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 .
Continued Examination Under 37 CFR 1.114
A request for continued examination under 37 CFR 1.114, including the fee set forth in 37 CFR 1.17(e), was filed in this application after final rejection. Since this application is eligible for continued examination under 37 CFR 1.114, and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114. Applicant's submission filed on 2/13/2026 has been entered, with the exception of claims 11 and 17, which were previously cancelled. The applicant is reminded that if they wish to reinstate these claims, they must be added with new claim numbers. Claims 11 and 17 remain cancelled.
Priority
Receipt is acknowledged of certified copies of papers required by 37 CFR 1.55.
Status of Claims
The examiner acknowledges the amendments to claims 1, 2, 4, 9, and 16 as well as the cancellation of claims 14 and 19. Claims 1-2, 4-5, 7-10, 12, 15-16, 18, and 20 are pending.
Claim Rejections - 35 USC § 103
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(s) 1-2, 4-5, 7-10, 12, 15-16, 18, and 20 are rejected under 35 U.S.C. 103 as being unpatentable over Patil (WO 2020176456, herein using US version 20220145065).
Regarding Claims 1-2,
Patil teaches a polyetherimide copolymer (Abstract) that can be comprised of a bisanhydride such as BPADA (Paragraph 43) meeting the requirement of F2 (with both R groups equal to methyl) and from diamines such as 4,4’-oxydianiline (Paragraph 44) meeting the requirement of F1 and amine terminated polysiloxanes of the following structure (Paragraph 46):
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in which R’ can be a variety of organic compounds including alkyl groups such as methyl groups (Paragraph 45) and where R4 can be an alkyl chain of 2 to 20 carbons (Paragraph 46), E can be an integer between 5 and 100 (Paragraph 46), and further discloses that the composition may include mixtures of diamines (Paragraph 46) which meets the requirements of F3. The ranges of R4 and E overlap with the ranges of the instant claims. One of ordinary skill in the art, aware that the length of the polysiloxane chain would alter the flexibility of the resulting polymer would adjust both the length of the alkyl linking chains as well as the number of repeat segments in order to obtain the desired level of flexibility in the resulting polymer. It would therefore have been obvious prior to the effective filing date of the instant application to have to have selected the overlapping portion of the ranges because selection of the overlapping portions of ranges has been held to be a prima facie case of obviousness. See MPEP 2144.05.I. While Patil is silent on whether R4 is linear or branched, because the linking groups of the instant claim contain more than 2 and fewer than 20 carbons, it would have been obvious prior to the effective filing date of the instant application to have used any linking group, linear or branched, that met this requirement.
Regarding the number of repeat units as stated in claim 2, Patil teaches that the polymer should have a molecular weight of between 5,000 and 45,000 Da (Paragraph 61). This range, based upon the molecular weight of the repeat units, would overlap with the range of the instant claim. As longer polymer chains are known to have increased viscosity, one of ordinary skill in the art would adjust the molecular weight, and it would necessarily follow, the number of repeat units in the polymer, to obtain a material with an appropriate viscosity for the application. As such, it would have been obvious prior to the effective filing date of the instant application to have selected a number of repeat units that would satisfy the product requirements. Additionally, it would have been obvious to have selected the overlapping portion of the range because selection of overlapping portions of ranges has been held to be a prima facie case of obviousness. See MPEP 2144.05.I.
Finally, regarding the amount of siloxane containing diamine, Patil teaches that the diamine component can be comprised of 10 to 90% by mole of the siloxane-containing diamine (Paragraph 46). Based upon the value of E disclosed by Patil as well as the allowable other components, this value would overlap with the range of the instant claim. One of ordinary skill in the art would alter the ratio between the hard and soft diamines, and would select an appropriate ratio between the two to obtain a material with the desired properties (Paragraph 48). As such, it would have been obvious prior to the effective filing date of the instant application to have selected the overlapping portion of the ranges because the selection of overlapping portions of ranges has been held to be a prima facie case of obviousness. See MPEP 2144.05.I.
