DETAILED ACTION
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
Claims 1-14 are pending as amended on 11/7/2025.
The new grounds of rejection set forth below are necessitated by Applicant’s amendment limiting claim 1 to a method requiring chemically imidizing polyamic acid, as well as the addition of new claims 3-14. Therefore, this action is properly made final.
Any rejections and/or objections made in the previous Office action and not repeated below are hereby withdrawn. The text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office Action.
Election/Restrictions
Newly submitted claims 3 and 4 are directed to an invention that is independent or distinct from the invention originally claimed for the following reasons:
Original claim 2 recites a method wherein a polyimide is formed from dianhydride monomers which are 6FDA and PMDA, and from diamine monomers which are DMB and TFMB. A species of polyimide formed from dianhydride monomers as recited in claim 3 (which are not 6FDA or PMDA) and/or from diamine monomers as recited in claim 4 (which are not DMB or TFMB) is mutually exclusive from the polyimide species originally recited in claim 2.
The species are independent or distinct because the species have mutually exclusive, materially different chemical structures, thereby resulting in different physical properties and effects in compositions and devices in which they are incorporated. In addition, these species are not obvious variants of each other based on the current record. There is a serious search and/or examination burden for the patentably distinct species as set forth above because one or more of the following reasons apply: the species or groupings of patentably indistinct species require a different field of search (e.g., searching different classes /subclasses or electronic resources, or employing different search strategies or search queries); the prior art applicable to one species or grouping of species would not likely be applicable to another species or grouping of species.
Since applicant has received an action on the merits for the originally presented invention, this invention has been constructively elected by original presentation for prosecution on the merits. Accordingly, claims 3 and 4 are withdrawn from consideration as being directed to a non-elected invention. See 37 CFR 1.142(b) and MPEP § 821.03.
To preserve a right to petition, the reply to this action must distinctly and specifically point out supposed errors in the restriction requirement. Otherwise, the election shall be treated as a final election without traverse. Traversal must be timely. Failure to timely traverse the requirement will result in the loss of right to petition under 37 CFR 1.144. If claims are subsequently added, applicant must indicate which of the subsequently added claims are readable upon the elected invention.
Should applicant traverse on the ground that the inventions are not patentably distinct, applicant should submit evidence or identify such evidence now of record showing the inventions to be obvious variants or clearly admit on the record that this is the case. In either instance, if the examiner finds one of the inventions unpatentable over the prior art, the evidence or admission may be used in a rejection under 35 U.S.C. 103 or pre-AIA 35 U.S.C. 103(a) of the other invention.
Specification
The disclosure is objected to because of the following informalities:
The chemical structures in [0036] of the specification are blurry and contain lines and letters which are too small to be read. Correction to provide structures of higher clarity/resolution is required.
Paragraph [0036] of the specification as filed contains numerous references to “OS,” however, the examiner is unable to find any definition of “OS” in the specification. Appropriate correction is required.
Claim Rejections - 35 USC § 112
The following is a quotation of the first paragraph of 35 U.S.C. 112(a):
(a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
Claims 1, 2 and 5-14 are rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the written description requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for applications subject to pre-AIA 35 U.S.C. 112, the inventor(s), at the time the application was filed, had possession of the claimed invention.
Claim 1 has been amended to recite “chemically imidizing the polyamic acid through one or more methods to a polyimide polymer…”
The originally filed claim recited imidizing the polyamic acid through one or more methods (without specifying chemically imidizing). While the specification as filed describes both thermal imidization and chemical imidization for the conversion of polyamic acid to the polyimide form (see [0032-35]), the examiner is unable to find a description in the specification as filed of a process wherein more than one chemical imidization method is utilized. Therefore, claim 1 as presently amended (as well as new independent claim 10 for the same reason, and claims which depend from claims 1 and 10) fail to comply with the written description requirement.
New claim 10 recites a method of producing a free-standing polyimide polymer. The examiner is unable to find any description of a “free-standing” polymer in the specification as filed. Therefore, new claim 10 (and claims which depend from claim 10) fail to comply with the written description requirement.
New claims 6, 7, 12 and 14 recite a method resulting in a polyimide which comprises a glass transition temperature of about 340 degrees Celsius. The only description in the specification as filed of a Tg is in [0049], which describes an exemplified polyimide as having a Tg of approximately 340.43 degrees C. However, the polyimide in the instant example is formed from reaction of the four specific monomers recited in claim 2 (or claim 11) in a specific molar ratio. In contrast, instant claim 6 is not limited to a polyimide formed from the monomers in the instant example, while instant claims 7, 12 and 14 are not limited to the ratio of monomers utilized in the instant example. Therefore, the claims as presently drafted are not commensurate in scope with the support provided by the specification (which limits both the type and the ratio of monomers used to form a polyimide which exhibits the recited Tg). Because Applicant has not demonstrated that the inventor, at the time the application was filed, had possession of methods within the full scope of claims 6, 7, 12 and 14, the written description requirement of 35 USC 112(a) has not been complied with.
New claims 8, 9 and 13 recite a method resulting in a polyimide comprising a yellowness index of about <10. The examiner is unable to find any description in the specification as filed of the newly recited range, therefore, the written description requirement of 35 USC 112(a) has not been complied with.
The following is a quotation of 35 U.S.C. 112(b):
(b) CONCLUSION.—The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the inventor or a joint inventor regards as the invention.
Claims 5 and 10-14 are rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor (or for applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention.
