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 .
Election/Restrictions
Restriction to one of the following inventions is required under 35 U.S.C. 121:
I. Claims 1-7, drawn to a bismaleimide compound represented by formula (1), or a resin varnish containing the bismaleimide compound according to claim 1, classified in C08G73/1071.
II. Claim 8, drawn to a method for producing the bismaleimide compound according to claim 1 comprising synthesizing an amic acid with an acid anhydride represented by formula (6) and an aromatic ring-containing diamine represented by formula (7), classified in C08G73/1071.
III. Claim 9, drawn to a method for producing the bismaleimide compound according to claim 1 comprising synthesizing an amic acid with an acid anhydride represented by formula (6) and a diamine represented by formula (8), classified in C08G73/1071.
The inventions are independent or distinct, each from the other because:
Inventions II and I are related as process of making and product made. The inventions are distinct if either or both of the following can be shown: (1) that the process as claimed can be used to make another and materially different product or (2) that the product as claimed can be made by another and materially different process (MPEP § 806.05(f)). In the instant case the product as claimed can be made by another and materially different process such as the method of claim 9.
Inventions III and I are related as process of making and product made. The inventions are distinct if either or both of the following can be shown: (1) that the process as claimed can be used to make another and materially different product or (2) that the product as claimed can be made by another and materially different process (MPEP § 806.05(f)). In the instant case the product as claimed can be made by another and materially different process such as the method of claim 8.
Inventions II and III are directed to related processes. The related inventions are distinct if: (1) the inventions as claimed are either not capable of use together or can have a materially different design, mode of operation, function, or effect; (2) the inventions do not overlap in scope, i.e., are mutually exclusive; and (3) the inventions as claimed are not obvious variants. See MPEP § 806.05(j). In the instant case, the inventions as claimed can have a materially different design, mode of operation, function, or effect because the method of claim 8 comprises synthesizing an amic acid with an acid anhydride represented by formula (6) and an aromatic ring-containing diamine represented by formula (7), and synthesizing an amic acid with a reactant obtained in the step A and a dimer acid frame-derived diamine represented by formula (8), which is not required by the method of claim 9, and the method of claim 9 comprises synthesizing an amic acid with an acid anhydride represented by formula (6) and a diamine represented by formula (8), and synthesizing an amic acid with a reactant obtained in the step A’ and an aromatic resin-opening diamine represented by formula (7), which is not required by the method of claim 8. Furthermore, the inventions as claimed do not encompass overlapping subject matter and there is nothing of record to show them to be obvious variants.
Restriction for examination purposes as indicated is proper because all the inventions listed in this action are independent or distinct for the reasons given above and there would be a serious search and/or examination burden if restriction were not required because one or more of the following reasons apply:
It is necessary to search for one of the inventions in a manner that is not likely to result in finding art pertinent to the other inventions, such as employing different search queries because the inventions are independent and distinct from each other as explained above.
Applicant is advised that the reply to this requirement to be complete must include (i) an election of an invention to be examined even though the requirement may be traversed (37 CFR 1.143) and (ii) identification of the claims encompassing the elected invention.
The election of an invention may be made with or without traverse. To reserve a right to petition, the election must be made with traverse. If the reply does not distinctly and specifically point out supposed errors in the restriction requirement, the election shall be treated as an election without traverse. Traversal must be presented at the time of election in order to be considered timely. Failure to timely traverse the requirement will result in the loss of right to petition under 37 CFR 1.144. If claims are added after the election, applicant must indicate which of these claims are readable upon the elected invention.
Should applicant traverse on the ground that the inventions are not patentably distinct, applicant should submit evidence or identify such evidence now of record showing the inventions to be obvious variants or clearly admit on the record that this is the case. In either instance, if the examiner finds one of the inventions unpatentable over the prior art, the evidence or admission may be used in a rejection under 35 U.S.C. 103 or pre-AIA 35 U.S.C. 103(a) of the other invention.
During a telephone conversation with Gerald M. Murphy, Jr. on 06/22/2026 a provisional election was made with traverse to prosecute the invention of Group I, claims 1-7. Affirmation of this election must be made by applicant in replying to this Office action. Claim 8 and 9 withdrawn from further consideration by the examiner, 37 CFR 1.142(b), as being drawn to a non-elected invention.
