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 .
This communication is responsive to the claims filed 03/02/2026. Claims 1, 13, 16-17, 20-23, 35, 41, 46-47, 49-50, 53, 56, 59, 68-72, 80-81 and 174-178 are pending. Of the claims
Claims 23, 35, 46-47, 49-50, 53, 56, 59, 68-72, 80-81, and 174 are withdrawn from consideration.
Claims 1, 13, 16-17, 20-22, 41 and 175-178 are under consideration in this Office Action.
The current Examiner for this Application is Huihong Qiao. The limitations of the previously presented Claim 14 are incorporated into the instant Claim 1. The previously presented Claim 14 was rejected as being unpatentable over Haldeman, et al. (US2018/0037700 A1). The Examiner agrees with the Applicant that Haldeman does not teach or suggest the polyamideimide oligomers as required by the present claim 1. Thus, the 35 USC 103 rejection dated 09/03/2025 at para. 10 is WITHDRAWN. Consequently, this is the third Non-final Rejection.
Claims 1, 13, 16-17, 20-22, 41 and 175-178 are rejected for the reasons set forth below.
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.
Claim Objections
Claim 1 is objected to because of the following informalities: the last X should be below the last formula.
Appropriate correction is required.
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.
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.
Claims 1, 13, 16-17, 20-21, 41 and 175-178 are rejected under 35 U.S.C. 103 as being unpatentable over Sheppard et al. (US 5216117), cited in the IDS dated 05/27/2025.
Regarding Claims 1, 13, 17, 21, 175-178, Sheppard teaches a polyamideimide reactive oligomer (ab.), having molecular weight between 5,000-40,000 (29:3-7) (meeting the mw limitation of claims 1 and 178); which can be formed from the following monomers:
Diamines of the following formula (see pages 17-18):
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69
259
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wherein q is -SO2-, -CO-, -S-, or -(CF3)2C- (see 19:45) (meeting the aromatic diamine limitation of claims 1, 21, 175);
Aromatic polyacids selected from pyromellitic dianhydride (see 24:35), phthaloyl chloride, isophthaloyl chloride or terephthaloyl chloride (see 23:45) (meeting the aromatic polyacid or functional equivalent thereof of claims 1, 21, 22, 176-177)
Reactive endgroups as (see 31:40):
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124
211
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where R is Hydrogen (see 31:65) and Rl can be equal to methyl and j can be equal to 0 or 1 (see 31:50) (meeting the crosslinkable monomer or end-capper of the Claims 1, 13, 17, and 21).
Note that Sheppard does not teach all the monomers above in one Example. A genus does not always anticipate a claim to a species within the genus. However, when the species is clearly named, the species claim is anticipated no matter how many other species are additionally named. Ex pa rte A, 17 USPQ2d 1716 (Bd. Pat. App. & lnter.1990) See also MPEP 2131.02.
Therefore, it would have been obvious to a person of ordinary skills in the art to use the monomers above in Sheppard 's oligomer, since they are clearly named in the reference.
Regarding Claim 16, Sheppard discloses that the polyamideimides have one or two crosslinking functionalities on each end of the molecule (7:30-35). The crosslinking functionalities can be derived from multiple monomers (31:10-50). Therefore, Sheppard discloses the crosslinkable monomers or end-cappers comprising two crosslinkable monomers or end-cappers that are reactive at different temperature ranges.
Regarding Claim 20, The Office realizes that Sheppard is silent on the melt complex viscosity. However, Sheppard teaches a reactive polyamideimide oligomer derived from the claimed monomers made by a substantially similar process. Therefore, the claimed melt complex viscosity would naturally arise and be achieved by the reactive polyamideimide oligomer taught by Sheppard. "Products of identical chemical composition cannot have mutually exclusive properties." In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990). A chemical composition and its properties are inseparable. Therefore, if the prior art teaches the identical chemical structure, the properties applicant discloses and/or claims are necessarily present. See MPEP § 2112.01. If it is the applicant’s position that this would not be the case: (1) evidence would need to be provided to support the applicant’s position; and (2) it would be the Office’s position that the application contains inadequate disclosure that there is no teaching as to how to obtain the claimed properties with only the claimed ingredients.
