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 .
A request for continued examination under 37 CFR 1.114, including the fee set forth in 37 CFR 1.17(e), was filed in this application after final rejection. Since this application is eligible for continued examination under 37 CFR 1.114, and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114. Applicant's submission filed on 10/14/2025 has been entered.
Claims 19-27 are pending as amended on 10/14/2025.
Any rejections and/or objections made in the previous Office action and not repeated below are hereby withdrawn.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 disclosure is objected to because of the following informalities:
There are numerous chemical structures throughout the specification which contain non-aromatic rings where aromatic rings (derived from pyromellitic dianhydride) should be shown. Additionally, numerous chemical structures are light and difficult to read, and should be replaced with darker/clearer structural formulas. Appropriate correction is required.
Claim Objections
Claim 19 is objected to because of the following informalities: The formula (I) recited in claim 19 shows a non-aromatic ring. The claimed process requires reaction of pyromellitic dianhydride (an aromatic dianhydride), and there is no disclosure or recitation of any steps which would result in hydrogenation of an aromatic ring. There is reasonable basis to conclude, therefore, that the ring in formula (I) was intended to be an aromatic ring. Appropriate correction to replace the aromatic ring, and, to fix the “H” bonded to a nitrogen atom which currently appears as “II,” is required.
Claim Rejections - 35 USC § 112
The following is a quotation of the first paragraph of 35 U.S.C. 112(a):
(a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
The following is a quotation of the first paragraph of pre-AIA 35 U.S.C. 112:
The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention.
Claims 19-27 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.
New independent claim 19 is substantially similar to previously presented (now cancelled) claim 1. The formula for the imide having general formula (II) has been changed to a formula which shows methyl end groups:
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The previously recited formula (II) (see claims dated 5/30/2025) showed terminal lines, without specifying that a “CH3” group must be at each line end.
The previous action indicated that it was not clear what structure was intended by the lines in formula (II). See paragraphs 8-13 of the 7/14/2025 action. When line-angle formulas are utilized in organic chemistry shorthand to show the structure of a compound, a carbon atom is assumed to be present at the ends and at intersections of lines, and hydrogen atoms are assumed to complete the four bonds of each carbon atom. In a polymer structural formula, a line with no structure at one end can alternatively indicate that a shown unit is connected to unspecified adjacent units or terminal groups.
The imide precursor of instant formula (I) recited in claim 19 is not a polymeric structure. Formula (I) shows a diamine-derived unit on both sides. No addition of further monomer is recited in instant step (b). Without the presence of further monomer which would react with the terminal NH3 groups, the imide precursor of formula (I) would not convert to a polymeric structure upon subjecting to the heat treatment recited in instant step (b). Note also that the structures of general formulas (I) and (II) are characterized as an “imide precursor” and “imide” (rather than as a term which would imply polymeric structure, such a “polyimide precursor” and “polyimide”). Therefore, because there is no recitation of monomers/reactants which would result in polymerization, and because the structures are not characterized using terminology associated with a polymeric structure, one would not have recognized instant formula (II) as being a polymeric structural formula.
However, the ends of each of the four lines in formula (II) (as shown in the previous claim 1) would not have been interpreted by one of ordinary skill as a carbon atom attached to three hydrogen atoms. As discussed in the previous action (paragraph 12), it is not possible to produce a compound according to general formula (II) having methyl end groups via the conversion of an imide precursor according to instant formula (I). Formula (I) has no methyl end groups, and is produced from compounds (PMDA and diamine) that have no methyl end groups or other structure which could result in methyl end groups (see instant steps (a) and (b)). Previous claim 1 was therefore rejected as indefinite: while one of ordinary skill would have recognized that the lines in formula (II) must not actually represent methyl groups (i.e., the formula clearly contains an error and/or missing groups), it was not clear what structure was intended (i.e., the ordinary artisan would not have recognized the appropriate correction to the structural formula).
New claim 19 changes formula II to clearly show methyl groups at the end of each line in formula II. Therefore, the claims are no longer indefinite: the structure represented by formula (II) is clear as shown. However, as previously set forth in paragraphs 9-12 of the 7/14/2025 action, and as discussed above, there is no description in the specification as filed of a process which would result in an imide as shown in formula (II) having methyl end groups, and, one of ordinary skill would have recognized that the line ends in formula (II) were never intended to represent methyl groups. Because Applicant has not demonstrated that the inventor, at the time the application was filed, had possession of a process which includes conversion of an imide of formula (I) into an imide according to instant general formula (II) with methyl end groups, the written description requirement of 35 USC 112(a) has not been complied with.
Response to Arguments
Applicant's arguments filed 10/14/2025 have been fully considered.
Applicant argues (p 5) that the dianhydrides on the left side of the formula is supported by page 16 of the specification filed on June 29, 2025. The examiner assumes Applicant is referring there to the specification filed on June 29, 2023. Regardless, it is not clear what Applicant means by “the dianhydrides on the left side of the formula…,” nor why Applicant believes that it is necessary to establish where the specification provides support for any dianhydride other than the pyromellitic dianhydride which is recited in step (a).
Applicant’s arguments (p 6) that the previously set forth claim objections and rejections under 35 USC 112 have been overcome by amendment are persuasive. The previously set forth objections/rejections are withdrawn.
Applicant’s arguments (pp 6-16) regarding the rejections over Nakayama are moot; the claims as presently amended are free of prior art due to the recitation of a step which forms an imide according to formula (II) with methyl end groups. The examiner is unaware of prior art which discloses or suggests a process wherein there would be any formation of a structure having four terminal methyl groups according to instant formula (II).
Conclusion
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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/RACHEL KAHN/Primary Examiner, Art Unit 1766