Now’s 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 .
Status of Claims
The examiner acknowledges the amendment to claim 1 and the addition of claims 6-8 as well as the cancellation of claim 2. Claims 1 and 3-8 are pending.
Priority
Receipt is acknowledged of certified copies of papers required by 37 CFR 1.55.
Specification
The abstract has been amended to be less than 150 words. As a result, the objection to the specification is withdrawn.
Claim Rejections - 35 USC § 103
The text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action.
Claims 1 and 3, 5, 6, and 8 are rejected under 35 U.S.C. 103 as being unpatentable over Sato (US 20170130003) as evidenced by Moon (KR101549729).
Regarding Claims 1, 3, and 6,
Sato teaches polyimide resin compositions that are comprised of the following structures:
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wherein R1 is a divalent group with 6 to 22 carbons and at least one alicyclic hydrocarbon (Paragraph 27), R2 is a divalent group containing 5 to 16 carbons (Paragraph 27), and where X1 and X2 are independently tetravalent groups with 6 to 22 carbons and having at least one aromatic ring (Paragraph 27). Sato further teaches that the amount of repeating units of formula 1 relative to the entirety of the polymer is preferably between 25 and 38 mol% (Paragraph 58), which is contained within the range of the instant claim. Sato also teaches that the polyimide resin may also be used in conjunction with other polymers, including polyethersulfones (Paragraph 145) and that the ratio between the polyimide resin and the additional resin is preferably between 10:90 and 90:10 (Paragraph 146), which overlaps with the range of the instant claim. One of ordinary skill in the art, seeking to optimize properties of the final composition, would vary the amount of each polymer relative to the others. It would therefore have been obvious prior to the effective filing date of the instant application to have selected the overlapping portion of the ranges because the selection of overlapping portions of ranges has been held to be a prima facie case of obviousness. See MPEP 2144.05.I.
Regarding the requirement that the combination of the polyimide and polyether sulfone constitute at least 70% by mass of the composition, Sato teaches that outside of the listed polymers, additives most preferably may constitute as little as 0.01% by mass of the composition (Paragraph 144). As such, it would logically follow that with no other listed components, the above polymers can constitute up to 99.99% by mass of the composition, which overlaps with the range of the instant claim. One of ordinary skill in the art, seeking to optimize properties of the final composition, would use additives in an amount required to obtain the desired characteristics in the final material. It would therefore have been obvious prior to the effective filing date of the instant application to have selected the overlapping portion of the ranges because the selection of overlapping portions of ranges has been held to be a prima facie case of obviousness. See MPEP 2144.05.I.
Regarding the endgroup requirement for the polyether sulfone, Sato teaches that polyethersulfones are suitable to be used as a second resin in the composition (Paragraph 145). However, Sato does not teach the method by which the polyethersulfone is generated and thus the end groups of the polymer. However, as evidenced by Moon, one method of synthesizing the polyether sulfone is to react a dihalodiphenylsulfone with a dihydroxydiphenylsulfone in the presence of a catalyst (Page 4, Paragraph 1) to obtain products of the following structure on page 3:
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where X represents a halogen and n is a number greater than one (Page 4, Paragraph 1). This synthesis would result in a polyether sulfone meeting the requirements of the instant claim.
Regarding Claim 5,
Sato teaches that the composition may be used to make a molded article (Paragraph 147).
Claim 4 is rejected under 35 U.S.C. 103 as being unpatentable over Sato (US 20170130003) as applied to claims 1, 3, 5, 6 and 8 above, and further in view of Dai (WO 2020058790, Foreign Patent Document #1 from IDS dated 3/1/2024).
Regarding Claim 4,
Sato teaches the use of polyether sulfones in the composition as discussed above in regard to claim 1. Sato does not teach the properties of the polyether sulfone. Dai teaches the use of polyether sulfones which are used in compositions along with polyimides that have a preferred weight average molecular weight of 2,000 to 25,000 g/mol (Paragraph 12). In the specification, the applicant prefers the molecular weight to be between 2,000 and 80,000 in paragraph 51, and it would logically follow that polymers in this weight range would meet the viscosity requirement of the instant claim. One of ordinary skill in the art would look to references like Dai for guidance about the requirements of polymers to be added to polyimides, as Dai teaches the use of similar compositions for articles used in vehicle components and data transmission components, amongst others (Paragraph 4). As such, it would have been obvious prior to the effective filing date of the instant application to have used the teachings of Dai to inform the characteristics of the polyethersulfone to be used in the composition of Sato to afford the predictable result of a molded article containing polyimide and polyether sulfone polymers with a reasonable expectation of success.
Regarding Claim 8,
While Sato does not specify a range of values for the bending strength and flexural modulus of the molded composition, Sato does demonstrate in the examples listed in Table 4 examples which all meet the requirements of the instant claim. While Sato has not enumerated polyether sulfones as the second polymer of the compositions, it would logically follow that only by disclosing compositions that have bending strength greater than 100 MPa and flexural modulus values of greater than 2.2 GPa, including for the polyimide with no other polymer, that the compositions are intended to obtain such values. Further, as Sato teaches compositions that meet the requirements of contained components and their associated incorporation amounts, it would necessarily follow that these compositions would meet the criteria of the instant claim. "Products of identical chemical composition can not have mutually exclusive properties." In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990). See MPEP 2112.01.II.
Double Patenting
The applicant has amended claim 1 to incorporate subject matter that is not a limitation in the reference patent. As a result, the double patenting rejection is withdrawn.
Allowable Subject Matter
Claim 7 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.
The following is a statement of reasons for the indication of allowable subject matter: While Sato teaches compositions that include the required components in overlapping amounts to those of the instant application, Sato fails to teach the improvements to the tensile fracture strain noted by the applicant when using a range of 10 to 60% by mass of polyimide out of the total of polyimide and polyether sulfone that is not observed outside of this incorporation range. This result would not have been expected by the ordinarily skilled artisan and is therefore not obvious in relation to the prior art.
Response to Arguments
Applicant's arguments filed 1/22/2026 have been fully considered but they are not persuasive for the following reasons. On pages 7 and 8, the applicant argues that Sato does not teach the unexpected improvement in the tensile fracture strain of the compositions. The examiner does not disagree, however this requirement only appears in dependent claim 7. Because this does not appear as a limitation to any of the other claims of the instant application, including the independent claim, the previous rejection is maintained.
Conclusion
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 ADAM J BERRO whose telephone number is (703)756-1283. The examiner can normally be reached M-F 8:30-5.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Heidi Kelley can be reached at 571-270-1831. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/A.J.B./Examiner, Art Unit 1765
/JOHN M COONEY/Primary Examiner, Art Unit 1765