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 .
DETAILED ACTION
All the references cited in the International Search Report have been considered. None is anticipatory.
Election/Restrictions
The applicant has elected Group I (claims 1-2 and 5) without traverse.
This restriction is made FINAL. See previous action for the reasons of applying restriction.
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(s) 5 (is)are rejected under 35 U.S.C. 112(b) as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor, or for pre-AIA the applicant regards as the invention.
Claim 5 fails to define “total substance amount”, which is not obvious to one of ordinary skill in the art. The limitation is construed as molar ratio in view of instant examples for examination purpose.
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 of this title, 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.
Claim(s) 1-2 and 5 is (are) rejected under 35 U.S.C. 103(a) as being unpatentable over Park et al. (US 20130065018) in view of Kohama et al. (WO 2018/079710, US 20210283882 as English equivalent), both listed on IDS.
As to claims 1-2 and 5, Park (abs., claims, examples) discloses a polyimide (22-24) for producing metal laminates (6) comprising at least one dianhydride, such as 3,3′,4,4′-biphenyltetracarboxylic dianhydride (BPDA) and 4,4′-oxydiphthalic anhydride (OPDA), and at least one diamine, such as p-phenylenediamine (PPD) and 1,3-bis(4-aminophenoxy)benzene (TPER). The molar ratio of dianhydrides to diamines is 0.9-1.1, overlapping with the range of claim 5. It has been found that where claimed ranges overlap ranges disclosed by the prior art, a prima facie case of obviousness exists - see MPEP 2144.05.
Park is silent on the ratios of claims 1-2.
In the same area of endeavor of producing polyimide for producing metal laminates (1, abs., claims, examples), Kohama (16-25) discloses a polyimide comprising dianhydrides of BPDA and ODPA (chem.2) and at least one diamine including PPD (Chem.2) and TPER (25). In order to obtain a heat resistant and thermal fusion-bondable polyimide, BPDA and PPD are selected at 70 mol% and accordingly ODPA and TPER would be selected at 30 mol%.
Therefore, as to claims 1-2 and 5, it would have been obvious to one of ordinary skill in the art to have modified the polyimide disclosed by Park and utilized the polyimide with the aforementioned molar ratio of comonomers in view of Kohama, because the resultant polyimide would yield improved heat resistance and thermal fusion-bondability. The resultant polyimide (BPDA/ODPA//PPD/TPER, 710:30) would yield a corresponding ratio of B1+B2=100, A1+A2=100, A1+B1/A2+B2=3.5 in claims 1-2.
The references are silent on the claimed property of “non-thermoplastic” claim 1. Accordingly, the examiner recognizes that not all of the claimed effects or physical properties are positively stated by the references. However, the references teach a composition containing the claimed components in the claimed amounts prepared by substantially similar components, in particular, the aforementioned molar ratio of comonomers. Therefore, one of ordinary skill would have a reasonable expectation that the claimed effects and physical properties, i.e. non-thermo-plasticity, would necessarily flow from a composition containing all of the claimed components in the claimed amounts prepared by a substantially similar process. Where the claimed and prior art products are identical or substantially identical in structure or composition, or are produced by identical or substantially identical processes, a prima facie case of either anticipation or obviousness has been established. See In re Best, 562 F.2d 1252, 1255, 195 USPQ 430, 433 (CCPA 1977); In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990); see also MPEP § 2112.01(I)-(II). If it is the applicant’s position that this would not be the case: (1) applicant must provide evidence to support the applicant’s position, and (2) it would be the examiner’s position that the application contains inadequate disclosure on how to obtain the claimed effects or properties with only the claimed components in the claimed amounts by the disclosed or claimed process.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to SHANE FANG whose telephone number is (571)270-7378. The examiner can normally be reached on Mon-Thurs. 8am-6pm. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Randy Gulakowski can be reached on 571.572.1302. Information regarding the status of an application may be obtained from the Patent Application Information Retrieval (PAIR) system. Status information for published applications may be obtained from either Private PAIR or Public PAIR. Status information for unpublished applications is available through Private PAIR only. For more information about the PAIR system, see http://pair-direct.uspto.gov. Should you have questions on access to the Private PAIR system, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative or access to the automated information system, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/SHANE FANG/Primary Examiner, Art Unit 1766