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
EXAMINER’S COMMENT
Insertion of continuing data regarding the parent application No. 16,951,666, now US Pat. No. 11,926,726, at beginning of the specification is suggested.
CLAIM OBJECTION
The “,” is missing after “for each homopolyimide W” and “for each homopolyimide
X” of claim 4 and “for each copolyimides” in lines 2 of claim 5, “a) for each homopolyimide”, “b) for each homopolyimide”, “c) for each homopolyimide”, “i) for each homopolyimide” of claim 9 and “b) for each homopolyimide” and “i) for each homopolyimide” of claim 21,
The recited “a sensors” of claim 17 should be “a sensor”.
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 17 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.
The recited expression of a range within a range (i.e., preferably ---) of claim 17
is indefinite.
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 1-4 and 12-17 are rejected under 35 U.S.C. 103 as being unpatentable
over JP 2020201833 A (September 16, 2010) in view of St. Clair et al. (US 4,595,548)
or Lee et al. (Nanoindentation Studies of Polyimide Thin Films with Various Internal
Linkages in the Diamine Component, Journal of Polymer Science, Part B: Polymer
Physics 2004, 42, 861-870) and/or Tempelman et al. (Relaxation Dynamics of Thin
Matrimid 5218 Films in Organic Solvents, J. Phys. Chem., B 2019, 123, 4017-4024),
and further in view of JP 2008102245 A (May 1, 2008).
JP’833 teaches gold nanorods having an aspect ratio of 2.5 to 8.0 (meeting claim
2) coated with a dispersant including polyimide in an upper portion of page 3.
The instant invention further recites polyimides b) having the recited solubility
over JP’833.
The instant polyimides of claims 1, 3-4 and 12 are well-known in the art.
St. Clair et al. teach the instant (co)polyimides in tables 1-5 and the instant
specification teaches polyimides taught by the US 4,595,548 in [0059] of page 49. Repeating unit n taught in tables 1-5 for the (co)polyimides would make claim 12
obvious.
Lee et al. teach the instant (co)polyimides in Figure 1. Lee et al. teach that the (co)polyimides has a Tg of 294oC to 402oC in table 3 which would be expected to have the recited number average molecular weight of claim 12 inherently.
Tempelman et al. teach the instant (co)polyimides (Matrimid 5218) in Figure 1
and the instant specification teaches the Matrimid 5218 at page 48.
The instantly recited solubility would be inherent property of the (co)polyimides
taught by St. Clair et al., Lee et al. and Tempelman et al. since such (co)polyimides are
used in the instant invention. The court held that “a compound and all its properties are
mutually inseparable”, In re Papesch, 315 F.2d 381, 137 USPQ 42, 51 (CCPA 1963).
See MPEP 2112.
JP’245 teaches gold nanorods having an aspect ratio of greater than 1 yielding a
maximum absorption wave length of LSPR in the range of 700 to 2000 nm and a good
dispersion stability in a second full paragraph of page 4 and the LSPR in the range of
800 to 2000 nm is taught in [0025] of the instant specification. Thus, LSPR in the range
of 700 to 2000 nm would meet claims 1 and 13.
Thus, it would have been obvious to one skilled in the art before the effective
filing date of invention to utilize the (co)polyimides taught by St. Clair et al., Lee et al.
and/or Tempelman et al. in JP’833 since JP’833 teaches utilization of the gold nanorods
having an aspect ratio of 2.5 to 8.0 coated with a polyimide which would encompass the
art well-known (co)polyimides of St. Clair et al., Lee et al. and Tempelman et al. and
since JP’245 teaches gold nanorods having an aspect ratio of greater than 1 yielding a
maximum absorption wave length of LSPR in the range of 700 to 2000 nm and a good
dispersion stability 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.
As to claim 14, when patentability is predicated upon a change in a condition of a
prior art composition, such as a change in concentration or in temperature, or both, the
burden is on Applicant to establish with objective evidence that the change is critical, i.e.
it leads to a new unexpected result. It is not inventive to discover the optimum orworkable ranges by routine experimentation when the general conditions of a claim are disclosed in the prior art. See In re Woodruff, 919 F.2d 1575, 1578 (Fed. Cir. 1990); In re Aller, 220 F.2d 454, 456 (CCPA 1955). See MPEP 2144.05.
As to claim 15, polyimides are taught as one of second polymers and the above
discussed (co)polyimides of would meet the polyimides absent further limitation.
JP’833 teaches a heat reversible recording medium which would meet claim 16.
St. Clair et al. teach optical coating at bottom of col. 1 which would make claim
17 obvious.
Claim 17 is rejected under 35 U.S.C. 103 as being unpatentable over JP
2020201833 A (September 16, 2010) in view of St. Clair et al. (US 4,595,548) or Lee et
al. (Nanoindentation Studies of Polyimide Thin Films with Various Internal Linkages in
the Diamine Component, Journal of Polymer Science, Part B: Polymer Physics 2004, 42, 861-870) and/or Tempelman et al. (Relaxation Dynamics of Thin Matrimid 5218
Films in Organic Solvents, J. Phys. Chem., B 2019, 123, 4017-4024), and further in
view of JP 2008102245 A (May 1, 2008) as applied to claims 1-4 and 12-17 above, and
further in view of KR 20190118558 A (October 18, 2019) or EP 2199127 A2 (June 23,
2010.
