DETAILED ACTION
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
Any new grounds of rejection set forth below are necessitated by Applicant’s amendment.
The text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office Action.
Claims 1-5, 7-11, 13-14, 16-20 are pending.
Claim Rejections - 35 USC § 103
Claims 1-5, 7-8, 11, 13, 14 are rejected under 35 U.S.C. 103 as being unpatentable over Auman et al. (US 2020/0216614).
Regarding claim 1: Auman is directed to a composition comprising:
a. 1-99 weight percent of a polyimide wherein the polyimide is a reaction dehydrated product of a dianhydride component and a diamine component, where the dianhydride component can comprises 100 mol% diphthalic anhydride of BPADA or ODPA ([0126]) (equivalent to the claimed structure wherein L1 is Ar1 comprising one or more aromatic ring or -O-).
and where the diamine component comprises at least 95 mol% 2,2'-bis(trifluoromethyl) benzidine (TFMB) ([0160]) (equivalent to the claimed diamine wherein L2 is a direct bond, R1 is a substituted alkyl of 1-3 carbon atoms) and
b. a solvent having a boiling point of toluene (BP 111 ˚C) ([0494]).
Diphthalic anhydride of BPADA ([0126]) (equivalent to the claimed structure wherein L1 is -O-Ar1-O- comprising one or more aromatic ring), the solvent has a boiling point above 80 ˚C and the composition consists essentially of the polyimide and solvent.
OPDA/TFMB is disclosed a specific dianhydride/diamine combination in Example 18 ([0549] Auman).
While Auman doesn’t mention a single resin composition simultaneously comprising the aforementioned components in a single composition, it would have been obvious to have selected such a composition since Auman discloses finite number of identified, predictable options and one of ordinary skill in the art could have pursued the known potential solutions with a reasonable expectation of success. Therefore, it would have been obvious to have selected a composition within the scope of claim 1.
Auman teaches solvents for deposition include THF ([0494]), wherein ODPA/TFMB in Example 18 is taught ([0549] Auman), is soluble in THF at room temperature as defined by the present invention (See Table 3 of the present invention).
Regarding claim 2: The diphthalic anhydride includes BPADA ([0126]) (equivalent to the claimed structure wherein L1 is -O-phenyl-CH3)2-phenyol-O-).
Regarding claim 3: The diamine includes bis(trifluoromethyl) benzidine (TFMB) ([0160]) (equivalent to the claimed diamine wherein R1 is halogenated fluorinated alkyl).
Regarding claim 4: The diamine includes bis(trifluoromethyl) benzidine (TFMB) ([0160]) (equivalent to the claimed diamine wherein L2 is a direct bond).
Regarding claim 5: The diphthalic anhydride includes BPADA ([0126]) (equivalent to the claimed structure wherein L1 is -O-phenyl-CH3)2-phenyol-O-). The diamine includes bis(trifluoromethyl) benzidine (TFMB).
Regarding claim 7: Auman doesn't specifically recite a viscosity of 200-2000 centipoise. However, the composition produced in Auman is substantially identical to the composition produced in the instant invention.
Case law holds that 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). MPEP 2112.01(I).
Hence, Auman suggests a composition having a viscosity within the scope of the claims. Since PTO cannot conduct experiments the proof of burden is shifted to the applicants to establish an unobviousness difference, see In re Best, 562 F.2d 1252, 195 USPQ 430 (CCPA 1977). See MPEP § 2112.01.
Regarding claim 8: Solvents include alkyl acetates of ethylacetate, ketones such as cyclopentanone, alkyl acetates of acid esters ([0494]).
Regarding claim 11: Auman is directed to a method comprising providing a composition comprising:
a. 1-99 weight percent of a polyimide wherein the polyimide is a dehydrated reaction product of a dianhydride component and a diamine component, where the dianhydride component can comprises 100 mol% diphthalic anhydride of BPADA ([0126]) (equivalent to the claimed structure wherein L1 is Ar1 comprising one or more aromatic ring),
and where the diamine component comprises at least 95 mol% 2,2'-bis(trifluoromethyl) benzidine (TFMB) ([0160]) (equivalent to the claimed diamine wherein L2 is a direct bond, R1 is a substituted alkyl of 1-3 carbon atoms) and
b. a solvent having a boiling point of toluene (BP 111 ˚C) ([0494]).
