Detailed Office Action
Notice of Pre-AIA or AIA Status
1. The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
Objection to Abstract
2. Objection is made to the abstract in view of the language, “polyurea-imind”, within line 2. Given the context of the invention, the language is unclear and/or incorrect.
35 U.S.C. 112(a) Rejection
3. The following is a quotation of the first paragraph of 35 U.S.C. 112(a):
(a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
The following is a quotation of the first paragraph of pre-AIA 35 U.S.C. 112:
The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention.
4. Claims 2-4, 7, 8, and 10 are rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the written description requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for applications subject to pre-AIA 35 U.S.C. 112, the inventor(s), at the time the application was filed, had possession of the claimed invention.
Regarding the claimed physical properties; heat resistance temperature (claim 2), thermal deformation temperature (claim 3), viscosity (claim 4), flexural strength (claim 7), shear strength (claim 8), and peel strength (claim 10); applicant has failed to specify standards with respect to the properties or how the properties have been determined. Regarding claim 2, it has not been disclosed how the thermogravimetric analysis has been performed.
35 U.S.C. 112(b) Rejections
5. 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.
6. Claims 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.
Firstly, the use of the language, “UR-type polyimide resin” renders the claims indefinite, because it is unclear what distinction is conveyed by “UR-type”. Furthermore, the use of the suffix, “type”, extends the scope of the term to an extent that it is rendered indefinite; it is unclear exactly what compounds are encompassed by the language.
Secondly, with respect to claims 1 and 9, it is unclear how to interpret the language denied by “namely”, because it is unclear that the denoted language is clearly mandated, as opposed to simply the “three monomers” language.
Thirdly, with respect to claim 1, the claim refers to a solution being evaporated; however, there is no nexus between the solution and the remaining language of the claim.
Fourthly, with respect to claim 4, the language, “excellent heat resistance”, is subjective; it is unclear what quantitatively constitutes “excellent heat resistance”. Furthermore, since viscosity is extremely temperature specific, specifying the viscosity range without an associated temperature condition renders the claim indefinite; such language does not constitute a meaningful or definitive limitation.
Fifthly, with respect to claim 5, applicant has failed to specify the type (weight, volume, etc.) of percent value.
Sixthly, with respect to claim 9, the language, “thin-film” and “thinly”, renders the claims indefinite, because the language is subjective.
Lastly, regarding the claimed physical properties; heat resistance temperature (claim 2), thermal deformation temperature (claim 3), viscosity (claim 4), flexural strength (claim 7), shear strength (claim 8), and peel strength (claim 10); applicant has failed to specify the standards or means by which the properties have been determined, calling into question exactly how the properties constitute definitive limitations.
Examiner’s Comment
7. The claims are drawn to UR-type polyimide resin and since statements of intended use, such as those of the instant claims denoted by the language, “applicable to reinforced material structure”, do not carry patentable weight, the language of the claims specifying intended use and the language pertaining to the production of composites, as opposed to the polyimide resin, fails to constitute definitive limitations adequate to differentiate the UR-type polyimide resin from the prior art.
8. Reference TW-M643971-U has been excepted as prior art under 35 USC 102(b)(1)(A).
Prior Art Rejections
9. 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)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention.
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.
10. Claims 1-10 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by TW-200413440-A.
TW-200413440-A discloses UR-type polyimide resin derived from the reaction of dianhydride, diisocyanate, and diamine having high heat resistance. See abstract and page 4 of the English translation. Since the disclosed and claimed UR-type polyimide resins are produced from equivalent reactants, the position is taken that the disclosed polyimide inherently possesses the claimed properties. Due to the lack of specificity with respect to the determination of the properties, the claimed properties are insufficient to distinguish the instantly claimed polyimide from the prior art.
11. Claim 2 is rejected under 35 U.S.C. 103 as being unpatentable over TW-200413440-A in view of KR-20200046859-A.
TW-200413440-A discloses UR-type polyimide resin derived from the reaction of dianhydride, diisocyanate, and diamine having high heat resistance. See abstract and page 4 of the English translation. Noting the lack of specificity with respect to the determination of the heat resistance temperature and given that the heat resistance temperature is lower than that claimed; even if the primary reference is not anticipatory with respect to this property, it is further noted that KR-20200046859-A teaches within lines 9 and 10 of page 7 of the English translation that the thermal decomposition temperature can be improved through imide group introduction; accordingly, in view of this teaching the position is taken that one seeking to improve the heat resistance of the polyimide of the primary reference would have been motivated to do so by increasing the imide group content of the polyimide.
12 Claims 1-10 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by KR-20200046859-A.
KR-20200046859-A discloses a polyimide-urea copolymer derived from the reaction of dianhydride, diisocyanate, and diamine. See abstract and pages 3 and 4 of the English language translation for the disclosures of the aforementioned reactants. Since the disclosed polyimide-urea and claimed UR-type polyimide resins are produced from equivalent reactants, the position is taken that the disclosed polyimide inherently possesses the claimed properties. Due to the lack of specificity with respect to the determination of the properties, the claimed properties are insufficient to distinguish the instantly claimed polyimide from the prior art.
13. Claim 2 is rejected under 35 U.S.C. 103 as being unpatentable over KR-20200046859-A.
KR-20200046859-A discloses a polyimide-urea copolymer derived from the reaction of dianhydride, diisocyanate, and diamine. See abstract and pages 3 and 4 of the English language translation for the disclosures of the aforementioned reactants. Noting the lack of specificity with respect to the determination of the heat resistance temperature and given that the heat resistance temperature is lower than that claimed; even if the reference is not anticipatory with respect to this property, it is further noted that KR-20200046859-A teaches within lines 9 and 10 of page 7 of the English translation that the thermal decomposition temperature can be improved through imide group introduction; accordingly, in view of this teaching the position is taken that one seeking to improve the heat resistance of the polyimide of the reference would have been motivated to do so by increasing the imide group content of the polyimide.
14. Claims 1-10 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by CN-114854008-A.
CN-114854008-A discloses a polyurea-polyimide random block copolymer having a glass transition temperature of 259 oC derived from the reaction of dianhydride, diisocyanate, and diamine. See abstract and Embodiment 1 of the English language translation. Since the disclosed polyurea-polyimide and claimed UR-type polyimide resins are produced from equivalent reactants, the position is taken that the disclosed polyimide inherently possesses the claimed properties. Due to the lack of specificity with respect to the determination of the properties, the claimed properties are insufficient to distinguish the instantly claimed polyimide from the prior art.
Conclusion
15. Any inquiry concerning this communication or earlier communications from the examiner should be directed to Rabon A Sergent whose telephone number is (571)272-1079. The examiner can normally be reached on Monday through Friday from 9:00 AM until 5:00 PM, ET.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Heidi Riviere Kelley, can be reached at telephone number 571-270-1831. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/RABON A SERGENT/Primary Examiner, Art Unit 1765