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 1-16 are pending as filed on 11/10/2022.
Election/Restrictions
Applicant’s election without traverse of Species B (polybenzimidazole precursor of formula 1b) in the reply filed on 7/25/2025 is acknowledged.
Claims 1, 2, 4-8, 10 and 13-16 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected species, there being no allowable generic or linking claim.
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.
Claim(s) 3, 9, 11 and 12 is/are rejected under 35 U.S.C. 103 as being unpatentable over Oishi et al (WO 2019/054471; English language equivalent US 2020/0291181 cited herein; cited by Applicant on IDS filed 11/10/22) in view of Yakubovich et al (General Polycondensation method for linear perfluoroalkylene high polymers with aromatic and hetero-aromatic rings in the chain, Polymer Science USSR, Pergamon Press, 1970, Vol 12, No 11, pp 2854-2867; copy provided by Applicant, cited on IDS submitted on 4/30/2024).
As to claim 3, Oishi discloses that polybenzimidazole has excellent heat resistance, mechanical properties and adhesiveness, and is used in a variety of fields [0002]. Oishi discloses polycondensation of a mildly reactive dicarboxylic acid derivative compound and a fluorine-containing aromatic tetramine to provide a polyamide which can be used to provide polybenzimidazole [0013].
Oishi discloses [0020] a polybenzimidazole precursor polyamide having the following formula:
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Oishi teaches that Rf in formula 2 can be the same groups recited in instant claim 3 for instant Rf [0021], and teaches that Rf is preferably -C(CF3)2- [0024], which is a divalent fluorinated organic group as recited in instant claim 3. Oishi defines “X” as hydrogen or a monovalent organic group [0022], which corresponds to instant R2.
Oishi defines R1 as a divalent organic group [0023], including alkylene and arylene groups which are optionally substituted, preferably with a fluorine atom or fluorinated alkyl group [0069]. Oishi names four preferred R1 groups in [0070], including -(CF2)n-, wherein n is an integer of 1 to 8. The range of CF2 groups disclosed by Oishi (i.e., 1 to 8) encompasses the presently claimed range of 4 to 8 CF2 groups. When selecting a group of the formula -(CF2)n- as Oishi’s R1 group, it would have been obvious to the person having ordinary skill in the art to have selected any appropriate number of CF2 groups (i.e., any appropriate value for “n”) within Oishi’s disclosed range of 1 to 8, including within the presently claimed range of 4 to 8. 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.
A polyamide according to Oishi’s formula (2) above wherein R1 is -(CF2)n- differs from a polyamide according to instant formula 1b, because there are no benzene rings on each end of the -(CF2)n- chain.
Yakubovich discloses that attempts at synthesizing linear fluorine-containing polyheterocycles, such as polybenzimidazoles, have yielded only low molecular weight polymers (first paragraph). Yakubovich discloses a general polycondensation method for producing polymers with a large molecular weight from F-containing monomers with protected reactive functional groups of formula 8 (copied below). In Yakubovich’s disclosed F-containing monomers, the heat-resistant benzene rings are the “protecting” parts:
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See p 2854. See also p 2861, showing polybenzimidazole synthesis.
Considering Yakubovich’s disclosure, when forming a polybenzimidazole via polycondensation of an aromatic tetramine and a dicarboxylic acid derivative compound containing a perfluoroalkylene structure -(CF2)n-, the person having ordinary skill in the art would have been motivated to include a heat resistant benzene ring on each end of the perfluoroalkylene chain in order to separate (and protect) each of the carboxylic acid derivative functional groups and increase the molecular weight of polymer product. It would have been obvious to the person having ordinary skill in the art, therefore, to have formed Oishi’s polybenzimidazole precursor polyamide having the following formula:
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by modifying Oishi’s -(CF2)n- (perfluoroalkylene) R1 group to include phenylene groups on each end thereof, as taught by Yakubovich, thereby arriving at an amide compound according to instant formula Ib.
As to claim 9, Oishi discloses that the polyamide has a number average molecular weight of 2000 or higher and 500,000 or lower. At lower molecular weights, the polyamide may have poor film formability and insufficiently exhibit its properties, while at higher molecular weights, the polyamide may have poor solubility and poor molding processability [0082]. It would have been obvious to the person having ordinary skill in the art, therefore, to have formed a polyamide as suggested by modified Oishi having any molecular weight within Oishi’s range of 2000 to 500,000 in order to achieve a desired balance between film formability/properties and processability/solubility, including a molecular weight corresponding to an average degree of polymerization of 2 to 100.
As to claim 11, modified Oishi fails to characterize the suggested fluorinated polyamide as a “low dielectric material.” However, given that modified Oishi suggests a material which has the same chemical formula as presently recited, and given that dielectric constant depends on chemical structure, there is reasonable basis to conclude that modified Oishi suggests a material which has substantially the same dielectric properties as the presently claimed/described amide compound, and is therefore a “low dielectric” material as presently recited.
As to claim 12, Oishi discloses a printed circuit board including the polybenzimidazole as a film [0046-8, 0132], and teaches that a solution of the polyamide can be cast and heated to produce a film [0123]. Oishi exemplifies casting a solution of polyamide and drying to obtain a flexible, colorless and transparent polyamide film, and teaches that the precursor polyamides have high solubility in solvents. See e.g., [0152] and [0379]. It would have been obvious to the person having ordinary skill in the art, therefore, to have formed a printed circuit board comprising a film of polybenzimidazole, as taught by Oishi, by casting and drying a solution of the polyamide precursor suggested by modified Oishi to form a film of the printed circuit board, thereby arriving at the presently claimed subject matter.
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 3, 9 and 11 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claim 4 of copending Application No. 17/984540 (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other because arriving at a compound encompassed by instant claim 3 requires selection of any value within a range of 4 to 8 from the recitation of a range of 4 or more carbon atoms within copending claim 4. 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 claim 9, copending claim 4 characterizes formula 1b as “a repeating unit.” The copending claim fails to define an average degree of polymerization, however, one having ordinary skill in the art would, at least, immediately envisage a compound according to copending claim 4 having an average polymerization of 2, as that represents the minimum degree of polymerization wherein the recited units are “repeating.”
As to claim 11, given that the amide compound recited in copending claim 4 has substantially the same chemical formula as presently recited, and given that dielectric constant depends on chemical structure, there is reasonable basis to conclude that the amide compound recited in copending claim 4 has substantially the same dielectric properties as the presently claimed/described amide compound, and is therefore a “low dielectric” material as presently recited.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Conclusion
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