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 .
Response to Amendment
The amendments filed on January 2, 2026 have been entered. Claims 1 and 3-20 remain pending in the application.
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 text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action.
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 1, 3-6 and 20 are rejected under 35 U.S.C. 103 as being unpatentable over Cho et al (KR 10-2016-0090153-A, using the machine translation for the citations below) in view of Park et al (KR 10-2014-0136235-A, using the machine translation for the citations below).
Regarding Claims 1 and 3: The preparation method of the polyimide detailed in claim 1 and the fluoridation process of claim 3 are product-by-process limitations. MPEP § 2113 states that “even though product-by-process claims are limited by and defined by the process, determination of patentability is based on the product itself. The patentability of a product does not depend on its method of production. If the product in the product-by-process claim is the same as or obvious from a product of the prior art, the claim is unpatentable even though the prior product was made by a different process”. Therefore, the structure implied by the process steps will be considered when assessing patentability of Claims 1 and 3. However, the Applicant should note that “the Patent Office bears a lesser burden of proof in making out a case of prima facie obviousness for product-by-process claims because of their peculiar nature" than when a product is claimed in the conventional fashion. In re Fessmann, 489 F.2d 742, 744, 180 USPQ 324, 326 (CCPA 1974). See MPEP § 2113(II).
Cho teaches a polyimide film comprising porous particles (para. 0001) such as silica (para. 0036), wherein the polyimide is prepared by mixing an organic polyimide precursor solution (para. 0029) with a dispersion of the porous silica in an organic solvent (para. 0037).
Cho is silent to the fluorinated alkyl chain attached to the surface of the porous silica.
Park teaches a composition comprising a polyimide and a fluorinated silica filler (para. 0001), wherein the fluorine-based surface treatment includes silane compounds with fluorinated alkyl chains and alkoxy groups (para. 0031), which improves the miscibility and dispersibility of the silica in the polyimide resin (para. 0028). Park and Cho are analogous art because they are directed toward the same field of endeavor, namely polyimide films with silica fillers.
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the surface of the porous silica taught by Cho with the fluorinated compounds taught by Park in order to improve the dispersibility of the silica in the polyimide resin.
Regarding Claim 4: Park teaches that the amount of the fluorinated silane compound is 5-25 parts by weight per 100 parts of silica (para. 0031). This overlaps the claimed range. In the case where the claimed ranges overlap or lie inside ranges disclosed by the prior art, a prima facie case of obviousness exists. MPEP 2144.05 (I). It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to use an overlapping amount of the fluorinated alkoxysilane and would have been motivated to do so since Park teaches this amount balances the desired dispersibility of the silica and the affordability of the composite para. 0031).
Regarding Claim 5: Cho teaches a particle diameter of 1-7 µm (para. 0032). This overlaps the claimed range. In the case where the claimed ranges overlap or lie inside ranges disclosed by the prior art, a prima facie case of obviousness exists. MPEP 2144.05 (I). It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to use a porous silica with an overlapping diameter and they would have been motivated to adjust the particle size within this range through routine optimization to achieve the desired properties.
Regarding Claim 6: Cho teaches 5-20 wt% of the silica (para. 0035).
Regarding Claim 20: Cho teaches a dielectric constant of 2.0-2.9 (para. 0048), with a working example having a dielectric constant of 2.51 (para. 0095, Table 1).
Claims 7 and 19 are rejected under 35 U.S.C. 103 as being unpatentable over Cho et al (KR 10-2016-0090153-A, using the machine translation for the citations below) in view of Park et al (KR 10-2014-0136235-A, using the machine translation for the citations below), as evidenced by DuPont (Dupont Kapton: Summary of Properties, 2025, p.1-20) and PubChem (Compound Summary for CID 24261, Silica, 2005, National Center for Biotechnology Information, p.1-165).
Regarding Claim 7: Cho and Park teach the limitations of Claim 1, as set forth above. Cho further teaches that the density of the porous silica is 30-95% the density of non-porous silica (para. 0033). Typical silica density ranges from 2.2-2.6 g/cm3 (PubChem, p.20), so the porous silica of Cho would have a density of from 0.66-2.47 g/cm3. Because the major components of the material are the porous silica and polyimide, which has a typical density of 1.42 g/cm3 (DuPont, p.3, Table 1), the material as a whole would have a density of less than 2.5 g/cm3.
Regarding Claim 19: Cho and Park teach the limitations of Claim 1, as set forth above. Cho further teaches that the density of the porous silica is preferably 30-95% the density of non-porous silica (para. 0033), with working examples having porous silica with a density of 88.4% that of non-porous silica (para. 0095, Table 1). Typical silica density ranges from 2.2-2.6 g/cm3 (PubChem, p.20), so the porous silica of Cho would have a density of from 1.94-2.30 g/cm3. Polyimide has a typical density of 1.42 g/cm3 (DuPont, p.3, Table 1), which is lower than the above silica density.
Response to Arguments
Applicant's arguments filed January 2, 2026 have been fully considered but they are not persuasive.
Regarding applicant’s argument that the references do not teach the process by which the polyimide is made, claims 1 and 3 contain product by process limitations, as set forth above. Applicant has provided no evidence that the claimed process would result in a polyimide and silica that s structurally different than those taught by Cho and Park. Therefore, the rejection is maintained.
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.
Correspondence
Any inquiry concerning this communication or earlier communications from the examiner should be directed to CAITLIN N ILLING whose telephone number is (571)270-1940. The examiner can normally be reached Monday-Friday 8AM-4PM.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Mark Eashoo can be reached at (571)272-1197. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/C.N.I./Examiner, Art Unit 1767
/MARK EASHOO/Supervisory Patent Examiner, Art Unit 1767