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 .
Claim Rejections - 35 USC § 102
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 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.
Claim(s) 1-3, 10, and 11-26 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Wu et al. (“A Crown Ether-Containing Copolyimide Membrane with Improved Fee Volume for CO2 Separation” Industrial & Engineering Chemistry Research, Vol 58, Issue 31, July 2019).
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Regarding claims 1-3, 10-16; Wu et al. teaches a cyclic crown ether-based copolyimide having the formula below [Scheme 1].
The cyclic crown ether-based copolyimide reads on the claimed polymer wherein X and Y are C1 alkylene substituted with R4, wherein R4 is a C1 alkyl substituted R6, wherein R6 is a halo (claim 10-11); A is a phenylene (claim 2-3); j, k, m, and n are 0 (claim 12); the sum of p and q is 4 (claim 13), wherein each p and q is 2 (instant claim 14-15); s and t are 0 (claim 16). The Examiner makes note that the claim language of the independent claim requires a polymer “comprising”, thus may contain additional linking groups within said polymer.
Regarding claim 17-22; it is noted that the substituent R4 on the phenyl ring is optional (required in an amount of 0-4), thus not explicitly required by the claim language; p and q are 2 (the same).
Regarding claims 23-25; Wu et al. teaches the molar ratios of x:y are 3:1, 1:1, and 1:3 [Table 1].
Regarding claim 26; in the instance the molar ratio of x:y is 1:3 [Table 1], it is the Examiner’s position that the polymer required by claim 1 comprises at least about 80 wt% of a total amount of the structural unit of Formula I and II.
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.
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.
Claim(s) 1-22 and 26 is/are rejected under 35 U.S.C. 103 as being unpatentable over Zhuang et al. (CN 113321807), wherein the machine English translation is used for citation.
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Regarding claims 1-16; Zhuang et al. teaches a crown ether-containing copolymerized polyimide prepared from a dianhydride R1, selected from 4,4'-(hexafluoroisopropylene) diphthalic anhydride (6FDA), triptycene-2,3,6,7-tetracarboxylic dianhydride (TTD), which can be used in a combination of at least two [029]; R2 is selected from 9,9-bis(4-aminophenyl)fluorene (BMF) or 2,6-diaminotoluene (DAP) [031], and R3 is selected from trans-bis(aminobenzo)-18-crown-6 [033].
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The crown ether-containing copolymerized polyimide reads on the claimed polymer wherein X and Y are C1 alkylene substituted with R4, wherein R4 is a C1 alkyl substituted R6, wherein R6 is a halo (claim 10-11); A is a phenylene comprising one R4 C1 alkyl group (when DAP is employed; instant claims 2-5) or A is a group of formula III, wherein R7 and R8 together with the carbon to which they are attached form a fluorene (when BMF is employed; claims 8-9) and/or A is an triptycene (when TTD is employed; claims 6-7); j, k, m, and n are 0 (claim 12); the sum of p and q is 4 (claim 13), wherein each p and q is 2 (instant claim 14-15); s and t are 0 (claim 16).
Zhuang et al. teaches all of the above required components, however fails to explicitly disclose each in a preferred embodiment. A reference may be relied upon for all that it would have reasonably suggested to one having ordinary skill the art, including the non-preferred embodiments. See Merck & Co. v. Biocraft Laboratories, 874 F.2d 804, 10 USPQ2d 1843 (Fed. Cir.); MPEP §2123. Zhuang et al. does not specifically disclose an polymer prepared 6FDA, DAP or BMF, and t-DADB-18C6. However, at the time of invention a person of ordinary skill in the art would have found it obvious to prepare a polyimide copolymer from the reactants 6FDA, DAP, and t-DADB-18C6 based on the invention of Zhuang et al., and would have been motivated to do so since Zhuang et al. suggests that the polyimide copolymer can be prepared from 6FDA, DAP, and t-DADB-18C6 [029-033]. Additionally, “It is prima facie obvious to combine two compositions each of which is taught by the prior art to be useful for the same purpose, in order to form a third composition to be used for the very same purpose.... [T]he idea of combining them flows logically from their having been individually taught in the prior art.” In re Kerkhoven, 626 F.2d 846, 850, 205 USPQ 1069, 1072 (CCPA 1980) (citations omitted) [see MPEP 2144.06].
