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 .
Election/Restrictions
REQUIREMENT FOR UNITY OF INVENTION
As provided in 37 CFR 1.475(a), a national stage application shall relate to one invention only or to a group of inventions so linked as to form a single general inventive concept (“requirement of unity of invention”). Where a group of inventions is claimed in a national stage application, the requirement of unity of invention shall be fulfilled only when there is a technical relationship among those inventions involving one or more of the same or corresponding special technical features. The expression “special technical features” shall mean those technical features that define a contribution which each of the claimed inventions, considered as a whole, makes over the prior art.
The determination whether a group of inventions is so linked as to form a single general inventive concept shall be made without regard to whether the inventions are claimed in separate claims or as alternatives within a single claim. See 37 CFR 1.475(e).
When Claims Are Directed to Multiple Categories of Inventions:
As provided in 37 CFR 1.475 (b), a national stage application containing claims to different categories of invention will be considered to have unity of invention if the claims are drawn only to one of the following combinations of categories:
(1) A product and a process specially adapted for the manufacture of said product; or
(2) A product and a process of use of said product; or
(3) A product, a process specially adapted for the manufacture of the said product, and a use of the said product; or
(4) A process and an apparatus or means specifically designed for carrying out the said process; or
(5) A product, a process specially adapted for the manufacture of the said product, and an apparatus or means specifically designed for carrying out the said process.
Otherwise, unity of invention might not be present. See 37 CFR 1.475 (c).
Restriction is required under 35 U.S.C. 121 and 372.
This application contains the following inventions or groups of inventions which are not so linked as to form a single general inventive concept under PCT Rule 13.1.
In accordance with 37 CFR 1.499, applicant is required, in reply to this action, to elect a single invention to which the claims must be restricted.
Group I, claims 1-14, drawn to a polyamic acid composition.
Group II, claim 15, drawn to a method.
Group III, claims 16-17, drawn to a polyimide.
The groups of inventions listed above do not relate to a single general inventive concept under PCT Rule 13.1 because, under PCT Rule 13.2, they lack the same or corresponding special technical features for the following reasons:
Groups I-III lack unity of invention because even though the inventions of these groups require the technical feature of a polyamic acid composition as recited in claim 1, this technical feature is not a special technical feature as it does not make a contribution over the prior art in view of Taki (WO 2019131294 A1, US 20200369830 A1 is used as an English translation).
Taki discloses a polyamic acid composition, comprising polyamic acid including a dianhydride monomer component and a diamine monomer component as a polymerization unit and a solvent (polyamide acid reads on polyamic acid, [0009]). Taki discloses that the solvent is preferably NMP (N-methyl-2-pyrrolidone, [0037]). NMP has a boiling point of about 202 °C. Taki further discloses that the polyamic acid composition has a water content of 2,000-5,000 ppm ([0088]). Water has a boiling point of about 100 °C. Taki therefore discloses wherein the solvent includes a first solvent having a boiling point of about 202 °C (NMP) and a second solvent having a boiling point lower than that of the first solvent (water).
During a telephone conversation with Matthew Sutch on December 12, 2025 a provisional election was made without traverse to prosecute the invention of Group I, claims 1-14. Affirmation of this election must be made by applicant in replying to this Office action. Claims 15-17 are withdrawn from further consideration by the examiner, 37 CFR 1.142(b), as being drawn to a non-elected invention.
Applicant is reminded that upon the cancelation of claims to a non-elected invention, the inventorship must be corrected in compliance with 37 CFR 1.48(a) if one or more of the currently named inventors is no longer an inventor of at least one claim remaining in the application. A request to correct inventorship under 37 CFR 1.48(a) must be accompanied by an application data sheet in accordance with 37 CFR 1.76 that identifies each inventor by his or her legal name and by the processing fee required under 37 CFR 1.17(i).
The examiner has required restriction between product or apparatus claims and process claims. Where applicant elects claims directed to the product/apparatus, and all product/apparatus claims are subsequently found allowable, withdrawn process claims that include all the limitations of the allowable product/apparatus claims should be considered for rejoinder. All claims directed to a nonelected process invention must include all the limitations of an allowable product/apparatus claim for that process invention to be rejoined.
