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 .
The amendment filed 7/21/2026 has been entered. Claims 4-5 have been canceled. Claims 1-3 and 6-17 are pending in the application. The text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action.
Claim Rejections - 35 USC § 112
Claim 8 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. As noted in the prior office action, claim 8 recites, “The polyimide powder of claim 7, wherein a conductive filler is dispersed” (emphasis added), however, given that claim 1, from which claim 7 depends, already recites “a conductive filler”, it is unclear as to whether “a conductive filler” in claim 8 is meant to be the same conductive filler as already present in the polyamic acid varnish (e.g., “a conductive filler” in claim 8 should read “the conductive filler”) or an additional conductive filler (aside from the conductive filler of claim 1, e.g., “a conductive filler” in claim 8 should read “a further conductive filler”), one having ordinary skill in the art would not be reasonably apprised of the scope of the claimed invention and could not interpret the metes and bounds of the claim so as to understand how to avoid infringement.
Claims 13-17 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. Claims 13, 15, and 17 have been amended from independent claims to dependent claims that depend upon claims 1, 7, and 9, respectively, with claims 7 and 9 ultimately depending upon claim 1, however, similar to the issue discussed above with respect to claim 8, each of claims 13, 15, and 17 recites components (e.g., “a conductive filler”, “a diamine monomer”, “a dianhydride monomer”, “an organic solvent”, “a polyimide powder”, and/or “a polyimide molded article”) that are already recited in claim(s) 1, 7, and/or 9 but without proper use of “said” or “the” such that it is unclear as to whether the repeated component(s) are the same as those already recited in a prior claim or in addition to those already recited; and if not, particularly in the case of “an organic solvent” and “a conductive filler”, “the organic solvent” and “the conductive filler” as further recited by the claims would lack clear antecedent basis, e.g., in claim 13, does “the organic solvent” on line 4 and/or “the conductive filler” on line 5 refer to “an organic solvent” and “a conductive filler” recited on line 3 of claim 13, and/or to “an organic solvent” and “a conductive filler” as recited in claim 1 on lines 4 and 5, respectively? Hence, one having ordinary skill in the art would not be reasonably apprised of the scope of the claimed invention and could not interpret the metes and bounds of the claim so as to understand how to avoid infringement.
Dependent claims 14 and 16 do not remedy the above and hence are indefinite for the same reasons.
Claim Rejections - 35 USC § 102
The following is a quotation of the appropriate paragraphs of 35 U.S.C. 102 that form the basis for the rejections under this section made in this Office action:
A person shall be entitled to a patent unless –
(a)(2) the claimed invention was described in a patent issued under section 151, or in an application for patent published or deemed published under section 122(b), in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention.
Claims 1-3 and 6 are rejected under 35 U.S.C. 102(a)(2) as being anticipated by MacLaughlin (US2023/0137913A1). MacLaughlin discloses polyimide films comprising inorganic and/or organic fillers (Abstract), such as carbon black, graphite, graphene, carbon nanotubes, and carbon nanofibers (Paragraph 0042), with one embodiment comprising electrically insulating thermally conductive fillers while another embodiment comprises electrically conductive fillers carbon (Paragraphs 0044-0046), particularly carbon black (Paragraph 0047), with at least one working example comprising a carbon black slurry consisting 10-18wt% carbon black powder, 3 wt% of polyamic acid solids, and 63-73wt% DMAc solvent that is then added to a polyamic acid solution in an appropriate ratio to provide a carbon black content of 36wt% in the polyimide composition, on a dry basis, wherein the polyimide is formed from PMDA (pyromellitic dianhydride, a first aromatic dianhydride having a chemical formula according to Chemical Formula 1, with X being Chemical Formula 3 of instant claim 1), BPDA (3,3',4,4'-biphenyltetracarboxylic acid dianhydride, a second aromatic dianhydride having a chemical formula according to Chemical Formula 1 with X according to Chemical Formula 4 of instant claim 1), and ODA (4,4’-oxydianiline, a diamine as in instant claim 6) as shown in Table 2, thereby anticipating instant claims 1-3 and 6 (Examples, Paragraphs 0090-0094).
