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 with traverse of claims 1, 3-5 and 7-12 (claims 2 and 6 are cancelled) in the reply filed on 05/26/2026 is acknowledged. The traversal is on the ground(s) that Gupta et al. does not teach the amended claim structure. This is found to be not persuasive because, although Gupta no longer anticipates the amended claim structures, as discussed in the rejection below the combination of Gupta and Nakai render the bismaleimide compound obvious, and therefore the common technical feature “a bismaleimide compound” shared by Groups I, II and III fails to constitute a special technical feature over the prior art. The limitations set forth in the claims fail to define a contribution over the combination of Gupta and Nakai.
In response to applicant’s argument that the patent office has not established that it would pose an undue burden to examine the full scope of the claims, since the instant application is filed under national stage 35 U.S.C. 371 (unity of invention analysis) as compared to national applications filed under 35 U.S.C. 111(a) (independent and distinct analysis), the restriction is proper and the establishment of undue examination burden is not needed.
The requirement is still deemed proper and is therefore made FINAL.
Claims 13-17 and 19-20 are withdrawn from further consideration pursuant to 37 CFR 1.142(b), as being drawn to a nonelected claims, there being no allowable generic or linking claim.
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.
The factual inquiries for establishing a background for determining obviousness under 35 U.S.C. 103 are summarized as follows:
1. Determining the scope and contents of the prior art.
2. Ascertaining the differences between the prior art and the claims at issue.
3. Resolving the level of ordinary skill in the pertinent art.
4. Considering objective evidence present in the application indicating obviousness or nonobviousness.
Claims 1, 3-5 and 7-12 are rejected under 35 U.S.C. 103 as being unpatentable over Gupta et al. Addition Polyamide-Imides based on Itaconic Anhydride, Journal of Polymer Science: Part A:Polymer Chemistry 1990, Vol 28, pages 935-943, and in view of Nakai et al. JP-2020012104-A.
Regarding claims 1, 4-5 and 12, Gupta teaches polyamide-imide resin and recommends the inclusion of amide linkages within the polyimide backbone to make the polymer more soluble, moldable and processable (Introduction). Gupta teaches a bismaleimide compound with amide linkages (in precursor 2, scheme 4) via formation of intermediate N, N'-bis(4-carboxyphenyl)pyromellitimide where 4-aminobenzoic acid (scheme 2) is utilized as the aromatic amino acid. Gupta does not discuss the use of aliphatic amino acids as possible reactants to derive the amide (and imide) linkages.
Analogous reference Nakai who also teaches polyamide-imide polymers, teaches aliphatic amino acid such as beta-alanine which is noted as equivalent to 4-aminobenzoic acid, where the use of aliphatic amino acid is encouraged to improve solubility and minimize the color formation in the final polyamide-imide (Nakai paras 66 and 67). Since it is prima facie obvious to substitute art recognized equivalents for the same purpose (MPEP 2144.06 II), it would have been obvious to one of ordinary skilled in the art before the effective filing date of the invention to have modified Gupta with beta-alanine as the amino acid as the reactant to create the amide repeat unit (and imide) to improve solubility and decrease possible color formation in the final bismaleimide based polyamide-imide.
Utilization of beta-alanine instead of 4-amino benzoic acid in Gupta’s structure precursor 2 would result in structure as depicted below.
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354
1256
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Which reads on structural Formula 3b with n=1, where Ra and Rb are a combination of aromatic and aliphatic moieties, X is an unsubstituted aliphatic moiety with 2 carbon atoms (instant claims 4 and 12), and R1 is H and R2 is methyl group.
Regarding claim 3, Gupta utilizes 4,4'-diaminodiphenylmethane (scheme 1) as the diamine. A methyl ring substitution on phenyl rings to generate 4,4'-diamino -3,3’-dimethyldiphenylmethane would be readily envisaged by a person having ordinary skill in the art, to further tune the solubility and hydrophobicity of the polyimide-amide structure. See MPEP2131.02.I. and III. 4,4'-diamino -3,3’-dimethyldiphenylmethane meets the claimed structure of Ra and Rb which are a combination of substituted aromatic moieties having total 12 carbon atoms (from diphenyl), along with aliphatic moieties having 3 carbon atoms.
Regarding claims 7 and 8 which relate to alternatives, the combination of Gupta and Nakai render the alternate requirement of 3b obvious.
Regarding claims 9-11, Gupta utilizes 4,4'-diaminodiphenylmethane (scheme 1) as the diamine corresponding to Ra and Rb, as discussed when addressing claims 1 and 3. Gupta is silent on the use of an aliphatic diamine, but secondary reference Nakai teaches (para [0049]) the use of dimer diamine Priamine-1075 ® Croda, in order to tailor the final use of the polyamide-imide. Priamine-1075 ® corresponds to Formula (8a) (and Formula (7a)), and is also utilized by the instant specification (page 52, line 21). Nakai adds that the use of aliphatic diamines such as dimer diamine enhances the non-color forming property of the final polyamide-imide (para [0052]).
It would have been obvious to one of ordinary skilled in the art before the effective filing date of the invention to have modified Gupta with dimer diamine Priamine-1075 ® as the diamine reactant to generate the imide-amine repeat units for the same application of creating a bismaleimide based polyamide-imide with reduced color.
Conclusion
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/S.M.D./
Examiner
Art Unit 1765
/JOHN M COONEY/Primary Examiner, Art Unit 1765
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