675DETAILED 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
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.
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 1-8 are rejected under 35 U.S.C. 103 as being unpatentable over Carney et al. (US20180163006, herein Carney), in the view of Gallucci et al. (US20090099300, herein Gallucci).
Regarding Claims 1, 3-5, Carney teaches a polyimide film comprising:
a substantially chemically converted polyimide derived from based on a total dianhydride content of the polyimide, at least 50 mole percent of an aromatic dianhydride, such as 3,3′,4,4′-biphenyl tetracarboxylic dianhydride [0023; 0024; 0026]; wherein the phenyl groups in the aromatic dianhydride do not share carbon atoms with each other; and at least 50 mole percent of an aromatic diamine” [0023]; wherein, the suitable diamines for use in the chemically converted polyimides of the present disclosure include aromatic diamines, such as “2,2′-bis(trifluoromethyl) benzidene” [0051, 57]; wherein the phenyl groups in the aromatic diamine do not share carbon atoms with each other.
Carney teaches the adhesive including filler [0136], wherein the adhesive layer is selected from the group consisting of: polyimide [0155], which indicates the filler and polyimide in same composition. Carney is silent on the specified inorganic filler in the polyimide film and the size of the inorganic filler, based on a total volume of the polyimide film, and less than 50 volume percent of the inorganic filler, based on the total inorganic filler, has a diameter of less than 100 nm in all three dimensions. However, Gallucci teaches a composition comprising 1 to 98% of a filler that is preferably glass fibers having a particle size of 6 to 20 microns [0066-67] overlaps the inorganic filler based on the total inorganic filler; and 0.1 to 10 parts of a UV stabilizer that is nano-size inorganic materials, all with particle size less than 100 nanometers [0075] which lies the inorganic filler concentration range based on the total inorganic filler, and lies in the claimed the size range in all three dimensions owing to the filler shape is particle (3D) with particle size less than 100 nanometers. Carney and Gallucci are considered analogous art because they are in the same field of endeavor, that of polyimide resin based functional composite. It would have been obvious to someone of ordinary skill in the art before the effective filing date of the claimed invention to have modified Carney and substitute the specified inorganic fillers’ size and concentration ranges into the polyimide film as taught by Carney, toward the composition formation. Doing so would further achieve a desirable property of “capable of withstanding the higher processing temperatures capable of being achieved using the compositions of the present invention” [0090] as taught by Gallucci.
Carney teaches the formation of the polyimide film as polyamic acid solution can be cast or extruded onto a heated conversion surface or substrate; the chemically treated polyamic acid solution can be cast on to a belt or drum [0020] reads on “The solvated mixture (the polyamic acid casting solution) can then be cast or applied onto a support, such as an endless belt or rotating drum, to give a partially imidized gel film” [Instant App. US20230137913; 0053]; and From the polyamic acid solution, a film was cast using a slot die onto a ˜ 90° C. rotating drum. [Instant App. US20230137913; 0091]
Regarding the void ratio of the polyimide film, the Office realizes that all of the claimed effects or physical properties are not positively stated by the reference(s). However, Carney and Gallucci teaches all of the claimed ingredients, in the claimed amounts, and Carney teaches the composition as being made by a substantially similar process. The original specification does not provide any disclosure on how to obtain the claimed properties outside the components of the composition itself. Therefore, the claimed effects and physical properties, i.e. the void ratio of the polyimide film, would necessarily arise from a composition with all the claimed ingredients and amounts. "Products of identical chemical composition can not 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. 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 enabling a person of ordinary skill in the art to obtain the claimed properties with only the claimed ingredients, absent undue experimentation.
Regarding Claim 2, Carney teaches tertiary amine catalysts such as pyridine [0018], which is heterocyclic tertiary amine.
Regarding claims 6-8, the Office realizes that all of the claimed effects or physical properties are not positively stated by the reference(s). However, Carney and Gallucci teach all of the claimed ingredients, in the claimed amounts, and teaches the composition as being made by a substantially similar process as taught by Carney as set forth in claim 1. The original specification does not provide any disclosure on how to obtain the claimed properties outside the components of the composition itself. Therefore, the claimed effects and physical properties, i.e. dielectric strength, thermal conductivity, surface resistivity, would necessarily arise from a composition with all the claimed ingredients and amounts. "Products of identical chemical composition can not 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. 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 enabling a person of ordinary skill in the art to obtain the claimed properties with only the claimed ingredients, absent undue experimentation.
Claims 9-16 are rejected under 35 U.S.C. 103 as being unpatentable over Carney et al. (US20180163006, herein Carney), in the view of Ding et al. (US20070066734, herein Ding).
