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 .
Priority
This Application is a 371 National Stage Entry of PCT/JP2022/009636, filed on March 7, 2022. Acknowledgment is made of applicant’s claim for foreign priority under 35 U.S.C. 119 (a)-(d). The certified copy has been filed in parent Application No. JP2021-084717, filed on May 19, 2021.
Information Disclosure Statement
The information disclosure statement (IDS) submitted on December 8, 2023 is acknowledged and has been considered.
Status of the Claims
Acknowledgement is made of the claims previously presented in the filed Application 18/562,019; 1-4, 6-7 (Original); 5, 8 – 9 (Amended); 10 -11 (New), claims filed on November 17, 2023. No new matter was added.
Claims 1-11 are pending in the instant application; claims 3-11 are withdrawn. Thus, claims 1 and 2 are currently under examination.
Election/Restrictions
Applicant’s election without traverse of Group I (claims 1 and 2) in the reply filed on June 29, 2026 is acknowledged.
Claims 3-11 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected invention, Group II, there being no allowable generic or linking claim. Election was made without traverse in the reply filed on June 29, 2026.
Claims 1 and 2 are presently under consideration.
Claim Objections
Claims1 and 2 are objected to because of the following informalities:
In claim 1, Applicant has indicated three periods between the displayed structure and the number (1); …(1)
Similarly in claim 2, applicant has indicated; ….(2)
Applicant is notified that per MPEP 608.01(m), each claim begins with a capital letter and ends with a period. Periods may not be used elsewhere in the claims except for abbreviations.
In claim 1, applicant ends the following sentence with period at the end of the word structure; and A represents the following structure. (emphasis added). Applicant then shows two structures after the period. It appears, the period after the word structure, should be changed to a semi colon, assuming that the two structures are part of the afore mention sentence.
Appropriate correction is required.
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 1 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. Applicant recites the following, “…and A represents the following structure.” (emphasis added);
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The phrase “A represents the following structure”, stated in singular form, renders the claim indefinite because two structures are shown without specifying the relationship between them. For example, it is unclear whether A represents either structure or another intended relationship. Applicant is requested to amend the claim to include appropriate transitional language or other clarifying language to clearly define A, and thus make definite the intended scope of the claimed invention.
Claim interpretation: For the purpose of compact prosecution, Examiner assumes the transition phrase “OR”; such that, A represents either of the two structures shown.
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 1 is rejected under 35 U.S.C. 102 (a)(1) as being anticipated by Goshima and Win, 2019, (Goshima, T. and Win, M. S., “Diamine compound and polyimide compound and molded product using the same”, US 2019/0389795-A1, Published on December 26, 2019; Priority date, January 27, 2017: cited in prior PTO-897), hereon after, Goshima.
Regarding instant claim 1, Goshima’s prior art teaches a polyimide compound that is a product of a reaction between a diamine and an acid anhydride of the genus, Chem. 5, general formula (9) (page 2).
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Goshima teaches L1 represents a linking group selected from several linking groups revealed in the reference. Goshima further teaches L1 can represent the linking group, shown below, where R21 to R30 are each independently selected from a group consisting of a hydrogen atom, among others, and * represents the binding position ([0029], [0032] and [0033], page 3). Goshima discloses examples of acid anhydrides and that include the structure in the instant claimed invention as shown below ([0078], [0091], [0098] and claim 9).
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Goshima’s Linking group – page 3
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Goshima’s Example - Page 9 and claim 9
Goshima’s linking group and example is identical to the instant application’s,
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(instant claim 1). Thus, Goshima’s prior art, anticipates one of the claimed structures in the instant claim 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.
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.
Claims 1 and 2 are rejected under 35 U.S.C. 103 as being unpatentable over Goshima and Win, 2019, (Goshima, T. and Win, M. S., “Diamine compound and polyimide compound and molded product using the same”, US 2019/0389795-A1, Published December 26, 2019, Priority date, January 27, 2017, cited in prior PTO-897), hereon after Goshima, in view of Wang et al., 2004 (Wang et al., “Laminate for substrate of printed wiring board” US 2004/0038054 A1, Published on February 26, 2004) hereon after, Wang.
