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
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 is 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.
Claim 1 is incomplete absent a claim ending period.
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 1-5 are rejected under 35 U.S.C. 103 as being unpatentable over JP 6872081 B2 (May 19, 2021) with Machine translation in view of Machine translated KR 101966736 B1 (April 9, 2019).
The instant application and JP have different co-inventors and thus an inventive entity of JP is different from that of the instant application.
Applicant failed to provide any evidence that JP would not be a valid prior art under Exceptions, 35 U.S.C. 102(b). Thus, JP is a valid reference as 102(a)(1) and 103 rejections.
Machine translated JP teaches a polyimide obtained from a polyamic acid comprising a mixture of BAPP (the instant component (a3), PRIAMINE 1075 (the instant component (a3) as evidenced by the instant examples), ABPS (3’3-diamino-4,4’dihyroxidiphenlsulfone which is the instant component (a1) as evidenced by Para. [0022] of the instant application) and ODPA (oxydiphthalic anhydride which is used in the instant example 1) in example 1 of page 9,
Machine translated JP teaches a resin composition containing the polyimide and a compound capable of reacting with an amino group in lines 7-8 from a bottom of page 13 (i.e., claim 6).
The instant invention further recites a compound having a functional group that can react with a phenolic hydroxy group and an ethylenically unsaturated double bond group over a compound capable of reacting with an amino group taught by JP.
The instant claim 4 recites that a functional group of the compound having a functional group that can react with a phenolic hydroxy group is an isocyanate group.
Utilization of the instant compound C with the polyimide is known in the art.
Machine translated KR teaches a composition comprising a polyimide and 2-methacryloyloxyethyl isocyanate in Experimental Example 5 of page 17.
Thus, it would have been obvious to one skilled in the art before the effective filing date of invention to utilize the art well known 2-methacryloyloxyethyl isocyanate used with the polyimide taught by KR in JP since Machine translated JP teaches a resin composition containing the polyimide and a compound capable of reacting with an amino group 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.
Regarding claims 2, 3 and 5, see pages 1-2 of JP.
Regarding claim 4, the 2-methacryloyloxyethyl isocyanate taught by KR meets the claim
CLAIM OBJECTION
Claims 6-10 are 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 record fairly tach or suggest the utilization of the instant polyimide resin and a thermosetting resin.
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/TAE H YOON/ Primary Examiner, Art Unit 1762
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