Regarding Claims 4 and 5,
Patil teaches the components as required which are described above in regard to claims 1 and 2 and that the copolymer can be a block or random copolymer (Paragraph 47). Patil also teaches that the polysiloxane diamine may be between 10 and 90% by mole of the organic diamine (Paragraph 46), which when combined with the molecular weight requirements described above in regard to claims 1-2 overlaps with the range required based upon the values of K and L. One of ordinary skill in the art, recognizing that siloxanes when introduced into copolymers increase the flexibility of the overall polymer, would naturally adjust the amount incorporated into the copolymer to obtain the desired level of flexibility for the desired application. It would therefore have been obvious to have selected an incorporation level that would meet this requirement. Additionally, it would have been obvious to have selected the overlapping portion of the ranges because selection of overlapping portions of ranges has been held to be a prima facie case of obviousness. See MPEP 2144.05.I.
In regard to the degree of polymerization, this value is an alternate method of describing the number of monomeric units in each block. The value disclosed falls within the range of claim 4 and would have been obvious for the reasons described.
Patil also teaches that the siloxane blocks may have minimal hydrocarbon content in which the R groups on the silicon are methyl groups (Paragraph 45), meeting the requirement of the instant claim with the requirements for groups R9 and R10 addressed in regard to claim 1 above.
Regarding Claims 7 and 8,
The claims are directed to microfluidic and temperature sensing devices respectively, however both claims fail to set forth any distinct definition or specification of these devices other than to require the use of the material from claims 1 or 4. Because of this, the intended use cannot be regarded as a claim limitation. See MPEP 2111.02.II.
Regarding Claims 9-10 and 16,
Patil teaches that the composition can be polymerized under reaction conditions that afford the product (Paragraph 52) and specifically notes that the reaction can be conducted under nitrogen atmosphere at elevated temperature with a Dean-Stark condenser, followed by precipitation into methanol and subsequent vacuum drying while heating (Paragraph 91, Example 1).
While Patil does not specify the use of solvent, the use of solvent is common in organic reactions. Specifically, due to its azeotrope with water, benzene can be used in reactions where water needs to be removed in order for the reaction to proceed. As the reaction being performed here is a polycondensation (Paragraph 52) and by specifying the use of a Dean-Stark apparatus (Paragraph 91), which is used to trap water from condensation reactions, it would have been obvious to have used any nonreactive solvent with a water azeotrope in the polymerization reaction.
With regard to the formation of a block copolymer, as Patil discloses the polycondensation reaction for a random copolymer, the only difference for forming the block copolymer would be to separately polymerize the organic amine-bis anhydride and the polysiloxane diamine-bis anhydride blocks. Patil discloses that the polymer may be a block copolymer (Paragraph 46), and it would logically follow, a sequence as described in the instant claim.
Regarding the amount of siloxane containing diamine, Patil teaches that the diamine component can be comprised of 10 to 90% by mole of the siloxane-containing diamine (Paragraph 46). Based upon the value of E disclosed by Patil as well as the allowable other components, this value would overlap with the range of the instant claim. One of ordinary skill in the art would alter the ratio between the hard and soft diamines, and would select an appropriate ratio between the two to obtain a material with the desired properties (Paragraph 48). As such, it would have been obvious prior to the effective filing date of the instant application to have selected the overlapping portion of the ranges because the selection of overlapping portions of ranges has been held to be a prima facie case of obviousness. See MPEP 2144.05.I.
Finally, regarding the siloxanes used, Patil teaches that the siloxanes may have between 2 and 31 repeat units (Paragraph 45), which when placed into an amine-terminated siloxane of the following formula:
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would result in a total number of silicon atoms equaling at least 3. The linking group requirements were discussed in regard to claim 1 above and it would have been obvious to have used any linking group, including branched versions under 20 carbons, as discussed in regard to claim 1.
Regarding Claims 12 and 18,
Patil teaches the use of ODA (Paragraph 44).
Regarding Claims 14 and 19,
Patil teaches that the polysiloxane diamine has the following structure:
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where R4 is 2 to 20 carbons (Paragraph 46), R’ is preferably methyl (Paragraph 45), and E can be between 5 and 100, which would encompass the compounds of the instant claim.
Regarding Claims 15 and 20,
Patil teaches the use of BPADA (4,4’-(4,4’-isopropylidenediphenoxy)bis(phthalic anhydride) (Paragraph 43).
Response to Arguments
Applicant's arguments filed 2/13/2026 have been fully considered but they are not persuasive for the following reasons.