Claims 1-3 and 6 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Moriyama (US2004/0071990A1). Moriyama discloses electrically conductive polyimide compositions having a carbon nanotube filler component formed from a polyamic acid solution containing an organic solvent, a polyamic acid, and carbon nanotubes (reading upon the claimed “conductive carbon” as recited in instant claim 3) dispersed therein in a content to provide the desired surface resistivity for a particular end use, wherein electrically conductive films of the invention show excellent electrical conductivity without diminishing mechanical properties such as the Young’s modulus of elasticity and/or tensile elongation (Abstract, Paragraphs 0164-0167). Moriyama discloses that a preferred polyimide can be derived from reacting 4,4'-diaminodiphenyl ether (4,4'-ODA) with pyromellitic dianhydride (PMDA) and that copolyimides derived from any of the diamines and dianhydrides recited in Paragraphs 0021-0162 are generally operable as well, wherein “[p]articularly preferred copolyimides can be those derived from 15 to 85 mole % of 3,3 ',4,4'-biphenyltetracarboxylic dianhydride [i.e., a dianhydride monomer represented by instantly claimed Chemical Formula 1 with X being represented by Chemical Formula 4], 15 to 85 mole % pyromellitic dianhydride [i.e., a dianhydride monomer represented by instantly claimed Chemical Formula 1 with X being represented by Chemical Formula 3], 30 to 100 mole % p-phenylenediamine [i.e., a diamine as in instant claim 6] and 0 to 70 mole % of 4,4'-diaminodiphenyl ether” (Paragraph 0163). Hence, Moriyama anticipates instant claims 1, 3, and 6.
Further, with respect to instant claim 2, Moriyama discloses that film of the invention can be formed by dispersing carbon nanotubes into the polyamic acid utilizing a carbon nanotube dispersion of the same or different organic solvent and having a content of carbon nanotubes of from about 0.1 to 40 weight percent, or may optionally be mixed a small portion of polyamic acid polymer, such that the carbon nanotubes are generally dispersed in a polyimide in a weight ratio of between 0.10 and 50 weight percent, to provide the desired electrical conductivity for a particular end use (Paragraphs 0167-0169 and 0174), and given that Moriyama specifically discloses working examples wherein the carbon nanotube content in the polyamic acid solution including the organic solvent is in the range of 0.5 wt% to 5 wt%, falling within the claimed range as recited in instant claim 2, the Examiner takes the position that Moriyama discloses the claimed invention with sufficient specificity to anticipate instant claim 2 (Examples).
Claims 1-3, 6-13, and 15-17 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Kang (US2013/0015411A1), for generally the reasons recited in the prior office action and restated below with respect to the amended claims, wherein it is further noted that Kang specifically recites that with respect to the suitable tetracarboxylic dianhydrides for the invention, “one or more selected from the group consisting of pyromelitic dianhydride, benzophenonetetracarboxylic dianhydride, oxydiphthalic dianhydride, biphthalic dianhydride and hexafluoroisopropylidenediphthalic dianhydride can be used as an essential component” (emphasis added, Paragraph 0030), and given that each of these dianhydride monomers has a chemical structure represented by the instantly claimed Chemical Formula 1 with X being represented by either Chemical Formula 3, i.e., PMDA, or Chemical Formula 4, i.e., the remaining dianhydrides, the Examiner takes the position that Kang discloses the claimed invention with sufficient specificity to anticipate instant claims 1-3, 6-13, and 15-17 as further discussed below.
As discussed in the prior office action, Kang discloses a method for manufacturing a wholly aromatic polyimide powder having antistatic properties or electric conductivity (Paragraph 0001) as well as the resulting antistatic or electrically conductive polyimide powder and a polyimide molded article prepared from the electrically conductive polyimide powder (Abstract, Paragraph 0001, Claims 1 and 9-10). Kang discloses that the method comprises: dissolving aromatic diamine in an organic solvent in which electrically conductive carbon black powder and multi-wall carbon nano-tube powder (i.e., “a conductive filler” as in instant claims 1, 8, 13, 15, and 17, and particularly as in instant claim 3) are dispersed (i.e., “dispersing a conductive filler in an organic solvent” as in instant claims 13, 15, and 17); adding aromatic tetracarboxylic dianhydride thereto and polymerizing the resulting mixture (i.e., “a polyamic acid varnish comprising: a polyamic acid including a diamine monomer and a dianhydride monomer as polymerization units; a conductive filler; and an organic solvent” as in instant claim 1) to obtain polyimide resin powder (i.e., “polymerizing a diamine monomer and a dianhydride monomer in the organic solvent in which the conductive filler is dispersed” as in instant claims 13, 15, and 17), wherein the resulting polyimide powder (as in instant claim 7) has a surface resistance in the area of 106-109 Ω/□ due to the