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 .
Claims 19-38 are pending as amended on 6/10/2026.
The new grounds of rejection set forth below were necessitated by Applicant’s amendments to the claims. Therefore, this action is properly made final.
Any rejections and/or objections made in the previous Office action and not repeated below are hereby withdrawn. The text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office Action.
Specification
The amendment filed 6/10/2026 is objected to under 35 U.S.C. 132(a) because it introduces new matter into the disclosure. 35 U.S.C. 132(a) states that no amendment shall introduce new matter into the disclosure of the invention. Applicant is required to cancel the new matter in the reply to this Office Action. The added material which is not supported by the original disclosure is as follows (references are made to the Marked-Up Copy filed on 6/10/2026):
In the specification as originally filed, Formulas II, IV, V and VI contained ambiguous end groups, as discussed in previous actions (see paragraphs 8-13 of the 7/14/2025 action). Formulas II, IV, V and VI have been replaced with new formulas which show end group structures. Applicant argues (p 9 of remarks filed on 6/10/2026) that the new end group structures are inherent from the chemical reactions described in the original specification.
As set forth in MPEP 2163.07 (II), an amendment to correct an obvious error does not constitute new matter where one skilled in the art would not only recognize the existence of the error in the specification, but also the appropriate correction. For example, Applicant has corrected Chemical Formula (I) (see pp 7-8) to show the appropriate bonds in the aromatic ring, and, Applicant has corrected Chemical Formula (III) (see p 11) to replace obviously incorrect -NH2- groups with the appropriate -NH- groups. These corrections do not constitute new matter: one skilled in the art would have recognized the existence of the obvious errors, as well as the appropriate corrections.
In contrast, while one skilled in the art would have recognized that the formulas II, IV, V and VI in the instant specification as originally filed are missing end groups, one would not have recognized the newly created end groups (or, for formula VI, the open bonds permitting any end group) in the amendment filed on 6/10/2026 as being the appropriate correction. There are numerous possible end group structures which could have been envisaged by one having ordinary skill in the art such as (but not limited to) a closed anhydride ring, an anhydride ring opened with two carboxylic groups (such as shown on the right side of original formula V), an anhydride ring opened with both carboxylic groups reacted with diamine (such as shown on the left side of new formula V), or a connection to further repeating units. Therefore, because one would not have recognized the appropriate correction to the Formulas II, IV, V and VI, the amendment to the formulas in the specification filed 6/10/2026 constitutes new matter.
Claim Rejections - 35 USC § 112
Claims 19-38 are rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the written description requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for applications subject to pre-AIA 35 U.S.C. 112, the inventor(s), at the time the application was filed, had possession of the claimed invention.
In claim 19, Formula II previously contained ambiguous end groups, as discussed in previous actions (see paragraphs 8-13 of the 7/14/2025 action). Formula II has been replaced with a new formula which shows end group structures. Applicant argues (p 9 of remarks filed on 6/10/2026) that the new end group structures are inherent from the chemical reactions described in the original specification.
As set forth in MPEP 2163.07 (II), an amendment to correct an obvious error does not constitute new matter where one skilled in the art would not only recognize the existence of the error in the specification, but also the appropriate correction. For example, Applicant has corrected Chemical Formula (I) recited in claim 19 to show the appropriate bonds which characterize an aromatic ring. This correction does not constitute new matter: one skilled in the art would have recognized the existence of the obvious error, as well as the appropriate correction.
In contrast, while one skilled in the art would have recognized that Formula II as originally filed was missing end groups, one would not have recognized the newly created end groups in the amendment filed on 6/10/2026 as being the appropriate correction. There are numerous possible end group structures which could have been envisaged by one having ordinary skill in the art such as (but not limited to) a closed anhydride ring, an anhydride ring opened with two carboxylic groups (such as shown on the right side of original formula V), an anhydride ring opened with both carboxylic groups reacted with diamine (such as shown on the left side of new formula V), or a connection to further repeating units. Therefore, because one would not have recognized the present amendment as being the appropriate correction to Formula II, the subject matter of amended claim 19 was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, at the time the application was filed, had possession of the claimed invention
Claims which depend from claim 19 are rejected for the same reasons set forth above, because they incorporate all of the limitations of the independent claim. Additionally, new claims 35 and 38 recite formulas VI and IV, respectively, which were not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, at the time the application was filed, had possession of the claimed invention. See the discussion regarding amended formulas VI and IV in the above objection to the specification.
Citation of Pertinent Prior Art
The examiner is unaware of prior which discloses or suggests the presently claimed process. The claims are not in condition for allowance due to the rejection above under 35 USC 112(a), however, the claims are free of prior art. The closest prior art references are considered to be (1) Endrey et al (US 3179630) and (2) Nakayama (US 2014/0218875), as discussed below.
(1): Endrey teaches forming a polyimide coating on a surface, including metals in the form of sheets, fibers, wires etc. (col 4, lines 30-33 and 44-45; col 19, lines 45-56). Metal in the form of a sheet, fiber or wire corresponds to “a metal article” as presently recited. Endrey further teaches that the polymer has potential as a low friction and high temperature lubricating film (col 20, lines 19-31).
As to instant process step (a):
Endrey teaches a process that comprises a first step of forming a polyamide-acid (i.e., a polyamic acid which is an “imide precursor”) by reacting a dianhydride with a diamine in an organic solvent (col 1, lines 39-65) at a temperature below 100 C (col 3, lines 2-5), preferably below 60 C (col 3, lines 13-19). Endrey further teaches several factors to consider in determining a specific reaction temperature, such as specific monomer, solvent, desired product concentration, and desired reaction length (col 2, line 58 to col 3, line 1). Endrey’s preferred temperature range (below 60 C) for the reaction of diamine and dianhydride encompasses the presently recited range in step (a) of 40-60 C (and 45-55 C recited in claim 25).