Regarding Claim 41, Sheppard teaches blends of the reactive polyamideimide oligomer and a polymer incapable of crosslinking, for example, polyamide (5:40-55).
Claim 22 is rejected under 35 U.S.C. 103 as being unpatentable over Sheppard, as applied to Claim 1 above at para.9, and in further view of Lubowitz et al. (US 5969079), cited in the IDS dated 05/27/2025.
The disclosure of Sheppard on Claim 1 is incorporated herein by reference.
Sheppard discloses the reactive polyamideimide oligomer derived from aromatic diamine monomers, aromatic polyacids and crosslinkable monomers (claims 1-2) but is silent that the specific diamine monomers and crosslinkable monomers of Claim 22.
However, Lubowitz teaches reactive oligomers with multiple end-caps (including ethynyl based ones, see 14:60), which possessed high thermomechanical and thermooxidative stabilities and used in aerospace industry (see Abstract), having the same molecular weight range as Sheppard’s oligomers (see 7:35).
Note that Sheppard 's oligomers have the same requirements for properties and use (see Abstract).
Lubowitz teaches polyamideimides (see Example 10 at 45:50), which can use such diamine as 4,4'-diaminodiphenyl ether (i.e., 4, 4' oxydianiline (ODA), see 22:10 and 23:65) and phthalic anhydride acid chloride (i.e., trimelliticacid halide anhydride) (see 17:55 and 35:45).
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. lnterchemical Corp., 325 U.S. 327, 65 USPQ
297 (1945), 325 U.S. at 335, 65 USPQ at 301, see also In re Lesh in, 227 F.2d 197, 125 USPQ 416 (CCPA
1960), Ryea, 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 to use the monomers above in Sheppard 's oligomer, since they are known materials based on its suitability for its intended use.
Claims 1, 13, 16-17, 20-22, 41 and 175-176 and 178 are rejected under 35 U.S.C. 103 as being unpatentable over Ninomya et al (JPH10265591, Espacenet English translation is provided herein).
Ninomya teaches a reactive oligomer derived from at least one aromatic diamine and at least one aromatic di- or tetracarboxylic acid anhydride and terminal blocking agent ([0031]), wherein the aromatic diamines include meta-phenylenediamine (i.e. 1, 3-phenylenediamine) ([0032]) (meeting the diamine limitation of Claims 1, 17, 21, 22, 175); the aromatic di- or tetracarboxylic acid anhydrides include pyromellitic dianhydride and biphenyl tetracarboxylic acid dianhydride ([0033]) (meeting the aromatic polyacid limitation of Claims 1, 17, 21, 22, 176); the terminal blocking agents include 4-phenylethynylphthalic anhydride ([0037]) (meeting the crosslinkable end-ca[[er limitation of Claims 1, 13, 16, 17, 21 and 22).
Ninomya further teaches the reactive oligomer having an average molecular weight of from 2,000 to 20,000 ([0038]) (meeting the mw limitation of claims 1 and 178).
Regarding claim 16, Ninomya teaches that that the reactive oligomer be imidized by heat treatment is preferably set to 180 ° C- 250 ° C, while curing takes place at 371° C. Further, Ninomya discloses serval terminal block agents, it would have been obvious to one ordinary skilled artisan, before the effective filling date of the instant application, to use two agents in making of the oligomer It is well settled that it is prima facie obvious to combine two ingredients, each of which is targeted by the prior art to be useful for the same purpose (see MPEP 2144.06(I)).
