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 .
The previous prior art rejection under Anzai et al (JP 2017219850), Anzai in view of Tomohito et al (TW 202003637) and Anzai in view of Tomohito and further in view of Takemura (US 20170298186) maintained and therefore it is proper to make this rejection FINAL.
Claim rejection 35 USC 112
The rejection of claim 11 under 35 USC 112(2) is withdrawn in view of Applicant’s arguments.
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 1 is rejected under 35 U.S.C. 103 as being unpatentable over Anzai et al (JP 2017219850),
cited in IDS and previous Office Action.
Claims 2-12 and 14-15 are rejected under 35 U.S.C. 103 as being unpatentable over Anzai
in view of Tomohito et al (TW 202003637), cited in IDS and previous Office Action.
Claim 13 is rejected under 35 U.S.C. 103 as being unpatentable over Anzai in view of Tomohito and further in view of Takemura (US 20170298186), cited in previous Office Action.
The rejection can be found in the NON-FINAL office action mailed 1/23/2026 and is herein incorporated by reference
Response to Arguments
Applicant's arguments filed 4/9/2026 have been fully considered but they are not persuasive.
Applicant states that use a specific resin composition allows to decrease amount of voids formed during a procedure of cutting chips. Since Tomohito does not use the claimed composition (i.e., using a different diamine ODA), the void formation is not prevented.
Examiner disagrees. Firstly, instant Application uses variety of polyimides (i.e., ODPA+DMAP, ODPA+ODA+p-PDA, ODPA+PMDA+1,3-bis(3-aminophenoxy)benzene, see Examples 1-7 of instant Application).
Secondly, Tomohito teaches vast variety of commercial diamines, including those used in the instant Application (i.e., p-PDA, 3,3'-dimethyl-4,4'-diaminobiphenyl (DMAP) and 1,3-bis(3-aminophenoxy)benzene).
A genus does not always anticipate a claim to a species within the genus. However, when the species is clearly named, the species claim is anticipated no matter how many other species are additionally named. Ex parte A, 17 USPQ2d 1716 (Bd. Pat. App. & Inter. 1990) See also MPEP 2131.02.
Conclusion
THIS ACTION IS MADE FINAL. 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.
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
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