Regarding Claims 9, 11, 12, 13, Carney teaches a polyimide film comprising:
a substantially chemically converted polyimide derived from at least 10 mole percent of an aromatic dianhydride having two or more phenyl groups, based on a total dianhydride content of the polyimide, “at least 50 mole percent of an aromatic dianhydride; 3,3′,4,4′-biphenyl tetracarboxylic dianhydride” [0023-24], overlaps the claimed range, wherein the phenyl groups in the aromatic dianhydride do not share carbon atoms with each other; and at least 10 mole percent of an aromatic diamine having two or more phenyl groups, based on a total diamine content of the polyimide; “at least 50 mole percent of an aromatic diamine” [0023], overlaps the claimed range, and “2,2′-bis(trifluoromethyl) benzidene” [0051], wherein the phenyl groups in the aromatic diamine do not share carbon atoms with each other.
Carney teaches the adhesive including filler [0136], wherein the adhesive layer is selected from the group consisting of: polyimide [0155], which indicates the filler and polyimide in same composition. Carney is silent on the specific organic filler in the polyimide film with the concentration and size ranges of at least 10 volume percent of an organic filler, based on a total volume of the polyimide film, and less than 50 volume percent of the organic filler, based on the total organic filler, has a diameter of less than 100 nm in all three dimensions. However, Ding teaches “polyaniline, polythiophene, polypyrrole” [0199], in the range of “10 weight (%) percent to about 15, 20, 25, 30, 35, 40, 45 or 50 (%) weight percent or greater” [0200] and sizes greater than 100 nanometers, [0200], lie in the claimed size and concentration ranges. Ding further teaches average particle size (in the polyimide binder matrix) in a range greater than 100 nanometer [0199] indicates and lies in the diameter of less than 100 nm in all three dimensions owing to the filler shape is particle (3D) with specified average size range, in the range of “where at least 80 weight-percent of the dispersed filler is within the above defined size range(s)” [0200], as such, at most 20% by weight of the filler has a size below 100 nm, lies in the claimed range. Carney and Ding are considered analogous art because they are in the same field of endeavor, that of polyimide resin based functional composite formation. It would have been obvious to someone of ordinary skill in the art before the effective filing date of the claimed invention to have modified Garney and substitute the specified organic fillers with the size and concentration ranges of “polyaniline, polythiophene, polypyrrole” [0199], in the range of “10 weight (%) percent to about 15, 20, 25, 30, 35, 40, 45 or 50 (%) weight percent or greater” [0200] and sizes greater than 100 nanometers, [0200], average particle size (in the polyimide binder matrix) in a range greater than 100 nanometer [0199] and the range of “where at least 80 weight-percent of the dispersed filler is within the above defined size range(s)” [0200], into the polyimide film as taught by Carney toward the composition formation. Doing so would further achieve a desirable property of increased thermal conductivity in the composite [0200].
Carney teaches the formation of the polyimide film as polyamic acid solution can be cast or extruded onto a heated conversion surface or substrate; the chemically treated polyamic acid solution can be cast on to a belt or drum [0020] reads on “The solvated mixture (the polyamic acid casting solution) can then be cast or applied onto a support, such as an endless belt or rotating drum, to give a partially imidized gel film” [Instant App. US20230137913; 0053]; and From the polyamic acid solution, a film was cast using a slot die onto a ˜ 90° C. rotating drum. [Instant App. US20230137913; 0091]
Regarding the void ratio of the polyimide film, the Office realizes that all of the claimed effects or physical properties are not positively stated by the reference(s). However, Carney and Ding teach all of the claimed ingredients, in the claimed amounts, and Carney teaches the composition as being made by a substantially similar process. The original specification does not provide any disclosure on how to obtain the claimed properties outside the components of the composition itself. Therefore, the claimed effects and physical properties, i.e. the void ratio of the polyimide film, would necessarily arise from a composition with all the claimed ingredients and amounts. "Products of identical chemical composition can not 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. 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 enabling a person of ordinary skill in the art to obtain the claimed properties with only the claimed ingredients, absent undue experimentation.
Regarding Claim 10, Carney teaches “the tertiary amine catalysts are pyridine” [0018] which is heterocyclic tertiary amine.
Regarding claims 14-16, the Office realizes that all of the claimed effects or physical properties are not positively stated by the reference(s). However, the Carney and Ding teach all of the claimed ingredients, in the claimed amounts, and Carney teaches the composition as being made by a substantially similar process as set forth in claim 9. The original specification does not provide any disclosure on how to obtain the claimed properties outside the components of the composition itself. Therefore, the claimed effects and physical properties, i.e., dielectric strength, thermal conductivity, surface resistivity, would necessarily arise from a composition with all the claimed ingredients and amounts. "Products of identical chemical composition can not 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. 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 enabling a person of ordinary skill in the art to obtain the claimed properties with only the claimed ingredients, absent undue experimentation.
Response to Arguments
Applicant's arguments filed 3/23/2026 have been fully considered but they are not persuasive.
