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 .
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.
Claim Objections
Claim 6 is objected to because of the following informalities: Insert the word “and” before the description of species (f) in the recited Markush group. 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.
Claims 1, 2, and 4-14 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.
Regarding claim 1: Claim 1 states that R1 and R2 are selected from the group consisting of “C2-12 and alkenyl groups”. The phrase “C2-12” does not recite a type of group/structure which can be present at either variable R1 and R2; rather, phrases like C2-12 are used as descriptors to denote the number of carbon atoms present in a type of group. For example, a C2-12 heterocycle would indicate a heterocyclic group that can contain from 2 to 12 carbon atoms. Claim 1 as currently written is therefore indefinite, as it is unclear what kind of structures may fall within the scope of the phrase “C2-12”.
Additionally, claim 1 states that variable R may be the structure shown below.
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As written, the structure of the claimed bismaleimide is indefinite, as it is unclear whether formula (II) is intended to depict the point of attachment to the propane linking group. For instance, the top point of the structure of formula (II) could be interpreted to be the point of attachment to the rest of the compound; this would correspond to a compound wherein the structure -CHR1R2 is attached to the propane linking group. Alternatively, the top point of the structure of formula (II) could be interpreted to be a carbon atom that is part of the group R; this would correspond to a compound having the structure -CH2CHR1R2 is attached to the propane linking group.
Claims 4-14 depend from claim 1 and do not correct this deficiency. The claims are therefore indefinite per the same rationale as claim 1.
Regarding claim 2: Claim 2 depends from claim 1 and states that the R is a cyclohexyl group of formula (III). Similar to the discussion above with respect to formula (II) in claim 1, it is unclear whether the top point of the structure of formula (III) is intended to be the point of attachment to the rest of the compound or if it is a carbon atom. The scope of the claimed compound is therefore indefinite, as it is unclear whether the claim is intended to require the presence of a -CH2- group between cyclohexyl ring and propane linking group.
Regarding claim 8: Claim 8 recites the limitation "the at least one polyimide of formula (III)" in line 2. There is insufficient antecedent basis for this limitation in the claim. Note that the parent claim recites a polyimide of formula (V), not (III).
Allowable Subject Matter
Claims 1, 2, and 4-14 would be allowable if rewritten or amended to overcome the rejection(s) under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), 2nd paragraph, set forth in this Office action.
Claim 3 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.
The following is a statement of reasons for the indication of allowable subject matter: The following references are relevant to the patentability of the instant claims.
Ma et al, CN110437122, discloses the production of the compound 1,3-bismaleimidopropane, having the structure shown below.
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Note that the propane linker of the prior art compound is not substituted with either a C3-7 cycloaliphatic ring or a branched structure as required by independent claim 1.
An et al, US2016/0015832, discloses 1,3-bismaleimidopropane and a derivative thereof substituted with the group -OCH2COOH (Fig. 1: compounds 4, 9). Note that the propane linker of the prior art compound is not substituted with either a C3-7 cycloaliphatic ring or a branched structure as required by independent claim 1
Edge et al, published in Journal of Polymer Science Part A: Polymer Chemistry vol. 30, discloses the production of a substituted bismaleimidopropane compound having the structure shown below (Scheme 1).
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Note that 1) the maleimide rings are chlorinated and 2) the rings bonded to carbon #2 in the propane chain are aromatic. The prior art compound therefore does not correspond to the structure recited in independent claim 1.
Musa et al, published in Journal of Polymer Science Part A-1 vol. 10 discloses bismaleimide compounds of the structure shown below, wherein R is either –(CH2)n- with n being 2, 3 or 6 or a linking group containing aromatic rings (page 320; page 321: Table I).
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Musa does not teach a bismaleimide wherein the propane linking group is substituted with either a C3-C7 cycloaliphatic ring or a branched structure as required by independent claim 1.
Mizori, US2018/0237668, discloses the bismaleimide having the structure shown below (0011).
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Note that the prior art structure has two methyl groups bonded directly to the 2nd carbon of the propane linking group and therefore does not fall within the scope of the claimed compound.
Dershem, US2008/0075965, discloses the production of maleimide groups having the structure shown below, wherein Q is generically taught to be (un)substituted hydrocarbon group(s) (¶0035).
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None of the cited references teaches or fairly suggests the production of a 1, 3-bismaleimidopropane structure wherein the 2nd carbon of the propane linking group is substituted with either the C3-7 aliphatic ring or branched structure required by independent claim 1.
Conclusion
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/JEFFREY S LENIHAN/Primary Examiner, Art Unit 1765
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