uniform dispersion of the conductive inorganic particles in the polyimide powder (as in instant claim 8) and may be utilized directly to produce an electrically conductive polyimide molded article (as in instant claim 9) in which tensile strength is 900 kgf/cm2 (i.e., 88.3 MPa, falling within the range recited in instant claim 12), elongation rate is 6.5% or higher (falling within the range recited in instant claim 11), and surface resistance is 106-109 Ω/□ (measured according to a JIS K7194 method @ 90V which would provide a surface resistance within the claimed range of from 1.0 x 102 to 1.0 x 1013 when “measured according to an ASTM D-257 method” as in instant claim 10; Entire document, particularly Paragraphs 0006-0012, 0019, and 0039, and Examples); and given that Kang specifically discloses that the aromatic tetracarboxylic dianhydride is particularly “one or more selected from the group consisting of pyromelitic dianhydride, benzophenone tetracarboxylic dianhydride, oxydiphthalic dianhydride, biphthalic dianhydride and hexafluoroisopropylidenediphthalic dianhydride” (emphasis added, Paragraph 0030), with each of these dianhydrides having a chemical structure represented by the instantly claimed Chemical Formula 1, with X being represented by either the claimed Chemical Formula 3 for PMDA or the Claimed Formula 4 for the remaining (even hexafluoroisopropylidenediphthalic dianhydride given that the instantly claimed Chemical Formula 4 recites that the M may be an “alkylene group” that based upon the definition thereof in the present specification includes alkylene groups having halogen substituents), the Examiner takes the position that Kang discloses the claimed invention with sufficient specificity to anticipate instant claims 1, 3, and 7-13.
With respect to instant claim 2, Kang discloses that the total amount of electrically conductive carbon black powder and multi-wall carbon nano-tube is preferably in the range of 1-30 wt % based on the total amount of monomers used in the reaction (Paragraph 0032) and that the concentration of a total solid in the solvent-borne mixture is preferably in a range of from 6-16 wt %, and more preferably in a range from 8-12 wt % (Paragraph 0037); and given that Kang specifically discloses working examples wherein the total content of conductive filler, i.e., conductive carbon black powder and multi-wall carbon nanotubes, falls within the claimed 0.1 to 50% by weight whether based on the total weight of the mixture or “polyamic acid varnish” including the organic solvent (Examples), the Examiner takes the position that Kang discloses the claimed invention with sufficient specificity to anticipate instant claim 2.
With respect to instant claim 4, Kang discloses that the polyimide resin has a structure represented by Formula 1 as described in Paragraph 0023, with suitable aromatic diamines recited in Paragraph 0029 including diamines as instantly claimed, with working examples specifically utilizing 4,4’-oxydianiline (ODA) (i.e., a diamine as in instant claim 6), and hence, the Examiner takes the position that Kang discloses the claimed invention with sufficient specificity to anticipate instant claim 4.
With respect to instant claims 15-17, in addition to the discussion above, particularly with respect to instant claim 13, Kang also discloses that after adding the dianhydride, the reaction mixture is stirred at 60-80°C for 1-2 hours, and then the temperature is gradually increased to 160-200°C followed by keeping it for 1-2 hours so as to induce imidization and generate slurry (i.e., thermally curing a polymer produced in the polymerization to obtain a polyimide as in instant claims 15 and 17, and particularly performed at a temperature and for a time as in instant claim 16), the slurry is filtered, and the filtered polyimide powder is washed and dried (Paragraphs 0029-0031, Examples). Kang further discloses that the dried polyimide powder may then be utilized directly to produce a molded article as noted above, such as by compression molding as in the working examples (Paragraphs 0034 and 0039, Examples), and hence, the Examiner again takes the position that Kang discloses the claimed invention with sufficient specificity to anticipate instant claims 15-17.
Claim Rejections - 35 USC § 103
Claims 1-3, 6-13, and 15-17 are rejected under 35 U.S.C. 103 as being unpatentable over Kang, as applied above to amended claims 1-3, 6-13, and 15-17, and further discussed below.
The teachings of Kang are discussed in detail above (and incorporated herein by reference) and although the Examiner is of the position that the reference is anticipatory given that Kang clearly recites “one or more” of the above dianhydrides, each of which reads upon the claimed Chemical Formula 1 wherein PDMA representing Chemical Formula 3 and the remaining monomers representing Chemical Formula 4, the Examiner alternatively takes the position that the claimed invention as recited in instant claims 1-3, 6-13, and 15-17 would have been obvious over the teachings of Kang given that it is prima facie obviousness to choose from a finite number of identified, predictable solutions, with a reasonable expectation of success.