Applicant is reminded that upon the cancelation of claims to a non-elected invention, the inventorship must be corrected in compliance with 37 CFR 1.48(a) if one or more of the currently named inventors is no longer an inventor of at least one claim remaining in the application. A request to correct inventorship under 37 CFR 1.48(a) must be accompanied by an application data sheet in accordance with 37 CFR 1.76 that identifies each inventor by his or her legal name and by the processing fee required under 37 CFR 1.17(i).
The examiner has required restriction between product or apparatus claims and process claims. Where applicant elects claims directed to the product/apparatus, and all product/apparatus claims are subsequently found allowable, withdrawn process claims that include all the limitations of the allowable product/apparatus claims should be considered for rejoinder. All claims directed to a nonelected process invention must include all the limitations of an allowable product/apparatus claim for that process invention to be rejoined.
In the event of rejoinder, the requirement for restriction between the product/apparatus claims and the rejoined process claims will be withdrawn, and the rejoined process claims will be fully examined for patentability in accordance with 37 CFR 1.104. Thus, to be allowable, the rejoined claims must meet all criteria for patentability including the requirements of 35 U.S.C. 101, 102, 103 and 112. Until all claims to the elected product/apparatus are found allowable, an otherwise proper restriction requirement between product/apparatus claims and process claims may be maintained. Withdrawn process claims that are not commensurate in scope with an allowable product/apparatus claim will not be rejoined. See MPEP § 821.04. Additionally, in order for rejoinder to occur, applicant is advised that the process claims should be amended during prosecution to require the limitations of the product/apparatus claims. Failure to do so may result in no rejoinder. Further, note that the prohibition against double patenting rejections of 35 U.S.C. 121 does not apply where the restriction requirement is withdrawn by the examiner before the patent issues. See MPEP § 804.01.
Priority
Receipt is acknowledged of certified copies of papers required by 37 CFR 1.55.
Claim Rejections - 35 USC § 103
In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis (i.e., changing from AIA to pre-AIA ) for the rejection will not be considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status.
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 1-7 are rejected under 35 U.S.C. 103 as being unpatentable over Sato et al. (JP 2018-065903 A, machine translation in English used for citation).
Regarding claim 1, Sato teaches one or more maleimide compounds selected from the group consisting of a maleimide compound having at least two imide bonds in one molecular represented by the following general formula
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, wherein R1 and Q each independently represent a substituted or unsubstituted aliphatic group having 1 to 100 carbon atoms, a substituted or unsubstituted aromatic group, a substituted or unsubstituted heteroaromatic group, or a substituted or unsubstituted siloxane moiety having 1 to 100 silicon atoms, and n represents an integer of 1 to 100 [0007], wherein the maleimide compound represented by the general formula can be synthesized by dehydrating and condensing a liquid diamine compound and a dianhydride in a low-polar organic solvent, and dehydrating and condensing maleic acid anhydride to the obtained amine-terminated polyimide under the presence of an acid compound [0018], wherein examples of the liquid diamine compound used in the synthesis of the maleimide compound include 9,9-bis(4-aminophenyl)fluorene, and diamine compounds represented by the following general formula
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or
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and composed of a dimer acid having 30 to 40 carbon atoms [0020], which reads on a bismaleimide compound represented by the formula (1) wherein A independently represents a cyclic structure-containing tetravalent organic group, B independently represents a dimer acid frame-derived divalent hydrocarbon group and/or Q independently represents an aromatic ring-containing divalent group, W is B or Q, n is 1 to 100, m is 1 to 100, no restrictions are imposed on an order of each repeating unit identified by n and m, and a bonding pattern thereof may be alternate block, or random, and wherein Q has a fluorene frame expressed by the formula (2-1) wherein in the formula (2-1), each of R1, R2, R3, and R4 independently represents a hydrogen atom.