The instant claim 17 further recites a sensor and polarizers over JP 2020201833
A (September 16, 2010), St. Clair et al. (US 4,595,548), Lee et al. (Nanoindentation
Studies of Polyimide Thin Films with Various Internal Linkages in the Diamine
Component, Journal of Polymer Science, Part B: Polymer Physics 2004, 42, 861-870),
Tempelman et al. (Relaxation Dynamics of Thin Matrimid 5218 Films in Organic
Solvents, J. Phys. Chem., B 2019, 123, 4017-4024), JP 2008102245 A (May 1, 2008).
The instant sensor and polarizers obtained from polyimides comprising gold
nanorods are well-known in the art.
KR teaches a polyimide printed with gold nanorods (see middle of page 1) as a
biosensor in a third full paragraph of page 4.
EP teaches a polymer comprising gold nanorods having an aspect ratio of 1.5-10
useful for a polarizing film in abstract and [0053 and 0060]. EP teaches that a
thermoplastic resin should be capable of dispersing the metal nanorods and have high
transparency and be stretchable in [0104].
Thus, it would have been obvious to one skilled in the art before the effective
filing date of invention further to obtain the sensor and polarizers from the modified
(co)polyimides of JP’833 with St. Clair et al., Lee et al., Tempelman et al. and JP’245 since the instant sensor and polarizers obtained from polyimides comprising gold
nanorods are well-known in the art as taught by KR and EP 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.
Claims 1-3, 6 and 12-16 are rejected under 35 U.S.C. 103 as being unpatentable
over JP 2020201833 A (September 16, 2010) in view of Tesoro et al. (US 5,260,411)
and JP 2008102245 A (May 1, 2008).
JP’833 is discussed above in detail.
The instant invention further recites copolyimides over JP.
Tesoro et al. teach structures of the polyimides comprising disulfur linkages at
cols. 2-10 which would meet claim 6. Tesoro et al. teach a good solubility at col. 1, lines
9-27 and in claim 7.
JP’245 teaches gold nanorods having an aspect ratio of greater than 1 yielding a
maximum absorption wave length of LSPR in the range of 700 to 2000 nm and a good
dispersion stability in a second full paragraph of page 4 and the LSPR in the range of
800 to 2000 nm is taught in [0025] of the instant specification. Thus, LSPR in the range
of 700 to 2000 nm would meet claims 1 and 13.
Thus, it would have been obvious to one skilled in the art before the effective
filing date of invention to utilize the polyimides taught by Tesoro et al. in JP’833 since
JP’833 teaches utilization of the gold nanorods having an aspect ratio of 2.5 to 8.0
coated with a polyimide which would encompass the art well-known polyimides of Tesoro et al. and since JP’245 teaches gold nanorods having an aspect ratio of greater
than 1 yielding a maximum absorption wave length of LSPR in the range of 700 to 2000
nm and a good dispersion stability absent showing otherwise.
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.
As to claim 14, when patentability is predicated upon a change in a condition of a
prior art composition, such as a change in concentration or in temperature, or both, the
burden is on Applicant to establish with objective evidence that the change is critical, i.e.
it leads to a new unexpected result. It is not inventive to discover the optimum or
workable ranges by routine experimentation when the general conditions of a claim are disclosed in the prior art. See In re Woodruff, 919 F.2d 1575, 1578 (Fed. Cir. 1990); In
re Aller, 220 F.2d 454, 456 (CCPA 1955). See MPEP 2144.05.
As to claim 15, polyimides are taught as one of second polymers and the above
discussed (co)polyimides of would meet the polyimides absent further limitation.
P’833 teaches a heat reversible recording medium which would meet claim 16.
Double Patenting
A rejection based on double patenting of the “same invention” type finds its support in the language of 35 U.S.C. 101 which states that “whoever invents or discovers any new and useful process... may obtain a patent therefor...” (Emphasis added). Thus, the term “same invention,” in this context, means an invention drawn to identical subject matter. See Miller v. Eagle Mfg. Co., 151 U.S. 186 (1894); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Ockert, 245 F.2d 467, 114 USPQ 330 (CCPA 1957).
A statutory type (35 U.S.C. 101) double patenting rejection can be overcome by canceling or amending the claims that are directed to the same invention so they are no longer coextensive in scope. The filing of a terminal disclaimer cannot overcome a double patenting rejection based upon 35 U.S.C. 101.
Claims 18-29 are rejected under 35 U.S.C. 101 as claiming the same invention as that of claims 1-12 of prior U.S. Patent No. 11,926,726. This is a statutory double patenting rejection.
EXAMINER’S COMMENT
Claims 5 and 7-11 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. Note that claims 5 and98 would
need corrections as to the objection above.
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/TAE H YOON/Primary Examiner, Art Unit 1762
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