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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 1/13/2026 has been entered.
The previous prior art rejection under Kobayashi et al (WO 2015041190) in view of Choi et al (Colorless and transparent polyimide nanocomposites: Comparison of the properties of homo- and co- polymers, Journal of Industrial and Engineering Chemistry 19 (2013) 1593-1599) as evidences by Huang et al (Advanced anticorrosive materials prepared from amine-capped aniline trimer-based electroactive polyimide-clay nanocomposite materials with synergistic effects of redox catalytic capability and gas barrier properties, / Polymer 52 (2011) 2391-2400) maintained.
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.
Claims 1-3, 5-7 and 10-15 are rejected under 35 U.S.C. 103 as being unpatentable over Kobayashi et al
(WO 2015041190) in view of Choi et al (Colorless and transparent polyimide nanocomposites:
Comparison of the properties of homo- and co- polymers, Journal of Industrial and Engineering
Chemistry 19 (2013) 1593-1599) as evidences by Huang et al (Advanced anticorrosive materials
prepared from amine-capped aniline trimer-based electroactive polyimide-clay nanocomposite
materials with synergistic effects of redox catalytic capability and gas barrier properties, / Polymer 52
(2011) 2391-2400), all cited in the previous Office Action.
Amendments to claims 1, 10 and 11 are noted.
Kobayashi discloses the polyimide film have a glass transition temperature of 350 C. or higher, or no glass transition point in the region of 500° C or lower and CTE that is preferably -3 ppm to 10 ppm /°C..
In addition, modified Kobayashi composition comprises the same elements as the claimed one(i.e., claimed polyimide and a clay with organic cations).
The claiming of a new use, new function or unknown property, which is inherently present in the prior art, does not necessarily make the claim patentable. In re Best, 562 F.2d 1252, 1254, 195 USPQ 430, 433 (CCPA 1977). Mere recitation of a newly discovered function or property, inherently possessed by things in prior art, does not cause claim language drawn to those things to be distinguishable over prior art.
Therefore, it would have been obvious to a person of ordinary skills in the art before the effective filing date of the invention to expect the same properties from modified Kobayshasi’s and Applicant’s composition, since they have identical structures.
The rejection can be found in the FINAL office action mailed 10/15/2025 and is herein incorporated by reference
Response to Arguments
Applicant's arguments filed 1/13/2026 have been fully considered but they are not persuasive.
Applicant submits that there is no enough motivation for an artisan to use organoclay in Kobayashi’s composition. Specifically, while Kobayashi’s composition has excellent Tg and CTE values, Choi’s one fails to disclose low CTE values.
Examiner disagrees. As stated in Final Office Action, organoclay allows to improve thermal characteristics of the entire composition. For instance, Choi demonstrates that addition of organoclay significantly improve CTE values (see Table 1).
Regarding Kobayashi’s and Choi’s composition properties comparison (i.e., CTE), they depend on the structure of both components: polyimide and clay. Kobayashi uses extremely tough polyimide part, which contains 50% or more of pyromellitic acid and phenylenediamine residues. This combination provides highest possible Tg and lowest CTE values for polyimides. In a contrary, Choi discloses a composition based on 4,4′-(hexafluoroisopropylidene)diphthalic anhydride (6FDA) and 2,2′-bis(trifluoromethyl)benzidine (TFB) (see Abstract), which has much lower Tg and higher CTE values known for polyimides.
On the other hand, Kobayashi’s composition is very stiff, which may create problems in its processing. Since Choi’s clay significantly improve CTE values compare to homopolymer, Kobayashi may use less rigid composition, while keeping it excellent mechanical and thermal properties by it adding Choi’s organoclay. In other word, balance between processability and thermal and mechanical properties can be achieved by varying a rigidity of the polyimide and content of the clay.
Applicant argues that neither Kobayashi nor Choi teaches claimed glass transition values and coefficient of linear expansion values.
This is incorrect. Kobayashi discloses the polyimide film have a glass transition temperature of 350 C. or higher, or no glass transition point in the region of 500° C or lower and CTE that is preferably -3 ppm to 10 ppm /°C.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to GREGORY LISTVOYB whose telephone number is (571)272-6105. The examiner can normally be reached 9am-5pm EST M-F.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Heidi Riviere Kelley can be reached at (571) 270-1831. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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GL
/GREGORY LISTVOYB/Primary Examiner, Art Unit 1765