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 .
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 and 4 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.
In claim 1 the following modified maleimide formula is recited:
PNG
media_image1.png
128
178
media_image1.png
Greyscale
The structure above does not have double bonds, which expected to be present in non-hydrogenated maleimide.
In claim 4 Applicant recites a formula A-3 comprising Si (CH4)2 groups. They should be replaced with Si (CH3)2 ones.
Appropriate corrections are required.
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.
Claims 1, 3, 6-7 and 9 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Milano et al (Synthese de bismaleimides et polybismaleimides a pont siloxanique—Reactivite et tenue thermique, European polymer Journal, Volume 33, Issue 8, pages 1333-1340), cited in IDS.
Milano discloses a synthesis of the following compound by mixing maleic anhydride with corresponding diamine (see page 1334, meeting the limitations of claims 3, 6-7 and 9):
PNG
media_image2.png
100
330
media_image2.png
Greyscale
where the synthesis includes the steps of mixing maleic anhydride with diamine, agitating the mixture at room temperature for 24 hours and then heating it at 90C (see page 1334).
Note that R1 and R2 in the formula above correspond with claimed C1 alkyl and unsubstituted aryl groups.
Claims 1, 4 and 6 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Kobayashi et al (JP2007091794), cited in IDS.
Kobayashi teaches the following compounds (see page 11):
PNG
media_image3.png
220
420
media_image3.png
Greyscale
where p is within the range from 1 to 8.
Note that formula c-5 reads on structure of instant claim 4, when number of both methylene and siloxane groups are equal to 1.
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 and 2 is rejected under 35 U.S.C. 103 as being unpatentable over Kobayashi.
Kobayashi discloses a general formula for bismaleimide , as it claimed in instant claim 1.
However, the reference fails to teach exact formula A-1 of claim 2.
The closest analog disclosed by the reference is represented by formula (c-4) (see Rejection above).
The Applicant’s and Kobayashi’s formulas differ only by a number of methylene groups. Specifically, Applicant teaches C2H4 (i.e., (CH2)2) radical, whereas reference discloses C3H6 (i.e. (CH2)3) radical)
In accordance to MPEP 2144.09 the structural analogs are prima facie obvious in the absence of showing unexpected results.
Therefore, it would have been obvious to a person of ordinary skills in the art before the effective filing date of the invention to replace Kobayashi’s bismaleimide to Applicant’s one, unless unexpected results are demonstrated.
Claims 1, 2 and 5 is rejected under 35 U.S.C. 103 as being unpatentable over Tsutsumi et al (US 20200048455).
Tsutsumi teaches a compound of the following formula B-1-1 (see 0100):
PNG
media_image4.png
142
418
media_image4.png
Greyscale
The Applicant’s and Kobayashi’s formulas differ only by a number of methylene groups. Specifically, Applicant teaches C2H4 (i.e., (CH2)2) radical, whereas reference discloses C3H6 (i.e. (CH2) 3) radical)
In accordance to MPEP 2144.09 the structural analogs are prima facie obvious in the absence of showing unexpected results.
Therefore, it would have been obvious to a person of ordinary skills in the art before the effective filing date of the invention to replace Kobayashi’s bismaleimide to Applicant’s one, unless unexpected results are demonstrated.
Regarding claim 5, Tsutsumi discloses that the compositions comprising siloxane maleimide compound demonstrate water absorption rate within the range of 0.23-0.49% (see Table 1 at page 11).
The position is taken that even though the composition above also contains an epoxy compound, since Tsutsumi’s compound absorption rate value is less than claimed one by 10 times, bismaleimide alone meets the claimed value of 3.4%.
Therefore, it would have been obvious to a person of ordinary skills in the art before the effective filing date of the invention to expect that Tsutsumi’s compound meets water absorption rate values, because it is a part of a composition having a very low absorption rate.
Claims 5, 8 and 10 are rejected under 35 U.S.C. 103 as being unpatentable over Milano et al as applied to claims 1, 3, 6-7 and 9 above, and further in view of Liao et al (US 20220081514).
Milano fails to teach water absorption rate of claim 5, nitrogen atmosphere of claim 8 and heating time of claim 10.
Liao teaches a method for preparing of modified bismaleimide resin , where a diamine compound and maleic anhydride react under nitrogen atmosphere , where the synthesis reaction is carried out at 90 ° C for 12 hours (see Example 4 at 0042).
Liao teaches that a high purity bismaleimide resin powder can be obtained (see 0039).
In the instant case substitution of equivalent methods requires no express motivation, as long as the prior art recognizes equivalency, In re Fount 213 USPQ 532 (CCPA 1982); In re Siebentritt 152 USPQ 618 (CCPA 1967); Graver Tank & Mfg. Co. Inc. V. Linde Air products Co. 85 USPQ 328 (USSC 1950)
Therefore, it would have been obvious to a person of ordinary skills in the art before the effective filing date of the invention to replace Milano’s synthetic method to Liao’s equivalent one, since it results in a high purity bismaleimide resin powder.
Regarding claim 5, Liao discloses that a water absorption rate of the modified bismaleimide resin is 0.1% to 0.3% (see 0011) which is less than claimed by 10 times, bismaleimide alone meets the claimed value of 3.4%.
Note that Liao’s diamine has a different formula and the values above can be different where siloxane-based diamine is used . However, since siloxane is highly hydrophobic compound, claimed water absorption rates are expected when siloxane-based diamine is used.
In other words, when hydrophobic diamine is used in Liao’s composition, water absorption values are expected to be even lower.
Therefore, it would have been obvious to a person of ordinary skills in the art before the effective filing date of the invention to expect that Milano’s compound meets water absorption rate values, since it contains low absorbing bismaleimide and highly hydrophobic siloxane diamine.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to GREGORY LISTVOYB whose telephone number is (571)272-6105. The examiner can normally be reached 9am-5pm EST M-F.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Heidi Riviere Kelley can be reached at (571) 270-1831. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
GL
/GREGORY LISTVOYB/Primary Examiner, Art Unit 1765
Prosecution Insights