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 lined out IDS items were not provided. Note that an abstract or translation of a foreign patent document is not the underlying document actually cited on the form. Abstracts to be considered alone are to be cited as “other references” (MPEP711.06(a)).
Claim Rejections - 35 USC § 112
The following is a quotation of 35 U.S.C. 112(b):
(b) CONCLUSION.—The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the inventor or a joint inventor regards as the invention.
The following is a quotation of 35 U.S.C. 112 (pre-AIA ), second paragraph:
The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.
Claims 3 and 4 rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor (or for applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention.
Claim 3 calls for a dianhydride monomer that is unpolymerized. This is conflict with claim 1’s definition of “dianhydride monomer” as being the polymerization units of the polyamic acid.
Claim 3 calls for a dianhydride monomer that has a ring opened structure. However, a “dianhydride monomer” that has one or more of its rings opened cannot be termed a “dianhydride”.
Claim 4’s ring opened dianhydride is said to participate in the imidization reaction (ie polymerizes). This is prohibited by claim 4’s “unpolymerized” requirement.
It is unclear what is intended by claims 3 and 4. Does a fraction of the starting dianhydride monomer not react with the diamine? How is this prevented? Are two distinct species of dianhydride present? One that that forms the polyamic acid and one that doesn’t?
Claim Rejections - 35 USC § 102
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.
(a)(2) the claimed invention was described in a patent issued under section 151, or in an application for patent published or deemed published under section 122(b), in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention.
Claims 1,2 and 5-19 rejected under 35 U.S.C. 102(a)(1) and (a)(2) as being anticipated by Ashibe 2020/0339754.
Ashibe exemplifies (paragraph 265 synthesis 13) reacting 8.01g PDA (ie p-phenylenediamine) and 21.35g BPDA (ie biphenylene tetracarboxylic acid dianhydride) in 165g DMSO (ie applicant’s 1st solvent) and 5g PMA (ie propylene glycol monmethylether which is applicant’s 2nd solvent). The result is a polyamic acid (see abstract).
In regards to applicant’s dependent claims:
The amount of PMA is 5/(8.01 + 21.35 + 165 + 5) or ~2.5% meeting applicant’s claim 2.
DMSO has a boiling point of 1890C (paragraph 234). PMA has a boiling point of 1460C – meeting applicant’s claim 7.
The solid content would be:
(8.01 + 21.35)/(8.01 + 21.35 + 165 + 5) or ~15% meeting applicant’s claim 8.
Additional solvent is added (paragraph 253) until a viscosity of 2,000cP is met – meeting applicant’s claim 9.
The Mw of the cited example is not reported. However Ashibe (paragraph 99) teaches 5,000-100,000 is preferred – meeting applicant’s claim 10.
Inorganic particles (paragraph 143,144) can be added – meeting applicant’s claim 11.
Given the reference employs applicant’s preferred dianhydride and diamine of applicant’s example 1, it is assumed the final cured properties of applicant’s claims 12-16 would also be met.
The CTE (table 4) of a cured film of the cited composition is well below 40ppm/0C – meeting applicant’ claim 12.
The reaction is conducted at 600C (paragraph 253) – meeting applicant’s claim 17.
The polyimide precursor is formed into a film (paragraph 303) on a substrate and heated to complete imidization – meeting applicant’s claims 18 and 19.
Claims 1-19 rejected under 35 U.S.C. 102(a)(1) as being anticipated by Miyamoto 2017/0240743.
Miyamoto exemplifies (#13) polymerizing 117.53g BPDA with 82.47g ODA in 720g IP and 80g nPrA. BPDA (paragraph 176) applicant’s dianhydride monomer. ODA (paragraph 177) is applicant’s diamine monomer. IP is isophorone (paragraph 178) which qualifies as applicant’s 1st solvent. nPrA (paragraph 179) is n-propylalcohol which qualifies as applicant’s 2nd solvent. The imidization ratio is 0.03 (table 2) which means the material has little imidization and therefore is a polyimidie precursor (ie polyamic acid).
