DETAILED ACTION
This is an Office action based on application number 18/531,256 filed 6 December 2023, which claims priority to KR10-2022-0176084 filed 15 December 2022. Claims 1-4, 7-11, and 14-16 are pending. Claims 5-6 and 12-13 are canceled.
Amendments to the claims, filed 9 February 2026, have been entered into the above-identified application.
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 .
Withdrawn Rejections
The 35 U.S.C. §112(b) rejections made of record in the previous Office action are withdrawn due to Applicant’s amendments.
The prior art rejections made of record in the previous Office action are withdrawn due to Applicant’s amendments.
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 text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action.
The factual inquiries 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.
This application currently names joint inventors. In considering patentability of the claims the examiner presumes that the subject matter of the various claims was commonly owned as of the effective filing date of the claimed invention(s) absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and effective filing dates of each claim that was not commonly owned as of the effective filing date of the later invention in order for the examiner to consider the applicability of 35 U.S.C. 102(b)(2)(C) for any potential 35 U.S.C. 102(a)(2) prior art against the later invention.
Claim(s) 1-4 and 7-9 are rejected under 35 U.S.C. 103 as being unpatentable over by Konoshima et al. (WIPO International Publication No. WO 2016/171101 A1) (WO 101).
Regarding instant claims 1 and 2:
WO 101 discloses a curable composition containing a polyimide used as a sealant for printed circuit boards (paragraph [0030]).
WO 101 discloses the polyimide is obtained by reacting a tetracarboxylic acid component with a diamine component (paragraph [0001]).
WO 101 discloses that the tetracarboxylic acid component is an anhydride (paragraph [0061]).
WO 101 further discloses that an example of the tetracarboxylic acid component is an anhydride [1,1’-bi(cyclohexane)]-3,3’,4,4’-tetracarboxylic acid (paragraph [0061]), which is positively recited by instant claim 2. Therefore the “anhydride [1,1’-bi(cyclohexane)]-3,3’,4,4’-tetracarboxylic acid” is construed to meet the claimed aliphatic tetracarboxylic anhydride.
WO 101 further discloses that the diamine compound is a dimer diamine (paragraph [0041]).
WO 101 further discloses that the diamine component comprises an aromatic diamine (paragraph [0014]).
WO 101 further discloses that the diamine component contains a diamine compound represented by Formula 1, and the polyimide has at least one reactive group inclusive of an unsaturated double bond:
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where A represents a ring structure, R1 and R2 represent an alkylene group having 1 to 20 carbon atoms, and R3 and R4 each represent a linear alkyl group having 1 to 20 carbon atoms (paragraphs [0008-0009]).
WO 101 further discloses that the dimer diamine is represented by anyone of formulae (1-1) to (1-3):
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It is noted that those structures disclosed by WO 101 are not the same as the claimed structures b1 and b2 (i.e., those structures of WO 101 lack an unsaturated double bond).
However, a prima facie case of obviousness may be made when chemical compounds have very close structural similarities and similar utilities. "An obviousness rejection based on similarity in chemical structure and function entails the motivation of one skilled in the art to make a claimed compound, in the expectation that compounds similar in structure will have similar properties." See MPEP §2144.09.
In the instant case, both the structures of WO 101 and that of the claims are structurally similar (i.e., diamines comprising a linear or ring structure) used for a similar purpose (i.e., a diamine structure used to form a polyimide-based resin used in the production of printed circuit/wiring boards boards. Therefore, there is a reasonable expectation of success that the composition of WO 101 and that of the claims would have similar properties, absent arguments to the contrary.
Alternatively, as WO 101 discloses that the polyimide has at least one reactive group inclusive of an unsaturated double bond, as cited above. It would have been obvious and within the ambit of one of ordinary skill in the art before the effective filing date of the claimed invention, to modify those diamine compounds of WO 101 to include an unsaturated double bond in the chemical structure and arrive at the claimed compounds.
Regarding instant claims 3 and 4:
WO 101 further discloses that the aromatic diamine is represented by chemical formula (2):
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wherein X and Y each represent a direct bond, r1 is a reactive group, and n1 is 0 or more (paragraphs [0014-0015]).
Such a formula encompasses, within its scope, Chemical Formula a1 recited by instant claim 3.
