Prosecution Insights
Last updated: April 19, 2026
Application No. 18/238,314

POROUS FILM WITH LOW DIELECTRIC PROPERTY AND MANUFACTURING METHOD THEREOF

Non-Final OA §102§103§112
Filed
Aug 25, 2023
Examiner
BOYLE, KARA BRADY
Art Unit
1766
Tech Center
1700 — Chemical & Materials Engineering
Assignee
Kyungpook National University Industry-Academic Cooperation Foundation
OA Round
1 (Non-Final)
61%
Grant Probability
Moderate
1-2
OA Rounds
2y 10m
To Grant
51%
With Interview

Examiner Intelligence

Grants 61% of resolved cases
61%
Career Allow Rate
553 granted / 901 resolved
-3.6% vs TC avg
Minimal -10% lift
Without
With
+-10.1%
Interview Lift
resolved cases with interview
Typical timeline
2y 10m
Avg Prosecution
26 currently pending
Career history
927
Total Applications
across all art units

Statute-Specific Performance

§101
0.5%
-39.5% vs TC avg
§103
44.7%
+4.7% vs TC avg
§102
19.9%
-20.1% vs TC avg
§112
24.8%
-15.2% vs TC avg
Black line = Tech Center average estimate • Based on career data from 901 resolved cases