In the event of rejoinder, the requirement for restriction between the product/apparatus claims and the rejoined process claims will be withdrawn, and the rejoined process claims will be fully examined for patentability in accordance with 37 CFR 1.104. Thus, to be allowable, the rejoined claims must meet all criteria for patentability including the requirements of 35 U.S.C. 101, 102, 103 and 112. Until all claims to the elected product/apparatus are found allowable, an otherwise proper restriction requirement between product/apparatus claims and process claims may be maintained. Withdrawn process claims that are not commensurate in scope with an allowable product/apparatus claim will not be rejoined. See MPEP § 821.04. Additionally, in order for rejoinder to occur, applicant is advised that the process claims should be amended during prosecution to require the limitations of the product/apparatus claims. Failure to do so may result in no rejoinder. Further, note that the prohibition against double patenting rejections of 35 U.S.C. 121 does not apply where the restriction requirement is withdrawn by the examiner before the patent issues. See MPEP § 804.01.
Information Disclosure Statement
The information disclosure statements filed 5/19/2023, 8/26/2024, and 3/10/2025 fail to comply with 37 CFR 1.98(a)(2), which requires a legible copy of each cited foreign patent document; each non-patent literature publication or that portion which caused it to be listed; and all other information or that portion which caused it to be listed. Copies have not been provided of foreign patent document cite no. 1-6 on the 5/19/2023 IDS, foreign patent document cite no. 1-3 and 5 on the 8/26/2024 IDS, and JP2002511902A on the 3/10/3025 IDS. It has been placed in the application file, but the information referred to therein has not been considered.
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.
Claim 6 is 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 6 contains the limitation “wherein the dianhydride monomer having a ring-opening structure participates in an imidization reaction.” This limitation causes uncertainty as to whether the claimed invention is a method of using a polyamic acid composition, a composition in which the dianhydride monomer has undergone an imidization reaction, or a composition comprising a dianhydride with a ring-opening structure that is capable of participating in an imidization reaction. For the purposes of examination, claim 6 has been interpreted as a composition with future intended use limitations imposed by “wherein the dianhydride monomer having a ring-opening structure participates in an imidization reaction.”
Claim Objections
Claim 11 is objected to because of the following informalities:
For the utmost clarity, the examiner suggests amending claim 11 to specify what component has the recited molecular weight.
Appropriate correction is required.
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.
Claims 1-4, 7-9, and 11-13 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Taki (WO 2019131294 A1, US 20200369830 A1 is used as an English translation).
Regarding claims 1-4, Taki discloses a polyamic acid composition, comprising polyamic acid including a dianhydride monomer component and a diamine monomer component as a polymerization unit and a solvent (polyamide acid reads on polyamic acid, [0009]).
Taki discloses that the solvent is preferably NMP (N-methyl-2-pyrrolidone, [0037]). NMP has a boiling point of about 202 °C. Taki further discloses that the polyamic acid composition has a water content of 2,000-5,000 ppm ([0088]). Water has a boiling point of about 100 °C. Taki therefore discloses wherein the solvent includes a first solvent having a boiling point of about 202 °C (NMP) and a second solvent having a boiling point lower than that of the first solvent (water). The boiling point of water, about 100 °C, falls within the range of 30 °C or more and less than 150 °C recited in claim 2. Water further reads on wherein the second solvent has one polar functional group that is a hydroxyl group (claim 3). A range of 2,000-5,000 ppm corresponds to 0.2-0.5 wt% of the second solvent (claim 4).
Regarding claim 7, Taki discloses the composition of claim 1 and further discloses wherein the diamine monomer includes 1,4-diaminobenzene (paraphenylene diamine, [0034]).
Regarding claim 8, Taki discloses the composition of claim 1 and further discloses wherein the dianhydride monomer includes 3,3',4,4'-biphenyltetracarboxylic dianhydride (BPDA, [0029-0031]).
Regarding claim 9, Taki discloses the composition of claim 1 and further discloses a polyamic acid concentration of 10-20 wt%, reading on a solid content of 10-20 wt% ([0040]). Taki exemplifies a solid content of 15% in the examples ([0119]).
Regarding claim 11, Taki discloses the composition of claim 1 and further discloses a weight-average molecular weight of 40,000 g/mol to 150,000 g/mol ([0046]).
Regarding claim 12, Taki discloses the composition of claim 1 and further discloses that the polyamic acid can further comprise inorganic particles ([0085]).