Endrey names several dianhydrides which are suitable for use, including pyromellitic dianhydride (col 6, lines 43-44). Endrey further names several diamines which are suitable for use, including hexamethylenediamine, octamethylenediamine (diamineoctane), decamethylene diamine (diaminodecane) and 2,11-diamino-dodecane (dodecanediamine) (col 5, lines 67-75). Endrey teaches utilizing equal molar amounts of the diamine or the dianhydride (col 3, lines 48-55). Equal molar amounts corresponds to a molar ratio of 1, which falls within the presently recited dianhydride:diamine molar ratio range of 0.25-4 (and 0.33-1 recited in claim 24).
Endrey fails to teach the formation of an imide precursor which has a structure according to instant general formula (I). However, given that Endrey suggests a method wherein the same monomers are reacted in the same proportions and at the same temperature as claimed and described in the instant specification, there is reasonable basis to conclude that Endrey suggests a process wherein the step of forming “polyamide-acid” includes formation of at least some amount of a precursor having the same structure as claimed and described in the instant specification (i.e., at least some amount of precursor according to instant formula (I), as recited in claim 19, as well as at least some amount of precursors according to formulas (III) and (IV), as recited in claim 38).
As to instant process step (b):
Endrey teaches that the polyamide-acid composition in solvent may be used as a liquid coating composition. The polyamide-acid coatings are then converted to polyimide coatings (col 4, lines 25-45). However, Endrey discloses conversion by treatment with a lower fatty acid anhydride (col 7, lines 15-27), and teaches heating to 300 C or above (col 7, lines 55-61). Endrey does not teach the formation of a partially imidized structure according to instant general formula (II), which has 2 dianhydride units, four diamine units, and only 1 imide ring. Endrey teaches utilizing anhydride and pyridine as imidization agents (i.e., a chemical conversion), which differs from the thermal imidization process described in the instant specification (the instant specification does not describe the use of chemical imidization agents). Due to the differences between the instant process and Endrey’s disclosed process, the examiner does not have sufficient evidence to conclude that any imide according to instant formula (II) must form when the temperature in Endrey’s process falls within the claimed range of 110-130 C (i.e., a temperature range which must be met for at least some duration of time while Endrey’s temperature is raised up to 300 C).
(2) Nakayama discloses a process for preparing a polyimide from an aqueous polyimide precursor solution [0001].
As to instant step (a):
Nakayama discloses reacting a dianhydride and a diamine component in the presence of water as a reaction solvent [0077, 0095], at a temperature most preferably from 50-80 C [0096], which overlaps the presently claimed range of 40-60 C (and the narrower range of 45-55 C recited in claim 25), using substantially equimolar amounts of dianhydride and diamine [0097] (i.e., a molar ratio of substantially 1, which falls within the presently claimed range of 0.25-4, as well as within the narrower range recited in dependent claim 24), to obtain the aqueous polyimide precursor solution composition [0095].
Nakayama names pyromellitic dianhydride (PMDA) as an example of a preferred aromatic dianhydride [0099], and names hexamethylenediamine (HMDA) as a preferred aliphatic diamine [0108].
As to instant step (b):
Nakayama discloses (see [0166-7]) an embodiment wherein an electrode mixture paste comprising a binder resin composition (i.e., a paste comprising the aqueous polyimide precursor composition, see [0160]) is heated at a temperature from 80 C to 400 C (which encompasses the presently claimed range of 110-130 C) to remove solvent and effect imidization (which corresponds to converting at least part of the imide precursor into an imide, thereby forming an imide composition, as presently recited).
Nakayama fails to disclose the formation of an imide precursor according to instant formula (I) and a partially imidized imide which has a structure according to instant general formula (II). Instant formula (I) has 1 PMDA unit and 2 aliphatic diamine units, and instant formula (II) has 2 PMDA units and 4 aliphatic diamine units. That is, both formulas have a ratio of dianhydride:diamine units of 1:2, and, are formed from a diamine component which is 100 mol% aliphatic diamine.
Nakayama discloses utilizing substantially equimolar amounts of diamine and dianhydride [0097], and, requires a specific combination of tetracarboxylic and diamine components as set forth in paragraphs [0029-34]. In view of the proviso set forth in [0032], Nakayama permits the tetracarboxylic component to be entirely a dianhydride such as PMDA. However, in view of the proviso in [0034], an aliphatic diamine is only permitted to be less than 50 mol% of the diamine component. While it is reasonable to conclude that a reaction product of substantially equimolar amounts of diamine and dianhydride, as taught by Nakayama, includes at least some amount of low molecular weight product having 3 or 5 monomer residues, the examiner does not have sufficient evidence to conclude that Nakayama suggests a process (which requires the diamine component to be less than 50 mol% aliphatic diamine) which would result in the formation of amine-terminated reaction products with 3 or 5 monomer residues, and, which have entirely (100 mol%) aliphatic diamine residues.
Response to Arguments
Applicant’s arguments submitted on 6/10/2026 have been fully considered.
In view of the amendments to the claims and specification, the previously set forth objections and rejections have been withdrawn. However, in view of the new objection to the specification and the new rejection of the claims under 35 USC 112(a) above, the application is not in condition for allowance.
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 RACHEL KAHN whose telephone number is (571)270-7346. The examiner can normally be reached Monday to Friday, 8-5.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Randy Gulakowski can be reached at 571-272-1302. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/RACHEL KAHN/Primary Examiner, Art Unit 1766
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