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 § 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 requires an unpolymerized ring opened diluting monomer. Inconsistently, claim 4 requires this diluting monomer to participate in an imidization reaction. Any imidization would be occurring by reaction with the diamine monomer – forming polymer.
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 1-10,12-15 and 17-19 rejected under 35 U.S.C. 102(a)(1) and (a)(2) as being anticipated by Hwang WO2019/160218.
Hwang exemplifies (comparison #2) preparing a polyimide precursor (ie polyamic acid) by reacting 40.5g PPD (ie 1,4 phenylenediamine) and 101.4g BPDA (ie biphenyl tetracarboxylic dianhydride) in 824g NMP (N-methylpyrrolidone solvent). Then, 2.85g BPDA as a 10% solution in NMP is added. Finally, 1.5mol methanol is added per 100 moles of PPD.
PPD is applicant’s preferred diamine and BPDA is applicant’s preferred dianhydride (see applicant’s table 1). NMP is applicant’s preferred 1st solvent and methanol is applicant’s preferred 2nd solvent (see applicant’s example 1).
The total amount of NMP solvent would be 824g + 28.5g or 852.5g.
The amount of PPD used is:
40.5g PPD x (1mol PPD/108g PPD) = 0.375 mol PPD
The amount of methanol is:
1.5mol methanol/100mol PPD x 0.375mol PPD x 32g methanol/mol methanol = 0.18g
The relative amount of methanol to NMP is 0.18/852.5 or 0.02g methanol/100gNMP.
As Hwang follows all of applicant’s material limitations, the same tensile strength must result. If not, applicant’s claims are fatally flawed.
Hwang (paragraph 170) indicates a cured film of this polyimide precursor is too brittle to measure a tensile strength. However, the testing (KS6518 paragraph 156) is not ASTMD882 as in applicant’s claims.
While Hwang’s table 3 reports tensile strength values below applicant’s values for the cured film of other polyimide precursors, the testing (KS6518 paragraph 156) is not ASTMD882 as in applicant’s claims.
In regards to applicant’s dependent claims:
The amount of methanol in the system is:
0.18g/(0.18g + 852.5g + 40.5g + 104g) or 0.02% - meeting applicant’s claim 2.
The late added 2.85g BPDA can be considered applicant’s diluting monomer of claims 3 and 4.
NMP inherently has a boiling point of 2040C (see the Eastman technical data sheet). Methanol inherently has a boiling point of 64.70C (see the Fisher Scientific data sheet) – meeting applicant’s claim 7.
The solids content would be roughly:
(40.5g + 104g)/(40.5g + 104g + 852.5) or 14% - meeting applicant’s claim 8.
The viscosity of the polyimide precursor (table 1) is 6,780cP – meeting applicant’s claim 9. If the viscosity falls within applicant’s range, the Mw’s would also coincide – meeting applicant’s claim 10.
Hwang does not report Tg, CTE, elongation or elastic modulus, but given his monomers, method of polymerization etc meet applicant’s requirements the same properties of applicant’s claims 12-15 would be expected.
The polyimide precursor is cured at 4500C (paragraph 125) to form a film – meeting applicant’s claims 17-19.
Claims 1-10,12-15 and 17-19 rejected under 35 U.S.C. 102(a)(1) and (a)(2) as being anticipated by Hwang WO2019/160218.
Hwang exemplifies (#2) preparing a polyimide precursor (ie polyamic acid) by reacting 40.5g PPD (ie 1,4 phenylenediamine) and 101.4g BPDA (ie biphenyl tetracarboxylic dianhydride) in 824g NMP (N-methylpyrrolidone solvent). Then, 2.85g BPDA as a 10% solution in NMP is added. Finally, 1mol of methanol is added per 100 moles of PPD.
PPD is applicant’s preferred diamine and BPDA is applicant’s preferred dianhydride (see applicant’s table 1). NMP is applicant’s preferred 1st solvent and methanol is applicant’s preferred 2nd solvent (see applicant’s example 1).
The total amount of NMP solvent would be 824g + 28.5g or 852.5g.
The amount of PPD used is:
40.5g PPD x (1mol PPD/108g PPD) = 0.375 mol PPD
The amount of methanol is:
1 mol methanol/100mol PPD x 0.375mol PPD x 32g methanol/mol methanol = 0.12g
The relative amount of methanol to NMP is 0.12/852.5 or 0.014g methanol/100gNMP.
Hwang (#8 of table 3) indicates a cured film of this polyimide precursor has a tensile strength of 375 kg/mm2 (ie 375MPa). However, the testing (KS6518 paragraph 156) is not ASTMD882 as in applicant’s claims.
As Hwang follows all of applicant’s material limitations, the same tensile strength must result. If not, applicant’s claims are fatally flawed.
In regards to applicant’s dependent claims:
The amount of methanol in the system is:
0.12g/(0.12g + 852.5g + 40.5g + 104g) or 0.012% - meeting applicant’s claim 2.
The late added 2.85g BPDA can be considered applicant’s diluting monomer of claims 3 and 4.
NMP inherently has a boiling point of 2040C (see the Eastman technical data sheet). Methanol inherently has a boiling point of 64.70C (see the Fisher Scientific data sheet) – meeting applicant’s claim 7.
The solids content would be roughly:
(40.5g + 104g)/(40.5g + 104g + 852.5) or 14% - meeting applicant’s claim 8.
The viscosity of the polyimide precursor (table 1) is 6,900cP – meeting applicant’s claim 9. If the viscosity falls within applicant’s range, the Mw’s would also coincide – meeting applicant’s claim 10.
The CTE (table 3) is 5.6ppm/0C – meeting applicant’s claim 12.