Regarding claim 13, Taki discloses the composition of claim 1 and further discloses that a polyimide film derived from the composition has a linear thermal expansion coefficient of 10 ppm/°C or less ([0100]). A polyimide film reads on the polyamic acid composition after curing.
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 5-6, 10, and 14 are rejected under 35 U.S.C. 103 as being unpatentable over Taki (WO 2019131294 A1, US 20200369830 A1 is used as an English translation) as applied to claim 1 above.
Regarding claims 5-6, Taki discloses the composition of claim 1. Taki further teaches a process of depolymerizing the polyamic acid by hydrolysis of an amide bond ([0043]) in order to adjust the polyamic acid solution viscosity ([0046]). Taki teaches that the polymerization of the polyamide acid by the reaction between the tetracarboxylic acid dianhydride and the diamine and the depolymerization can be carried out in parallel and that this likely leads to unreacted tetracarboxylic acid dianhydride being deactivated ([0047]). It would have been obvious to one of ordinary skill in the art prior to the effective filing date to have carried out the polymerization and depolymerization in parallel because Taki teaches this process. One of ordinary skill would recognize that hydrolysis of a tetracarboxylic acid dianhydride results in a ring-opened structure (see for example [0060]). Therefore, the dianhydride monomer of Taki includes an unpolymerized monomer having a ring-opening structure (deactivated monomer) in addition to the monomer included in the polymerization unit (claim 5).
The phrase “wherein the dianhydride monomer having a ring-opening structure participates in an imidization reaction” in claim 6 recites an intended use. Case law holds that a recitation of the intended use of the claimed invention must result in a structural difference between the claimed invention and the prior art in order to patentably distinguish the claimed invention from the prior art. If the prior art structure is capable of performing the intended use, then it meets the claim. See In re Casey, 152 USPQ 235 (CCPA 1967) and In re Otto, 136 USPQ 458, 459 (CCPA 1963). Because the ring-opened monomers satisfy the claimed elements, they would be expected to be capable of participating in an imidization reaction (claim 6).
Regarding claim 10, Taki discloses the composition of claim 1. Taki further teaches that when the weight average molecular weight of the polyamic acid composition is 200,000 or less, the viscosity of the polyamic acid solution is low and applicability to operations such as liquid feeding and coating is excellent (Taki, [0078]). Taki measures viscosities at 23 °C (Taki, [0109]) and exemplifies a viscosity about 4,000 cP (3,950-4,100 mPa*s for Examples 1-4, Taki, Table 2), but Taki does not report the shear rate at which the viscosities are measured.
However, Taki teaches a substantially similar polyamic acid composition prepared in a substantially similar manner as the instant composition. Taki Examples 1-3 are most similar to instant Example 1. Taki Examples 1-3 have a diamine component that is 99% paraphenylene diamine and have BPDA as the dianhydride component (Taki, Table 1). The polyamic acid composition has a viscosity of about 4,000 cP (Taki, Table 2) and the solvent is NMP (Taki, [0119]) with an overall water content of about 0.2 wt% (2,100 ppm, Taki, Table 2). The molecular weight of the polyamic acids used in Taki examples 1-3 are about 65,000 (Taki, Table 2) which falls within the range recited in instant claim 11. In comparison, instant example 1 has a diamine component that is 100% paraphenylene diamine and has BPDA as the dianhydride component (instant Table 1). The solvent used in instant example 1 is NMP with 1 wt% of methanol and the polyamic acid composition has a viscosity of 3,500 cP (instant Table 1 and Table 2). Both the instant polyamic acid composition and Taki’s polyamic acid compositions are made by reacting dianhydrides and diamines in a solvent (instant claim 1; Taki, [0009]). Given that the compositions of Taki are substantially similar to instant example 1 and that the viscosities exemplified by Taki (about 4,000 cP) are very close to that of instant example 1 (3,500 cP), it would be reasonable to expect the properties of the prior art composition to be similar to those of instant claim 10 including a viscosity within the claimed range of 500 cP to 50,000 cP as measured at a temperature of 23 °C and a shear rate of 1 s-1.
Regarding claim 14, Taki discloses the composition of claim 1. Taki further teaches that the polyimide films are suitable for electronic devices from the viewpoint of having excellent heat resistance ([0002]), but is silent as to the glass transition temperature (Tg) of the polyimide film after curing.