Sato does not teach a specific embodiment wherein B independently represents a dimer acid frame-derived divalent hydrocarbon group and Q independently represents an aromatic ring-containing divalent group, and wherein Q has a fluorene frame or indene frame expressed by any of the formula (2-1) or (2-2) as claimed. Before the effective filing date of the claimed invention, one of ordinary skill in the art would have found it obvious to select Sato’s liquid diamine compound used in the synthesis of Sato’s maleimide compound to be Sato’s 9,9-bis(4-aminophenyl)fluorene and Sato’s diamine compounds represented by the following general formula
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or
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and composed of a dimer acid having 30 to 40 carbon atoms. The proposed modification would read on wherein B independently represents a dimer acid frame-derived divalent hydrocarbon group, Q independently represents an aromatic ring-containing divalent group, and wherein Q has a fluorene frame expressed by the formula (2-1) wherein in the formula (2-1), each of R1, R2, R3, and R4 independently represents a hydrogen atom as claimed. One of ordinary skill in the art would have been motivated to do so because it would have been beneficial for modifying heat resistance, flexibility, dielectric properties, and mechanical properties of Sato’s maleimide compounds because Sato teaches that examples of the liquid diamine compound used in the synthesis of the maleimide compound include 9,9-bis(4-aminophenyl)fluorene, and diamine compounds represented by the following general formula
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or
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and composed of a dimer acid having 30 to 40 carbon atoms [0020], and that the diamine compound represented by the general formulae shown above are excellent in heat resistance and flexibility, and are excellent in low dielectric properties because they do not have a substituent with high polarity [0020], and because Sato’s 9,9-bis(4-aminophenyl)fluorene is an aromatic compound while Sato’s diamine compound represented by the general formulae shown above and composed of a dimer acid having 30 to 40 carbon atoms are aliphatic compounds, an aromatic compound is more rigid than an aliphatic compound, an aliphatic compound is more flexible than an aromatic compound, and the presence of rigid functional groups and flexible functional groups in Sato’s maleimide compounds therefore would have modified mechanical properties of Sato’s maleimide compounds.
Regarding claim 2, Sato teaches that examples of the dianhydride used in the synthesis of the maleimide compound include 4,4’-bisphenol-A diphthalic anhydride [0021], which optionally reads on wherein A in the formula (1) is a tetravalent organic group represented by the structural formula (5) wherein bonds that are yet unbonded to substituent groups are to be bonded to carbonyl carbons forming cyclic imide structures in the formula (1) as claimed.
Sato does not teach a specific embodiment wherein A in the formula (1) is a tetravalent organic group represented by the structural formula (5) as claimed. Before the effective filing date of the claimed invention, one of ordinary skill in the art would have found it obvious to select Sato’s dianhydride used in the synthesis of Sato’s maleimide compound to be Sato’s 4,4’-bisphenol-A diphthalic anhydride. The proposed modification would read on wherein A in the formula (1) is a tetravalent organic group represented by the structural formula (5) wherein bonds that are yet unbonded to substituent groups are to be bonded to carbonyl carbons forming cyclic imide structures in the formula (1) as claimed. One of ordinary skill in the art would have been motivated to do so because it would have been beneficial for improving the low-temperature curability of Sato’s maleimide compound and the heat resistance of a cured product of Sato’s maleimide compound because Sato teaches that examples of the dianhydride used in the synthesis of the maleimide compound include 4,4’-bisphenol-A diphthalic anhydride [0021], and that the maleimide compound may be a compound represented by the following general formula [0023]
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[0024] from the viewpoint of further improving the low-temperature curability and the heat resistance of the cured product, wherein R1 and n in the general formula have the same meanings as R1 and n in the general formula [0023]
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[0007].
Regarding claim 3, Sato teaches that the molecular weight of the maleimide compound is not particularly limited [0027], that the lower limit of the weight-average molecular weight (Mw) of the maleimide compound may be 1000, 2000, 3000, or 5000 [0027], that the upper limit of the Mw of the maleimide compound may be 30000, 20000, 12000, or 7000 [0027], that the Mw of the maleimide compound may be 1000-30000, 1500-20000, or 2000-12000, and may be from 2500 to 7000 [0027], and that n in the general formula of Sato’s maleimide compound represents an integer of 1 to 100 [0007], which optionally reads on wherein the bismaleimide compound represented by the formula (1) has a number average molecular weight of 3,000 to 30,000.
