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 .
DETAILED ACTION
Insertion of continuing data of PCT and Japanese Foreign Priority documents at beginning of the specification is suggested.
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.
Claims 1, 2 and 8-12 are rejected under 35 U.S.C. 103 as being unpatentable over JP 2851019 (Nov. 13, 1998) with Machine translation in view of Critchley (US 3,832,322).
JP teaches a polyimide comprising two fluorine substituted phenylenes connected to X in abstract of page 1 (formula 1) and at page 2 (formula 3).
Machine translated JP teach that R1 of the formula 1 represent a tetravalent organic group in line 4 of [0011]. JP teaches that R2 of the formula 1 includes formula (3) in claim 2 of page 2 (see claim 2 in page 17 of the Machine translation.
Machine translated JP teach that X include Rf’ being perfluoroalkylene group meeting the instant A1 in lines 10-11 of the [0011].
Regarding the recited linear C4-16 perfluoroalkylene group of claim 1 over perfluoroalkylene group taught by JP, Critchley teaches a polyimide comprising –(CF2)n- with n being 2 to 8 in lines 13-14 of col. 2. Thus, utilization of –(CF2)n- with n being 4-8 taught by Critchley in JP would have been obvious to one skilled in the art. Selection of a known material based on its suitability for its intended use is prima facie obvious, see Sinclair & Carroll Co. v. Interchemical Corp., 325 US 327, 65 USPQ 297 (1945). MPEP 2144.07. The combination of familiar elements according to known methods is likely to be obvious when it does no more than yield predictable results. KSR Co. v. Teleflex Inc., 550 U.S. 398, 416 (2007). MPEP 2141.
Thus, it would have been obvious to one skilled in the art before the effective filing date of invention to obtain the instant polyimide from JP having a structure discussed above with utilization of –(CF2)n- with n being 4-8 taught by Critchley falling within scope of the instant perfluoroalkylene group absent showing otherwise.
Regarding the recited C1-6 alkyl group of the claim 2, an alkyl group having a low number of carbon atoms would have been obvious.
Regarding the recited -O-, -CO- and -SO2- linking moieties of claim 8, the machine translated JP teaches that X includes -O-, -CO- and -SO2- in lines 10-11 of the {0011] an thus utilization of such linking moieties as X of the formula (2) of JP would make the claim 8 obvious. See In re Mills, 477 F.2d 649, 176 USPQ 196 (CCPA), In re Lamberti, 545 F.2d 747, 750 (CCPA 1976): Reference must be considered for all that it discloses and must not be limited to preferred embodiments or working examples. MPEP 2123.
Regarding the recited locations of a halogen atom of the claim 9, a polyamide obtained from a poly(amic acid) taught in claim 2 of JP would make the claim 9 obvious.
Regarding the recited poly(amic acid of the claim 10, the poly(amic acid) taught in the claim 2 of JP would make the claim 10 obvious.
Regarding the recited formula (III) of the claim 11-12, JP teaches the formula 1 in the abstract which would makes the claims 11-12 obvious.
Claims 1-4, 6, 7, 9 and 11-14 are rejected under 35 U.S.C. 103 as being unpatentable over JP 2-208324 (Aug. 17, 1990) with Machine translated JP H02208324 A (Aug. 17, 1990) in view of Critchley (US 3,832,322).
JP teaches a polyimide having formula (1) at page 1. Ar1 of the formula (1) is defined as =phenyl-Rf1-phneyl= at bottom of a left column of the page 1 and a bisimide moiety of the formula (1) taught by JP would fall within scope of the recited aromatic bisimide-N’-N-diyl as A2 of the instant claim 1.
JP further teaches a moiety for Ar2 in a left column of page 1 and Rf2 is defined as perfluoroalkylene group (see abstract of the Machine translation also).
JP teaches that Y of the Ar2 includes アルキル (arukiru) which would an alkyl in English. JP teaches that Y substituent is present 0 to 4 and thus choosing 1 to 4 of the alkyl group falling within scope of the instant substituent would have been obvious.
JP teaches that n of the Ar2 includes 0 to 1 and thus choosing the Ar2 with n being 0 would have been obvious to one skilled in the art. Thus, the Ar2 without the units represent by n would meet the instant Ar1 and Ar2 of the recited formula (I) of claim 1. See In re Mills, 477 F.2d 649, 176 USPQ 196 (CCPA), In re Lamberti, 545 F.2d 747, 750 (CCPA 1976): Reference must be considered for all that it discloses and must not be limited to preferred embodiments or working examples. MPEP 2123.
