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 DETAILED ACTION Election /Restrictions The previous restriction has been withdrawn. 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. Claim(s) 1-11 are rejected under 35 U.S.C. 112(b) as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor, or for pre-AIA the applicant regards as the invention. Regarding claim 1, the phrase " preferable" in the end of the claim renders the claim indefinite because it is unclear whether the limitation(s) following the phrase are part of the claimed invention . Claims 2-11 depend upon claim and fail to rectify the issue in claim 1 . See MPEP § 2173.05(d). 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 of this title, 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. Claim(s) 1- 11 is (are) rejected under 35 U.S.C. 103(a) as being unpatentable over Nye et al. (J. of Polym . Sci.: Part A: Polym . Chem., Vol 28, 2633-2640 (1990), listed on IDS) in view of Kodama et al. ( JP 2003231753 , machine translation provided ) and further in view of Connell et al. ( US 6350817, listed on IDS ). As to claims 1- 11 , Nye (abs., Table I-II) discloses a polyimide: for producing composite (Introduction). Nye further discloses more flexible diamines gives higher solubility (Introduction). Nye further discloses (Table 1) using a diamine of ODA: to produce an insoluble polyimide. Nye’s alkyne containing dianhydride (EBPA) meets the moiety of Y of claims 1 and 4-6. The molar ratio of B PA DA ( 2,2-bis[4-(3,4-dicarboxyphenoxy)phenyl]propane dianhydride ) is 80 mol%, meeting the range s of X of claims 1 and 7-9. Nye’s aforementioned polyimide shows a single Tg of 217 °C, indicating the polyimide would have a repeating unit of ≥2, overlapping with the range s of claim 10-11. It has been found that where claimed ranges overlap ranges disclosed by the prior art, a prima facie case of obviousness exists - see MPEP 2144.05. This assessment is based on the fact the molecular weight /repeating units of a polymer is correlated to its glass transition temperature. Nye is silent on the claimed dianhydride moiety Y and diamine moiety of W of claims 1 and 3. In the same area of endeavor of producing composites comprising polyimides, Kodama (abs., examples, claims , Table 1-2 ) discloses a polyimide for producing films , 1) , composite (91) and adhesives (1) comprising a diamine (36 ,105 ) of (embracing a species of 1, 3-bis(3-(3-aminophenoxy)phenoxy)benzene ) that meets the diamine of claims 1 and 3 polymerized with a dianhydride of 3,3',4,4'- b iphenyltetracarboxylic a cid a nhydride ( BPDA , Ex.1 ), B PA DA ( 2,2-bis[4-(3,4-dicarboxyphenoxy)phenyl]propane dianhydride , the same dianhydride of Nye’s aforementioned polyimide, Ex.5), or 3,3'',4,4''- t erphenyltetracarboxylic a cid a nhydride (73) that meets the second X species (the moiety of dianhydride) of claims 1 and 4-6 . The polyimide ends with monoamine and can be end capped with anhydrides to adjust molecular weight (75-81) . The polyimide melts to exhibit good adhesion ( 9, 82). One of ordinary skill in the art would obviously recognize Kodama’s 1, 3-bis(3-(3-aminophenoxy)phenoxy)benzene as a diamine is more flexible than Nye’s diamines of ODA and PPD in aforementioned polyimides (Table I and II) , owing to the ether linkage on the backbone . Kodama’s polyimide (Ex. 2, BPDA// 1,3 -bis(3-(3-aminophenoxy)phenoxy)benzene ) shows a higher Tg than that of the polyimide of Ex. 5, B PA DA // 1 , 3-bis(3-(3-aminophenoxy)phenoxy)benzene ). One of ordinary skill in the art would obviously using Kodama’s 3,3'',4,4''- t erphenyltetracarboxylic a cid a nhydride copolymerized with 1,3 -bis(3-(3-aminophenoxy)phenoxy)benzene would yield a polyimide having a Tg higher than the polyimides of Ex.1 and Ex.5, because 3 ,3'',4,4''- t erphenyltetracarboxylic a cid a nhydride contains an additional phenylene group on the backbone compared to BPDA. Kodama and Nye are silent on the claimed end capping anhydride moiety (Z) of claim 1. In the same area of endeavor of producing composites and adhesives comprising polyimides (2:15-16), Connell (abs., examples, claims) discloses adding 4-phenylethynylphthalic anhydride (PEPA, meets the anhydride moiety (Z) of claims 1 and 7) to polyimide molecule lowers the melt viscosity (3:10-20). Therefore, as to claims 1-11 , it would have been obvious to one of ordinary skill in the art to have modified the polyimide disclosed by Nye and replaced the di anhydride of B PA DA with Kodama’s 3 ,3'',4,4''- t erphenyltetracarboxylic a cid a nhydride , replaced the diamine of PPD with Kodama’s 1, 3-bis(3-(3-aminophenoxy)phenoxy)benzene , and added the end capping agent with PEPA in view of Connell , because the resultant polyimide would yield the claimed polyimide structures with improved solubility, Tg , adhesion, melt flow , and MW control . The references are silent on the claimed single Tg of claim 2. Accordingly, the examiner recognizes that not all of the claimed effects or physical properties are positively stated by the reference s. However, the reference s teach a composition containing the claimed components in the claimed amounts prepared by substantially similar components, in this case, the backbone and terminal structures and repeating units. Therefore, one of ordinary skill would have a reasonable expectation that the claimed effects and physical properties, i.e. single Tg , would necessarily flow from a composition containing all of the claimed components in the claimed amounts prepared by a substantially similar process. Where 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. See In re Best, 562 F.2d 1252, 1255, 195 USPQ 430, 433 (CCPA 1977); In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990); see also MPEP § 2112.01(I)-(II). If it is the applicant’s position that this would not be the case: (1) applicant must provide evidence to support the applicant’s position, and (2) it would be the examiner’s position that the application contains inadequate disclosure on how to obtain the claimed effects or properties with only the claimed components in the claimed amounts by the disclosed or claimed process. Conclusion Any inquiry concerning this communication or earlier communications from the examiner should be directed to FILLIN "Enter examiner's name" \* MERGEFORMAT SHANE FANG whose telephone number is FILLIN "Phone number" \* MERGEFORMAT (571)270-7378 . The examiner can normally be reached on FILLIN "Work schedule?" \* MERGEFORMAT Mon-Thurs. 8am-6pm . The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300. If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, FILLIN "SPE Name?" \* MERGEFORMAT Randy Gulakowski can be reached on FILLIN "SPE Phone?" \* MERGEFORMAT 571.572.1302 . Information regarding the status of an application may be obtained from the Patent Application Information Retrieval (PAIR) system. Status information for published applications may be obtained from either Private PAIR or Public PAIR. Status information for unpublished applications is available through Private PAIR only. For more information about the PAIR system, see http://pair-direct.uspto.gov. Should you have questions on access to the Private PAIR system, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative or access to the automated information system, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000. /SHANE FANG/ Primary Examiner, Art Unit 1766