Sato does not teach that the bismaleimide compound represented by the formula (1) has a number average molecular weight of 3,000 to 50,000. Before the effective filing date of the claimed invention, one of ordinary skill in the art would have found it obvious to select the number-average molecular weight of Sato’s maleimide compound to be 3,000 to 30,000 and to select the weight-average molecular weight of Sato’s maleimide compound to be 3000-30000. The proposed modification would read wherein the bismaleimide compound represented by the formula (1) has a number average molecular weight of 3,000 to 30,000 as claimed. One of ordinary skill in the art would have been motivated to do so because it would have been beneficial for providing a number-average molecular weight that is suitable for Sato’s maleimide compound and/or because it would have been obvious to try with a reasonable expectation of success because Sato teaches that Sato teaches that the molecular weight of the maleimide compound is not particularly limited [0027], that the lower limit of the weight-average molecular weight (Mw) of the maleimide compound may be 1000, 2000, 3000, or 5000 [0027], that the upper limit of the Mw of the maleimide compound may be 30000, 20000, 12000, or 7000 [0027], that the Mw of the maleimide compound may be 1000-30000, 1500-20000, or 2000-12000, and may be from 2500 to 7000 [0027], and that n in the general formula of Sato’s maleimide compound represents an integer of 1 to 100 [0007]. Examples of rationales that may support a conclusion of obviousness include "Obvious to try" – choosing from a finite number of identified, predictable solutions, with a reasonable expectation of success (MPEP 2143(I)(E)).
Regarding claim 4, Sato teaches one or more maleimide compounds selected from the group consisting of a maleimide compound having at least two imide bonds in one molecular represented by the following general formula
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, wherein R1 and Q each independently represent a substituted or unsubstituted aliphatic group having 1 to 100 carbon atoms, a substituted or unsubstituted aromatic group, a substituted or unsubstituted heteroaromatic group, or a substituted or unsubstituted siloxane moiety having 1 to 100 silicon atoms, and n represents an integer of 1 to 100 [0007], wherein the maleimide compound represented by the general formula can be synthesized by dehydrating and condensing a liquid diamine compound and a dianhydride in a low-polar organic solvent, and dehydrating and condensing maleic acid anhydride to the obtained amine-terminated polyimide under the presence of an acid compound [0018], wherein examples of the liquid diamine compound used in the synthesis of the maleimide compound include 9,9-bis(4-aminophenyl)fluorene, and diamine compounds represented by the following general formula
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or
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and composed of a dimer acid having 30 to 40 carbon atoms [0020], which suggests wherein in the bismaleimide compound represented by the formula (1), the bonding pattern of each repeating unit identified by n and m is block as claimed.
Sato does not teach that in the bismaleimide compound represented by the formula (1), the bonding pattern of each repeating unit identified by n and m is block. Before the effective filing date of the claimed invention, one of ordinary skill in the art would have found it obvious to select Sato’s liquid diamine compound used in the synthesis of Sato’s maleimide compound to be Sato’s 9,9-bis(4-aminophenyl)fluorene and Sato’s diamine compounds represented by the following general formula
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or
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and composed of a dimer acid having 30 to 40 carbon atoms, such that one block of Sato’s
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is derived from Sato’s 9,9-bis(4-aminophenyl)fluorene and another block of Sato’s
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is derived from Sato’s diamine compounds represented by the following general formula
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or
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and composed of a dimer acid having 30 to 40 carbon atoms. The proposed modification would read on wherein in the bismaleimide compound represented by the formula (1), the bonding pattern of each repeating unit identified by n and m is block as claimed. One of ordinary skill in the art would have been motivated to do so because it would have been beneficial for modifying heat resistance, flexibility, dielectric properties, and mechanical properties of Sato’s maleimide compounds because Sato teaches that examples of the liquid diamine compound used in the synthesis of the maleimide compound include 9,9-bis(4-aminophenyl)fluorene, and diamine compounds represented by the following general formula
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or
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and composed of a dimer acid having 30 to 40 carbon atoms [0020], and that the diamine compound represented by the general formulae shown above are excellent in heat resistance and flexibility, and are excellent in low dielectric properties because they do not have a substituent with high polarity [0020], and because Sato’s 9,9-bis(4-aminophenyl)fluorene is an aromatic compound while Sato’s diamine compound represented by the general formulae shown above and composed of a dimer acid having 30 to 40 carbon atoms are aliphatic compounds, an aromatic compound is more rigid than an aliphatic compound, an aliphatic compound is more flexible than an aromatic compound, and the presence of rigid functional groups and flexible functional groups in Sato’s maleimide compounds therefore would have modified mechanical properties of Sato’s maleimide compounds.