Office Action

§102 §103 §112
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. 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. The following is a quotation of 35 U.S.C. 112 (pre-AIA), second paragraph: The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the appl icant regards as his invention. Claim s 14 and 19 are 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 s 14 and 19 recite the polyimide film has improved thermal stability. This is indefinite because it is unclear to what the claimed polyimide film is being compared. For example, the polyimide film could have improved thermal stability to a film that is not porous, that ha s different concentration of polyamic acid, that was cured at a different temperature, or that uses different monomers. Because the claim does not indicate with what the improvement is relative, the claims are indefinite. Claim Rejections - 35 USC § 102 The following is a quotation of the appropriate paragraphs of 35 U.S.C. 102 that form the basis for the rejections under this section made in this Office action: A person shall be entitled to a patent unless – (a)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale , or otherwise available to the public before the effective filing date of the claimed invention. Claim s 1-3, 11 , and 13- 1 5 are rejected under 35 U.S.C. 102 (a)(1) as being anticipated by Li (CN 110845731) . As the CN document is not in English, citations are made to the attached translation. Li teaches a method of preparing a polyimide film with a porous structure (¶ 1, 8) where the method includes preparing a casting solution by dissolving dianhydride and diamine in a solvent (¶12) such that the concentration is 12-22 wt% (¶ 21). This falls in the range of claim 1. Li teaches the casting solution is scraped onto a glass plate (¶ 16) which corresponds to the instantly claimed “ applying the prepared polyamic acid solution to a substrate. ” Li teaches the casting solution on the glass plate is immersed in a coagulation bath first for 10-30 seconds, then for 15-30 minutes (¶ 16). Li teaches an example of soaking in the bath for 30 minutes (¶ 34). Th e bath comprises ethanol and water which correspond to the instantly claimed a non-solvent. The time of 30 minutes falls in the range of 30-180 minutes recited in claim 1. Li teaches after soaking, the membrane is removed and undergoes a thermal imidization process at 300 º C (¶34) which corresponds to the claimed taking out and thermally curing step. Claim 2 recites controlling the concentration of the polyamic acid solution to control the pore shape or size. Claim 3 recites the time of immersion is controlled to control the pore shape or size. However, claims 2-3 do not provide any actual, active process steps or structural information. They recite an intention of a concentration or an intention of an immersion time. As Li teaches both a particular concentration of polyamic solution and a particular immersion time, the pore shape and/or size are necessarily being controlled by both said concentration and said immersion time in the invention of Li. This meets instant claims 2-3. The film formed by Li meets the limitation of claim 11. As the film of Li comprises identical materials made by an identical process as recited instant claim 1, evidence is provided that the films of Li are identical to that of the instant claims meaning they will necessarily have the same properties as the polyimide film of the instant claims, including the “improved thermal stability” recited in instant claim 14 and the hierarchical porous structure of instant claim 13 . The burden is shifted to Applicants to provide factually supported objective evidence which demonstrates the contrary. MPEP 2112 states “When the PTO shows a sound basis for believing that the products of the applicant and the prior art are the same, the applicant has the burden of showing that they are not.” In re Spada , 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990). With regards to the limitation “for low dielectric property,” this is an intended use of the porous structure of instant claim 13, which is necessarily present for the reasons discussed above. Case law holds that a recitation of the intended use of the claimed invention must result in a structural difference between the claimed invention and the prior art in order to patentably distinguish the claimed invention from the prior art. If the prior art structure is capable of performing the intended use, then it meets the claim. See In re Casey , 152 USPQ 235 (CCPA 1967) and In re Otto , 136 USPQ 458, 459 (CCPA 1963). The films of Li have an identical structure to the instantly claimed films, for the reasons discussed above, and thus the films are capable of performing the intended use of “low dielectric property.” The burden is shifted to Applicants to provide factually supported objective evidence which demonstrates the contrary. MPEP 2112 states “When the PTO shows a sound basis for believing that the products of the applicant and the prior art are the same, the applicant has the burden of showing that they are not.” In re Spada , 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990). With regards to the limitation “insulating material for high frequency,” the films formed in Li , which comprise identical materials and which are formed using an identical process as recited in instant claim 1, are necessarily insulating , as they are structurally the same as the instantly claimed films. The limitation “for high frequency” is an intended use of the films of instant claim 15 . Case law holds that a recitation of the intended use of the claimed invention must result in a structural difference between the claimed invention and the prior art in order to patentably distinguish the claimed invention from the prior art. If the prior art structure is capable of performing the intended use, then it meets the claim. See In re Casey , 152 USPQ 235 (CCPA 1967) and In re Otto , 136 USPQ 458, 459 (CCPA 1963). The films of Li which are insulating, have an identical structure to the instantly claimed films, for the reasons discussed above, and thus the films are capable of performing the intended use of “for high frequency.” 