DETAILED ACTION
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
Election/Restrictions
Applicant’s election without traverse of Group I, claims 1-11 in the reply filed on 6/29/2026 is acknowledged. Claims 12-15 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected invention, there being no allowable generic or linking claim. Election was made without traverse in the reply filed on 6/29/2026.
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.
Claims 1-11 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 pre-AIA the applicant regards as the invention.
Claim 1 recites “alcohol based supplement”. The addition of the word “based” to an otherwise definite expression extends the scope of the expression so as to render it indefinite. Ex parte Copenhaver, 109 USPQ 118 (Bd. Pat. App. & Inter. 1955). It is unclear what “based” was intended to convey, does “alcohol based” include all compounds or polymers derived from alcohol?
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)(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.
Claim(s) 1-3, 10 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Hirata et al (US 2023/0406986, equivalent with WO2022054850).
Claims 1-3: Hirata teaches a dried polyamide-imide coating film formed by firing polyamide-imide precursor at 400°C [0152-0155]. The polyamide-imide precursor is formed by using solvents including methanol or isopropyl alcohol [0113-0114, examples 16-17].
Although methanol and isopropyl alcohol are volatile solvent and the PAI film is cured at 400°C, complete removal of alcohol cannot be achieved. During drying and subsequent imidization, the polymer network undergoes rapid densification which can entrap small amounts of solvent within the coating. As the molecular weight of the precursor increases and the film converts into a highly rigid polyamide-imide structure, solvent diffusivity decreases. Moreover, the strong intermolecular interactions within the polymer matrix limit the complete solvent removal. Therefore, trace amount of residual alcohol would remain physically trapped within the cured polyamide-imide film.
Claim 10: the polyamide-imide of claim 13 has an imide : amide molar ratio of 70:30. Detailed calculation is available upon request.
Claim Rejections - 35 USC § 102/103
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.
The factual inquiries set forth in Graham v. John Deere Co., 383 U.S. 1, 148 USPQ 459 (1966), that are applied for establishing a background for determining obviousness under 35 U.S.C. 103 are summarized as follows:
1. Determining the scope and contents of the prior art.
2. Ascertaining the differences between the prior art and the claims at issue.
3. Resolving the level of ordinary skill in the pertinent art.
4. Considering objective evidence present in the application indicating obviousness or nonobviousness.
Claim(s) 4, 6-9, 11 is/are rejected under 35 U.S.C. 102(a)(1) as anticipated by or, in the alternative, under 35 U.S.C. 103 as obvious over Hirata et al (US 2023/0406986, equivalent with WO2022054850).
Claim 4: The Office realizes that the amount of residual alcohol are not positively stated by the reference. However, the reference teaches similar ingredients, and substantially similar process of making. The original specification indicates that the amount of the residual alcohol are the result of choosing the claimed components going through a specific process. Therefore, the claimed amount would implicitly/inherently be achieved by a composition with the similar ingredients, and substantially similar process of making. See MPEP § 2112.01. If it is the applicant’s position that this would not be the case: (1) evidence would need to be provided to support the applicant’s position; and (2) it would be the Office’s position that the application contains inadequate disclosure that there is no teaching as to how to obtain the claimed feature with only the claimed ingredients, claimed amounts, and substantially similar process of making.
Claim 6: because polyamide-imide are produced by step growth polycondensation, their molecular weight distribution are commonly close to the theoretical Flory distribution of 2.
Claim 7-9, 11: the claimed features would implicitly/inherently be achieved by a composition with the similar ingredients, and substantially similar process of making.
Claim Rejections - 35 USC § 103
Claim 5 is/are rejected under 35 U.S.C. 103 as being unpatentable over Hirata et al (US 2023/0406986, equivalent with WO2022054850).
Claim 5: Hirata teaches the alcohol can be used alone or in combination of two or more [0059]. Therefore, it would have been obvious to one of ordinary skill in the art at the time the invention was made to recognize using a mixture of methanol and isopropyl alcohol. Regarding the amount of each alcohol, please refer to the claim rejection of claim 4 above.
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/WENWEN CAI/
Primary Examiner, Art Unit 1763
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