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 .
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.
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Claims 1-2 and 18 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claim 21 of copending Application No. 18/200,114. Although the claims at issue are not identical, they are not patentably distinct from each other because both disclose a polyimide precursor composition.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Regarding claims 1 and 18:
Copending claim 1 recites a polyimide precursor composition comprising a unit derived from an acid anhydride or a diamine comprising a structure of the following Chemical Formula 1, which is the same as present Chemical Formula 1. Copending claim 21 requires the composition to further comprise a mixed solvent of a first solvent having a negative distribution coefficient and a second solvent having a positive distribution coefficient, wherein the mass ratio of the first solvent to the second solvent is 6:4 to 9:1.
Regarding claim 2:
The structure according to Chemical Formula 1 encompasses a structure according to present Chemical Formula 2. Before the effective filing date of the claimed invention, it would have been obvious to one of ordinary skill in the art to select from among the compounds according to Chemical Formula 1, and arrive at the claimed Chemical Formula 2 to provide a compound according to the copending claims.
Claim Rejections - 35 USC § 112
Claim 16 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 13 a method comprising the step of “reacting an acid anhydride or a diamine…with a solvent having a negative partition coefficient and a solvent having a positive partition coefficient”. Dependent claim 16 further requires the steps of “reacting a monomer comprising the acid anhydride of the diamine…in the presence of the solvent comprising a negative partition coefficient…and adding the solvent comprising a positive partition coefficient.” The steps required by claim 16 are indefinite because it is not clear when the two solvents are mixed. Parent claim 13 requires the step of “reacting” in the presence of two solvents. Claim 16, however, appears to not provide a mixed solvent until after the “reacting” step. Clarification is requested.
Applicant appears to intend for claim 13 to encompass two different embodiments described in the specification at page 22, line 2 through page 23, line 3 (PGPub at [0090-0092]), to which dependent claims 15 and 16 correspond. The current issue is that claim 13 requires the “reacting” step to be “with” the two solvents, i.e., creating a one-step method in terms of a mixed solvent. Thus, it cannot encompass the “two step[]” method described on page 22, lines 11-17 and in claim 16. The examiner respectfully suggests that if Applicant wishes for claim 13 to encompass both embodiments, then claim 13 should be re-written to recite the two embodiments in the alternative.
Allowable Subject Matter
Claims 3, 5-6, 8-13, 15, 17, and 19-20 are 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:
Newly cited Yun (WO 2020/040495; citing the machine translation provided with this Office Action) discloses a polyimide precursor composition [abstract; 7-10]. The precursor composition according to its invention comprises the polymerization product of a dianhydride, a sulfone-containing diamine according to its Chemical Formula 1, and an amine-terminated methylphenyl siloxane oligomer; and 50-80% by weight of an organic solvent having a positive distribution coefficient (log P) and 20-50% of an organic solvent having a negative distribution coefficient [11-17]. The amine-terminated methylphenyl siloxane oligomer has the following structure [98], which differs from the claimed one in that the linking group corresponding to L2 on the right is bonded to a dimethyl siloxane group rather than a siloxane group having R3 and R4 as presently claimed.
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Yun’s Example 1 discloses a polyimide precursor formed from a DPS-DMS oligomer having terminal amines, in the presence of NMP (negative partition coefficient) and DEAc (positive partition coefficient) at a ratio of 3:10 (i.e., about 2.3:7.7), which is outside the claimed range [203-205]. Comparative Examples 2 and 3 repeat the experiment of Example 1 except that the ratio of NMP:DEAc is 8:2 and 10:3, respectively [213-217]. Given that these are Comparative Examples, one skilled in the art would not seek to modify such examples to arrive at the claimed invention.
Yun (EP 3536731) discloses a polyimide copolymer [abstract; 0002]. The copolymer according to its invention is produced by polymerizing a composition comprising an acid dianhydride, a diamine, and a siloxane-based oligomer, and a solvent having a positive distribution coefficient [0012].
Yun teaches the use of a solvent having a negative distribution coefficient undesirably results in cracks, etc. [0080]. Comparative Example 1 describes a composition comprising N-methylpyrrolidone (NMP) as a solvent to which is added an acid dianhydride, a diamine, and an amine-terminated diphenylsiloxane-dimethylsiloxane co-oligomer, which are reacted together [0116]. Comparative Example 2 describes a similar composition [0117]. The oligomer has a structure within the scope of the present claims [0013]. NMP has a negative partition coefficient. Therefore, the reference teaches away from the claimed composition.
Yun (US 2020/0040152) discloses a laminated film comprising a first polyimide film and a second polyimide film [abstract; 0002; 0010-0013]. The second polyimide film is formed from a siloxane-based polyamic acid formed by reacting a dianhydride and a diamine [0019-0021; 0099; 0107]. The diamine includes an amino-modified methylphenyl silicone sold under the name X22-1660B-3, which is the same material used in the present invention [0110] (see the present specification at page 10, line 21 through page 11, line 10). The polyimide precursor solution comprises an organic solvent, preferably one having a positive partition coefficient [0126]. Although the reference teaches a mixture of a solvent having a positive partition coefficient (e.g., DEF, DEAc, etc.) and a solvent having a negative partition coefficient, it teaches the use of at least 50% by weight of the solvent with the positive partition coefficient [0126-0127]. Therefore, the reference teaches away from the claimed composition.
Yun (US 2019/0345288) discloses a polyimide precursor composition formed from the reaction of an acid dianhydride, a diamine, and a dimethylsiloxane-diphenylsiloxane oligomer diamine [abstract; 0001; 0011-0012; 0113]. The composition further contains an organic solvent that has a positive partition coefficient [0011; 0013]. The reference teaches the use of a solvent having a negative distribution coefficient undesirably results in cracks, etc. [0086]. Therefore, the reference teaches away from the claimed composition.
Response to Arguments
Applicant’s arguments with respect to the claim(s) have been considered but are moot because the new ground of rejection does not rely on any reference applied in the prior rejection of record for any teaching or matter specifically challenged in the argument.
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 JOHN D FREEMAN whose telephone number is (571)270-3469. The examiner can normally be reached Monday-Friday 11-8PM EST.
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/JOHN D FREEMAN/Primary Examiner, Art Unit 1787