Claim 14 is rejected under 35 U.S.C. 103 as being unpatentable over Kang, as applied to claims 1-13 and 15-17, taken alone or in further view of Connell, for generally the reasons recited in the prior office action and restated below.
The teachings of Kang are discussed in detail above (and incorporated herein by reference) and although Kang teaches that the electrically conductive carbon black powder and multi-wall carbon nano-tube powder are dispersed in the organic solvent prior to polymerization of the diamine and dianhydride monomers, particularly by stirring so that the fillers can be uniformly dispersed therein (Paragraph 0029), Kang does not teach that the dispersing step is conducted by sonication as in instant claim 14. However, given that sonication is an obvious means for uniformly mixing or dispersing carbon nanotubes into a solvent or solution, the Examiner takes the position that absent any clear showing of criticality and/or unexpected results, instant claim 14 would have been obvious over the teachings of Kang taken alone given that one having ordinary skill in the art would have been motivated to utilize any known means for dispersing the electrically conductive carbon black powder and multi-wall carbon nano-tube powder in the invention taught by Kang. Alternatively, given that Connell is similarly directed to producing conductive polyimides as in Kang, and clearly teaches in the background that ultrasonic treatment is a known means for dispersing CNTs in a solvent (Paragraph 0006) and specifically teaches ultrasonic mixing in the various disclosed methods (Paragraphs 0028-0042), particularly with respect to preparing the polyamic acid solutions in the working examples (Examples), it would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to utilize sonication as in Connell to disperse the electrically conductive carbon black powder and multi-wall carbon nano-tube powder in the invention taught by Kang, thereby alternatively rendering instant claim 14 obvious over Kang in view of Connell.
Double Patenting
Claims 1-3 and 6-17 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-2, 7-10, 14 and 18 of copending Application No. 18/714103 (reference application), taken alone, for generally the reasons recited in the prior office action and incorporated herein by reference, or in further view of MacLaughlin or Moriyama or Kang based upon the amended claims in the instant application, given that copending claim 8 recites dianhydride monomers reading upon the claimed chemical formulae of amended claim 1 including PMDA which is represented by Formula 3, and s-BPDA, a-BPDA, and OPDA, and 6-FDA represented by Formula 4, which are obvious dianhydrides in the art (as evidenced by MacLaughlin or Moriyama or Kang), and specifically recites that “the dianhydride monomer includes at least one” of said dianhydride monomers thereby clearly teaching and/or suggesting utilizing any two of said dianhydrides, which is typical in the art as further evidenced by MacLaughlin or Moriyama or Kang, each of which are directed to similar conductive polyamic acids and conductive polyimides and recite dianhydrides as instantly claimed, such that the use of said dianhydrides or any combination thereof would have been obvious over the copending claims.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented, and per Applicant’s request in the reply filed 7/21/2026, this provisional double patenting rejection is being held in abeyance.
Response to Arguments
Applicant's arguments filed 7/21/2026 have been fully considered but they are not persuasive and/or moot in view of the new grounds of rejection and additional remarks presented above with respect to Kang, wherein as discussed in detail above (and contrary to Applicant’s arguments that Kang allegedly fails to disclose a mixed dianhydride monomer as recited in the amended claims, see Section V of the response), Kang does recite that with respect to the suitable tetracarboxylic dianhydrides for the invention, “one or more selected from the group consisting of pyromelitic dianhydride, benzophenonetetracarboxylic dianhydride, oxydiphthalic dianhydride, biphthalic dianhydride and hexafluoroisopropylidenediphthalic dianhydride can be used as an essential component” (emphasis added, Paragraph 0030), and given that each of these dianhydride monomers has a chemical structure represented by the instantly claimed Chemical Formula 1 with X being represented by either Chemical Formula 3, i.e., PMDA, or Chemical Formula 4, i.e., the remaining dianhydrides, the Examiner takes the position that Kang discloses the claimed invention with sufficient specificity to anticipate the claimed invention.
Any objection or rejection from the prior office action not restated above has been withdrawn by the Examiner in light of Applicant’s claim amendments and arguments filed 7/21/2026.
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.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to MONIQUE R JACKSON whose telephone number is (571)272-1508. The examiner can normally be reached Mondays-Thursdays from 10:00AM-5:00PM.
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/MONIQUE R JACKSON/Primary Examiner, Art Unit 1787
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