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 .
Election/Restrictions
Applicant’s election without traverse of Group II, claims 2 and 17-19, in the reply filed on March 9, 2026 is acknowledged.
Claims 1, 3-9, and 13-16 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected invention, there being no allowable generic or linking claim. Election was made without traverse in the reply filed on March 9, 2026.
Claim Objections
Claims 2 and 17-19 are objected to because of the following informalities:
Regarding claim 2, the word “and” should be inserted at the end of line 9.
Regarding claims 17-19, these claims depend from an objected to claim and include all of the limitations thereof. Therefore, they are also subject to the objection.
Appropriate correction is required.
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.
Claims 2 and 17-19 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Toida et al. (KR 20160007442). For convenience, the citations below for Toida et al. are taken from an English language machine translation included herewith.
Regarding claim 2, Toida et al. teaches a polyimide film used in the manufacture of a graphite sheet1 (¶1) comprising a polyimide polymerized from p-phenylenediamine as a diamine monomer and pyromellitic dianhydride and/or 3,3’,4,4’-biphenyltetracarboxylic dianhydride as a dianhydride monomer (¶24). The polyimide film has a thickness of from 5 to 200 µm (¶79).
Toida et al. does not explicitly teach that the film has an L* value of 40 or higher being measured with a colorimeter. The Office realizes that all of the claimed effects or physical properties are not positively stated by the reference. However, the reference teaches all of the claimed ingredients in the claimed amounts made by a substantially similar process. Moreover, the original specification does not identify a feature that results in the claimed effect or physical property outside of the presence of the claimed components in the claimed amounts. Therefore, the claimed effects and physical properties, i.e. an L* value of 40 or higher, would naturally arise and be achieved by a composition with all the claimed ingredients. "Products of identical chemical composition cannot have mutually exclusive properties." In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990). A chemical composition and its properties are inseparable. Therefore, if the prior art teaches the identical chemical structure, the properties applicant discloses and/or claims are necessarily present. See MPEP § 2112.01. If it is the applicant’s position that this would not be the case: (1) evidence would need to be provided to support the applicant’s position; and (2) it would be the Office’s position that there is no teaching as to how to obtain the claimed properties with only the claimed ingredients.
Regarding claims 17-19, Toida et al. further teaches that the polyimide film contains from 0.03 to 1% by weight of the resin of inorganic particles (sublimable inorganic filler) (¶56, 58) with an average particle size (D50) of 0.1 to 2 µm (¶59). The particles are preferably calcium hydrogen phosphate, which is dicalcium phosphate (¶57).
Correspondence
Any inquiry concerning this communication or earlier communications from the examiner should be directed to ANGELA C SCOTT whose telephone number is (571)270-3303. The examiner can normally be reached Monday-Friday, 8:30-5:00, EST.
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/ANGELA C SCOTT/Primary Examiner, Art Unit 1767
1 The Office would like to note that the phrase “for a graphite sheet” in the preamble of the claim is an intended use for the film. Please see MPEP 2111.02 II for further guidance if needed.