Further, WO 101 discloses that a specific example of chemical formula 2 is 3,5-diaminobenzoic acid (paragraph [0050]), which falls within the scope of Chemical Formula a1 recited by instant claim 3 and is explicitly recited by instant claim 4.
Regarding instant claim 7:
WO 101 discloses the polyimide resin derived from a polyimide precursor comprising a mixture of an aromatic diamine and dimer diamine, as cited in the rejection of claim 1, above.
Common sense would dictate that any such mixture would overlap and/or include the broad range of 1:99 to 99:1 recited by the claim; however, “in the case where claimed ranges ‘overlap or lie inside ranges disclosed by prior art’ a prima facie case of obviousness exists.” See MPEP § 2144.05.
Regarding instant claim 8:
WO 101 is construed to encompass an embodiment wherein the entirety of the aliphatic acid anhydride is an aliphatic tetracarboxylic acid anhydride (i.e., 100% by mole) as set forth in the rejection of claims 1 and 2, above.
Regarding instant claim 9:
WO 101 further discloses that polyimide resin composition is produced by reacting a tetracarboxylic acid component and a diamine compound in a solvent and heating to a temperature of 100 to 250 °C (paragraph [0074]).
It is noted that the temperature range recited by the claim includes the range recited by the claim; however, “in the case where claimed ranges ‘overlap or lie inside ranges disclosed by prior art’ a prima facie case of obviousness exists.” See MPEP § 2144.05.
Regarding instant claim 10:
WO 101 further discloses that a curable resin comprising the polyimide resin further includes curing components and fillers (paragraph [0086]).
WO 101 does not explicitly disclose a “polyimide-based adhesive composition” as recited in the preamble of the claim; however, “if the body of a claim fully and intrinsically sets forth all of the limitations of the claimed invention, and the preamble merely states, for example, the purpose or intended use of the invention, rather than any distinct definition of any of the claimed invention' s limitations, then the preamble is not considered a limitation and is of no significance to the claim construction”. See MPEP § 2111.02.
Therefore, because WO 101 discloses the compositional limitations of the claimed polyimide resin, WO 101 meets the limitations of the instant claim.
Claims 11-16 is/are rejected under 35 U.S.C. 103 as being unpatentable over WO 101 in view of Tomita et al. (JP2012255107A with citations taken from the provided machine translation) (JP 107) and Chen et al. (US Patent No. US 2020/0404782 A1) (US 782).
Regarding instant claims 11:
WO 101 discloses the polyimide-based composition comprising a polyimide resin, a curing agent, and a filler, as cited in the rejection of claims 1 and 10, above.
WO 101 further discloses that the polyimide-based resin composition comprises 30% by weight or more of the polyimide to obtain a cured product having both flexibility and heat resistance (paragraph [0084]). It is noted that the range disclosed by WO 101 overlaps the range recited by the claim; however, “in the case where claimed ranges ‘overlap or lie inside ranges disclosed by prior art’ a prima facie case of obviousness exists.” See MPEP § 2144.05.
WO 101 further discloses that in order to obtain a curable resin composition, a conventionally known curable resin such as an epoxy resin is included (paragraph [0080]). Said “known curable resin” is construed to meet the claimed curing agent.
WO 101 does not explicitly disclose the claimed amount of curing agent. WO 101 does not explicitly disclose the claimed fluorine-based filler and the amount thereof.
Regarding the claimed curing agent:
JP 107 discloses a thermoplastic polyimide composition, an adhesive, a laminate, and a device each containing the same (paragraph [0010]).
JP 107 further discloses that the thermoplastic polyimide composition further comprises other resins inclusive of epoxy compounds (paragraph [0092-0093]).
JP 107 further discloses that by the addition of an epoxy compound, the polyimide can be dried at a low temperature by removing a solvent to produce a B-staged molded product that can be further hardened by the curing of the epoxy resin (paragraph [0162]).