Regarding claim 5, Sato teaches that the maleimide compound is synthesized in a low-polar organic solvent [0018], which means that the maleimide compound and the low-polar organic solvent are present together, which reads on a resin varnish containing the bismaleimide compound according to claim 1 and a solvent as claimed.
Regarding claims 6 and 7, Sato teaches that the low-polarity solvent is optionally aromatic solvents such as toluene and xylene [0019], which optionally reads on wherein the solvent is an aromatic solvent as claimed, wherein the aromatic solvent is toluene or xylene as claimed.
Sato does not teach a specific embodiment wherein the solvent is an aromatic solvent and that the aromatic solvent is toluene, xylene, or anisole. Before the effective filing date of the claimed invention, one of ordinary skill in the art would have found it obvious to select Sato’s low-polarity solvent to be toluene or xylene. The proposed modification would read on wherein the solvent is an aromatic solvent as claimed, wherein the aromatic solvent is toluene or xylene as claimed. One of ordinary skill in the art would have been motivated to do so because it would have been beneficial for lower cost and ease of desolvation because Sato teaches that the low-polarity solvent is optionally aromatic solvents such as toluene and xylene [0019], and that from the viewpoint of cost and ease of desolvation, toluene and xylene are preferably used [0019].
Claims 1-7 are rejected under 35 U.S.C. 103 as being unpatentable over Takao (JP 2013-083958 A, machine translation in English used for citation) in view of Sato et al. (JP 2018-065903 A, machine translation in English used for citation) as applied to claim 1.
Regarding claim 1, Takao teaches a bismaleimide compound represented by the follow general formula [0013]
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[0014], wherein R1 represents a dimer acid-derived divalent hydrocarbyl group, R2 represents a divalent organic group other than the dimer acid-derived divalent hydrocarbyl group, R3 represents any one selected from the group consisting of the dimer acid-derived divalent hydrocarbyl group and the divalent organic group other than the dimer acid-derived divalent hydrocarbyl group, R4 and R5 may be identical to or different from each other and each represent a tetravalent organic group, m is an integer of 1 to 30, n is an integer of 0 to 30 [0014], wherein the bismaleimide compound is a bismaleimide compound obtained by reacting a diamine derived from a dimer acid, an organic diamine other than the diamine derived from a dimer acid, a tetracarboxylic dianhydride, and maleic anhydride [0012], wherein examples of the organic diamine other than the diamine derived from a dimer acid are aromatic diamines [0035], wherein the form of polymerization of the amic acid unit composed of the dimer acid-derived diamine and the tetracarboxylic dianhydride and the amic acid unit composed of the organic diamine and the tetracarboxylic dianhydride may be random polymerization or block polymerization [0037], which means that Takao’s n is at least 1 and at most 30, which reads on a bismaleimide compound represented by the formula (1) wherein A independently represents a cyclic structure-containing tetravalent organic group, B independently represents a dimer acid frame-derived divalent hydrocarbon group, Q independently represents an aromatic ring-opening divalent group, W is B or Q, n is 1 to 30, m is 1 to 30, no restrictions are imposed on an order of each repeating unit identified by n and m, and a bonding pattern thereof may be alternate, block, or random.
