DETAILED ACTION
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 1-3, 9-14, and 16 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. Claim 1 contains the subject matter that was not described in the specification, that the dispersion contains 1000 to 1200 parts by weight of distilled water. Published paragraph 37 teaches using 100 parts by weight of a dianhydride compound, 80 to 120 parts by weight of a diamine, and 1000 to 1200 parts by weight of a mixed solvent, not distilled water. Published paragraph 35 does teach that distilled water is used as a solvent, but since paragraph 37 discloses that the 1000-1200 parts by weight is a mixed solvent, the entire amount cannot be only distilled water, because the solvent could not be considered to be a “mixed solvent” in that case.
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 applicant regards as his invention.
Claims 9-14 and 16 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.
It is unclear what statutory class is claimed in claim 9, and therefore what structural limitations are required by the claim. The preamble is directed to “a polyimide powder”, but in line 2 the powder is manufactured into a molded article. Therefore, it is unclear if a polyimide powder could meet the limitations of the claim, as in the first named statutory class, or if the powder must be formed into a molded article to meet the claim, as in the second named statutory class. Further, in claim 16 the statutory class is a molded article of the powder of claim 9, and claim 14 claims that the powder can be manufactured into a molded article, which lends weight to the interpretation that a powder is the statutory class of claims 9-14 and the molded article is the intended use. If it is applicant’s intention that the statutory class of claims 9-14 is a molded article, the first named statutory class and all dependents should be amended to make that clear. If it is applicant’s intention that the statutory class of claims 9-14 is a polyimide powder as stated, then claim 9 should be amended to state that the powder can be or is capable of being manufactured into a molded article. For the purpose of further examination, it is taken that the powder is the statutory class and the molded article is the intended use in 9-14, while in claim 16 a molded article is required.
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.
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.
Claims 9, 10, 14, and 16 are rejected under 35 U.S.C. 103 as being unpatentable over Sato et al. (US 2016/0159984).
Regarding claim 9: It is noted that claim 9 is directed to a product and not a method. The determination of patentability of a product by process claim is based on the product itself and not on its method of production (MPEP 2113). Sato et al. teaches a polyimide powder (abstract) which can be molded (para. 107). The powder is 0.9-1.1 diamine to 1 mol of the tetracarboxylic acid component (para. 85), which overlaps the claimed range. The tetracarboxylic acid can be the claimed formula 1 (para. 72 and 75), and the diamine can be the claimed diamine (para. 61 and 66 where L21 is an ether or an 1 carbon alkylene group). While the tensile strength is not explicitly stated, mere recognition of latent properties or additional advantages in the prior art does not render nonobvious an otherwise known invention (MPEP 2145 II). Before the effective filing date of the claimed invention a person having ordinary skill in the art would have found it obvious to use overlapping amounts of the components and would have been motivated to do so since Sato et al. teaches these are acceptable amounts to achieve the disclosed invention.
Regarding claim 10: Sato et al. teaches the D50 particle size can be 15 µm (para. 112).
Regarding claim 14: The claim is directed to a product that is capable of being sintered, and not the method steps in the product by process claim. Sato et al. teaches the molded product can be sintered/heat fusion moldable (para. 107). Therefore, the particular manufacturing steps are capable of being followed.
Regarding claim 16: Sato et al. teaches a molded article by sintering/heat fusion (para. 107).
Claims 11-13 are rejected under 35 U.S.C. 103 as being unpatentable over Sato et al. (US 2016/0159984) in view of Unterlass et al. (WO 2020/187751) using the English language machine translation and the figures and schemes in the original document for the citations below.
Regarding claims 11-13: Sato et al. teaches the basic claimed powder as set forth above. Not disclosed is the D50 of less than 10 µm, or the D99 of less than 120 µm. However, Unterlass et al. teaches a D99, and therefore a D50 of less than 100 microns (figure 4B), which overlaps the claimed ranges. Sato et al. and Unterlass et al. are analogous art since they are both concerned with the same field of endeavor, namely polyimide powders. Before the effective filing date of the claimed invention a person having ordinary skill in the art would have found it obvious to use the size of Unterlass et al. with the powder of Sato et al. and would have been motivated to do so since different sizes are useable in different manufacturing techniques.
Response to Arguments
Applicant's arguments filed May 20, 2026 have been fully considered but they are not persuasive.
The clarity revision in claims 2 and 3 is accepted as the structures are no longer too blurry to identify what substituents are being claimed.
The claim amendments overcome the rejection over Unterlass alone, however, as set forth above new matter is introduced by the amendments. Further, applicants argue that “As stated in MPEP 2141, where the prior art fails to recognize the problem to be solved, there can be no teaching, suggestion, or motivation for one of ordinary skill in the art to modify or combine the prior art references to arrive at the claimed solution.” The examiner kindly requests further citation in section 2141 of the passage applicant is referencing, since it is not readily apparent where in 2141 this might be stated. It appears that section 2141 actually teaches the opposite, that the prior art need not “recognize the problem to be solved” to be considered analogous, for example: The Court in KSR stated that "[t]he first error…in this case was…holding that courts and patent examiners should look only to the problem the patentee was trying to solve. The Court of Appeals failed to recognize that the problem motivating the patentee may be only one of many addressed by the patent’s subject matter…The second error [was]…that a person of ordinary skill attempting to solve a problem will be led only to those elements of prior art designed to solve the same problem."
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.
Contact Information
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Megan McCulley whose telephone number is (571)270-3292. The examiner can normally be reached Monday - Friday 9-5:30.
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, Mark Eashoo can be reached at 571-272-1197. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/MEGAN MCCULLEY/Primary Examiner, Art Unit 1767
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