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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 4/202/2026 has been entered.
Priority
Receipt is acknowledged of certified copies of papers required by 37 CFR 1.55.
Status of Claims
The examiner acknowledges the amendment to claim 1 and the addition of claim 9. Claims 1 and 4-9 are pending.
Claim Rejections - 35 USC § 103
The text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action.
Claims 1 and 4-8 are rejected under 35 U.S.C. 103 as being unpatentable over Sato (US 20170275425, US Patent Document #2 from IDS dated 12/28/2022) in view of Washino (US 20200040133).
Regarding Claims 1 and 8,
Sato teaches a polyimide resin composition which includes the following structures:
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in which X1 and X2 may a tetravalent aromatic ring:
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and in which R1 has 6 to 22 carbon atoms (Paragraph 27), contains at least one alicyclic hydrocarbon (Paragraph 28), and in which R2 is a linear alkylene group of preferably 6 to 10 carbons (Paragraph 41) meeting the requirements of the instant claim. Additionally, Sato teaches that formula 1 should comprise 20 to 70% by mole of the polyimide (Paragraph 22). With regard to the crystallinity of the polyimide, Sato teaches that crystalline resins presented can be molded more easily than Vespel (Paragraph 4) and further that the resins have crystallizing temperatures near 300 °C (Table 2, examples 1 and 2), indicating that the polyimides are crystalline. Sato also states that the polyimide of this composition can be used with other resins, such as liquid crystalline polymers (Paragraph 130).
Sato does not teach the structure of the liquid crystalline polymer. However, Washino teaches a liquid crystalline polyester comprised of aromatic constituents (Abstract) in which the following monomeric units are used:
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with no other structural units present (Table 1, Examples 3, 6, 7, 10, 11, 14, 18, 20, and 21), meeting the requirement of at least 50% by mass or more of the structural units required by claim 8. The combination of these units would result in repeat units of formula I and IV of the instant claim. Additionally, Washino teaches that these polymers have melting temperatures of between 297 and 317 °C (Table 1, examples 3, 6, 10, 11, 14, 18, 20, and 21), meeting the requirement of the instant claim. Further, Washino teaches that molded articles made with the liquid crystalline polyester can be made using other resins, including polyimides (Paragraph 86).
One of ordinary skill in the art, recognizing that Sato discloses the use of liquid crystalline polymers to combine with the polyimide resin that requires high heat resistance, would naturally look to polymers such as the ones disclosed by Washino that are intended for use in such high heat resistant compositions (Paragraph 5) and in particular offer good performance in electronic devices (Paragraph 9). It would therefore have been obvious prior to the effective filing date of the instant application to have combined the liquid crystal polyesters of Washino with the polyimide as taught by Sato to obtain the predictable result of a polymeric composition containing a liquid crystalline polyester and a polyimide with high heat resistance and good dielectric properties with a reasonable expectation of success.
Regarding the polymer ratio, Sato teaches that the ratio between the polyimide and other resins is preferably from 1:99 to 99:1 (Paragraph 131), which overlaps the range of the instant claims. One of ordinary skill in the art would recognize that the material properties such as melting temperature and characteristics during extrusion would differ based upon the relative ratio of the included polymers and as such, would alter the composition accordingly to meet the required material properties. It would therefore have been obvious prior to the effective filing date of the instant application to have selected the overlapping portion of the ranges because the selection of overlapping portions of ranges has been held to be a prima facie case of obviousness. See MPEP 2144.05.I.
With regard to the total content of the two polymers, Sato teaches that one or more other resins may be selected to blend with the polyimide (Paragraph 130). Additionally, Sato also teaches that the amount of additives is preferably between 0.01 and 65% by mass (Paragraph 129) that corresponds to polymer content of 35% or more, which overlaps with the stated range of the polymers comprising 70% by mass or more. Because Sato allows for the selection of compositions that contain only two polymers, it would therefore have been obvious prior to the effective filing date of the instant application to have selected the overlapping portion of the ranges because the selection of overlapping portions of ranges has been held to be a prima facie case of obviousness. See MPEP 2144.05.I.
Regarding Claim 4,
Sato teaches in Example 2 of Table 1 an embodiment in which formula 1 comprises 35% of the polyimide, meeting the requirements of the instant claim.
Regarding Claim 5,
Sato teaches the use of inorganic fibers including glass and carbon fibers in the composition (Paragraph 156).
