DETAILED ACTION
Claims 11-18 and 20 were rejected in Office Action mailed on 09/19/2025.
Applicant filed a response, amended claim 11 on 12/16/2025.
Claims 1-20 are pending, and claim(s) 1-10 and 19 are withdrawn.
Claims 11-18 and 20 are rejected.
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 § 103
In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis (i.e., changing from AIA to pre-AIA ) for the rejection will not be considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status.
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.
The factual inquiries for establishing a background for determining obviousness under 35 U.S.C. 103 are summarized as follows:
1. Determining the scope and contents of the prior art.
2. Ascertaining the differences between the prior art and the claims at issue.
3. Resolving the level of ordinary skill in the pertinent art.
4. Considering objective evidence present in the application indicating obviousness or nonobviousness.
This application currently names joint inventors. In considering patentability of the claims the examiner presumes that the subject matter of the various claims was commonly owned as of the effective filing date of the claimed invention(s) absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and effective filing dates of each claim that was not commonly owned as of the effective filing date of the later invention in order for the examiner to consider the applicability of 35 U.S.C. 102(b)(2)(C) for any potential 35 U.S.C. 102(a)(2) prior art against the later invention.
Claims 11-18 and 20 are rejected under 35 U.S.C. 103 as being unpatentable over Mitamura et al., CN 106479176A (Mitamura) (provided in IDS received on 01/29/2024) in view of Yeol et al., KR 20170112329 A (Yeol), and taken in view of evidence by ChemicalBook.
The examiner has provided a machine translation of Mitamura et al., CN 106479176A (Mitamura) and Yeol et al., KR 20170112329 A (Yeol). The citation of the prior art set forth below refers to the machine translation.
Regarding claims 11-13, 18 and 20, Mitamura teaches a polyimide film for producing a graphite sheet (Mitamura, Abstract);
inorganic particle added to the polyimide film (Mitamura, page 4, 7th paragraph from bottom);
as inorganic particles, CaHPO4 is preferably used as the main component, for example 50 to 100% by weight in all inorganic particles (Mitamura, page 4, 4th paragraph from bottom).
the proportion of the inorganic particles is 0.05 to 0.8% by weight relative to the weight of the film resin (which approximates 0.05 to 0.8% by weight relative to the weight of the polyimide film) (Mitamura, page 3, 4th paragraph).
Mitamura does not explicitly disclose comprising a phosphorus-containing non- metal additive.
With respect to the difference, Yoel teaches a process for producing graphite sheet from a phosphorus compound-containing polyimide film (Yeol, Abstract). Yoel specifically teaches the phosphorus compound does not contain a metal component (Yeol, page 3, 2nd paragraph from bottom); the phosphorus compound is preferably an organic phosphorus compound (Yeol, page 1, line 12); and the phosphorus compound is added at a ratio of 0.05 to less than 0.5 based on 100 parts by weight of solid content of polyamic acid (i.e., approximately at a ratio of 0.05% to less than 0.5% of the weight of the polyimide film) (Yeol, page 2, 10th paragraph from bottom).
As Yeol expressly teaches, a method for producing a graphite sheet by preparing a phosphorus or phosphorus compound-containing polyimide film by adding a phosphorus or phosphorus compound to a polyamic acid solution in a specific amount to obtain homogeneous physical properties without producing soot and other contaminants and flexible graphite sheet excellent in thermal conductivity can be produced in the form of a scroll (Yeol, page 2, 8th paragraph from bottom).
Yeol is analogous art as Yeol is drawn to a process for producing graphite sheet from a phosphorus compound-containing polyimide film.
In light of the motivation of preparing a phosphorus or phosphorus compound-containing polyimide film, e.g., an organic phosphorus compound, as taught by Yeol, it therefore would have been obvious to a person of ordinary skill in the art to use an organic phosphorus compound, instead of the remaining inorganic particles, when CaHPO4 is uses as the main component, i.e., 50 to 100% by weight CaHPO4 while the remaining being the organic phosphorus compound and satisfying comprising organic phosphorus compound approximately at a ratio of 0.05% to less than 0.5% of the weight of the polyimide film (i.e., 0.05% to 0.4% of organic phosphorus compound of the weight of the polyimide film (i.e., (1-50%)*0.8%=0.4%), in order to obtain homogeneous physical properties without producing soot and other contaminants and flexible graphite sheet excellent in thermal conductivity can be produced in the form of a scroll.
Furthermore, 50 to 100% by weight of the phosphorous compound being CaHPO4 and the remaining being the organic phosphorus compound and satisfying comprising phosphorus compound approximately at a ratio of 0.05% to less than 0.5% of the weight of the polyimide film corresponds to 0.025% to 0.75% of CaHPO4 (reading upon inorganic particles) (0.05%*50%=0.025%; 0.8%-0.05%=0.75%) by weight relative to the weight of the polyimide film, which overlaps the range of the presently claimed.
Yeol further teaches specifically, the organic phosphorus compound can be diphenylmethyl phosphonate (Yeol, page 5, 2nd paragraph from bottom), which has a molecular formular of C13H13O3P, and a molecular weight of 248.21 g/mol according to ChemicalBook.
Therefore, it can be derived that 0.025% to 0.75% by weight of CaHPO4 (136.06 g/mol) and 0.05% to 0.4% by weight of diphenylmethyl phosphonate contain a total phosphorus content of: 0.012% to 0.182% by weight of the polyimide film, which encompasses the range of the presently claimed.