However, Taki teaches a substantially similar polyimide film prepared in a substantially similar manner as the instant application. A polyimide film reads on the polyamic acid composition after curing. Taki Examples 1-3 are most similar to instant Example 1. Taki Examples 1-3 have a diamine component that is 99% paraphenylene diamine and the dianhydride component is BPDA (Taki, Table 1). The polyimide film is produced from a polyamic acid composition having a viscosity of about 4,000 cP (Taki, Table 2) and the solvent is NMP (Taki, [0119]) with an overall water content of about 0.2 wt% (2,100 ppm, Taki, Table 2). The resulting film has a thermal expansion coefficient (CTE) of 6 ppm/ °C (Taki, Table 2). Instant example 1 has a diamine component that is paraphenylene diamine and a dianhydride component that is BPDA (instant Table 1). The solvent used in instant example 1 is NMP with 1 wt% of methanol and the polyamic acid composition has a viscosity of 3,500 cP (instant Table 1 and Table 2). The resulting polyimide film has a CTE of 4.6 ppm/ °C and a Tg of 466 °C (instant Table 2). Both the instant film and the film of Taki are produced by annealing a polyamic acid composition coated on a glass substrate (Taki, [0131] and instant specification page 23, lines 2-8). Therefore, it would be reasonable to expect the properties of the prior art composition to be similar to those of instant claim 14, including a glass transition temperature within the claimed range of 300 °C or more after curing.
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.
Claim 1 is provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claim 2 of copending Application No. 18/037,888 (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other because claim 1 is anticipated by reference claim 2.
Reference claim 2 depends from reference claim 1 and discloses a polyamic acid composition comprising polyamic acid including a dianhydride monomer component and a diamine monomer component as a polymerization unit and a solvent (reference claim 1, lines 1-3), wherein the solvent includes a first solvent having a boiling point higher than 150 °C or more and a second solvent having a boiling point lower than that of the first solvent (reference claim 2).
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Claims 1-14 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1 and 4-14 of copending Application No. 18/037,888 (reference application) in view of Taki (WO 2019131294 A1, US 20200369830 A1 is used as an English translation). Although the claims at issue are not identical, they are not patentably distinct from each other because claims 1-14 are obvious over reference claims 1 and 4-14 in view of Taki.
Regarding claims 1-2, reference claim 1 teaches a polyamic acid composition comprising polyamic acid including a dianhydride monomer component and a diamine monomer component as a polymerization unit and a solvent, wherein the solvent includes a first solvent and a second solvent. Reference claim 1 does not specify the boiling points of the solvents.
However, Taki teaches that when N-methyl-2-pyrrolidone is used as the solvent, the storage stability of the polyamic acid solution tends to be high and the linear expansion coefficient of the polyimide film tends to be low (Taki, [0037]). Taki further teaches that a water content of 2,000 ppm to 5,000 ppm is desirable because when the water content is 5,000 ppm or less, the polyamic acid solution tends to have excellent storage stability (Taki, [0088]).
It would have been obvious to one of ordinary skill in the art prior to the effective filing date to have substituted the unspecified solvent mixture of reference claim 1 with the NMP and water of Taki in order to produce a polyamic acid solution with excellent storage stability that produces films with low linear expansion coefficients.
A solvent mixture of water and NMP reads on wherein the solvent includes a first solvent having a boiling point of 202 °C (NMP) and a second solvent having a boiling point lower than that of the first solvent (water). Water has a boiling point of 100 °C, falling within the claimed range of 30 °C or more and less than 150 °C recited in claim 2.
Reference claims 4, 5, 6, 7, 8, 9, 10, 11, 12, 13, 14, and 15 read on instant claims 3, 4, 5, 6, 7, 8, 9, 10, 11, 12, 13, and 14, respectively.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Claim 1 is provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claim 2 of copending Application No. 18/037,894 (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other because claim 1 is anticipated by reference claim 2.
Reference claim 2 depends from reference claim 1 and discloses a polyamic acid composition comprising polyamic acid including a dianhydride monomer component and a diamine monomer component as a polymerization unit and a solvent (reference claim 1, lines 1-3), wherein the solvent includes a first solvent having a boiling point higher than 150 °C or more and a second solvent having a boiling point lower than that of the first solvent (reference claim 2).