Regarding the recited linear C4-16 perfluoroalkylene group of claim 1 over perfluoroalkylene group taught by JP, Critchley teaches a polyimide comprising –(CF2)n- with n being 2 to 8 in lines 13-14 of col. 2. Thus, utilization of –(CF2)n- with n being 4-8 taught by Critchley in JP would have been obvious to one skilled in the art. Selection of a known material based on its suitability for its intended use is prima facie obvious, see Sinclair & Carroll Co. v. Interchemical Corp., 325 US 327, 65 USPQ 297 (1945). MPEP 2144.07. The combination of familiar elements according to known methods is likely to be obvious when it does no more than yield predictable results. KSR Co. v. Teleflex Inc., 550 U.S. 398, 416 (2007). MPEP 2141.
Thus, it would have been obvious to one skilled in the art before the effective filing date of invention to obtain a polyimide from JP having a structure discussed above with utilization of –(CF2)n- with n being 4-8 taught by Critchley falling within scope of the instant perfluoroalkylene group absent showing otherwise.
Regarding the recited C1-6 alkyl group of the claim 2, an alkyl group having a low number of carbon atoms would have been obvious.
Regarding the recited positions of the alkyl group of the claims 3 and 4, the Y of the Ar2 taught by JP would have four different locations of the alkyl group. A court held that very limited choice is anticipation and thus the recited positions of the alkyl group of the claim 3 would have been at least obvious. See In re Arkley, 455 F2d 586, 172 USPQ 524 (CCPA 1972); In re Petering, 301 F2d 676, 133 USPQ 275 (CCPA 1962). MPEP 2131.
Regarding the recited alkyl group of the claims 6 and 7, JP teaches Ar1 includes =phenyl-Rf1-phneyl= which would make the claims 6 and 7 obvious.
Regarding the recited alkyl group of the claim 9, JP teaches that Y of the Ar2 includes アルキル (arukiru) which would an alkyl in English and thus such disclosure would make the claim 9 obvious.
Regarding the recited formula (III) of the claim 11-14, JP teaches a polyimide having formula (1) and Ar1 of the formula (1) being =phenyl-Rf1-phneyl= as discussed above which would makes the claims 11-14 obvious. A court held that very limited choice is anticipation and thus the recited positions of the alkyl group would have been at least obvious. See In re Arkley, 455 F2d 586, 172 USPQ 524 (CCPA 1972); In re Petering, 301 F2d 676, 133 USPQ 275 (CCPA 1962). MPEP 2131.
Claim 10 is rejected under 35 U.S.C. 103 as being unpatentable over JP 2-208324 (Aug. 17, 1990) with Machine translated JP H02208324 A (Aug. 17, 1990) in view of Critchley (US 3,832,322) as applied to claims 1-4, 6, 7, 9 and 11-14 above, and further in view of8 (Nov. 13, 1998) with Machine translation.
The instant claim 10 further recites a poly(amic acid) known as a precursor for a polyimide over JP’324 and Critchley..
The poly(amic acid) precursor is well known as taught by the claim 2 of JP’019.
Thus, it would have been obvious to one skilled in the art before the effective filing date of invention further to utilize the art well known poly(amic acid) form taught by JP’019 in JP’324 and Critchley thereof since utilization of the poly(amic acid) form for obtaining a polyimide is well known as taught by JP’019 absent showing otherwise.
Selection of a known material based on its suitability for its intended use is prima facie obvious, see Sinclair & Carroll Co. v. Interchemical Corp., 325 US 327, 65 USPQ 297 (1945). MPEP 2144.07.
The combination of familiar elements according to known methods is likely to be obvious when it does no more than yield predictable results. KSR Co. v. Teleflex Inc., 550 U.S. 398, 416 (2007). MPEP 2141.
CLAIM OBJECTION
Claim 5 is objected to as being dependent upon a rejected base claim, but would be allowable if rewritten in independent form including all of the limitations of the base claim and any intervening claims since none of the prior art of the record teach or suggest utilization of an indolylene group.
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/TAE H YOON/ Primary Examiner, Art Unit 1762
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