Takao does not teach that Q has a fluorene frame or indene frame expressed by any of the formulae (2-1) or (2-2). However, Sato teaches 9,9-bis(4-aminophenyl)fluorene that is a liquid diamine compound used in the synthesis of a maleimide compound [0020], that diamine compounds represented by the following general formula
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or
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and composed of a dimer acid having 30 to 40 carbon atoms are a liquid diamine compound used in the synthesis of the maleimide compound [0020], that the maleimide compound can be synthesized by dehydrating and condensing the liquid diamine compound and a dianhydride in a low-polar organic solvent, and dehydrating and condensing maleic acid anhydride to the obtained amine-terminated polyimide under the presence of an acid compound [0018], and that the maleimide compound is represented by the following general formula
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, wherein R1 and Q each independently represent a substituted or unsubstituted aliphatic group having 1 to 100 carbon atoms, a substituted or unsubstituted aromatic group, a substituted or unsubstituted heteroaromatic group, or a substituted or unsubstituted siloxane moiety having 1 to 100 silicon atoms, and n represents an integer of 1 to 100 [0007]. Takao and Sato are analogous art because both references are in the same field of endeavor of a bismaleimide compound derived from a dimer acid frame-derived divalent hydrocarbon group and a cyclic structure-containing tetravalent organic group. Before the effective filing date of the claimed invention, one of ordinary skill in the art would have found it obvious to use Sato’s 9,9-bis(4-aminophenyl)fluorene to substitute for Takao’s organic diamine other than the diamine derived from a dimer acid that is reacted to obtain Takao’s bismaleimide compound. The proposed modification would read on wherein Q has a fluorene frame expressed by formula (2-1) wherein in the formula (2-1), each of R1, R2, R3, and R4 independently represents a hydrogen atom as claimed. One of ordinary skill in the art would have been motivated to do so because it would have been beneficial for modifying tensile elastic modulus of a cured product of Takao’s bismaleimide compound because Sato teaches that the 9,9-bis(4-aminophenyl)fluorene is a liquid diamine compound is beneficial for using it in the synthesis of a maleimide compound [0020], that the maleimide compound can be synthesized by dehydrating and condensing the liquid diamine compound and a dianhydride in a low-polar organic solvent, and dehydrating and condensing maleic acid anhydride to the obtained amine-terminated polyimide under the presence of an acid compound [0018], and that the maleimide compound is represented by the following general formula
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[0007], and because Takao teaches that the organic diamine other than the diamine derived from a dimer acid is used to obtain a bismaleimide compound by reacting a diamine derived from a dimer acid, the organic diamine other than the diamine derived from a dimer acid, a tetracarboxylic dianhydride, and maleic anhydride [0012], that examples of the organic diamine other than the diamine derived from a dimer acid are aromatic diamines [0035], by copolymerizing the organic diamine other than the dimer acid-derived diamine, it is possible to control the required physical properties as necessary, such as further reducing the tensile elastic modulus of the obtained cured product [0034], and that the bismaleimide compound is represented by the follow general formula [0013]
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[0014].
Regarding claim 2, Takao does not teach that A in the formula (1) is a tetravalent organic group represented by the structural formula (5) as claimed. However, Sato teaches 4,4’-bisphenol-A diphthalic anhydride that is a dianhydride [0021], that the dianhydride is used to synthesize a maleimide compound by dehydrating and condensing a liquid diamine compound and the dianhydride in a low-polar organic solvent, and dehydrating and condensing maleic acid anhydride to the obtained amine-terminated polyimide under the presence of an acid compound [0018], and that the maleimide compound is represented by the following general formula
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[0007]. Before the effective filing date of the claimed invention, one of ordinary skill in the art would have found it obvious to use Sato’s 4,4’-bisphenol-A diphthalic anhydride to substitute for Takao’s tetracarboxylic dianhydride that is reacted to obtain Takao’s bismaleimide compound. The proposed modification would read on wherein A in the formula (1) is a tetravalent organic group represented by the structural formula (5) wherein bonds that are yet unbonded to substituent groups are to be bonded to carbonyl carbons forming cyclic imide structures in the formula (1) as claimed. One of ordinary skill in the art would have been motivated to do so because it would have been beneficial for modifying the low-temperature curability of Takao’s bismaleimide compound and for modifying the heat resistance of a cured product of Takao’s bismaleimide compound because Sato teaches that the 4,4’-bisphenol-A diphthalic anhydride is a dianhydride [0021] that is used to synthesize a maleimide compound by dehydrating and condensing a liquid diamine compound and the dianhydride in a low-polar organic solvent, and dehydrating and condensing maleic acid anhydride to the obtained amine-terminated polyimide under the presence of an acid compound [0018], and that the maleimide compound is a compound represented by the following general formula [0023]
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[0024] from the viewpoint of further improving the low-temperature curability and the heat resistance of the cured product [0023], and because Takao teaches that tetracarboxylic dianhydride is reacted to obtain the bismaleimide compound by reacting a diamine derived from a dimer acid, an organic diamine other than the diamine derived from a dimer acid, the tetracarboxylic dianhydride, and maleic anhydride [0012], that pyromellitic dianhydride is preferably as the tetracarboxylic dianhydride from the viewpoint of obtaining a photocurable dianhydride and obtaining a cured product having excellent heat resistance [0033].
