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 .
Claim Rejections - 35 USC § 103
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.
Claims 1-2, 5, 7-9, 11-17 and new claims 18-22 are rejected under 35 U.S.C. 103 as being unpatentable over Hong et al (KR 20110035620), cited in newly added IDS, necessitated by amendment in view of Jiang et al (US 20210040266), cited in the previous Office Action.
Hong teaches a solution of polyimide precursor film forming composition comprising 50 mol % pyromellitic dianhydride (PMDA), 50mol % biphenyltetracarboxylic dianhydride (BPDA), 10 mol % 2-(4-aminophenyl)-5-amino-benzimidazol (API), 45 mol% p-phenylene diamine (PDA) and 45 mol % 4,4'-oxydianiline (ODA) (see Example 6) in solution at the presence of such catalyst as Isoquinoline.
Regarding claim 12, Hong teaches CTE is equal to 8 ppm/C and modulus value is equal to 6 GPA (see Example 6).
In reference to claim 10, Hong discloses 15% of solid content in the composition (see Example 6).
However, even though Hong teaches isoquinoline catalyst, the reference does not teach its claimed amount. In addition, Hong fails to teach such catalyst as imidazole and quinolone and their amounts.
.
Jiang discloses a polyimide film forming solution formed from a solvent, BPDA (see 0038) and aromatic diamines, where such catalysts as where such catalysts as imidazole, benzimidazole , quinolone etc. are used in the range of 0.1–10 mass % relative to the total amount of polyamic acid polymer mass (see 0030).
The selection of a known material based on its suitability for its intended use supported a prima facie obviousness determination in Sinclair & Carroll Co. v. Interchemical Corp., 325 U.S. 327, 65 USPQ 297 (1945) , 325 U.S. at 335, 65 USPQ at 301, see also In re Leshin, 227 F.2d 197, 125 USPQ 416 (CCPA 1960), Ryco, Inc. v. Ag-Bag Corp., 857 F.2d 1418, 8 USPQ2d 1323 (Fed. Cir. 1988) and MPEP 2144.07.
Therefore, it would have been obvious to a person of ordinary skills in the art before the effective filing date of the invention to apply such catalyst as quinolone in modified Hong’s composition, since it is of a known material based on its suitability for its intended use.
Hong and Jiang do not teach physical properties of claims 13-15.
Note that primary reference (i.e., Hong) teaches a polyimide obtained by chemical catalytical imidization, while Jiang discloses the clamed catalyst. Thus, modified Hong’s and Applicant’s materials have the same monomer content and obtained at the same conditions.
The position is taken that number of bending of claim 13, dimensional change rate of claim 14 and stiffness of claim 15 strictly depend on the polymer structure and method of its manufacturing.
The claiming of a new use, new function or unknown property, which is inherently present in the prior
art, does not necessarily make the claim patentable. In re Best, 562 F.2d 1252, 1254, 195 USPQ 430, 433
(CCPA 1977).
Therefore, it would have been obvious to a person of ordinary skills in the art before the effective filing
date of the invention to expect the same physical properties from Applicant's and Hong's modified
with Jiang films, since they have the same formula and prepared by the same method.
Claim 10 is rejected under 35 U.S.C. 103 as being unpatentable over Hong in view of Jiang as applied to claims 1-2, 5, 7-9, 11-17 and new claims 18-20 and 22 above, and further in view of Miura et al (US 20160353580), all cited in the previous Office Action.
Hong and Jiang do not teach viscosity of the composition as claimed.
Miura discloses a polyimide composition formed from BPDA and ODA (see 0096), where the concentration of all monomers in the polyamic acid solution is from 3 wt % to 10 wt %. and the rotational viscosity which is measured at 30° C is from 100 to 2000000 cps (see 0066).
Note that Hong, Jiang and Miura use their compositions for preparation of polyimide films. The requirements for the solution viscosity includes workability, environmental and economic considerations (i.e., solution spread ability, amount and quality of solvent needed, its boiling point, etc.) and can be determine during a routine experimental procedures.
"The normal desire of scientists or artisans to improve upon what is already generally known provides the motivation to determine where in a disclosed set of percentage ranges is the optimum combination of percentages." In re Boesch, 617 F.2d 272,276 (CCPA 1980)
Therefore, it would have been obvious to a person of ordinary skills in the art before the effective filing date of the invention to use Muira’s solution viscosity in modified Hong’s composition, as it determined by routine experimental procedures.
Response to Arguments
Applicant’s arguments with respect to claims 1-2, 5, 7-17 and new claims 18-22 have been considered but are moot because the new ground of rejection does not rely on any reference applied in the prior rejection of record for any teaching or matter specifically challenged in the argument.
Conclusion
Applicant's submission of an information disclosure statement under 37 CFR 1.97(c) with the timing fee set forth in 37 CFR 1.17(p) on 6/10/2026 prompted the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 609.04(b). 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 GREGORY LISTVOYB whose telephone number is (571)272-6105. The examiner can normally be reached 9am-5pm EST M-F.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Heidi Riviere 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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GL
/GREGORY LISTVOYB/Primary Examiner, Art Unit 1765
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