Hwang does not report Tg, elongation or elastic modulus, but given his monomers, method of polymerization etc meet applicant’s requirements the same properties of applicant’s claims 13-15 would be expected.
The polyimide precursor is cured at 4500C (paragraph 125) to form a film – meeting applicant’s claims 17-19.
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.
Claim 11 rejected under 35 U.S.C. 103 as being unpatentable over Hwang WO2019/160218 in view of Lin 2015/0072158.
Hwang WO2019/160218 applies as explained above.
Hwang (eg claim 15) suggests his polyimide film be used for circuit boards.
Hwang does not teach the inclusion of inorganic particles.
Lin (abstract) teaches black polyimide films. Lin’s background (paragraph 5) explains black polyimide films are used to cover circuit boards. Carbon black (paragraph 6) is used to reduce light transmission and achieve the black color.
It would have been obvious to add carbon black to Hwang’s polyamic acid solution in order to produce a black film when eventually cured into a film.
Claims 1-10 and 12-15 rejected under 35 U.S.C. 103 as being unpatentable over JP61130341.
The reference exemplifies (#2 of table 1) formation of a polyamic acid by polymerizing 206.3g DABP (ie applicant’s diamine) and 290g BTDA (ie applicant’s dianhydride) in 1183.1g bis(2-methoxyethyl)ether solvent. Then aniline and 1% ethanol (based on all solvents) is added. Finally, more BTDA is added.
Bis(2-methoxyethyl)ether solvent qualifies as applicant’s 1st solvent and ethanol qualifies as applicant’s 2nd solvent.
While the 1% ethanol is more than applicant’s 0.1% maximum, the reference (see abstract) suggests as little as 0.1%.
It would have been obvious to carry out the reference’s polymerization with any amount of ethanol specifically taught by the reference.
The reference does not measure tensile strength. Given the reference suggests
all of applicant’s material limitations, the same tensile strength must result.
In regards to applicant’s dependent claims:
The amount of ethanol in the polyamic acid solution would be approximately:
11.8/(11.8 + 1183 + 206 + 290) = 0.007 or 0.7% - meeting applicant’s claim 2.
The late added BTDA can be considered applicant’s diluting monomer of claims 3 and 4.
The reference’s diamine (see abstract) may be phenylene diamine – meeting applicant’s claim 5.
Bis(2-methoxyethyl)ether inherently has a boiling point of 1620C (see the WebQC data sheet. Ethanol inherently has a boiling point of 78.230C (see the WebQC data sheet) – meeting applicant’s claim 7.
The solids content is 30% (example 1) – meeting applicant’s claim 8.
The viscosity is 43,800 cps (table 1) – meeting applicant’s claim 9. If the viscosity falls within applicant’s range, the Mw’s would also coincide – meeting applicant’s claim 10.
Applicant’s claims 12-15 do not claim a cured film. Instead, a solution is claimed that has the capability of being cured with the recited properties.
The reference does not report Tg, CTE, elongation or elastic modulus if the solution is cured. Given the monomers, method of polymerization etc meet applicant’s requirements the same properties of applicant’s claims 12-15 would be expected.
Claims 1,2,5-10 and 12-15 rejected under 35 U.S.C. 103 as being unpatentable over JP63037137.
The reference exemplifies (#5 of table 1) formation of a polyamic acid by polymerizing 8.826g S-BPDA (ie applicant’s dianhydride) and 6g DADE (ie applicant’s diamine) in a mixed solvent of 100g dioxane, 42.9g DMF and ethanol.
Dioxane and DMF qualify as applicant’s 1st solvent and ethanol qualifies as applicant’s 2nd solvent.
While the 0.3/(100 + 42.9 + 0.3) or 0.2% ethanol is more than applicant’s 0.1% maximum, the reference (see abstract) suggests as little as 0% and/or 0.05 parts per 100 of dioxane.
It would have been prima facie obvious to carry out the reference’s polymerization with miniscule amounts of ethanol.
The reference does not measure tensile strength. Given the reference suggests
all of applicant’s material limitations, the same tensile strength must result.
In regards to applicant’s dependent claims:
The amount of ethanol in the polyamic acid solution would be approximately:
0.3/(0.3 + 100 + 42.9 + 8.8 + 6) = 0.0018 or 0.18% - meeting applicant’s claim 2.
DADE is applicant’s ODA of claim 4.
The reference’s diamine (see abstract) may be phenylene diamine – meeting applicant’s claim 5.
Dioxane inherently has a boiling point of 1010C (see the Inchem data sheet). DMF inherently has a boiling point of 1520C (see the Taminco technical data sheet). Ethanol inherently has a boiling point of 78.230C (see the WebQC data sheet) – meeting applicant’s claim 7.
The solids content is 10% (abstract) – meeting applicant’s claim 8.
The viscosity may be 20-20000 poise (ie 2000 – 2,000,000 cps) – meeting applicant’s claim 9. If the viscosity falls within applicant’s range, the Mw’s would also coincide – meeting applicant’s claim 10.
Applicant’s claims 12-15 do not claim a cured film. Instead, a solution is claimed that has the capability of being cured with the recited properties.
The reference does not report Tg, CTE, elongation or elastic modulus if the solution is cured. Given the monomers, method of polymerization etc meet applicant’s requirements the same properties of applicant’s claims 12-15 would be expected.
Applicant's arguments filed 3/18/26 have been fully considered but they are not persuasive.
Applicant failed to answer any of the questions relating to the 112 rejection of claims 3 and 4.
Applicant’s arguments with respect to the claims have been considered and overcome the previous rejections. The new rejections meet/suggest the new limitations.
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 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 4/14/26
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