Regarding claim 3, Takao teaches that the bismaleimide compound is represented by the follow general formula [0013]
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[0014], that m is an integer of 1 to 30, and n is an integer of 0 to 30 [0014], that the bismaleimide compound is a bismaleimide compound obtained by reacting a diamine derived from a dimer acid, an organic diamine other than the diamine derived from a dimer acid, a tetracarboxylic dianhydride, and maleic anhydride [0012], that the dimer acid-derived diamine is a diamine obtained by substituting the two carboxyl groups of each of the dicarboxylic acids contained in the dimer acid with amino groups [0030], that the dimer acid is obtained by dimerizing an unsaturated bond of linoleic acid, oleic acid, or linolenic acid, and mainly contains a dicarboxylic acid having 356 carbon atoms [0030], and that examples of the tetracarboxylic dianhydride is pyromellitic dianhydride, benzophenonetetracarboxylic dianhydride, naphthalene-tetracarboxylic acid dianhydride, dimethyl-hexahydronaphthalene-tetracarboxylic dianhydride, dichloronaphthalene-tetracarboxylic acid dianhydride, tetrachloronaphthalene-tetracarboxylic acid dianhydride, p-terphenyltetracarboxylic dianhydride, p-terphenyltetracarboxylic dianhydride, perylene-tetracarboxylic acid dianhydride, phenanthrene-tetracarboxylic dianhydride, pyrrolidine-tetracarboxylic acid dianhydride, thiophenes-tetracarboxylic acid dianhydride, or oxydiphthalic dianhydride [0033], which reads on wherein the bismaleimide compound represented by the formula (1) ha a number average molecular weight of greater than 0.
Takao does not teach that the bismaleimide compound represented by the formula (1) has a number average molecular weight of 3,000 to 50,000. Before the effective filing date of the claimed invention, one of ordinary skill in the art would have found it obvious to select the number average molecular weight of Takao’s bismaleimide compound to be 3,000 to 50,000. The proposed modification would read on wherein the bismaleimide compound represented by the formula (1) has a number average molecular weight of 3,000 to 50,000 as claimed. One of ordinary skill in the art would have been motivated to do so because it would have been obvious to try with a reasonable expectation of success because Takao teaches that the bismaleimide compound is represented by the follow general formula [0013]
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[0014], that m is an integer of 1 to 30, and n is an integer of 0 to 30 [0014], that the bismaleimide compound is a bismaleimide compound obtained by reacting a diamine derived from a dimer acid, an organic diamine other than the diamine derived from a dimer acid, a tetracarboxylic dianhydride, and maleic anhydride [0012], that the dimer acid-derived diamine is a diamine obtained by substituting the two carboxyl groups of each of the dicarboxylic acids contained in the dimer acid with amino groups [0030], that the dimer acid is obtained by dimerizing an unsaturated bond of linoleic acid, oleic acid, or linolenic acid, and mainly contains a dicarboxylic acid having 356 carbon atoms [0030], and that examples of the tetracarboxylic dianhydride is pyromellitic dianhydride, benzophenonetetracarboxylic dianhydride, naphthalene-tetracarboxylic acid dianhydride, dimethyl-hexahydronaphthalene-tetracarboxylic dianhydride, dichloronaphthalene-tetracarboxylic acid dianhydride, tetrachloronaphthalene-tetracarboxylic acid dianhydride, p-terphenyltetracarboxylic dianhydride, p-terphenyltetracarboxylic dianhydride, perylene-tetracarboxylic acid dianhydride, phenanthrene-tetracarboxylic dianhydride, pyrrolidine-tetracarboxylic acid dianhydride, thiophenes-tetracarboxylic acid dianhydride, or oxydiphthalic dianhydride [0033]. Examples of rationales that may support a conclusion of obviousness include "Obvious to try" – choosing from a finite number of identified, predictable solutions, with a reasonable expectation of success (MPEP 2143(I)(E)).
Regarding claim 4, Takao teaches that the form of polymerization of the amic acid unit composed of the dimer acid-derived diamine and the tetracarboxylic dianhydride and the amic acid unit composed of the organic diamine and the tetracarboxylic dianhydride is block polymerization [0037], which reads on wherein the bismaleimide compound represented by the formula (1), the bonding pattern of each repeating unit identified by n and m is block as claimed.