New claim 5 recites a ratio of dianhydride to diamine monomer and then refers to a first acid monomer 1, first diamine monomer 1, second acid monomer 2 and second diamine monomer 2. Claim 1, from which claim 5 depends, does not contain any recitation of a “first acid monomer 1,” “first diamine monomer 1,” “second acid monomer 2” or a “second diamine monomer 2.” Therefore, these terms lack antecedent basis. The recited ratio is also confusing due to the insertion of the percentage symbol (unclear how or whether the ratio should be interpreted as a percentage), and, because it is not clear which ranges correspond to which component. Note that, if the ranges are meant to correspond to the monomers in the listed order, the claim would require utilizing a substantial excess of dianhydride monomers relative to diamine monomers. The claim is additionally indefinite because the claim does not indicate whether the ratio is a molar ratio or a weight ratio.
New claim 10 recites “A method of producing a free-standing polyimide polymer…” but does not include any steps which result in any product which is “free-standing.” It is not clear what product is meant to be free-standing, and, it is not clear whether the claim is met by any process which includes steps as positively recited, or, whether something “free-standing” must be produced in order to meet the claimed method. Claims which depend from claim 10 (i.e., claims 11-14) are unclear for the same reason.
Claim Rejections - 35 USC § 103
Claim(s) 1, 2 and 5-14 is/are rejected under 35 U.S.C. 103 as being unpatentable over Auman et al (US 2020/0216614).
As to claims 1, 2, 10 and 11, Auman discloses a modified-thermal method for preparing a polyimide film [0031] (which corresponds to a “free-standing polyimide polymer” as recited in claim 10). The method comprises reacting dianhydride components with diamine components to form a polyamic acid [0210-0218].
Auman discloses selecting the dianhydride monomers from a group of those named in [0126], which includes 6FDA. See also [0142], wherein Auman teaches one of the dianhydride components is 6FDA. Auman further discloses two additional dianhydrides which can be used in some embodiments, including PMDA [0127].
Auman discloses selecting the diamine monomers from a group of those named in [0131], which includes TFMB. See also [0160]. Auman further discloses additional diamine monomers which can be used, including DMB [0132].
When forming a polyimide, the person having ordinary skill in the art would have been motivated to select any appropriate combination of disclosed monomers in order to tailor the properties of a polyimide depending on the intended application thereof. It would have been obvious to the person having ordinary skill in the art, therefore, to have formed a polyimide from a dianhydride, an additional dianhydride, a diamine, and an additional diamine, as taught by Auman, by selecting any dianhydride from those named by Auman in [0126], any additional dianhydride from those named by Auman in [0127], and diamine from those named by Auman in [0131], and any additional diamine from those named by Auman in [0132], including 6FDA, PMDA, TFMB and DMB, respectively. Case law has established that it is prima facie obvious to choose from a finite number of identified, predictable solutions with a reasonable expectation of success. KSR Int'l Co. v. Teleflex, Inc., 550 U.S. 398 (2007). MPEP 2143, rationale (E).
As to the recited step of chemically imidizing the polyamic acid: Auman further teaches that in the modified-thermal conversion process, conversion chemicals (i.e., catalysts) are used to convert a polyamic acid to a polyimide [0280]. See also [0349-351].
As to the recitation that the resulting polyimide is soluble in an organic solvent:
Auman teaches that if the polyimide is soluble in suitable coating solvents, it may be provided as an already imidized polymer dissolved in a suitable coating solvent [0218]. It would have been obvious to the person having ordinary skill in the art, therefore, to have provided a polyimide as suggested by Auman having solubility in an organic solvent in order to provide a solution of the already imidized polymer which is capable of being used for coating.
As to claim 5, Auman teaches a polyamic acid containing two tetracarboxylic components, wherein each is present in a mole percent between 0.1% and 99.9% [0147]. Auman further teaches a polyamic acid containing two diamine components wherein the mole percentages of each component is between 0.1 and 99.9% [0165]. It would have been obvious to the person having ordinary skill in the art, therefore, to have formed Auman’s polyamic acid from two tetracarboxylic dianhydrides and two diamines by selecting any appropriate percentage for each of component within Auman’s disclosed ranges in order to achieve a desired balance of the properties associated with each component, including percentages corresponding to a ratio within the presently claimed range. Case law has established that a prima facie case of obviousness is established where the claimed ranges overlap the ranges disclosed by the prior art. See MPEP 2144.05.
As to claims 6, 7, 12 and 14, Auman teaches a glass transition temperature greater than 270 C [0259], which encompasses the presently claimed range of about 340 C. It would have been obvious to the person having ordinary skill in the art to have selected any glass transition temperature within Auman’s disclosed range in order to achieve a desired degree of heat resistance, including a Tg of about 340 C. Case law has established that a prima facie case of obviousness is established where the claimed ranges overlap the ranges disclosed by the prior art. See MPEP 2144.05.
As to claims 8, 9 and 11, Auman discloses a yellowness index that is less than 5 [0044], which falls within the claimed range.
Response to Arguments
Applicant's arguments filed 11/7/2025 have been fully considered. The examiner agrees that in view of the amendments to the claims, the previously set forth rejections have been overcome. However, in view of the new rejections above, the claims are not in condition for allowance.
Conclusion
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, 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 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 RACHEL KAHN whose telephone number is (571)270-7346. The examiner can normally be reached Monday to Friday, 8-5.
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/RACHEL KAHN/Primary Examiner, Art Unit 1766