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 I, in the reply filed on February 3, 2026, is acknowledged. Claims 7-10 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected invention, there being no allowable generic or linking claim.
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 1-6 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.
Regarding claims 1-6, claim 1 recites that the first filler is present in a form of a primary particle or a secondary particle having a plurality of the primary particles aggregated, wherein a percentage of a total area of the secondary particles to a sum of a total area of the primary particles and the total area of the secondary particles in a cross section of the insulated wire is 50% or more. The claim recites that the filler is either in a form of a primary particle or a second particle. However, the claim further recites a percentage of a total area of the secondary particles. It is unclear if the claim requires secondary particles, or if the claim is reciting that when the filler is present in a form of a secondary particle, then the claimed percentage of a total area of the secondary particles is as claimed. Additionally, the recitation of primary or secondary particles, followed by the recitation of a percentage requiring both primary and secondary particles renders the claim unclear and indefinite. For purposes of examination, the recitation of properties directed to the secondary particle will only be required if the rejection relies on the presence of secondary particles.
Claim Rejections - 35 USC § 102/103
In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis (i.e., changing from AIA to pre-AIA ) for the rejection will not be considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status.
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.
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.
Claims 1, 2, and 4-6 are rejected under 35 U.S.C. 102(a)(1) as anticipated by or, in the alternative, under 35 U.S.C. 103 as obvious over US Pub. No. 2016/0024256 to Miyamoto.
Regarding claims 1, 2, and 4-6, Miyamoto teaches a polyimide precursor composition including a condensation polymer of a tetracarboxylic dianhydride composed of a first tetracarboxylic dianhydride having a benzene ring to which two carboxylic anhydride groups are bonded, and a second tetracarboxylic dianhydride other than the first tetracarboxylic dianhydride, and a diamine compound (Miyamoto, Abstract). Miyamoto teaches that the first tetracarboxylic dianhydride is pyromellitic dianhydride (Id., paragraphs 0016, 0044). Miyamoto teaches preparation of a polyimide precursor composition including 4,4’-diaminodiphenyl ether (ODA), 3,3’,4,4’-biphenyltetracarboxylic dianhydride (BPDA), and pyromellitic dianhydride (Id., paragraph 0220, 0257; see generally Id., Tables 1-10). Note that 4,4’-diaminodiphenyl ether (ODA) is also known as 4,4'-oxydianiline. Miyamoto teaches that the composition is formed into a molded article, including as a coating material for wires (Id., paragraphs 0016, 0097, 0202-0203).
Miyamoto teaches that various fillers are dispersed to impart various functions to the polyimide molded article, including fillers in particle form such as alumina powder (Miyamoto, paragraphs 0097, 0151), which is within the scope of the claimed primary particle. As set forth above, the remainder of the claim directed to the secondary particles is unclear, and the claimed limitations directed to the secondary particle having the claimed particle diameter and the claimed percentage of the total area of the secondary particles are interpreted as when the secondary particles are present, then they are as claimed. Since the claim recites secondary particles alternatively, the teachings of Miyamoto appear to anticipate the claimed invention.
Regarding claims 4-6, Miyamoto teaches preparation of a polyimide precursor composition including 4,4’-diaminodiphenyl ether (ODA), 3,3’,4,4’-biphenyltetracarboxylic dianhydride (BPDA), and pyromellitic dianhydride. Additionally, Miyamoto teaches that the first tetracarboxylic dianhydride is preferably included in the proportion of from 40% by mole to 95%by mole, and that the second tetracarboxylic dianhydride is preferably included in the proportion of from 5% by mole to 60% by mole (Miyamoto, paragraphs 0045, 0069). Note that in the case where the claimed ranges overlap or lie inside ranges disclosed by the prior art, a prima facie case of obviousness exists. In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990). The existence of overlapping or encompassing ranges shifts the burden to Applicant to show that his invention would not have been obvious. In re Peterson, 315 F.3d 1325, 1330 (Fed. Cir. 2003).
Claim 3 is rejected under 35 U.S.C. 103 as obvious over Miyamoto, as applied to claims 1, 2, and 4-6 above, in view of USPN 4,493,873 to Keane.
Regarding claim 3, Miyamoto does not appear to teach the claimed amount of fillers. However, Keane teaches a similar wire enamel composition comprising a polyimide resin and from about 1% to about 35% by weight of dispersed alumina particles (Keane, Abstract). Keane teaches that the improvements are not only observed in the high temperature resistant resins such as polyimides, but also provide dramatically improved resistance for resins (Id., column 2 lines 40-54), and greatly enhanced resistance to corona-induced deterioration and improved insulating properties (Id., column 4 lines 14-24).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to make the polyimide composition of Miyamoto, and adjusting and varying the amount of alumina particles, such as within the claimed range, as taught by Keane, motivated by the desire of forming a conventional polyimide composition for use in coating wires comprising an amount of particles known in the art to predictably improve resistance and insulating properties.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to PETER Y CHOI whose telephone number is (571)272-6730. The examiner can normally be reached M-F 9:00 AM - 3:00 PM.
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/PETER Y CHOI/Primary Examiner, Art Unit 1786