In regards to applicant’s dependent claims:
The amount of nPrA is 80/(117.53 + 82.47 + 720 + 80) or ~8% meeting applicant’s claim 2.
The alcohol present in the cited example for is expected to ring open the starting dianhydride prior to polymerization. Given no chemical reaction is driven to 100% completion, it is expected that at least trace amounts of this ring opened starting dianhydride will be present in the polymerized mixture – meeting applicant’s claim 3. This ring opened version of the starting dianhydride monomer is expected to react with amine in the final imidization heating step – meeting applicant’s claim 4.
Isophorone has a boiling point of 2150C (paragraph 35). N-propyl alcohol inherently has a boiling point of 970C (see the SASOL safety data sheet) – meeting applicant’s claim 7.
The solid content is 20% - meeting applicant’s claim 8.
The viscosity is 5 Pa.s (table 2) which is 5,000cP – meeting applicant’s claim 9.
The Mn is 30,000 (table 2). As Mw is always greater than Mn, it is safe to assume applicants claim 10 is met.
Various fillers (paragraph 104) can be added – meeting applicant’s claim 11.
Given the reference employs applicant’s preferred dianhydride and diamine, it is assumed the final cured properties of applicant’s claims 12-16 would also be met.
The reaction is conducted at 600C (paragraph 123) – meeting applicant’s claim 17.
The polyimide precursor is formed into a film (paragraph 136) and heated to complete imidization (paragraph 140) – meeting applicant’s claims 18 and 19.
Claims 1-19 rejected under 35 U.S.C. 102(a)(1) as being anticipated by JP2000234023.
The reference exemplifies (#9) reacting 2.67g (24.7mmol) para phenylene diamine with 9.68g (32.9mmol) biphenyltetracarboxylic dianhydride in 55g N,N dimethylacetamide (ie applicant’s 1st solvent) and 0.79g methanol (ie applicant’s 2nd solvent).
A second addition of 3.56g (32.9mmol) para phenylene diamine and 7.26g (24.7mmol) biphenyltetracarboxylic dianhydride then occurs and is reacted at 700C which forms a polyamic acid as depicted in chemical formula 26.
In regards to applicant’s dependent claims:
The amount of methanol is 0.79/(2.67 + 9.68 + 55 + 0.79 +3.56 + 7.26) or ~1% meeting applicant’s claim 2.
The alcohol present in the cited example for is expected to ring open the starting dianhydride prior to polymerization (see paragraph 21). Given no chemical reaction is driven to 100% completion, it is expected that at least trace amounts of this ring opened starting dianhydride will be present in the mixture – meeting applicant’s claim 3. This ring opened version of the starting dianhydride monomer is expected to react with amine in the final imidization heating step – meeting applicant’s claim 4.
N,N dimethacetamide inherently has a boiling point of 1650C (see the ACS data sheet). Methanol inherently has a boiling point of 64.70C (see the Fisher Scientific data sheet) – meeting applicant’s claim 7.
The solid content would be:
(2.67 + 9.68 + 3.56 + 7.26)/(2.67 + 9.68 + 55 + 0.79 +3.56 + 7.26) or ~29% meeting applicant’s claim 8.
The viscosity is 8.25 poise – meeting applicant’s claim 9.
Given the viscosity is within applicants claims, it is presumed the Mw would also be within applicant’s range
Metal particles (paragraph 62) can be added – meeting applicant’s claim 11.
Given the reference employs applicant’s preferred dianhydride and diamine of applicant’s table 1, it is assumed the final cured properties of applicant’s claims 12-16 would also be met.
Both stages of reaction are conducted at 700C (paragraph 123) – meeting applicant’s claim 17.
The polyimide precursor is formed into a film and heated to complete imidization – meeting applicant’s claims 18 and 19.
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 3 and 4 rejected under 35 U.S.C. 103 as being unpatentable over JP2000234023.
The reference applies as explained above.
The cited example does not specifically state there is any unpolymerized ring opened dianhydride present.
