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 .
DETAILED ACTION
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, 4-7, 9-11 and 14-17 are rejected under 35 U.S.C. 103 as being unpatentable over KR 10-2015-0086314 (July 27, 2015) with Machine translation.
KR teaches a polyimide film having a CTE of 11-20 in examples 1-6 and 8-9 in table 1 at page 24. Machine translated KR teaches that the film obtained from a polyamic acid solution comprising DMAc (N,N-dimethylacetamide, see page 9) in examples of pages 11 and 12.
The instant invention further recites a second solvent such as isopropyl acetate in an amount of 0.01 to 6 parts by weight with respect to 100 parts by weight of a first solvent over KR.
Machine translated KR teaches various solvents such as the N,N-dimethylacetamide and isopropyl acetate and utilization of a combination thereof in middle of page 5.
Thus, it would have been obvious to one skilled in the art before the effective filing date of invention further to utilize the instant amount of the isopropyl acetate in the examples of KR comprising DMAc since KR teaches DMAc and isopropyl acetate and a combination thereof absent showing otherwise.
See In re Mills, 477 F.2d 649, 176 USPQ 196 (CCPA), In re Lamberti, 545 F.2d 747, 750 (CCPA 1976): Reference must be considered for all that it discloses and must not be limited to preferred embodiments or working examples. MPEP 2123.
Regarding the long list of the solvents taught by KR, a prior art reference’s teaching, however, can render a claim obvious even when as ingredient appears without emphasis in a longer list. See Merch & Co., Inc. v. Biocraft Labs, Inc., 874 F.2d 804, 807 (Fed. Cir. 1989). MPEP 2123.
Regarding the amount of the isopropyl acetate of claims 1 and 4: When patentability is predicated upon a change in a condition of a prior art composition, such as a change in concentration or in temperature, or both, the burden is on Applicant to establish with objective evidence that the change is critical, i.e., it leads to a new unexpected result. It is not inventive to discover the optimum or workable ranges by routine experimentation when the general conditions of a claim are disclosed in the prior art. See In re Woodruff, 919 F.2d 1575, 1578 (Fed. Cir. 1990); In re Aller, 220 F.2d 454, 456 (CCPA 1955). MPEP 2144.05.
Machine translated KR teaches the CTE of 5 ppm/K to 35 ppm/K in lines 12-14 of page 8 and the CTE of 11-20 in examples 1-6 and 8-9 in table 1 at page 24.
Thus, one skilled in the art could easily determine an additional amount of the isopropyl acetate in the example of KR already comprising the DMAc as long as the CTE is fall within the 5 ppm/K to 35 ppm/K.
Regarding claims 5 and 6, Machine translated KR teaches that the polyamic acid
composition comprising 2.177 g (6.77 mmol) of TFMB, 9.0 g of DMAc and 1.185 g (4.74 mmol) of BODA and 0.398 g (2.03 mmol) of CBDA and heating thereof in Synthesis Example 3 taught at page 10. The BODA and CBDA are taught as acid dianhydrides at page 8.
Thus, such heating would be expected to yield the dianhydride monomer including an unpolymerized monomer having a ring-opening structure in addition to the monomer included in the polymerization unit recited in claim 5. The dianhydride monomer having a ring-opening structure would be expected to participate in an imidization reaction. Further, Machine translated KR teaches that the dehydration cloased rate (imidization rate)of the amide group is not necessarily 100% lines 8-10 of page 6.
Inherent anticipation does not require that a person of ordinary skill in the art would have recognized the inherent disclosure, Schering Corp. v. Geneva Pharms., Inc., 339 F.3d 1373 (Fed. Cir. 2002). See MPEP 2112.01.
Whether the rejection is based on “inherency” under 35 U.S.C. 102, or “prima facie obviousness” under 35 U.S.C. 103, jointly or alternatively, the burden of proof is the same. In re Fitzgerald, 619 F.2d 67, 70 (CCPA 1980) (quoting) In re Best, 562 F.2d 1252, 1255 (CCPA 1977). See MPEP 2112-2112.02.
Regarding 2,2-bis(trifluoromethylbenzidine (TFDB) of claim 7, Machine translated KR teaches the 2,2-bis(trifluoromethylbenzidine as TFMB in a third line from bottom of page 8. Machine translated KR further teaches 4,4;-diaminobenzidine as one of diamines in line 20 of page 3.
Regarding claim 9, Machine translated KR teaches a solid concentration of 1 wt.% to 35 wt.% in line 18 of page 7. Examples 1 and 3 of pages 11-12 teach the solid content of 22% by mass and 30% by mass, respectively.
Regarding claim 10, the examples 1 and 3 having the solid content of 22% by mass and 30% by mass, respectively, would be expected have the recited broad range of a viscosity in view of the fact that KR teaches a composition comprising the same polyamic acid, a similar solvent and the same concentration.
Regarding claim 11, Synthesis examples taught at pages 10-11 teac the instant Mw (weight-average molecular weight).
Regarding claim 14, KR teaches a polyimide film falling within scope of the instant invention, and thus it would be expected to have the recited Tg inherently.
Regarding claim 15, Machine translated KR teaches heating at 50oC or more in the Synthesis Examples of page 10-12.
Regarding claims 16 and 17, Machine translated KR teaches a cured polyimide film on a glass plate in the Examples taught at pages 11-12.
Claim 12 is rejected under 35 U.S.C. 103 as being unpatentable over KR 10-2015-0086314 (July 27, 2015) with Machine translation as applied to claims 1, 4-7, 9-11 and 14-17 above, and further in view of KR 2020-0093618 A (Aug. 5, 2020).
Regarding claim 12, KR’618 teaches various additives such as inorganic fine
particles to the polyamic acid composition in a fifth full paragraph of page 10 which
would be expected to increase mechanical/physical properties of the resulting polyimide
inherently.
Thus, it would have been obvious to one skilled in the art before the effective
filing date of invention further to utilize the art well known additives such as the
inorganic fine particles to the polyamic acid composition taught by KR’618 in KR’314
since the inorganic fine particles would be expected to increase mechanical/physical
properties of the resulting polyimide inherently absent showing otherwise.
Selection of a known material based on its suitability for its intended use is prima facie obvious, see Sinclair & Carroll Co. v. Interchemical Corp., 325 US 327, 65 USPQ 297 (1945). MPEP 2144.07.
The combination of familiar elements according to known methods is likely to be obvious when it does no more than yield predictable results. KSR Co. v. Teleflex Inc., 550 U.S. 398, 416 (2007). MPEP 2141.
CLAIM OBJECTION
Claim 8 is 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 since the examiner does not see any motivation to utilize the recited dianhydride of claim 8 in KR since KR teaches polyimides having a cyclic structure.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to TAE H YOON whose telephone number is (571)272-1128. The examiner can normally be reached Mon-Fri.
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/TAE H YOON/Primary Examiner, Art Unit 1762
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