layer or a protective film with good heat resistance, mechanical strength and electrical insulation (Wataru [0002-0003]). These properties are desired by Kelly (Kelly [0011]).
Wataru teaches that the solvents used in the polyimide solution include N-ethylcaprolactam and the like, used alone or as a mixture of two or more kinds [0016].
Since Kelly and Wataru recognized N-methylcaprolactam and N-ethylcaprolactam are equally suitable as a cosolvent in similar polyimide for the same application, it would have been obvious for one of ordinary skill to substitute N-methylcaprolactam with N-ethylcaprolactam in Kelly’s composition. It is prima facie obvious to substitute equivalents for the same purpose where the equivalence is recognized by the prior art. See MPEP 2144.06.
Since the polyamideimide resin is dissolved in the solvent, the claimed “wherein the polyamide-imide resin, the polyimide resin, the polyesterimide resin, or the two or more of these resins is in solution with the one or more caprolactam-derived solvents” is expected.
Regarding claim 2, Kelly teaches that the ratio of the total of all aprotic dialkylamide solvents plus all co-solvents to polyamideimide may be preferably in a range from 85:15 to 60:40 [0037]; and a ratio of all aprotic dialkylamide solvents to all co-solvents may preferably be in a range from 95:5 to 55:45 [0038]. Thus, the one or more co-solvents can be 3-38% in the coating composition, as calculated by the examiner, overlapping the claimed 10-90 wt%. A prima facie case of obviousness exists where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" (MPEP 2144.05.I).
Regarding claim 4, Kelly teaches that at least one co-solvent can be used [0017]. Wataru also teaches that a mixture of two or more solvents like N-ethylcaprolactam can be used, as stated above. It would have been obvious to one of ordinary skill in the art at the time of filing to use a mixture of two caprolactam-derived solvents as the co-solvents.
Regarding claim 5, the mixture of two co-solvents can be 3-38% in the coating composition as stated in claim 2 rejection. Thus, each of the two co-solvents is 1.5-19%, overlapping the claimed 5-95 wt%.
Regarding claim 12, It would have been obvious to one of ordinary skill in the art at the time of filing to further include a third caprolactam as the co-solvent as Wataru teaches that two or more solvents like N-ethylcaprolactam can be used.
Regarding claim 13, the N-ethylcaprolactam and N-butylcaprolactam co-solvents can be 3-38% in the coating composition as stated in claim 2 rejection. Thus, each of the three caprolactams is 1-13%, overlapping the claimed 5-95 wt%.
Regarding claim 14, the prior art teaches N-ethylcaprolactam as stated above.
Regarding claim 16, Kelly teaches that the ratio of the total of all aprotic dialkylamide solvents plus all co-solvents to polyamideimide may be preferably in a range from 85:15 to 60:40 as stated in claim 2 rejection. Thus, polyamideimide is 15-40%, falling within the claimed range of 5-50 wt%.
Regarding claim 17, Kelly teaches that the co-solvents can comprise cyclohexanone [0017]. As evidenced by the applicant, cyclohexanone reads on the claimed co-solvent [0055, 0080, 0086 spec.].
Regarding claim 18, Kelly teaches an example of the coating composition having viscosity of 6,932 centipoise (cps) [0040]. It would have been obvious to one of ordinary skill in the art at the time of filing to make a coating composition comprising the polyamideimide and caprolactam so that it has a viscosity of about 6,932 cps, since Kelly teaches that this is a viscosity suitable for the product and application. The viscosity of about 6,932 cps falls within the claimed range of 500-10,000 cp.
Regarding claims 24-26, Kelly in view of Wataru teaches N-ethylcaprolactam as the co-solvent as stated in claim 1 rejection above. It would have been obvious to one of ordinary skill in the art at the time of filing to select N-ethylcaprolactam as the sole c-solvent in Kelly’s composition, as it is expressly disclosed as being useful in this capacity. It has been established that selection of a known material based on its suitability for its intended use is prima facie obvious (Sinclair & Carroll Co. v. Interchemical Corp., 325 U.S. 327, 65 USPQ 297 (1945)). See MPEP 2144.07. When N-ethylcaprolactam is used as the sole co-solvent, it is 100 % based on a total weight of all caprolactam-derived solvents in the coating composition, meeting the claimed “at least 75 wt%”, “consist essentially of”, and “consist of”, respectively.