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. Claim s 4-6, 8- 10, 16, 1 8 -20 is/are rejected under 35 U.S.C. 103 as being unpatentable over Li (CN 110845731) and further in view of Kwon (KR 10-2154549). As the CN and KR documents are not in English, citations are made to the attached translations. The discussion with respect to Li above is hereby incorporated by reference. Li does not explicitly recite adding a surface modified porous inorganic filler. The concentration of polyamic acid solution in Li meets instant claim 9. The time of Li discussed above meets instant claim 10. However, Kwon teaches forming a separator (which is a film) using hollow mesoporous silica particles which are surface modified with amine groups (¶ 21-22, 50) which are then added to a solution of a diamine and dianhydride (¶ 52-53) and then coated on a glass substrate (¶53) (which again, makes it a film) . Adding the silica to the solution of diamine and dianhydride corresponds to the instantly claimed step of adding the surface modified porous inorganic filler to the polyamic solution. Kwon teaches an example where the silica is modified with amidopropyltrimethoxysilane (¶7, 51) which give -NH 2 groups. Also see Fig. 1. This meets instant claims 6. Kwon teaches the amount of silica particles is 1-20 wt% (¶ 44) which meets the range of claim 8. Both Li and Kwon are relate to the field of separators made from a polyamic acid solution (¶1 of Kwon and ¶2 of Li , as well as entire documents of both). It would have been obvious to one of ordinary skill in the art before the effective filing date of the instant invention to use the surface modified mesoporous silica of Kwon in the films of Li in order to provide a separator with improved ionic conductivity, electrochemical stability, interfacial compatibility, and discharge capacity while having a uniform thickness, pore size, and porous surface (¶12) and while reducing heat shrinkage (¶ 11, 44). The film formed by Li in view of Kwon meets the film of instant claim 16 . As the film of Li in view of Kwon comprise identical materials made by an identical process as recited in the instant claims , evidence is provided that the films of Li in view of Kwon are identical to that of the instant claims , meaning they will necessarily have the same properties as the polyimide film of the instant claims, including the “improved thermal stability” recited in instant claim 1 9 and the hierarchical porous structure of instant claim 18 . The burden is shifted to Applicants to provide factually supported objective evidence which demonstrates the contrary. MPEP 2112 states “When the PTO shows a sound basis for believing that the products of the applicant and the prior art are the same, the applicant has the burden of showing that they are not.” In re Spada , 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990). With regards to the limitation “for low dielectric property,” this is an intended use of the porous structure of instant claim 1 8 , which is necessarily present for the reasons discussed above. Case law holds that a recitation of the intended use of the claimed invention must result in a structural difference between the claimed invention and the prior art in order to patentably distinguish the claimed invention from the prior art. If the prior art structure is capable of performing the intended use, then it meets the claim. See In re Casey , 152 USPQ 235 (CCPA 1967) and In re Otto , 136 USPQ 458, 459 (CCPA 1963). The films of Li have an identical structure to the instantly claimed films, for the reasons discussed above, and thus the films are capable of performing the intended use of “low dielectric property.” The burden is shifted to Applicants to provide factually supported objective evidence which demonstrates the contrary. MPEP 2112 states “When the PTO shows a sound basis for believing that the products of the applicant and the prior art are the same, the applicant has the burden of showing that they are not.” In re Spada , 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990). With regards to the limitation “insulating material for high frequency,” the films formed in Li in view of Kwon are necessarily insulating (see, for example, ¶2 of Kwon). The limitation “for high frequency” is an intended use of the films of instant claim 20. Case law holds that a recitation of the intended use of the claimed invention must result in a structural difference between the claimed invention and the prior art in order to patentably distinguish the claimed invention from the prior art. If the prior art structure is capable of performing the intended use, then it meets the claim. See In re Casey , 152 USPQ 235 (CCPA 1967) and In re Otto , 136 USPQ 458, 459 (CCPA 1963). The films of Li in view of Kwon, which are insulating, have an identical structure to the instantly claimed films, for the reasons discussed above, and thus the films are capable of performing the intended use of “ for high frequency.” Claim 1 1 -15 are rejected under 35 U.S.C. 103 as being unpatentable over Li (CN 110845731) and further in view of JP 2011-219585A. As the CN and JP document s are not in English, citations are made to the attached translation s . Li teaches the method and polyimide film as discussed in this rejection above, the rejection of which is incorporated herein by reference. Li does not expressly disclose the average pore size of the separator film. However, JP ‘585 teaches porous polyimide membranes used for battery separators (¶2). The membrane has a large number of macrovoids having an average pore diameter of from 10 to 500 µm (¶6. The films of JP ‘585 also have a hierarchical porous structure and a reduced dielectric constant (¶8). This will also necessarily provide improved thermal stability and a low dielectric property. The average pore diameter of the macrovoids disclosed in JP ‘585 overlaps the range of instant claim 12. It is well settled that where the prior art describes the components of a claimed compound or compositions in concentrations within or overlapping the claimed concentrations a prima facie case of obviousness is established. See In re Harris , 409 F.3d 1339, 1343, 74 USPQ2d 1951, 1953 (Fed. Cir 2005); In re Peterson , 315 F.3d 1325, 1329, 65 USPQ 2d 1379, 1382 (Fed. Cir. 1997); In re Woodruff , 919 F.2d 1575, 1578 16 USPQ2d 1934, 1936-37 (CCPA 1990); In re Malagari , 499 F.2d 1297, 1303, 182 USPQ 549, 553 (CCPA 1974). It would have been obvious to one of ordinary skill in the art, based on the teachings of JP ‘585 to produce a porous polyimide film having an average pore diameter which meets the instant claim limitations of instant claim 12 because “a reference may be relied upon for all that it would have reasonably suggested to one having ordinary skill the art…” Merck & Co. v. Biocraft Laboratories , 874 F.2d 804, 10 USPQ2d 1843 (Fed. Cir.), cert. denied, 493 U.S. 975 (1989). See MPEP 2123. Both Li and JP ‘585 relate to the field of porous polyimide films produced using a polyamic acid solution, the film of which is used for separators (¶2 and ¶5 of JP ‘585) . It would have been obvious to one of ordinary skill in the art before the effective filing date of the instant invention to produce a film having the macrovoids with the particle size disclosed in JP ‘585 in the invention of Li in order to provide superior permeability and high porosity (¶4). Additionally, the macrovoids, having the diameter discussed above, provide a large porosity which, when using the film as an insulating substrate, reduce dielectric constant. See ¶8 of JP ‘585A. Thus, producing macrovoids in the film of Li will produce an insulting material having a reduced dielectric constant. The limitation “for high frequency” in instant claim 15 is an intended use of the insulating material made from the recited film. Case law holds that a recitation of the intended use of the claimed invention must result in a structural difference between the claimed invention and the prior art in order to patentably distinguish the claimed invention from the prior art. If the prior art structure is capable of performing the intended use, then it meets the claim. See In re Casey , 152 USPQ 235 (CCPA 1967) and In re Otto , 136 USPQ 458, 459 (CCPA 1963). The films of Li in view of JP ‘585, which are insulating for the reasons discussed above, have an identical structure to the instantly claimed films, and thus the films are capable of performing the intended use of “for high frequency.” Claim 1 6 -20 are rejected under 35 U.S.C. 103 as being unpatentable over Li (CN 110845731) view of Kwon (KR 10-2154549) and further in view of Oya et al.