Since the instant specification is silent to unexpected results, the specific amount of curing is not considered to confer patentability to the claims. As the workability (e.g., b-stage character) of the polyimide resin is a variable that can be modified, among others, by the addition of the amount of epoxy curing agent, the precise amount would have been considered a result effective variable by one having ordinary skill in the art at the time the invention was made. As such, without showing unexpected results, the claimed amount cannot be considered critical. Accordingly, one of ordinary skill in the art at the time the invention was made would have optimized, by routine experimentation, the amount of epoxy curing agent in the prior art to obtain the desired workability (In re Boesch, 617 F.2d. 272, 205 USPQ 215 (CCPA 1980)), since it has been held that where the general conditions of the claim are disclosed in the prior art, discovering the optimum or workable ranges involves only routine skill in the art. (In re Aller, 105 USPQ 223).
Before the effective filing date of the claimed invention, it would have been obvious to one of ordinary skill in the art, having the teachings of the prior art before him or her, to control the amount of epoxy compound in the polyimide composition WO 101 as suggested by JP 107. The motivation for doing so would have been to control the workability of the polyimide composition.
Regarding the claimed type and amount of filler:
US 782 discloses a metal clad laminate composed of polymer layers containing fillers (Claim 1) and printed circuit boards prepared from said metal clad laminates (Claim 18).
US 782 further discloses that said filers are selected to specifically improve properties of the metal-clad laminate, such as mechanical strength, thermal conductivity, or dimensional stability; furthermore, US 782 discloses that the filler is inclusive of polytetrafluoroethylene powders (paragraph [0047]).
US 782 further discloses that the amount of filler is 20 wt % to 40 % in order to balance dimensional stability, even thickness, and peeling strength of the metal-clad laminate (paragraph [0043]).
Before the effective filing date of the claimed invention, it would have been obvious to one of ordinary skill in the art, having the teachings of the prior art before him or her, to include the polytetrafluoroethylene powder of US 782 in the prescribed amount in the polyimide compound of WO 101. The motivation for doing so would have been that the polyimide compound of WO 101 is readily acceptable of fillers, wherein said polyimide compound is used to produce printed wiring boards, and US 782 provides known fillers for the production of printed circuit boards, wherein said fillers improve properties such as mechanical strength, thermal conductivity, or dimensional stability.
Therefore, it would have been obvious to combine JP 107 and US 782 with WO 101 to obtain the invention as specified by the instant claims.
Regarding instant claim 14:
JP 107 further discloses that the epoxy compounds are inclusive of bisphenol A epoxy compounds and bisphenol F epoxy compounds (paragraph [0093]).
Regarding instant claim 15 and 16:
WO 101 discloses that an object of the invention is to provide a polyimide having flexibility and heat resistance (paragraph [0006]).
WO 101 does not disclose the flexible metal clad laminate of the instant claims.
However, JP 107 discloses laminates comprising a polyimide composition (paragraph [0001]).
JP 107 further discloses that polyimide compositions used in laminates preferably have heat resistance and flexibility (paragraph [0131]).
JP 107 further discloses that an electrode can be produced by preparing an electrode slurry using a polyimide composition as a binder and applying said slurry onto the surface of a metal foil such as a copper foil or nickel foil (paragraph [0127]).
Before the effective filing date of the claimed invention, it would have been obvious to one of ordinary skill in the art, having the teachings of the prior art before him or her, to use the polyimide composition of WO 101 to prepare the electrode disclosed by JP 107. The motivation for doing so would have been to provide an art-recognized purpose for the polyimide composition such as the electrode laminate that desires heat resistance and flexibility.
Therefore, it would have been obvious to combine JP 107 with WO 101 to obtain the invention as specified by the instant claims.
Answers to Applicant’s Arguments
In response to Applicant’s amendments and arguments, the grounds of rejection have been altered. Applicant, however, presents are arguments regarding a facet of the WO 101, which are unpersuasive.
Applicant presents the arguments reproduced below:
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Applicant’s argument is unpersuasive because it is not a complete representation of the WO 101 reference. While WO 101 discloses that X and Y may correspond to those above moieties, at paragraph [0047], WO 101 alternatively represent a direct bond (i.e., those moieties represented above are not necessarily required.
Conclusion
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any nonprovisional extension fee (37 CFR 1.17(a)) pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the mailing date of this final action.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Thomas A Mangohig whose telephone number is (571)270-7664. The examiner can normally be reached M-F 9-5 Eastern.
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/TAM/Examiner, Art Unit 1788 05/22/2026
/HUMERA N. SHEIKH/Supervisory Patent Examiner, Art Unit 1784
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