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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 1/12/2026 has been entered.
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 18, 19, 26 and 32-35 are rejected under 35 U.S.C. 103 as being unpatentable over Fukushima et al. (New Concept of Positive Photosensitive Polyimide: Reaction Development Patterning (RDP), Journal of Polymer Science: Part A: Polymer Chemistry, Vol. 39, 3451–3463 (2001) in view of Okada et al. (US 20040048978).
Fukushima teaches a polyimide solution, consisting of 30% wt. of the aromatic polyimide (see page 3454, left column, meeting the limitations of claims 19 and 32-33) and a solvent is represented a combinations of dimethylsulfoxide (DMSO) and ethanolamine (meeting the limitations of claim 26).
The reference discloses that although the multiblock copolyimide was partially insoluble in
DMSO, the solution became homogeneous after the addition of ethanolamine at the [amine]/[imide]
ratio of 0.75 (see 3456, right column). The solution is stirred overnight at room temperature (meeting the limitations of claim35) without precipitation, meeting the corresponding limitations of claim 18 and 34.
Note that components c)-i) in claim 18 and 34 are optional.
However, Fukushima’s ethanolamine has only 2 carbon atoms, whereas claims 18 and 34 recite 3-15 carbons.
Okada teaches a polyimide composition comprising an aprotic solvent (i.e., dimethylsulfoxide, N-methyl-2-pyrolidone, N,N-dimethylformamide or N,N-dimethylacetamide, see 0169) and a basic compound at concentration of 0.1 to 5% wt. (see 0201).
Okada discloses that the basic compound is used in order to increase solubility of polyimide (see 0201).
Such alkanolamines as ethanolamine, 1-dimethylamino-2-propanol, 1-diethylamino-2-propanol, N-methyldiethanolamine and N-ethyl diethanolamine are used as examples of the basic compound (see 0199).
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 alkanolamines with 3-15 carbons along with DMSO in Fukushima’s polyimide system in order to increase solubility of the polymer.
Claims 18, 19, 26 and 32-35 are rejected under 35 U.S.C. 103 as being unpatentable over Okada et al. (US 20040048978).
Okada teaches an aromatic polyimide composition comprising an aprotic solvent (i.e., dimethylsulfoxide, N-methyl-2-pyrolidone, N,N-dimethylformamide or N,N-dimethylacetamide, see 0169) and a basic compound at concentration of 0.1 to 5% wt. (see 0201).
Okada discloses that the basic compound is used in order to increase solubility of polyimide (see 0201).
Such alkanolamines as ethanolamine, 1-dimethylamino-2-propanol, 1-diethylamino-2-propanol, N-methyldiethanolamine and N-ethyl diethanolamine are used as examples of the basic compound (see 0199).
Okada fails to teach a single Example, where polyimide, DMSO and the basic compound present in one composition.
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 parte A, 17 USPQ2d 1716 (Bd. Pat. App. & Inter. 1990) See also MPEP 2131.02
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 polyimide, DMSO and the basic compound present in Okada’s composition, since they clearly named in the Specification.
Okada fails to teach solution stability.
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 Okada’s and Applicant’s solution stability, since they have the same composition.
Response to Arguments
Applicant’s arguments with respect to claims 18-19, 26 and 32-35 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.
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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GL
/GREGORY LISTVOYB/Primary Examiner, Art Unit 1765