( JP 2011-219585A ) . As the CN , KR , and JP document s are not in English, citations are made to the attached translation s . Li in view of Kwon teach the method and polyimide film as discussed in this rejection above, the rejection of which is incorporated herein by reference. Li in view of Kwon do not expressly disclose the average pore size of the separator film. However, JP ‘585 teaches porous polyimide membranes used for battery separators (¶2). The membrane has a large number of macrovoids having an average pore diameter of from 10 to 500 µm (¶6. The films of JP ‘585 also have a hierarchical porous structure and a reduced dielectric constant (¶8). This will also necessarily provide improved thermal stability and a low dielectric property. The average pore diameter of the macrovoids disclosed in JP ‘585 overlaps the range of instant claim 1 7. It is well settled that where the prior art describes the components of a claimed compound or compositions in concentrations within or overlapping the claimed concentrations a prima facie case of obviousness is established. See In re Harris , 409 F.3d 1339, 1343, 74 USPQ2d 1951, 1953 (Fed. Cir 2005); In re Peterson , 315 F.3d 1325, 1329, 65 USPQ 2d 1379, 1382 (Fed. Cir. 1997); In re Woodruff , 919 F.2d 1575, 1578 16 USPQ2d 1934, 1936-37 (CCPA 1990); In re Malagari , 499 F.2d 1297, 1303, 182 USPQ 549, 553 (CCPA 1974). It would have been obvious to one of ordinary skill in the art, based on the teachings of JP ‘585 to produce a porous polyimide film having an average pore diameter which meets the instant claim limitations of instant claim 1 7 because “a reference may be relied upon for all that it would have reasonably suggested to one having ordinary skill the art…” Merck & Co. v. Biocraft Laboratories , 874 F.2d 804, 10 USPQ2d 1843 (Fed. Cir.), cert. denied, 493 U.S. 975 (1989). See MPEP 2123. Li , Kwon, and JP ‘585 relate to the field of porous polyimide films produced using a polyamic acid solution, the film of which is used for separators (¶2 and ¶5 of JP ‘585). It would have been obvious to one of ordinary skill in the art before the effective filing date of the instant invention to produce a film having the macrovoids with the particle size disclosed in JP ‘585 in the invention of Li in view of Kwon in order to provide superior permeability and high porosity (¶4). Additionally, the macrovoids, having the diameter discussed above, provide a large porosity which, when using the film as an insulating substrate, reduce dielectric constant. See ¶8 of JP ‘585A. Thus, producing macrovoids in the film of Li in view of Kwon will produce an insulting material having a reduced dielectric constant. The limitation “for high frequency” in instant claim 20 is an intended use of the insulating material made from the recited film. Case law holds that a recitation of the intended use of the claimed invention must result in a structural difference between the claimed invention and the prior art in order to patentably distinguish the claimed invention from the prior art. If the prior art structure is capable of performing the intended use, then it meets the claim. See In re Casey , 152 USPQ 235 (CCPA 1967) and In re Otto , 136 USPQ 458, 459 (CCPA 1963). The films of Li in view of Kwon and JP ‘585, which are insulating for the reasons discussed above, have an identical structure to the instantly claimed films, and thus the films are capable of performing the intended use of “for high frequency.” Allowable Subject Matter Claim 7 is 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 closest prior art references are those discussed above: (1) Li (CN 110845731) ; (2) Kwon (KR 10-2154549) ; and Oya et al.(JP 2011-219585A) , the discussions of which are incorporated herein in their entirety. Li teaches a method of preparing a polyimide film with a porous structure (¶ 1, 8) where the method includes preparing a casting solution by dissolving dianhydride and diamine in a solvent (¶12) such that the concentration is 12-22 wt% (¶ 21). Li teaches the casting solution is scraped onto a glass plate (¶ 16) . Li teaches the casting solution on the glass plate is immersed in a coagulation bath first for 10-30 seconds, then for 15-30 minutes (¶ 16). Li teaches an example of soaking in the bath for 30 minutes (¶ 34). The bath comprises ethanol and water which correspond to the instantly claimed a non-solvent. Li teaches after soaking, the membrane is removed and undergoes a thermal imidization process at 300ºC (¶34) which is a thermal curing step. Kwon teaches forming a separator (which is a film) using hollow mesoporous silica particles which are surface modified with amine groups (¶ 21-22, 50) which are then added to a solution of a diamine and dianhydride (¶ 52-53) and then coated on a glass substrate (¶53) (which again, makes it a film). Kwon teaches an example where the silica is modified with amidopropyltrimethoxysilane (¶7, 51) which give -NH 2 groups. Also see Fig. 1. Kwon teaches the amount of silica particles is 1-20 wt% (¶ 44) . JP ‘585 teaches porous polyimide membranes used for battery separators (¶2). The membrane has a large number of macrovoids having an average pore diameter of from 10 to 500 µm (¶6. The films of JP ‘585 also have a hierarchical porous structure and a reduced dielectric constant (¶8). This will also necessarily provide improved thermal stability and a low dielectric property. None of Li, Kwon, or Oya et al. teach that the porous organic filler is selected from the group consisting of mesoporous silica of MCM-41 or MCM-48; polyhedral oligomeric silsesquioxane (POSS)l; and zeolite of zeolite X or zeolite Y. Conclusion Any inquiry concerning this communication or earlier communications from the examiner should be directed to FILLIN "Examiner name" \* MERGEFORMAT K. B BOYLE whose telephone number is FILLIN "Phone number" \* MERGEFORMAT (571)270-7338 . The examiner can normally be reached FILLIN "Work Schedule?" \* MERGEFORMAT 8:30 am to 5pm, Monday - Friday . Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice. If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, FILLIN "SPE Name?" \* MERGEFORMAT Randy Gulakowski can be reached at FILLIN "SPE Phone?" \* MERGEFORMAT (571) 272-1302 . The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300. Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000. /K. BOYLE/ Primary Examiner, Art Unit 1766
Read full office action

