DETAILED ACTION
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 applicant regards as his invention.
Claims 2 and 3 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.
The alternatives for the R1 group in claim 2 and the R2 group in claim 3 are too blurry to identify what substituents are being claimed.
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 1-7, and 9-15 are rejected under 35 U.S.C. 103 as being unpatentable over 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 claim 1: Unterlass et al. teaches a process for the production of polyimide powder (abstract, para. 50) comprising preparing a mixture/dispersion of polyanhydrides and polyamines in water (para. 21) such as distilled water (para. 44) and conducting a reaction at a stirring speed of 500-700 rpm (para. 28) under temperature and pressure conditions/in an autoclave (para. 50). While Unterlass et al. does not teach the entire claimed range of more than 200 rpm with sufficient specificity to anticipate the claim, 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 overlapping stirring speed and would have been motivated to do so since Unterlass et al. teaches this speed results in the desired size and properties of the resulting polyimide.
Regarding claims 2-3: Unterlass et al. teaches the scheme:
PNG
media_image1.png
142
664
media_image1.png
Greyscale
(original document and para. 38 of translation). The claimed dianhydride is used where R1 is the first claimed structure and the claimed diamine is used where R2 is the last structure on page 10 of the claims.
Regarding claims 4 and 5: Unterlass et al. teaches a stirring speed of 500-700 rpm (para. 28), which overlaps the claimed ranges. In the case where the claimed ranges overlap or lie inside ranges disclosed by the prior art, a prima facie case of obviousness exists (MPEP 2144.05 I).
Regarding claim 6: Unterlass et al. teaches a reaction time of 4 hours (para. 50).
Regarding claim 7: Unterlass et al. teaches a temperature of 250 °C (para. 50).
Regarding claim 9: Unterlass et al. teaches a polyimide powder (para. 50).
Regarding claims 10-13: Unterlass et al. teaches a D99, and therefore a D50 of less than 100 microns (figure 4B).
Regarding claim 14: While Unterlass et al. does not teach the steps of sintering, the claim is directed to a product that is capable of being sintered. Since the polyimide powder of Unterlass et al. is made by the same method as claimed, the powder would also be capable of being sintered as in claim 14.
Regarding claim 15: while Unterlass et al. does not teach the tensile strength, this is a latent property, and further, the claims are worded such that the powder “can be manufactured”. Therefore, the product of Unterlass et al. is capable of being manufactured to have the claimed properties, such as by adding auxiliary tougheners.
Claim 8 is rejected under 35 U.S.C. 103 as being unpatentable over 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 as applied to claim 1 and in view of Inagaki et al. (US 2013/0189523).
Regarding claim 8: Unterlass et al. teaches the basic claimed method as set forth above. Not disclosed is the pressure. However, Inagaki et al. teaches a similar method where the reaction takes place at 10-300 MPa/100-3,000 bar (para. 131). Unterlass et al. and Inagaki et al. are analogous art since they are both concerned with the same field of endeavor, namely making polyimide resins. 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 pressure of Inagaki et al. in the method of Unterlass et al. and would have been motivated to do so in order to assist with the dispersion.
Claim 16 is rejected under 35 U.S.C. 103 as being unpatentable over 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 as applied to claim 9 set forth above and in view of Sakai et al. (US 2021/0261756).
Regarding claim 16: Unterlass et al. teaches the basic claimed article as set forth in claim 9. Unterlass et al. does not teach the article is sintered. However, Sakai et al. teaches a similar polyimide which can be sintered (para. 15). Unterlass et al. and Sakai et al. are analogous art since they are both concerned with the same field of endeavor, namely producing 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 sinter the polyimide of Unterlass et al. as in Inagaki et al. and would have been motivated to do so in order to produce products using a powder sintering type 3D printer.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. They relate to the production of polyimide powders.
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.
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.
/MEGAN MCCULLEY/Primary Examiner, Art Unit 1767
Prosecution Insights