DETAILED ACTION
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
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 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.
Election/Restrictions
Applicant’s election without traverse of Group I, claims 1-10 and 16-20 in the reply filed on 12/5/25 is acknowledged.
Claims 11-15 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected invention, there being no allowable generic or linking claim. Election was made without traverse in the reply filed on 12/5/25.
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, 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.
Claim(s) 1-10 and 16-20 is/are rejected under 35 U.S.C. 103 as being unpatentable over Ogawa et al. (WO 2020/189481, “Ogawa” a machine copy of which is provided and used as the citation copy unless otherwise noted)
Regarding claims 1, 16, and 20, Ogawa teaches a polyimide precursor obtained from a tetracarboxylic dianhydride (p. 4, 5), a diamine (p. 9, including diamine group), and a hydroxyl-containing alkyl (meth) acrylate (pp. 29-30, pp. 5-6, acrylate compound (III)). Further the composition need not include fluorine. Ogawa additionally teaches that the composition may be synthesized by reacting the dianhydride with a diamine and further with a carboxylic acid (pp. 14-18 and see synthesis examples pp. 44-48). The dianhydride and diamine form the mains chain of the polyimide precursor and the (meth)acylate forms a branch (see formula (1), pp. 10-11; and see original document, pp. 3-4). Ogawa additionally teaches that the precursor may be made into a resin and a cured product (pp. 3-4, 7, curable resin composition). Ogawa additionally teaches embodiments wherein the molar ratio of tetracarboxylic dianhydride to diamine may be on the range of around 1:1 (see, e.g., Synthesis example 1, p. 44, wherein 64.5 mmol dianhydride is reacted with 58.7 mmol diamine resulting in a ratio of dianhydride to diamine of 52%). A prima facie case of obviousness exists where the claimed ranges and prior art ranges do not overlap but are close enough that one skilled in the art would have expected them to have the same properties. Titanium Metals Corp. of America v. Banner, 778 F.2d 775, 227 USPQ 773 (Fed. Cir. 1985). See MPEP 2144.05. Furthermore, it should be noted that claim 1 includes product-by-process limitations. "[E]ven though product-by-process claims are limited by and defined by the process, determination of patentability is based on the product itself. The patentability of a product does not depend on its method of production. If the product in the product-by-process claim is the same as or obvious from a product of the prior art, the claim is unpatentable even though the prior product was made by a different process." In re Thorpe, 777 F.2d 695, 698, 227 USPQ 964, 966 (Fed. Cir. 1985). Please see MPEP 2113. In the present case, the method of making the polyimide precursor (i.e., by ring-opening substitution and polymerization), while expected to be the conventional manner of preparation, does not affect the structure of the claimed polyimide precursor, particularly in view of, for example, claim 6 wherein a conventional polyimide precursor is described. Therefore, Ogawa is considered to teach the presently claimed structure of a polyimide precursor.
Regarding claim 2, Ogawa additionally teaches that the teatracarboxylic dianhydride may comprise, for example, 2,3,6,7-naphthalenetetracarboxyic dianhydride (e.g., p. 5).
Regarding claim 3, Ogawa additionally teaches that the diamine may comprise, for example, 4,4’-diaminobiphenyl (e.g., p. 9).
Regarding claim 4, Ogawa additionally teaches that the alkyl (meth)acrylate may comprise, for example, a hydroxyethyl (meth)acrylate (e.g., p. 31).
Regarding claim 5, Ogawa additionally teaches embodiments wherein the total molar fraction of the alkyl (meth)acrylate may be on the range of from double the amount of the dianhydride used (Synthesis example 2 includes 129 mmol of 2-hydroxyethyl methacrylate to 64.5 mmol of dianhydride). A prima facie case of obviousness exists where the claimed ranges and prior art ranges do not overlap but are close enough that one skilled in the art would have expected them to have the same properties. Titanium Metals Corp. of America v. Banner, 778 F.2d 775, 227 USPQ 773 (Fed. Cir. 1985). See MPEP 2144.05.