Regarding claim 5, Takao teaches a photosensitive resin composition comprising a bismaleimide compound [0010], and an organic solvent [0071], which reads on a resin varnish containing the bismaleimide compound according to claim 1 and a solvent as claimed.
Regarding claim 6, Takao teaches that examples of the organic solvent include aromatic solvents [0071], which reads on wherein the solvent is an aromatic solvent as claimed.
Regarding claim 7, Takao teaches that examples of the organic solvent include aromatic solvents such as toluene and xylene [0071], which reads on wherein the aromatic solvent is toluene or xylene as claimed.
Double Patenting
The nonstatutory double patenting rejection is based on a judicially created doctrine grounded in public policy (a policy reflected in the statute) so as to prevent the unjustified or improper timewise extension of the “right to exclude” granted by a patent and to prevent possible harassment by multiple assignees. A nonstatutory double patenting rejection is appropriate where the conflicting claims are not identical, but at least one examined application claim is not patentably distinct from the reference claim(s) because the examined application claim is either anticipated by, or would have been obvious over, the reference claim(s). See, e.g., In re Berg, 140 F.3d 1428, 46 USPQ2d 1226 (Fed. Cir. 1998); In re Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993); In re Longi, 759 F.2d 887, 225 USPQ 645 (Fed. Cir. 1985); In re Van Ornum, 686 F.2d 937, 214 USPQ 761 (CCPA 1982); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Thorington, 418 F.2d 528, 163 USPQ 644 (CCPA 1969).
A timely filed terminal disclaimer in compliance with 37 CFR 1.321(c) or 1.321(d) may be used to overcome an actual or provisional rejection based on nonstatutory double patenting provided the reference application or patent either is shown to be commonly owned with the examined application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. See MPEP § 717.02 for applications subject to examination under the first inventor to file provisions of the AIA as explained in MPEP § 2159. See MPEP § 2146 et seq. for applications not subject to examination under the first inventor to file provisions of the AIA . A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
The filing of a terminal disclaimer by itself is not a complete reply to a nonstatutory double patenting (NSDP) rejection. A complete reply requires that the terminal disclaimer be accompanied by a reply requesting reconsideration of the prior Office action. Even where the NSDP rejection is provisional the reply must be complete. See MPEP § 804, subsection I.B.1. For a reply to a non-final Office action, see 37 CFR 1.111(a). For a reply to final Office action, see 37 CFR 1.113(c). A request for reconsideration while not provided for in 37 CFR 1.113(c) may be filed after final for consideration. See MPEP §§ 706.07(e) and 714.13.
The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The actual filing date of the application in which the form is filed determines what form (e.g., PTO/SB/25, PTO/SB/26, PTO/AIA /25, or PTO/AIA /26) should be used. A web-based eTerminal Disclaimer may be filled out completely online using web-screens. An eTerminal Disclaimer that meets all requirements is auto-processed and approved immediately upon submission. For more information about eTerminal Disclaimers, refer to www.uspto.gov/patents/apply/applying-online/eterminal-disclaimer.
Claims 1-3 and 5 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 2 and 4-6 of copending Application No. 19/405,627 (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other because the copending application claims a bismaleimide compound represented by formula (1) defined as
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wherein, in the formula, each A independently represents a tetravalent organic group having a cyclic structure, each B independently represents a divalent hydrocarbon group derived from a dimer acid skeleton, each Q independently represents a divalent hydrocarbon group having an alicyclic structure or a divalent hydrocarbon group having an aromatic ring, W is B or Q, n is a number of 1 to 100, m is a number of 1 to 100, and repeating units in square brackets with subscripts n and m are arranged in any order (claim 1), wherein Q in the formula is a divalent group having a fluorene skeleton, or an indene skeleton represented by any of the following formulas
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wherein each R1 independently represents a hydrogen atom or an alkyl group having 1 to 5 carbon atoms, each R2 and each R3 independently represent a hydrogen atom, an alkyl group having 1 to 5 carbon atoms, a (hetero)aryl group having 4 to 10 carbon atoms, a hydroxy group, an organooxy group, a halogeno group, a trifluoromethyl group, an amino group, or a sulfenyl group (claim 4), which reads on a bismaleimide compound represented by the formula (1) as claimed.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Correspondence
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/DAVID T KARST/ Primary Examiner, Art Unit 1767
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