Regarding instant claim 1, The teachings of Goshima as set forth in the above 35 U.S.C. 102 Rejections are incorporated herein.
Goshima’s teachings on synthesis of polyimides from a diamine and acid anhydrides, reveal that the acid anhydride used can be either phthalic anhydride or hydrogenated phthalic anhydride ([0113]). The reference teaches the genus of the general formula(e) (8) and/or (9) derived from phthalic anhydride (Chem. 17 /(8)), or hydrogenated phthalic anhydride (Chem 18/ (9)), respectively ([0081], page 7).
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From Goshima’s teachings the linking group L1 can be used interchangeably either of the general formula(e) (8) or (9) ([0099] and claim 8). For example, Goshima exemplifies the two compounds shown below with a similar linking group used in either of the two genus, phthalic anhydride or hydrogenated phthalic anhydride (page 9 and 16).
Goshima, 2019
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Page 9
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Page 16
How prior art differs from instant claimed invention: Goshima does not teach a structure with a linking group comprising of,
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as in the instant claimed invention, (instant claim 1, second structure, and instant claim 2).
However, Wang’s disclosure, drawn towards compounds used in insulating polyimide resin layers discloses acid anhydrides derived from phthalic anhydride;
From Wang’s prior art compound BPAP-TME, 1,3-dihydro-1,3-dioxo-5-isobenzofurancarboxylic acid (1-phenylethylidene)-di-4,1-phenylene ester is known ([0058], page 4). [(Cas No. 69577-61-3; Structure and Cas number from SciFinder).
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Wang’s disclosed compound has the linking group, -C(C6H5)(CH3)- which is identical to
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as in instant claimed invention.
From the discussions above on Goshima’s prior art, Goshima teaches linking groups can be interchanged between the genus of a phthalic anhydride or the genus of a hydrogenated phthalic anhydride.
Therefore, it would have been obvious for one of ordinary skill in the art before the effective filing date of the claimed invention to use Goshima genus of a hydrogenated phthalic anhydride and Wang linking group, -C(C6H5)(CH3)-, to arrive at the claimed invention, as in instant claim 1, second structure and instant claim 2, with reasonable expectation of success.
Per MPEP § 2134(I)(A), a prima facie case of obviousness exists for combining prior art elements according to known methods to yield predictable results. The prior art from Goshima teaches acid dianhydrides from either phthalic anhydride or hydrogenated phthalic anhydride. Goshima teaches a linking group can be used interchangeably between either genus of phthalic anhydride or hydrogenated phthalic anhydride; Wang teaches the linking group, -C(CH3)(C6H5)-. Thus, it would have been obvious to one of ordinary skill in the art to apply Wang’s linking group to the genus of hydrogenated phthalic anhydride to arrive at an acid dianhydride as in the instant claimed invention.
One would have been motivated to do so because Goshima’s prior art is drawn towards the synthesis of a polyimide compound using acid anhydrides and an amine. Similarly, Wang’s prior art is towards synthesis of polyimide resin using acid anhydrides and amines. Likewise the instant claimed invention is drawn towards acid anhydride and further, polyamic and polyimide derived from the acid dianhydride. Additionally, Goshima reveals similar linking groups can be used in hydrogenated diacid anhydrides as in the instant claims. As such, the available prior art is drawn towards the same field of invention as the instant claimed invention and it anticipates, suggests and render obvious the linking groups in the claimed invention; one of ordinary skill would have been motivated to combine the known prior art elements according to known methods to arrive at predictable and/or improved results.
Conclusion
Claims 1 and 2 are rejected.
Communication
Any inquiry concerning this communication or earlier communications from the examiner should be directed to PAULINE ONDACHI whose telephone number is (571)272-9419. The examiner can normally be reached Mon - Fri 8:00 am - 5:00 pm EST.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Kortney L. Klinkel can be reached at (571)270-5239. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/P.O./Examiner, Art Unit 1627
/Kortney L. Klinkel/Supervisory Patent Examiner, Art Unit 1627
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