Regarding claim 6, Ogawa additionally teaches that the group corresponding to Ar1 may be a tetravalent organic group (e.g., pp. 15, 16; see original copy of Ogawa, p. 3). Ogawa additionally teaches that the units corresponding to those of the R1 and R2 groups may read on those claimed (e.g., may be a hydrogen, or ethylene carboxylic group, p. 13, 6, structure (III) wherein R201 may be an ethylene, p. 6; and see original copy of Ogawa, [0014], [0023] – [0026]). Further, the molar ratio of tetracarboxylic dianhydride to diamine may be on the range of around 1:1 (see, e.g., Synthesis example 1, p. 44, wherein 64.5 mmol dianhydride is reacted with 58.7 mmol diamine resulting in a ratio of dianhydride to diamine of 52%). A prima facie case of obviousness exists where the claimed ranges and prior art ranges do not overlap but are close enough that one skilled in the art would have expected them to have the same properties. Titanium Metals Corp. of America v. Banner, 778 F.2d 775, 227 USPQ 773 (Fed. Cir. 1985). See MPEP 2144.05.
Regarding claim 7, Ogawa additionally teaches that the group corresponding to Ar1 may be a tetravalent organic group (e.g., pp. 15, 16 and see original copy of Ogawa, [0015] - [0017], structure corresponding to claimed first in series of structures of claim 7).
Regarding claim 8, Ogawa additionally teaches that the group corresponding to Ar2 may be among those claimed (e.g., pp. 13; and see original copy of Ogawa, pp. 3-4, structure corresponding to claimed first in series of structures of claim 8).
Regarding claim 9, Ogawa additionally teaches that the units corresponding to those of the R1 and R2 groups may read on those claimed (e.g., may be a hydrogen, or ethylene carboxylic group, p. 13, 6, structure (III) wherein R201 may be an ethylene, p. 6; and see original copy of Ogawa, [0014], [0023] – [0026]).
Regarding claim 10, Ogawa additionally teaches that the units corresponding to those of the R1 and R2 groups may read on those claimed (e.g., may be a hydrogen, or ethylene carboxylic group, p. 13, 6, structure (III) wherein R201 may be an ethylene, p. 6; and see original copy of Ogawa, [0014], [0023] – [0026]) and that the total molar fraction of each may be on the range of from 30% to 100% of the dianhydride used (Synthesis example 2 includes 129 mmol of 2-hydroxyethyl methacrylate to 64.5 mmol of dianhydride, being equivalent to R1+R2 and thus being roughly equivalent to a fraction of 100% by mol of the dianhydride). A prima facie case of obviousness exists where the claimed ranges and prior art ranges do not overlap but are close enough that one skilled in the art would have expected them to have the same properties. Titanium Metals Corp. of America v. Banner, 778 F.2d 775, 227 USPQ 773 (Fed. Cir. 1985). See MPEP 2144.05.
Regarding claim 17, Ogawa additionally teaches that the resin composition may be included in an amount of up to 30% of the total composition (p. 15). The Examiner notes that in the case where the claimed ranges "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). Please see MPEP 2144.05.
Regarding claims 18 and 19, Ogawa additionally teaches the inclusion of a photoinitiator in an amount of 0.1 to 30% by mass (pp. 27-28), an additional crosslinking monomer in an amount of up to 60% by mass (p. 33), and a solvent in an amount reading on the claimed range (i.e., total solid content of from 5 to 80% reads on the claimed range of from 170 to 2000 parts by weight solvent content, pp. 33-34).
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. Huang et al. (US 2021/0364919), which teaches a similar polyimide ester (pp. 1-3) as that presently claimed.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to ANTHONY J FROST whose telephone number is (571)270-5618. The examiner can normally be reached on Monday to Friday, 8:00am to 4:00pm.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Aaron Austin, can be reached on 571-272-8935. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/ANTHONY J FROST/Primary Examiner, Art Unit 1782