In response to applicant's argument that “While Carney does indeed disclose a broad range of monomers to form polyimides, it does not suggest using the combination of applicants' claimed monomer composition, nor does it recognize how careful selection of these monomers and the amount of each monomer in the polyimide can directly limit the concentration of voids in filled polyimide films made using a chemical conversion process”, the argument is not persuasive.
In fact, Carney teaches a polyimide film comprising: aromatic dianhydride, such as 3,3′,4,4′-biphenyl tetracarboxylic dianhydride [0023-24, 0026], the suitable diamines for use in the chemically converted polyimides of the present disclosure include aromatic diamines, such as “2,2′-bis(trifluoromethyl) benzidene” [0051, 0057], Hence, Carney teaches the specified aromatic dianhydride, aromatic diamine selection and specified amounts toward chemically converted polyimide, which does not teach away the instant application. Carney expressly identifies these as suitable materials for use in the same capacity as the materials included in the examples. It has been established that selection of a known material based on its suitability for its intended use is prima facie obvious. See MPEP 2144.07. See also In re Susi, 440 F.2d 442, 445 (CCPA 1971) (obviousness rejection affirmed where the genus of the prior art was “huge, but it undeniably include[d] at least some of the compounds recited in appellant's generic claims and [was] of a class of chemicals to be used for the same purpose as appellant's additives”).
The applicant's argument that “unexpected results” which also within the declaration under 37 CFR 1.132 filed 3/23/2026, are not commensurate in scope with the claim 1, hence, insufficient to establish non-obviousness.
In this case, first, Carney teaches the claimed polyimide film comprising the polyimide derived from the specific monomers and amounts, and Gallucci and Ding further teaches the specific inorganic and organic fillers, collectively meet the formation of voids is based on the selected monomers combination [Instant App., US20230137913; 0028] as well as the declaration under 37 CFR 1.132 filed 3/3/2026.
Second, the claim 1 is open to polyimide derived from broad selection of an aromatic dianhydride, and an aromatic diamine. However, Examples 1 to 6 (E1-E6), which the argument and declaration replied on, are based on two single monomer combinations, PMDA/BPDA/ODA, PMDA/BPDA/RODA, and Comparative Examples 1 to 5 (CE1-CE3), based on PMDA//ODA monomer combination [Instant App. P10-11; US20230137913; Table 1-3]. Therefore, these examples with narrow monomers selection are not commensurate in scope with the claim with the broader scope of the monomers listing and cannot be relied upon to establish non-obviousness.
Whether unexpected results are the result of unexpectedly improved results or a property not taught by the prior art, the objective evidence of nonobviousness must be commensurate in scope with the claims which the evidence is offered to support. In other words, the showing of unexpected results must be reviewed to see if the results occur over the entire claimed range. See MPEP 716.02(d).
In response to applicant's argument that Gallucci and Ding are nonanalogous arts, it has been held that a prior art reference must either be in the field of the inventor’s endeavor or, if not, then be reasonably pertinent to the particular problem with which the inventor was concerned, in order to be relied upon as a basis for rejection of the claimed invention. See In re Oetiker, 977 F.2d 1443, 24 USPQ2d 1443 (Fed. Cir. 1992).
In the rejection applied previously and above, neither Gallucci nor Ding had been relied upon for the formation of the polyimide film, in contrast, Gallucci and Ding are both been relied upon merely for teaching that specific inorganic and organic fillers and the ranges.
Gallucci and Ding provide clear teaching that the fillers and ranges are suitable for compositions similar to those of Carney, and therefore one having ordinary skill in the art would be motivated to substitute the fillers from Gallucci and Ding and apply into the composition of Carney. This motivation would not require the complete adoption of every teaching of Gallucci and Ding with respect to the formation of the polyimide film, but would merely indicate to one having ordinary skill in the art that said inorganic and organic fillers are suitable for the intended purpose. The incorporation therefore would have been obvious.
Additionally, the combination of the Carney, Gallucci and Ding not only match the claimed composition and range as set forth above, but also further lead to desirable property of “capable of withstanding the higher processing temperatures capable of being achieved using the compositions of the present invention” [0090] as taught by Gallucci, and the desirable property of increased thermal conductivity in the composite [0200] as taught by Ding, which collectively match the “By reducing the concentration and volume of voids in a filled polyimide film, films with good thermal conductivity can be produced” [Instant App. US20230137913; 0075].
Hence, neither Gallucci nor Ding teaches away the instant application.
Conclusion
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 mailing date of this final action.
Correspondence
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Zhen Liu whose telephone number is (703)756-4782. The examiner can normally be reached Monday-Friday 9:00 am - 5:00 pm.
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/Z.L./
Examiner, Art Unit 1767
/MARK EASHOO/Supervisory Patent Examiner, Art Unit 1767
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