Prosecution Timeline

Aug 25, 2023
Application Filed
Mar 02, 2026
Non-Final Rejection — §102, §103, §112 (current)

Precedent Cases

Applications granted by this same examiner with similar technology

Patent 12590197
BIO-BASED CARBON FOAM
2y 5m to grant Granted Mar 31, 2026
Patent 12583991
FOAM COMPOSITIONS AND USES THEREOF
2y 5m to grant Granted Mar 24, 2026
Patent 12570820
FOAMED POLYMERIC COMPOSITION
2y 5m to grant Granted Mar 10, 2026
Patent 12570819
FOAMED POLYMER COMPOSITIONS INCLUDING A NANOSTRUCTURED FLUOROPOLYMER
2y 5m to grant Granted Mar 10, 2026
Patent 12570824
OLEFIN-BASED THERMOPLASTIC ELASTOMER FOAMED PARTICLE AND OLEFIN-BASED THERMOPLASTIC ELASTOMER FOAMED PARTICLE MOLDED BODY
2y 5m to grant Granted Mar 10, 2026
Study what changed to get past this examiner. Based on 5 most recent grants.

AI Strategy Recommendation

Get an AI-powered prosecution strategy using examiner precedents, rejection analysis, and claim mapping.
Powered by AI — typically takes 5-10 seconds

Prosecution Projections

1-2
Expected OA Rounds
61%
Grant Probability
51%
With Interview (-10.1%)
2y 10m
Median Time to Grant
Low
PTA Risk
Based on 901 resolved cases by this examiner. Grant probability derived from career allow rate.

Sign in with your work email

Enter your email to receive a magic link. No password needed.

Personal email addresses (Gmail, Yahoo, etc.) are not accepted.

Free tier: 3 strategy analyses per month