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 .
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 1-4 are rejected under 35 U.S.C. 103 as being unpatentable over Ando et al (JP 2018203959), necessitated by Amendment.
Ando teaches polyimides and polyamic acids (polyimide precursors) formed from such tetracarboxylic acid dianhydrides as BTDA (3,3 ′, 4,4′-benzophenone tetracarboxylic dianhydride) BPDA (3,3 ′, 4,4′-diphenyltetracarboxylic dianhydride ODPA), PMDA( pyromellitic anhydride) and such diamines as BAPP (2,2-bis (4-aminophenoxyphenyl) propane), BAFL (bisaniline fluorene), 3,4'-DAPE (3,4'-diaminodiphenyl ether), APB (1,3-bis (3-aminophenoxy) benzene) and DDA (C36 aliphatic diamine PRIAMINE 1074) (also used by Applicant) and their combinations.
In particular, Ando teaches a polyamic acid comprising such dianhydrides as
BPADA (0.0743 mol) and ODPA (0.0743 mol) and such diamines as DDA (0.0599 mol, i.e. 40% mol) and APB (0.0899 mol), where the weight average molecular weight (Mw) of the polyimide contained in the polyimide solution a was 61,100 (see Example 1).
Ando further teaches a polyamic acid formed from PMDA (0.0733 mol), DSDA (0.0733 mol), DDA (0.1404 mol) and BAPB (0.0074 mol), where the weight average molecular weight (Mw) of the polymer is 62,100 (see Example 5).
Thus, Example 5 teaches a polyimide precursor comprising both PMDA and DDA, while Example 1 discloses 40% mol of DDA.
However, Ando fails to teach a polyimide or polyimide precursor containing both PMDA and 40% mol DDA in one Example.
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
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 a polyimide precursor comprising PMDA and 40% mol DDA in Ando’s composition, since the species are clearly named in the reference.
Claims 1-20 rejected under 35 U.S.C. 103 as being unpatentable over Mizori et al (WO 2020215027), cited herein with identical US 2022204766), cited in previous Office Action, necessitated by Amendment.
Mizori teaches a polyimide comprising 4,4 ' - ( hexafluoroisopropylidene ) diphthalic anhydride and a diamine comprising 28.5 mol % of Priamine 1075 (see 0255) having Mw of 69000 (see 0257).
Mizori teaches PMDA (see claim 60 and Example 1 at 0224), but fails to teach a polyimide with claimed amount of Priamine and PMDA in one Example.
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.
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 a polyimide precursor comprising PMDA and 40% mol DDA in Mizori’s composition, since the species are clearly named in the reference.
Thus, all limitations of claims 1-4 are met.
Regarding claims 1 and 11-20, Mizori teaches a base film for flexible printed board (see claim 69), coating film to electronic circuitry (see 0052), molding article (see 0064) and radar antennae (see 0188) formed from the polyimide above.
In reference to claims 5-7, Mizori teaches Tg value for Example 1 is 214 C (see Table 2 at 0230) and 196C for Example 5 (see Table 6 at 0253) but does not teach elongation at break values.
Regarding claims 8-9, Mizori teaches Dk @ 20 GHz is equal to 2.5 and Df @ 20 GHz is equal 0.0021 (see Table 6).
However, the reference fails to teach Dk and Df values at 10GHz.
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).
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 claimed elongation, Tg, Dk and Df values from Mizori’s composition comprising PMDA and claimed amount of DDA.
Allowable Subject Matter
Claim 10 objected to as being dependent upon a rejected base claim, but would be allowable if rewritten in independent form including all of the limitations of the base claim and any intervening claims.
Search for prior art does not result in a polyimide having a claimed structure and Tg of at least 300C.
The closest prior art is represented by Ando and Mizori.
The references above teach a polyimide comprising PMDA and DDA within the claimed range. However, Ando and Mizori fail to teach a polyimide with Tg value equal to or higher 300C.
Response to Arguments
Applicant’s arguments with respect to claims 1-16 have been considered but are moot because the new ground of rejection does not rely on any reference applied in the prior rejection of record for any teaching or matter specifically challenged in the argument.
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.
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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GL
/GREGORY LISTVOYB/Primary Examiner, Art Unit 1765
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