Regarding Claim 6,
While Sato is silent on the dielectric constant and loss tangent, Washino teaches that compositions containing the aromatic liquid crystalline polymer are intended for electronic applications (Paragraph 9) and further that the compositions have loss tangents at 10 GHz of between 0.57x10-3 and 0.75x10-3 (Table 1, examples 3, 6, 10, 11, 14, 18, 20, and 21), which meets the requirement of the instant claim. One of ordinary skill in the art, recognizing that Sato discloses the use of liquid crystalline polymers to combine with the polyimide resin that requires high heat resistance, would naturally look to polymers such as the ones disclosed by Washino that are intended for use in such high heat resistant compositions (Paragraph 5) and in particular offer good performance in electronic devices (Paragraph 9). It would therefore have been obvious prior to the effective filing date of the instant application to have combined the liquid crystal polyesters of Washino with the polyimide as taught by Sato to obtain the predictable result of a polymeric composition containing a liquid crystalline polyester and a polyimide with high heat resistance and good dielectric properties with a reasonable expectation of success. While Washino is silent on the dielectric constant, as the materials of Sato in view of Washino are largely similar to those of the instant claim and that Washino demonstrates dielectric loss tangents that meet the requirements of the instant claim, it would logically follow that the dielectric constant and at 10 GHz would also meet the requirements of the instant claim. "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). See MPEP 2112.01.II.
Regarding Claim 7,
Sato teaches that the composition is used to generate molded articles through injection, extrusion, blow molding, and other molding techniques (Paragraph 133).
Claims 9 is rejected under 35 U.S.C. 103 as being unpatentable over Sato (US 20170275425, US Patent Document #2 from IDS dated 12/28/2022) in view of Washino (US 20200040133) as applied to claims 1 and 4-8 above and evidenced by Ueno (EP 1422256).
Regarding Claim 9,
Sato in view of Washino teaches the composition as required by claim 1, however does not teach the use of the use of liquid crystalline polymers of the formulas I or III. However, polymers using these repeating unit formulae are known to be used for equivalent purposes in the art as evidenced by Ueno, which notes that liquid crystalline polymers containing repeating units of 4-hydroxybenzoic acid/2-hydroxy-6-naphthoic acid (Formula IV), 4-hydroxybenzoic acid/terephthalic acid/4,4’-dihydroxybiphenyl (Formula III), and 4-hydroxybenzoic acid/terephthalic acid/ethylene glycol (Formula I) all can be used (Paragraph 44) in compositions along with other polymers such as polyimides (Paragraph 66). As Ueno teaches these polymers to be useful for the same purpose, it would have been obvious prior to the effective filing date of the instant application to have substituted a polymer of formula I or III with one of formula IV as taught by Sato in view of Washino with a reasonable expectation of success. See MPEP 2144.06.II.
Response to Arguments
Applicant's arguments filed 4/202/2026 have been fully considered but they are not persuasive for the following reasons.
On page 6, the applicant argues that the properties of the examples contained within the narrowed range show improvement over those outside of the newly amended range. However, this does not negate the properties of such polymers as taught by Sato in view of Washino which possess similar properties within the range of claim 1.
On pages 6 and 7, the applicant discusses the information disclosed in the affidavit filed on 4/20/2026. The examiner appreciates the submission of additional data in support of the applicant’s arguments and recognizes the additional effort required in order to obtain this information. The examiner notes that example 3 of the affidavit does not meet the applicant’s requirement regarding the dielectric constant as this composition possesses a value of 3.18, which is above the limit of 3 as required by claim 6. The applicant notes further improvements to properties such as the torque, resin temperature, and resin pressure during extrusion as reasons the instant application contains results that would not have been expected by the ordinarily skilled artisan based upon information present in the prior art. The examiner notes that these properties are not required by the limitations of the current claims and thus the prior art does not need to address them. However, the examiner does recognize that these properties may represent unexpected results should they be included as limitations in the claims.
Finally, on page 7 the applicant argues that the use of polymers of units of formula I and III are not taught by the art of record and are therefore distinguished from the prior art. The examiner has addressed this in the rejection above through the addition of Ueno (EP1422256).
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to ADAM J BERRO whose telephone number is (703)756-1283. The examiner can normally be reached M-F 8:30-5.
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/A.J.B./Examiner, Art Unit 1765
/JOHN M COONEY/Primary Examiner, Art Unit 1765
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