Regarding Claim 20, Ninomya teaches that viscosity of the oligomer either too low or too high would cause flow problems ([0042]). Thus, the melt complex viscosity of the oligomers would be considered a result effective variable by one of ordinary skill in the art before the effective filing date of instant application. As such, without showing unexpected results, the claimed melt complex viscosity cannot be considered critical. Accordingly, one of ordinary skill in the art before the effective filing date of instant application would have optimized, by routine experimentation, the melt complex viscosity to reach the desired flowability, since it has been held that where the general conditions of the claim are disclosed in the prior art, discovering the optimum or workable ranges involves only routine skill in the art. (See MPEP 2144.05(b).).
Regarding Claim 41, the oligomer can be used with polyimide ([0045]).
Double Patenting
The nonstatutory double patenting rejection is based on a judicially created doctrine grounded in public policy (a policy reflected in the statute) so as to prevent the unjustified or improper timewise extension of the “right to exclude” granted by a patent and to prevent possible harassment by multiple assignees. A nonstatutory double patenting rejection is appropriate where the conflicting claims are not identical, but at least one examined application claim is not patentably distinct from the reference claim(s) because the examined application claim is either anticipated by, or would have been obvious over, the reference claim(s). See, e.g., In re Berg, 140 F.3d 1428, 46 USPQ2d 1226 (Fed. Cir. 1998); In re Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993); In re Longi, 759 F.2d 887, 225 USPQ 645 (Fed. Cir. 1985); In re Van Ornum, 686 F.2d 937, 214 USPQ 761 (CCPA 1982); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Thorington, 418 F.2d 528, 163 USPQ 644 (CCPA 1969).
A timely filed terminal disclaimer in compliance with 37 CFR 1.321(c) or 1.321(d) may be used to overcome an actual or provisional rejection based on nonstatutory double patenting provided the reference application or patent either is shown to be commonly owned with the examined application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. See MPEP § 717.02 for applications subject to examination under the first inventor to file provisions of the AIA as explained in MPEP § 2159. See MPEP § 2146 et seq. for applications not subject to examination under the first inventor to file provisions of the AIA . A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
The filing of a terminal disclaimer by itself is not a complete reply to a nonstatutory double patenting (NSDP) rejection. A complete reply requires that the terminal disclaimer be accompanied by a reply requesting reconsideration of the prior Office action. Even where the NSDP rejection is provisional the reply must be complete. See MPEP § 804, subsection I.B.1. For a reply to a non-final Office action, see 37 CFR 1.111(a). For a reply to final Office action, see 37 CFR 1.113(c). A request for reconsideration while not provided for in 37 CFR 1.113(c) may be filed after final for consideration. See MPEP §§ 706.07(e) and 714.13.
The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The actual filing date of the application in which the form is filed determines what form (e.g., PTO/SB/25, PTO/SB/26, PTO/AIA /25, or PTO/AIA /26) should be used. A web-based eTerminal Disclaimer may be filled out completely online using web-screens. An eTerminal Disclaimer that meets all requirements is auto-processed and approved immediately upon submission. For more information about eTerminal Disclaimers, refer to www.uspto.gov/patents/apply/applying-online/eterminal-disclaimer.
Claims 1, 13, 16-17, 20-22 and 175-178 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 63, 3, 61-67, 69 of copending Application No. 17/775,221 dated 02/10/2026 (‘221). Although the claims at issue are not identical, they are not patentably distinct from each other because:
Regarding Claim 1, limitations of claim 63 of ‘221 read on the limitations of the instant Claims 1, 13, 16, 17, 20, 21, 175-178. The dependent claims 3, 61-67, 69 read on the instant Claim 1 as well.
Regarding Claim 22, claim 64 of ‘221 read on the limitations of the instant Claim 22.
This is a provisional statutory double patenting rejection since the claims directed to the same invention have not in fact been patented.
Response to Arguments
Applicant’s arguments with respect to claim 1 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
Any inquiry concerning this communication or earlier communications from the examiner should be directed to HUIHONG QIAO whose telephone number is (571)272-8315. The examiner can normally be reached 9AM - 5PM.
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/HUIHONG QIAO/Examiner, Art Unit 1763
/JOSEPH S DEL SOLE/Supervisory Patent Examiner, Art Unit 1763
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