Diphthalic anhydride of BPADA ([0126]) (equivalent to the claimed structure wherein L1 is -O-Ar1-O- comprising one or more aromatic ring), the solvent has a boiling point above 80 and the composition consists essentially of the polyimide and solvent.
While Auman doesn’t mention a single resin composition simultaneously comprising the aforementioned components in a single composition, it would have been obvious to have selected such a composition since Auman discloses finite number of identified, predictable options and one of ordinary skill in the art could have pursued the known potential solutions with a reasonable expectation of success. Therefore, it would have been obvious to have selected a composition within the scope of claim 1.
A gravure coating is disclosed to which it is applied to a matrix [substrate] in a thickness of less than 10 micrometers ([0287] [0493] Auman).
Regarding claim 13: A plastic substrate is disclosed (equivalent to a flexible polymeric substrate in light of the present specification) ([0493] Auman).
Regarding claim 14: The substrate can comprise conductive members ([0103] Auman).
Claims 9-10, 16-20 are rejected under 35 U.S.C. 103 as being unpatentable over Auman as applied to claim 1 above, and further in view of Uekido (US 2012/0043691).
Regarding claim 9: Auman doesn’t mention a pigment.
Uekido is directed to a polyimide layer containing a pigment, wherein the amount of pigment is in an amount of 1-30 part by mass per 100 parts polyimide ([0035] Uekido). One skilled in the art would have been motivated to have included a pigment in the polyimide composition of Auman to produce a light shielding property or light reflectivity used in electronic components including printed wiring board flexible wiring board and tables for TAB, COF and the like ([0102] Uekido). Therefore, it would have been obvious to one skilled in the art at the time the invention was filed to have included in amount of pigment in the composition of Auman to arrive at claim 9 of the present invention.
Regarding claim 10: Pigment include carbon black, iron black, and titanium dioxide ([0012] Uekido).
Regarding claims 16-17: Suitable solvents include toluene (BP 111 ˚C) ([0494]).
Regarding claim 18: It is noted that claim 18 recites the transitional phrase “consisting essentially of”, which limits the scope of the claim to the specified materials or steps and those that do not materially affect the basic and novel characteristic of the claimed invention. For the purposes of searching for and applying prior art, absent a clear indication in the specification or claims of what the basic and novel characteristics actually are, “consisting essentially of” is construed as equivalent to “comprising” (see MPEP 2111.03).
The composition can consist essentially of the polyimide and solvent since no other components are required.
Regarding claims 19-20: The dianhydride component can comprises 100 mol% diphthalic anhydride of 4,4'-bisphenol-A dianhydride BPADA ([0126]) (equivalent to the claimed structure wherein L1 is Ar1 comprising one or more aromatic ring) and the structure recited in claim 20:
Response to Arguments
Applicant's arguments filed 7/20/2026 have been fully considered but they are not persuasive.
Applicant argues (p. 7-9 Remarks) the present inventiors have found that specific combinations of solvents and polyimides can provide soluble polyimide compositions that can be used on low Tg polymer substrates.
Auman discloses solutions of polyamic acids in high boiling point solvents. Abstract [012] [0278]-[0279]. Auman does not disclose polyimides of claim 1. The present application demonstrates not all combinations of dianhydrides and diamines provide soluble polyimides. The present application demonstrates selection of the dianhydride and diamines and solvent are needed. Table 3 Example 4 note shows BPADA with DMDC, BAPP (BAPB) or BisP are insoluble in most solvents. Similarly ODPA reacted with DMDC or mixture of Bis P and DDS is insoluble.
This argument is not found persuasive since polyimide ODPA/TFMB is disclosed in Example 18 ([0549] Auman), which is the same polyimide in Table 3 of the present invention. Further, Auman teaches solvents for deposition include THF ([0494]), which is defined by the present invention as a solvent that dissolves ODPA/TFMB.
Conclusion
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any nonprovisional extension fee (37 CFR 1.17(a)) pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the mailing date of this final action.
Contact Information
Any inquiry concerning this communication or earlier communications from the examiner should be directed to ROBERT T BUTCHER whose telephone number is (571)270-3514. The examiner can normally be reached Telework M-F 9-5 Pacific Time Zone.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Lanee Reuther can be reached at (571) 270-7026. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/ROBERT T BUTCHER/Primary Examiner, Art Unit 1764
Prosecution Insights