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 .
This application is a national stage entry under 35 U.S.C. §371 of International Application No. PCT/US2022/039512 filed 8/5/2022.
Acknowledgment is made of provisional application No. 63/232,739, filed on Aug. 13, 2021.
Claims 1-20 are pending.
Claim Objections
Claim 1 is objected to because of the following informalities:
Claim 1 recites “5” in the last line and appears to be extraneous.
Appropriate correction is required.
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.
Claim 1-10 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.
A broad range or limitation together with a narrow range or limitation that falls within the broad range or limitation (in the same claim) may be considered indefinite if the resulting claim does not clearly set forth the metes and bounds of the patent protection desired. See MPEP § 2173.05(c). In the present instance, claim 1 recites the broad recitation the solvent has a boiling point of greater than 80 ˚C, and the claim also recites a boiling point of from 70 to less than 150 ˚C, which is the narrower statement of the range/limitation. The claim(s) are considered indefinite because there is a question or doubt as to whether the feature introduced by such narrower language is (a) merely exemplary of the remainder of the claim, and therefore not required, or (b) a required feature of the claims.
Regarding claim 1, the phrase "preferably" renders the claim indefinite because it is unclear whether the limitations following the phrase are part of the claimed invention. See MPEP § 2173.05(d).
Claim 1 recites the limitation "the pigment" in line 2. There is insufficient antecedent basis for this limitation in the claim.
Claims 2-10 are subsumed by these rejections because of their dependence.
Claim 10 recites …(yellow, red, browns).. and …(Iron & Cobalt Blue)… and it would not be clear why parenthesis are recited.
Appropriate correction and/or clarification is required.
Claim Rejections - 35 USC § 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 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 1-8, 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 ([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 ˚C 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.
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 6: The polyimide is soluble in the solvent at room temperature ([0494[).
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, 15-20 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 claim 15: Auman is directed to an article comprising a polyimide film on a plastic [flexible] substrate 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]).
The diphthalic anhydride includes 4,4'-bisphenol-A dianhydride 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 15.
Auman doesn't specifically recite a dielectric constant, percent transmission at 400-750 nm, and a breakdown voltage. 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 dielectric constant, percent transmission at 400-750 nm, and a breakdown voltage 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 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:
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.
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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.
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/ROBERT T BUTCHER/Primary Examiner, Art Unit 1764
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