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 § 102 and 35 USC § 103
The following is a quotation of the appropriate paragraphs of 35 U.S.C. 102 that form the basis for the rejections under this section made in this Office action:
A person shall be entitled to a patent unless –
(a)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention.
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, 4-11 and 13-17 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by JP 2000234023 (Aug. 29, 2000) with Machine translation.
Machine translated JP teaches a polyamic acid composition comprising 2.67 g (24.7 mmol) of paraphenylenediamine, 55.0 g of N,N-dimethylacetamide (i.e., the instant first solvent), 9.68 g (32.9 mmol) of biphenyltetracarboxylic dianhydride, 0.79 g of methanol (i.e., the instant second solvent) and 0.04 dimethyaminoethanol with an additional 7.26 g (24.7 mmol) biphenyltetracarboxylic dianhydride in example 9 of page 13. An amount of the methanol would be about 1.44 parts by weight with respect to 100 by weight of the first solvent recited in claim 1. Machine translated JP teaches ethanol in middle of page 7 also.
Thus, the instant claim 1 lacks novelty.
Regarding claim 4, the polyamic acid composition of the example 9 comprises about 1.19 wt.% of the methanol (i.e., the instant second solvent) meeting claim 4.
Regarding claims 5 and 6, Machine translated JP teaches that the polyamic acid composition comprising 2.67 g (24.7 mmol) of paraphenylenediamine, 55.0 g of N,N-dimethylacetamide (i.e., the instant first solvent), 9.68 g (32.9 mmol) of biphenyltetracarboxylic dianhydride, 0.79 g of methanol (i.e., the instant second solvent) and 0.04 dimethyaminorethanol was heated to 70oC before adding 7.26 g (24.7 mmol) biphenyltetracarboxylic dianhydride and 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. 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.
Regarding claim 7, the paraphenylenediamine used in the example 9 is also known as 1,4-diaminobenzene of claim 7.
Regarding claim 8, the biphenyltetracarboxylic dianhydride used in the example 9 is also known as 3.3’,4,4’-biphenyltetracarboxylic dianhydride recited in claim 8.
Regarding claim 9, an amount of the paraphenylenediamine and biphenyltetracarboxylic dianhydride in the example 9 is about 27 wt.% meeting claim 9
Regarding claims 10, 11, 13 and 14, the example 9 teaches that the viscosity of the solution was 8.25 poise (i.e., 825 cP). Although the example 9 utilizing a method of measuring the viscosity with a DVL-BII type digital viscometer (see bottom of page 5 of Machine translation), it basically teaches utilization of the same reactants, solvent and amounts thereof falling within scope of claim 1 and a cured film thereof and thus, it would be expected meet the recited viscosity measured at a temperature of 23oC and a shear rate of 1 s-1 of claim 10, a Mw of claim 11, a CTE of claim 13 and a Tg of claim 14. Since PTO does not have equipment to conduct the test, it is fair to require applicant to shoulder the burden of proving that his material differs from those of the example 9 of JP. See In re Best, 195 USPQ 430, 433 (CCPA 1977). Charles Pfizer & Co. v. FTC, 401 F.2d 574, 579 (6th Cir. 1968). 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.
Regarding claim 15, the example 9 teach heating to 70oC meeting claim 15.
Regarding claims 16 and 17, the example 9 teaches a polyimide film meeting claims 16 and 17.
The examiner further comments that the anticipation rejection cannot overcome by showing of unexpected results discussed in Rule 1.132 Declaration filed on February 19, 2026.
Claims 14, 16 and 17 are rejected under 35 U.S.C. 102(a)(1) as being
anticipated by Yamaguchi et al. (US 5,891,986).
Yamaguchi et al. teach a polyimide film having a Tg of 335oC in example 1.
The recited second solvent (poor solvent) of claim 1 would have little probative
value since an invention in a product-by-process is a product, not a process. See In re Brown, 459 F2d 531, 173 USPQ 685 (CCPA 1972) and In re Thorpe, 777 F2d 695, 697,
227 USPQ 964 (Fed. Cir. 1985). MPEP 2113.
Thus, the instant invention lacks novelty.
RESPONSE TO ARGUMENTS
The crux of applicant’s arguments is directed to utilization of newly recited second solvents, but the invention in a product-by-process is a product, not a process.
Applicant failed to show that the polyimide film of Yamaguchi et al. is different from the instant polyimide film. The anticipation rejection cannot overcome by showing of unexpected results discussed in Rule 1.132 Declaration filed on February 19, 2026.
Claims 16-17 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Cano et al. (US 6,222,007).
Rejection is maintained for reasons of the record (i.e., the previous office is not repeated here).
RESPONSE TO ARGUMENTS
The crux of applicant’s arguments is directed to utilization of newly recited second solvents, but the invention in a product-by-process is a product, not a process.
Applicant failed to show that the polyimide film of Cano et al. is different from the instant polyimide film. The anticipation rejection cannot overcome by showing of unexpected results by utilizing a different amount of methanol discussed in Rule 1.132 Declaration filed on February 19, 2026.
Claims 16 and 17 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by EP 1659449 A2 (May 25, 2006).
EP teaches various polyimides in [0085] meeting claims 16 and 17.
The invention in a product-by-process is a product, not a process, and thus newly recited second solvents of claim 1 would have little probative value.
Claims 1, 4-11 and 13-17 are rejected under 35 U.S.C. 103 as being unpatentable over JP 2000234023 (Aug. 29, 2000) with Machine translation and further in view of EP 1659449 A2 (May 25, 2006).
Further regarding alternative diamines of claim 7 and dianhydrides of claim 8, polyamic acids comprising such diamines and dianhydrides are well known in the art as taught by polyamic acids 1-6 in [0085] of EP. EP further teaches low CTE and Tg of polyimides in [0085] falling within scope the instant claim 13 and 14.
Thus, it would have been obvious to one skilled in the art before the effective filing date of invention to utilize the art well known diamines and dianhydrides used for the polyamic acids and polyimide thereof taught by EP in JP 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 12 is rejected under 35 U.S.C. 103 as being unpatentable over JP 2000234023 (Aug. 29, 2000) with Machine translation as applied to claims 1, 4-11 and 13-17 above, and further in view of KR 2020-0093618 A (Aug. 5, 2020).
Regarding claim 12, KR 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. KR further teaches a weight average molecular weight of 10000 to 200000
at bottom of page 9 which would further meet claim 11.
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 in Chang et al.
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.
Claims 1, 4-11 and 13-17 rejected under 35 U.S.C. 103 as being unpatentable over JP 2000234023 (Aug. 29, 2000) with Machine translation as applied to claims 1, 4-11 and 13-17 above, and further in view of Cano et al. (US 6,222,007).
Further regarding claims 5 and 6, Cano et al. teach a polyimide-salt like solution by heating an acid dianhydride (ODPA) dissolved in a mixture of NMP and methanol which is further treated at 60oC to in order to convert the dianhydride to diester-diacid.
Thus, the polyamic acid of the example 9 of JP would be expected to meet claims 5 and 6 in view of the disclosure by Cano et al. since JP teaches heating to 70oC.
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.
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/TAE H YOON/Primary Examiner, Art Unit 1762