Claim(s) 15 is/are rejected under 35 U.S.C. 103 as being unpatentable over Kelly in view of Wataru as applied to claim 1 above, further in view of Ushiwata et al (US 20140212665 A1).
Regarding claim 15, Kelly in view of Wataru teaches the coating composition in claim 1. Kelly is silent about that the polyamide-imide resin, the polyimide resin, the polyesterimide resin, or the two or more of these resins is less than 80% imidized.
In the same field of endeavor, Ushiwata teaches polyamide-imide coating compositions including polyamide-imides formed from diisocyanates and trimellitic anhydride similar to Kelly (Kelly [0021], Ushiwata [0058]), with amide units (formula 2) and imide units (formula 3) in a ratio of 5:95 to 100:0 [0056-0059]. In other words, the product can be 0-95% imidized. This ratio affects solubility and viscosity of the resin [0059].
It would have been obvious to one of ordinary skill in the art at the time of the invention to form a coating composition according to Kelly including polyamide-imide 0-95% imidized, in order to obtain desirable solubility and viscosity, which overlaps the claimed less than 80% imidized.
Allowable Subject Matter
Claims 6-11 and 21-23 are objected to as being dependent upon a rejected base claim, but would be allowable if rewritten in independent form including all of the limitations of the base claim and any intervening claims.
The following is a statement of reasons for the indication of allowable subject matter:
Dependent claims 6-11 are directed to a coated wire comprising a wire; and coating disposed on a surface of the wire, comprising: a polyamide-imide resin, a polyimide resin, a polyesterimide resin, or any two or more of these resins; and one or more caprolactam-derived solvents according to the recited general formula; wherein the polyamide-imide resin, the polyimide resin, the polyesterimide resin, or the two or more of these resins is in solution with the one or more caprolactam-derived solvents; wherein the one or more caprolactam-derived solvents includes two caprolactam-derived solvents; wherein the two caprolactam-derived solvents are N-ethylcaprolactam and N-butylcaprolactam (claim 6); N-ethylcaprolactam and N-(methoxymethyl)caprolactam (claim 7); N-ethylcaprolactam and N-(ethoxymethyl)caprolactam (claim 8); N-butylcaprolactam and N-(methoxymethyl)caprolactam (claim 9); N-butylcaprolactam and N-(ethoxymethyl)caprolactam (claim 10); and N-(methoxymethyl)caprolactam and N-(ethoxymethyl)caprolactam (claim 11).
Dependent claims 21-23 are directed to a coated wire comprising a wire; and coating disposed on a surface of the wire, comprising: a polyamide-imide resin, a polyimide resin, a polyesterimide resin, or any two or more of these resins; and one or more caprolactam-derived solvents according to the recited general formula; wherein the polyamide-imide resin, the polyimide resin, the polyesterimide resin, or the two or more of these resins is in solution with the one or more caprolactam-derived solvents; wherein one or more caprolactam-derived solvents comprise N-ethyl caprolactam in an amount of at least 50 wt.%, at least 70 wt%, and at least 90 wt%, respectively based on a total weight of solvents in the coating composition.
There is no prior art that teaches or makes obvious the aforementioned limitations as claimed.
The closest prior art is the disclosure of Kelly et al (US 20150299513 A1) in view of Wataru et al (JPH1129705A). Kelly in view of Wataru teaches a coated wire comprising a wire and coating comprising a polyamide-imide resin and one or more caprolactam-derived solvents including N-ethylcaprolactam, which reads on the claimed general formula in claim 1.
However, the prior art does not teach that the two caprolactam-derived solvents are the combinations recited in claims 6-11. Also, Kelly teaches a ratio of all aprotic dialkylamide solvents to all co-solvents may preferably be in a range from 95:5 to 55:45 [0038]. Kelly in view of Wataru teaches the co-solvent can be N-ethylcaprolactam as stated above. Therefore, N-ethylcaprolactam can be in an amount of 45 wt% or less based on a total weight of solvents in the coating composition, below the claimed at least 50 wt%, at least 70 wt%, and at least 90 wt%, respectively in claims 21-23.
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 extension fee 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 date of this final action.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to JIANGTIAN XU whose telephone number is (571)270-1621. The examiner can normally be reached Monday-Thursday.
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/JIANGTIAN XU/Primary Examiner, Art Unit 1762