Regarding claims 17-22 and 26; the crown ether-containing copolymerized polyimide of Zhuang et al. reads on the claimed polymer when 6FDA, DAP, and t-DADB-18C6 are used, thus comprising at least about 80wt% of a total amount (i.e. 100 wt%) of the structural repeat unit of formula I and II.
Response to Arguments
Applicant's arguments filed 15 April 2026 have been fully considered but they are not persuasive.
Applicants argue the Examiner notes that claim 1 uses the transitional phrase “comprising” and alleges that because of such language, the polymer “may contain additional linking groups.” Applicants argue this reasoning improperly applies obviousness-style logic to an anticipation rejection; the test for anticipation is not whether the prior art polymer could be modified to fall within the claim, but whether the prior art actually disclose the claimed polymer.
The Examiner respectfully disagrees. The anticipatory rejection of record does not modify the prior art polymer to fall within the claim. The statement regarding the use of the transitional phrase “comprising” is directed to the interpretation of the instant claims and the breadth by which they are examined. That is, the polymer of instant claim 1 merely comprises a structural repeat unit of Formula I; and a structural repeat unit of Formula II. As set forth by the claim language, the repeat units I and II are not required sequentially, nor is it required that they are the only repeat units of the claimed polymer. Since Wu et al. teaches a polymer comprising a repeating unit of Formula I and a repeating unit of Formula II, it anticipates the claimed polymer as required by the instant claim language.
Applicants argue Wu discloses crown ether-containing polyimides synthesized from three distinct monomeric building blocks including a dianhydride and multiple distinct diamines; Wu cannot be formed using only the two structural repeat units recited in claim 1. In response to applicant's argument that the references fail to show certain features of the invention, it is noted that the features upon which applicant relies (i.e., using only two structural repeat units) are not recited in the rejected claim(s). Although the claims are interpreted in light of the specification, limitations from the specification are not read into the claims. See In re Van Geuns, 988 F.2d 1181, 26 USPQ2d 1057 (Fed. Cir. 1993).
Regarding arguments directed to Zhuang, Applicants are reminded that a reference may be relied upon for all that it would have reasonably suggested to one having ordinary skill the art, including the non-preferred embodiments. Merck & Co. v. Biocraft Laboratories, 874 F.2d 804, 10 USPQ2d 1843 (Fed. Cir.); see MPEP §2123. Zhuang teaches it suitable to employ 4,4'-(hexafluoroisopropylene) diphthalic anhydride (6FDA), triptycene-2,3,6,7-tetracarboxylic dianhydride (TTD), which can be used in a combination of at least two [029]; 9,9-bis(4-aminophenyl)fluorene (BMF) or 2,6-diaminotoluene (DAP) [031], and trans-bis(aminobenzo)-18-crown-6 [033] in order to achieve the crown ether-containing copolymerized polyimide of the present invention.
As stated above, the instant claims are directed to a polymer “comprising” a structural repeat unit of Formula I and a structural repeat unit of Formula II. The scope of the instant claims does not exclude a polymer having other repeat units (i.e. derived from imide compounds).
In response to applicant's argument that the examiner's conclusion of obviousness is based upon improper hindsight reasoning, it must be recognized that any judgment on obviousness is in a sense necessarily a reconstruction based upon hindsight reasoning. But so long as it takes into account only knowledge which was within the level of ordinary skill at the time the claimed invention was made, and does not include knowledge gleaned only from the applicant's disclosure, such a reconstruction is proper. See In re McLaughlin, 443 F.2d 1392, 170 USPQ 209 (CCPA 1971).
As such, Wu et al. and Zhuang et al. are still relied upon for teaching the basic claimed polymer, as required by the instant claim language.
Conclusion
THIS ACTION IS MADE FINAL. 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.
Correspondence
Any inquiry concerning this communication or earlier communications from the examiner should be directed to JESSICA ROSWELL whose telephone number is (571)270-5453. The examiner can normally be reached M-F 8:00 am to 5:00 pm.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Mark Eashoo can be reached at 571-272-1197. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/JESSICA M ROSWELL/Primary Examiner, Art Unit 1767
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