On pages 9 and 10, the applicant argues that Patil does not teach the use of branched linking groups in the aminosiloxanes. The examiner disagrees. While Patil does not explicitly teach the use of branched linking groups, Patil also does not teach away from their use, requiring only that these hydrocarbon groups contain fewer than 20 carbons (Paragraph 46) with no indication of linear or branched provided. Further, Patil references US Patent 4,808,686 (Cella), which teaches that these groups “can be substituted with radicals that are neutral during intercondensation” (Column 2, Lines 36-39). As alkyl groups pendent to this chain would be neutral under these conditions, they would be allowed and presumably Patil would have noted branched groups could not be used had this been the case. The applicant also points to reasons for using branched groups in the linker such as for flexibility, solubility, and improved compatibility in the copolymer matrix, however these requirements not only do not appear in the claims, they also do not appear in the applicant’s specification in regard to using a branched linker instead of a linear one.
On page 10, the applicant states that Patil prefers a higher number of repeat units in the siloxane. The examiner disagrees. Patil notes using siloxanes with repeat units as low as 3 (Paragraph 45) and further, even notes a range of 5 to 15 in paragraph 46 which was cited by the applicant and which the examiner notes that Patil states that those particular values are “in an aspect” and would therefore not supersede the prior teaching of at least 2 repeat units. Additionally, references must be considered for the totality of their teachings, not just preferred embodiments. As such, because Patil teaches the use of smaller siloxanes, their use would be taught regardless of the preferences expressed.
Also on page 10, the applicant states that these shorter siloxanes afford a unique balance of thermal stability and flexibility. The examiner notes that these requirements do not appear in the claims. Furthermore, the applicant appears to be referencing unexpected results by pointing to the polymers used in figures 20 and 23. However, the examiner points out that in order for these results to be persuasive, they must be commensurate in scope with the claimed ranges. In this case, the applicant’s examples are prepared using n-propyl linkers in the siloxane, which do not meet the requirements of the amended claims. As such, these results cannot be commensurate in scope with the claims as they do not meet the stated requirements.
Also on page 10, the applicant applies the above arguments in relation to claim 4. They are found unpersuasive for the reasons listed above.
On page 11, the applicant alleges hindsight reasoning and that Patil does not provide examples where a block copolymer is made. The examiner disagrees, as Patil clearly notes that block copolymers may be utilized (Paragraph 46) and while Patil may not explicitly state a method for their manufacture, block copolymers are common in polymer science and their method of preparation would be obvious given the type of polymerization required to obtain a polyimide polymer, differing only from the random version by the formation of each block separately. As there are only three components to the polymer which include two diamines and one bis(anhydride), there would only be one possible type of block copolymer that could be made as any reaction containing both diamines would by definition represent a random copolymer and thus no longer be a block copolymer.
Also on page 11, the applicant states that Patil exemplifies an n-propyl linker in the siloxane and not the applicant’s preferred branched linkers. As previously stated, references must be considered for the totality of their teachings and not simply their preferred variants or exemplified examples. As such, because Patil does not teach away from the use of such linkers, only constraining them by the number of carbons contained in addition to referencing a prior patent that more explicitly allows for such linkers, the totality of the teachings would allow for the use of branched linkers.
Finally, on page 11 the applicant states that Patil does not teach the use of inert atmosphere. The examiner disagrees, as Patil notes in paragraph 91 the use of a nitrogen adapter, which it would logically follow, means that nitrogen is utilized. Furthermore, the use of inert gas such as nitrogen is common in organic chemical reactions and the ordinarily skilled artisan would no doubt be aware of this common practice and additionally, as a Dean-Stark trap is utilized (wherein such an apparatus is used to remove water from the reaction mixture), it would be obvious to use inert atmosphere in order to prevent the intrusion of exogenous moisture.
For at least these reasons, the applicant’s arguments are not found to be persuasive. As a result, the rejection is maintained.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. Cella (US 4,808,686) is referenced by Patil and provides additional information about the linking groups on the aminosiloxanes. Lee (US 4,586,997, 4,670,497, and 4,968,757) teach polyimide-siloxane block copolymers that use BPADA, ODA, and amine-terminated siloxanes similar to those of the instant application.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to ADAM J BERRO whose telephone number is (703)756-1283. The examiner can normally be reached M-F 8:30-5.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Heidi Kelley can be reached at 571-270-1831. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/A.J.B./Examiner, Art Unit 1765
/JOHN M COONEY/Primary Examiner, Art Unit 1765
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