0.025%*31/136.06=0.006%; 0.05*(31/248.01)=0.006%; 0.06%+0.06%=0.012%
0.75%*31/136.06=0.17%; 0.17%+0.012%=0.182%
As set forth in MPEP 2144.05, in the case where the claimed range “overlap or lie inside ranges disclosed by the prior art”, a prima facie case of obviousness exists, In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990).
Furthermore, given that Mitamura in view of Yoel discloses the polyimide film that overlaps the presently claimed the polyimide film, including diphenylmethyl phosphonate as the phosphorus-containing non-metal additive, it therefore would be obvious to one of ordinary skill in the art, to use the diphenylmethyl phosphonate, which is both disclosed by Mitamura in view of Yoel and encompassed within the scope of the present claims and thereby arrive at the claimed invention.
Regarding claim 14, as applied to claim 13, according to ChemicalBook, diphenylmethyl phosphonate has a structure as shown below, and therefore the valency of phosphorus in diphenylmethyl phosphonate is 5.
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ChemicalBook, page 1
Regarding claim 15, as applied to claim 11, Mitamura in view of Yoel further teaches the organophosphorus compound has a boiling point of 300 ° C or higher and is hardly lost by evaporation in the polyimide film production step (Yoel, page 5, 7th paragraph); since the organic phosphorus compound in the polyimide film increases its boiling point due to its interaction with the polyimide molecule, the organic phosphorus compound remains in the film without being evaporated during the polyimide production step, which is heated up to 400˚C at a boiling point of 200˚C or higher. Therefore, the organophosphorus compound would necessarily meet the claimed limitation of wherein a temperature at which the phosphorus-containing non- metal additive has a weight reduction rate of 5% in measurement by TG-DTA is not lower than 200°C.
Regarding claim 16, as applied to claim 11, Mitamura in view of Yoel further teaches it is characterized in that film thickness is 25-80µm (Mitamura, page 1, claim 5), which overlaps the range of the presently claimed.
As set forth in MPEP 2144.05, in the case where the claimed range “overlap or lie inside ranges disclosed by the prior art”, a prima facie case of obviousness exists, In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990).
Regarding claim 17, as applied to claim 11, Mitamura in view of Yoel further teaches the polyimide film is manufactured by imidating the polyamic acid which is a precursor, which is obtained by polyaddition of a diamine component and an acid dianhydride; the diamine component is preferably an aromatic diamine component (Mitamura, page 3, 4th-5th paragraphs from bottom); examples of the aromatic diamine component includes 4,4'-diaminodiphenyl ether (Mitamura, page 3, 3rd paragraphs from bottom).
Given that Mitamura in view of Yoel discloses the polyimide film that overlaps the presently claimed the polyimide film, including 4,4'-diaminodiphenyl ether as the the aromatic diamine component to produce the precursor of the polyimide film, it therefore would be obvious to one of ordinary skill in the art, to use 4,4'-diaminodiphenyl ether, which is both disclosed by Mitamura in view of Yoel and encompassed within the scope of the present claims and thereby arrive at the claimed invention.
Response to Arguments
Applicant primarily argues:
“However, the claimed range of inorganic particles of 0.02 to 0.06%and the claimed range of phosphorus content of 0.018 to 0.032% offers superior characteristics that would have been unexpected based on the teachings of the prior art.
Specifically, as shown in the tables of the present specification (included below),
Examples 1-20 all have an inorganic particle and total phosphorus content within the claimed ranges, whereas Comparative Examples 1-5 are either outside the claimed range of inorganic particles (Comparative Examples 1 and 5) or outside the claimed range of total phosphorus content (Comparative Examples 2-4).
As can be seen in the tables and discussed in paragraph [0096] of the present specification, Comparative Example 1 exhibits poor thermal diffusivity, the film was fused with itself in the graphitization step and a breakage occurred in Comparative Examples 2-4, and Comparative Example 5 has poor conveyability and breakage in the continuous carbonization step, so that it was not possible to obtain a graphite sheet from the polyimide film.”
Remarks, p. 2-3
The Examiner respectfully traverses as follows:
The data to show advantageous effects by the polyimide film in the present invention is not persuasive for the following reasons.
The data is not commensurate in scope with the scope of the claims. The specification only provides data for a polyimide film for a graphite sheet, comprising: inorganic particles selected from the group consisting of calcium carbonate (CaCO3), silica, calcium hydrogen phosphate (CaHPO4), and tricalcium phosphate (Ca3(PO4)2); and a specific phosphorus-containing non-metal additive, a content of the inorganic particles being from 0.02% by weight to 0.06% by weight, and a total phosphorus content in the inorganic particles and the phosphorus-containing non-metal additive being from 0.018% by weight to 0.032% by weight;
however, the claim broadly recites a polyimide film for a graphite sheet, comprising: inorganic particles selected from the group consisting of calcium carbonate (CaCO3), silica, calcium hydrogen phosphate (CaHPO4), tricalcium phosphate (Ca3(PO4)2) and calcium phosphate (Ca2P2O7); and any phosphorus-containing non-metal additive, a content of the inorganic particles being from 0.02% by weight to 0.06% by weight, and a total phosphorus content in the inorganic particles and the phosphorus-containing non-metal additive being from 0.018% by weight to 0.032% by weight.
Therefore, the Examiner has fully considered Applicant’s arguments, but they are found unpersuasive.
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.
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/KELING ZHANG/
Primary Examiner
Art Unit 1732