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 claim set filed 10/10/2022 and response to the restriction requirements dated 08/22/2025. Claims 1-16 are currently pending. Non-elected claims 1-4 and 9-16 are withdrawn.
The elected claims 5-8 are rejected for the reasons set forth below.
Election/Restrictions
Applicant’s election without traverse of Claims 5-8 in the reply filed on 08/22/2025 is acknowledged.
Claim Rejections - 35 USC § 112
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.
The following is a quotation of 35 U.S.C. 112 (pre-AIA ), second paragraph:
The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.
5. Claim 5 is 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.
Claim 5 lines 10-11 recite the ring C represents an optionally-substituted benzimidazole ring. However, the instant specification paragraphs [0107-0110] show the ring C represents imidazole, therefore, it is not clear if the ring C represents imidazole, fusing with benzene ring to form a benzimidazole, or the ring C represents a benzimidazole ring. When ring C represents a benzimidazole, it is also not clear if there are connecting groups between the ring C and the benzene ring.
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.
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 5-7 are rejected under 35 U.S.C. 103 as being unpatentable over Landis (US4,952,666, US family member of the IDS reference WO89/10946A1).
Regarding Claims 5 and 7, Landis teaches a polyimide polymer has the formula of:
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wherein R is
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(Formula I of column 5-6).
The difference of the formula from instant Formula (3) is that the corresponding Rf1 group, CF3CCF3 , has 3 carbon atoms. However, the CF3CCF3 group from (CF3CCF3)2 is only differing in one CF3CCF3 unit. A prima facie case of obviousness may be made when chemical compounds have very close structural similarities and similar utilities. "An obviousness rejection based on similarity in chemical structure and function entails the motivation of one skilled in the art to make a claimed compound, in the expectation that compounds similar in structure will have similar properties." (MPEP 2144.09(I) Compounds that are homologs are generally of sufficiently close structural similarity that there is a presumed expectation that such compounds possess similar properties. (MPEP 2144.09(II)).
Regarding Claim 6, Landis teaches n= 1 to 20 (5: 23-24).
Claims 5-7 are rejected under 35 U.S.C. 103 as being unpatentable over Hayashi et al. (JP2005146077A) in view of Landis (US4,952,666)
Regarding Claims 5 and 7, Hayashi teaches a polyimide compound from reacting a dianhydride with a diamine ([0007]). Attention is drawn to Example 1, wherein the compound is obtained from reacting 3,3 ', 4,4 ' biphenyltetracarboxylic dianhydride (BPDA) with 2,2-bis(4-aminophenyl)~hexadecafluorooctane (APFO), the resulted polyimide has a structure reading on instant Formula (3) wherein Rf2 is a single bond and Rf1 has a perfluoroalkylene having more than 4 carbon atoms.
The difference between the polyimide compound of Hayashi and instant claimed compound is that Hayashi is silent on the polyimide compound has an end-capping group.
However, Landis teaches a polyimide obtain from reacting a dianhydride with a diamine (6:15-20). Landis further teaches the polyimide is added a functional end group of
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(6:50-55). Landis furthermore teaches the functional group giving the polymer improved solvent resistance (7:36-40). In view of such benefit, one ordinary skilled artisan would have been motivated, before the effective filing date of instant application, to add the functional group taught by Landis to obtain a modified compound with improved solvent resistance.
Regarding Claim 6, Hayashi is silent on the polymerization degree. However, Example 1 of Hayashi reacting the dianhydride with the diamine at room temperature for 17 hours then 40 to 450C 8 hours. Landis exemplifies reacting the dianhydride with the diamine at 360C, a 60C exotherm for 20 minutes (Example 1). Landis discloses that the polymerization degree being 1 to 20 (5: 23-24). One ordinary skilled artisan would reasonably infer that the polyimide Hayashi would have a polymerization degree over 2 because Hayashi reacted the reactants at a similar temperature for a longer time.
Claims 5-6 and 8 are rejected under 35 U.S.C. 103 as being unpatentable over Yakubovich et al. (XP008171168, cited in the IDS filed 05/07/2024) in view of Landis (US4,952,666)
Regarding Claims 5 and 8, Yakubovich teaches producing a large molecular weight polyperfluoroalkylene from diphenylperfluoroalkanes (p2854 4th para.). Yakubovich exemplifies a polybenzimidazole made from condensing 3,3' -diaminobenzidine with diphenylperfluoroalkane dicarboxylic acids which results in polymers having a structure of:
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; m=5 or 6 (p2861 middle paragraphs).
The difference between the polybenzimidazole of Yakubovich and compound of instant Claim 5 is that Yakubovich is silent on that the polymer has an end group.
However, Landis teaches adding a functional end group of
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to a polymer having diamine units (6:50-55). Landis furthermore teaches the functional group giving the polymer improved solvent resistance (7:36-40). In view of such benefit, one ordinary skilled artisan would have been motivated, before the effective filing date of instant application, to add the functional group taught by Landis to obtain a modified compound with improved solvent resistance.
Regarding Claim 6, Yakubovich teaches the polymer has a large molecular weight, therefore, one ordinary skilled artisan would reasonably infer that the polymerization degree is over 2.
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 5-8 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 4-6 of copending Application No. 17/984,626 (‘626) in view of Landis (US4,952,666).
Regarding Claim 5, Claim 4 of ‘626 claims a nitrogen-contianing heterocyclic ring-containing compound comprising a repeating unit represented by Formula (3a):
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wherein n represents an integer of 6 to 8, the (CF2)n reading on the claimed perfluoroalkylene group having 4 or more carbon atoms and ring C represents an imide ring, the Rf group is the same as the claimed Rf2.
The difference between Claim 4 of ‘626 and instant Claim 5 is that Formula (3a) is silent on that there is a crosslinking group at a molecular end.
However, Landis teaches a polyimide with a crosslinking site of
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. Landis further teaches the crosslinking site giving the polymer improved solvent resistance (7:36-40). In view of such benefit, one ordinary skilled artisan would have been motivated, before the effective filing date of instant application, to add the crosslinking site taught by Landis to obtain a modified compound with improved solvent resistance.
Regarding Claim 6, Claim 5 of ‘626 claims the polymerization degree of the repeating unit is 2 to 100, encompassing the instant claimed 2 to 10.
Regarding Claim 7, claim 4 of ‘626 claims the C ring represents an imide ring.
Regarding Claim 8, claim 6 of ‘626 claims a formula the same as claim 4 of ‘626 except the C ring represents an imidazole ring which makes the formula reads on the repeating unit of instant claim 8. Same reasoning as Claim 5 above, one ordinary skilled artisan would have been motivated, before the effective filing date of instant application, to add the crosslinking site taught by Landis to obtain a modified compound with improved solvent resistance.
This is a provisional nonstatutory double patenting rejection.
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
/CATHERINE S BRANCH/Primary Examiner, Art Unit 1763