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Claims 1-14 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1 and 4-14 of copending Application No. 18/037,894 (reference application) in view of Taki (WO 2019131294 A1, US 20200369830 A1 is used as an English translation). Although the claims at issue are not identical, they are not patentably distinct from each other because claims 1-14 are obvious over reference claims 1 and 4-14 in view of Taki.
Regarding claims 1-2, reference claim 1 teaches a polyamic acid composition comprising polyamic acid including a dianhydride monomer component and a diamine monomer component as a polymerization unit and a solvent, wherein the solvent includes a first solvent and a second solvent. Reference claim 1 does not specify the boiling points of the solvents.
However, Taki teaches that when N-methyl-2-pyrrolidone is used as the solvent, the storage stability of the polyamic acid solution tends to be high and the linear expansion coefficient of the polyimide film tends to be low (Taki, [0037]). Taki further teaches that a water content of 2,000 ppm to 5,000 ppm is desirable because when the water content is 5,000 ppm or less, the polyamic acid solution tends to have excellent storage stability (Taki, [0088]).
It would have been obvious to one of ordinary skill in the art prior to the effective filing date to have substituted the unspecified solvent mixture of reference claim 1 with the NMP and water of Taki in order to produce a polyamic acid solution with excellent storage stability that produces films with low linear expansion coefficients.
A solvent mixture of water and NMP reads on wherein the solvent includes a first solvent having a boiling point of 202 °C (NMP) and a second solvent having a boiling point lower than that of the first solvent (water). Water has a boiling point of 100 °C, falling within the claimed range of 30 °C or more and less than 150 °C recited in claim 2.
Reference claims 4, 5, 6, 7, 8, 9, 10, 11, 12, 13, 14, and 15 read on instant claims 3, 4, 5, 6, 7, 8, 9, 10, 11, 12, 13, and 14, respectively.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Claims 1-2 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claim 4 of copending Application No. 18/718,316 (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other because claims 1-2 are obvious over reference claim 4.
Reference claim 4 depends from reference claim 3 and reference claim 1. Reference claim 1 teaches a polyamic acid composition (polyamic acid solution, ref claim 1, line 2), comprising polyamic acid including a dianhydride monomer component and a diamine monomer component as a polymerization unit and a solvent (obtained by polymerizing a dianhydride monomer and a diamine monomer in an organic solvent, ref claim 1, lines 2-3). Reference claim 3 teaches that the organic solvent is a mixed solvent of an aprotic solvent and a protic solvent and reference claim 4 further lists specific aprotic and protic solvents. It would have been obvious to one of ordinary skill in the art prior to the effective filing date to have selected any combination of aprotic and protic solvent taught by reference claim 4, including toluene and N-methyl-pyrrolidone (NMP). Toluene has a boiling point of about 110 °C (claim 2) and NMP has a boiling point of about 202 °C reading on wherein the solvent includes a first solvent (NMP) having a boiling point of 150 °C or more and a second solvent (toluene) having a boiling point lower than that of the first solvent (claim 1).
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Claims 1-2 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claim 4 of copending Application No. 18/714,103 (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other because claims 1-2 are obvious over reference claim 4.
Reference claim 4 depends from reference claim 3 and reference claim 1. Reference claim 1 teaches a polyamic acid composition (polyamic acid solution, ref claim 1, line 2), comprising polyamic acid including a dianhydride monomer component and a diamine monomer component as a polymerization unit and a solvent (polymerization of a dianhydride monomer and a diamine monomer in an organic solvent, ref claim 1, lines 2-3). Reference claim 3 teaches that the organic solvent is a mixed solvent of an aprotic solvent and a protic solvent and reference claim 4 further lists specific aprotic and protic solvents. It would have been obvious to one of ordinary skill in the art prior to the effective filing date to have selected any combination of aprotic and protic solvent taught by reference claim 4, including toluene and N-methyl-pyrrolidone (NMP). Toluene has a boiling point of about 110 °C (claim 2) and NMP has a boiling point of about 202 °C reading on wherein the solvent includes a first solvent (NMP) having a boiling point of 150 °C or more and a second solvent (toluene) having a boiling point lower than that of the first solvent (claim 1).
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to AUDRA DESTEFANO whose telephone number is (703)756-1404. The examiner can normally be reached Monday-Friday 9-5.
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/AUDRA J DESTEFANO/Examiner, Art Unit 1766
/RANDY P GULAKOWSKI/Supervisory Patent Examiner, Art Unit 1766