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 .
Priority
Receipt is acknowledged of certified copies of papers required by 37 CFR 1.55.
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.
Claim 1 recites the limitation "the particle diameter" in line 11. There is insufficient antecedent basis for this limitation in the claim. The instant claims do not explicitly recite “a particle diameter”. The claims require “an average particle diameter” without initially reciting that the solid component are particles or the possession of the solid component to have a diameter. The “solid component” is recited to include a poly-imide based resin and a fluorine base resin. The claims do not distinguish that either component is a particle or that both the components comprise singular particles. The examiner suggest amending the limitation to read “a solid component, wherein the solid component comprises particles of a polyimide-based resin and a fluoride-based resin, an average particle diameter…” or the like to explicitly recite that both the polyimide and fluorine based resins are each separate compositional particles in line with the instant specification at [0043] of the as filed specification.
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 1-6 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Iida et al (US 2019/0323140 A1).
As to claims 1-4, Iida discloses an electrodeposition dispersion for electrodepositing an electrodeposited film on a conductive base material (Title, [0050] description of forming the examples is the same as example 1, Table 1 comparative example 3, with [0047] disclosure of explicit formation for the electrodepostion dispersion), the electrodeposition dispersion comprising:
Water ([0050] “, the content ratio of water in the dispersion medium, the content ratio of the base in the dispersion medium” Table 1 water/dispersion, [0047] “Water” ;
a dispersion medium ([0047] N-methyl-2-pyrrol;idone as required by instant claim 4); and
a solid component ([0050] “the types of polyimide-based resin particles and fluorine-based resin particles”),
wherein the solid component includes a polyimide-based resin (Table 1 PAI which is polyamideimide [0053] as required by instant claim 2) and a fluorine-based resin (Table 1 PTFE which is polytetrafluoroethylene [0053] as required by instant claim 3), the fluorine-based resin content included in the solid component is in a range of 72 mass% or more and 95 mass% or less (Table 1 Comparative example 3 80%),
an average particle diameter of the solid component dispersed in the water and the dispersion medium is 50 nm or more and 500 nm or less (Table 1 Comparative Example 3 160 nm of the PI particles and the PTFE used have a median diameter of 200 nm – [0045]).
Iida fails to explicitly disclose the property “a standard deviation of the particle diameter of the solid component is 250 nm or less.”
However, this limitation is deemed to be a result of performing the process of preparation as instantly disclosed. The instant disclosure does not recite any particular exemplary or critical features for which to arrive at such a standard deviation with respect to the generic process as claimed. Iida discloses forming the PAI particles and dispersion in the exact same manner as instantly disclosed – see [0041]-[0043] of Iida and [0040]-[0041] of the as filed specification. It is noted that the same process of Iida results in the median diameter in the polyamideimide solution is 160 nm where the instant specification arrives at 250 nm using identical weights, amounts, chemicals, and the like. Iida discloses the “median diameter” disclosed therein are volume based average particles sizes ([0026]), and therefore representative of the mean (i.e. average) of the particle size representation.
The standard deviation is by definition a mathematical representation of the of the variation of values about the mean. Since the instant application is silent as to any particular methods to arrive at the claimed standard deviation and fails to establish criticality of said property, the claimed property is deemed to be a result of forming and using the particles in an electrodepositing coating as disclosed in accordance with MPEP 2112.01. Where the claimed and prior art products are identical or substantially identical in structure or composition, or are produced by identical or substantially identical processes, a prima facie case of either anticipation or obviousness has been established. In re Best, 562 F.2d 1252, 1255, 195 USPQ 430, 433 (CCPA 1977) "Products of identical chemical composition can not 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.
As to claim 5, Iida discloses a method for producing an insulating film using the electrodeposition dispersion according to claim 1 (See above), the method comprising:
an electrodeposition step of immersing the base material and a counter electrode in the electrodeposition dispersion, setting the base material as an anode and the counter electrode as a cathode, applying a voltage between the anode and the cathode, and forming an electrodeposited film on the base material. ([0049] “Specifically, first, an electrodeposition dispersion was stored in an electrodeposition tank…Subsequently, a copper wire (conductor)[=base material] having a diameter and a length of 1 mm and 300 mm, respectively, was used as an anode, a cylindrical copper sheet inserted in the electrodeposition dispersion in the electrodeposition tank was used as a cathode [=counter electrode])…. where a DC voltage of 100 V was applied between the copper wire and the cylindrical copper sheet, the copper wire and the cylindrical copper sheet were held in the electrodeposition dispersion in the electrodeposition tank for 30 seconds. Due to this, an electrodeposition film was formed on the surface of the copper wire.”).
As to claim 6, Iida further discloses a temperature of the electrodeposition dispersion in the electrodepostion step is 20 °C ([0049] which falls within the claimed range and thus anticipated in accordance with MPEP 2131.03 I) at a voltage of 100 V ([0049] which falls within the claimed range and thus anticipated in accordance with MPEP 2131.03 I).
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
Fujii et al (US 2010/0108533 A1) discloses specific standard deviations common to an electrodepostion coating composition of a block copolyimide with a particle size of 50-500 nm with a standard deviation of 30-300 nm ([0007] bullet 13, note the units have been changed from the micrometers in text to nanometers here for relation to the instant claims).
Any inquiry concerning this communication or earlier communications from the examiner should be directed to LOUIS J RUFO whose telephone number is (571)270-7716. The examiner can normally be reached Monday to Friday, 9 am to 5 pm.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Luan Van can be reached at 571-272-8521. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/LOUIS J RUFO/ Primary Examiner, Art Unit 1795