However, the reference claims (#1) that the reaction may be between (1) and (2). (1) can be considered applicant’s polyamic acid. (2) can be considered a ring opened dianhydride when “n” is 1. This can be considered unpolymerized in the sense that only a single dianhydride unit is present.
Such a reaction otherwise corresponding to the cited example would have been obvious.
Double Patenting
The nonstatutory double patenting rejection is based on a judicially created doctrine grounded in public policy (a policy reflected in the statute) so as to prevent the unjustified or improper timewise extension of the “right to exclude” granted by a patent and to prevent possible harassment by multiple assignees. A nonstatutory double patenting rejection is appropriate where the conflicting claims are not identical, but at least one examined application claim is not patentably distinct from the reference claim(s) because the examined application claim is either anticipated by, or would have been obvious over, the reference claim(s). See, e.g., In re Berg, 140 F.3d 1428, 46 USPQ2d 1226 (Fed. Cir. 1998); In re Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993); In re Longi, 759 F.2d 887, 225 USPQ 645 (Fed. Cir. 1985); In re Van Ornum, 686 F.2d 937, 214 USPQ 761 (CCPA 1982); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Thorington, 418 F.2d 528, 163 USPQ 644 (CCPA 1969).
A timely filed terminal disclaimer in compliance with 37 CFR 1.321(c) or 1.321(d) may be used to overcome an actual or provisional rejection based on nonstatutory double patenting provided the reference application or patent either is shown to be commonly owned with the examined application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. See MPEP § 717.02 for applications subject to examination under the first inventor to file provisions of the AIA as explained in MPEP § 2159. See MPEP § 2146 et seq. for applications not subject to examination under the first inventor to file provisions of the AIA . A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
The filing of a terminal disclaimer by itself is not a complete reply to a nonstatutory double patenting (NSDP) rejection. A complete reply requires that the terminal disclaimer be accompanied by a reply requesting reconsideration of the prior Office action. Even where the NSDP rejection is provisional the reply must be complete. See MPEP § 804, subsection I.B.1. For a reply to a non-final Office action, see 37 CFR 1.111(a). For a reply to final Office action, see 37 CFR 1.113(c). A request for reconsideration while not provided for in 37 CFR 1.113(c) may be filed after final for consideration. See MPEP §§ 706.07(e) and 714.13.
The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The actual filing date of the application in which the form is filed determines what form (e.g., PTO/SB/25, PTO/SB/26, PTO/AIA /25, or PTO/AIA /26) should be used. A web-based eTerminal Disclaimer may be filled out completely online using web-screens. An eTerminal Disclaimer that meets all requirements is auto-processed and approved immediately upon submission. For more information about eTerminal Disclaimers, refer to www.uspto.gov/patents/apply/applying-online/eterminal-disclaimer.
Claims 1-6,8-13 and 17-19 provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-17 of copending Application No. 18-037839 (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other because the copending application also claims polyamic acid solutions of a 1st solvent and a second solvent (eg claims 1,3). The instant claims are broader in the sense that the copending application’s solubility requirement is not required.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Claims 1-13 and 17-19 provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-17 of copending Application No. 18-037874 (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other because the copending application also claims polyamic acid solutions of a 1st solvent and a second solvent (eg claims 1,3). The instant claims are broader in the sense that the copending application’s 1st solvent boiling point requirement is not required.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Claims 1-13,17 and 18 provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-17 of copending Application No. 18-037888 (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other because the copending application also claims polyamic acid solutions of a 1st solvent and a second solvent (eg claims 1,4). The instant claims are broader in the sense that the copending application’s electrical requirements are not required.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Claims 1-13,17 and 18 provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-17 of copending Application No. 18-037894 (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other because the copending application also claims polyamic acid solutions of a 1st solvent and a second solvent (eg claims 1,4). The instant claims are broader in the sense that the copending application’s electrical requirements are not required.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to DAVID J BUTTNER whose telephone number is (571)272-1084. The examiner can normally be reached M-F 9-3pm.
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/DAVID J BUTTNER/Primary Examiner, Art Unit 1765 11/24/25