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
Applicant’s election without traverse of Group I (claims 1-10) in the reply filed on 7/27/2026 is acknowledged.
Groups II-V (claims 11-14) are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected invention, there being no allowable generic or linking claim.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 7/27/2026.
Claim Objections
Claim 9 is objected to because of the following informalities: Claim 9 recites “X1 is an aromatic tetravalent functional group containing an ether group”. However, claim 10 specifies the X1 to be an aromatic tetravalent functional group containing no ether group. Nowhere in the specification discloses an ether group in the X1. Therefore, an aromatic tetravalent functional group containing no ether group is considered to meet the limitation of X1. Appropriate correction is required.
Claim Rejections - 35 USC § 102
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 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, 3-5 and 7-8 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Sugiyama et al (WO 2019189483 A1, machine translation is referenced herein).
Regarding claim 1, Sugiyama teaches a varnish containing a transparent polyimide-based polymer and a solvent [claim 1].
The polyimide-based polymer is prepared by reacting a diamine of 2,2′-bis (trifluoromethyl)-4,4′-diaminodiphenyl (TFMB) and a tetracarboxylic acid compound of 4,4'-(hexafluoroisopropylidene) diphthalic dianhydride (6FDA), using a catalyst of isoquinoline, and a solvent mixture of y-butyrolactone (GBL) and N,N-dimethylacetamide (DMAc) [Example 1, 0105 and 0106].
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352
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(2,2′-bis (trifluoromethyl)-4,4′-diaminodiphenyl (TFMB))
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196
423
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(4,4'-(hexafluoroisopropylidene) diphthalic dianhydride (6FDA))
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144
212
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(N,N-dimethylacetamide)
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99
151
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(y-butyrolactone (GBL))
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100
183
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(isoquinoline)
The examiner submits that the polyimide-based polymer reads on the claimed polyimide based resin; N,N-dimethylacetamide reads on the claimed compound represented by Formula 1; y-butyrolactone (GBL) reads on the claimed compound represented by Formula 2.
Regarding claim 3, Sugiyama’s varnish composition does not contain the compound represented by Formula 3, meeting the limitation of “comprises less than 0.0001 wt % of the compound represented by Formula 3 based on the total polymeric resin composition”.
Regarding claims 4-5, the catalyst isoquinoline reads on the claimed nitrogen-containing heterocyclic compound having 5 or more carbon atoms.
Regarding claim 7, the composition comprises 0.5 parts of isoquinoline based on 250 parts of the polyimide (104.43 parts of TFMB and 145.59 parts of 6FDA) [Example 1]. This equals 0.2 parts of isoquinoline based on 100 parts of the polyimide, falling within the claimed range of 0.1-20 parts.
Regarding claim 8, the polyimide derived from TFMB and 6FDA comprises aromatic imide repeating units.
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 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) 1-10 is/are rejected under 35 U.S.C. 103 as being unpatentable over Sugiyama et al (WO 2019189483 A1, machine translation is referenced herein).
Regarding claims 1-10, Sugiyama teaches a varnish containing a transparent polyimide-based polymer and a solvent [claim 1].
The polyimide-based polymer mainly contains a repeating structural unit represented by Formula (10)
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which is derived from a diamine and a tetracarboxylic acid compound [0039], such as and p-phenylenediamine and 3,3’,4,4’-biphenyltetracarboxylic dianhydride [0044, 0050].
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118
244
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(p-phenylenediamine)
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178
426
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(3,3’,4,4’-biphenyltetracarboxylic dianhydride)
It would have been obvious to one of ordinary skill in the art at the time of filing to select p-phenylenediamine as the diamine and select 3,3’,4,4’-biphenyltetracarboxylic dianhydride as the tetracarboxylic acid compound in Sugiyama’s composition, as they are expressly disclosed as being useful in this capacity. It has been established that selection of a known material based on its suitability for its intended use is prima facie obvious (Sinclair & Carroll Co. v. Interchemical Corp., 325 U.S. 327, 65 USPQ 297 (1945)). See MPEP 2144.07.
The polyimide-based polymer derived from p-phenylenediamine and 3,3’,4,4’-biphenyltetracarboxylic dianhydride reads on the claimed polyimide-based resin specified in claims 8-10, wherein X1 meets the claimed Formula 5, Y1 meets the claimed aromatic divalent functional group having 6 carbon atoms.
The solvent can include a mixture of N,N-dimethylacetamide and y-butyrolactone (GBL) [0025, 0105, 0106]. N,N-dimethylacetamide reads on the claimed compound represented by Formula 1; y-butyrolactone (GBL) reads on the claimed compound represented by Formula 2.
The amount of the raw material monomer in the entire liquid containing the raw material monomer and the solvent A is preferably 10 to 60% by mass [0059].
Since the raw material monomer includes the combination of p-phenylenediamine and 3,3’,4,4’-biphenyltetracarboxylic dianhydride, the amount of the raw material is equivalent to the amount of the polyimide-based polymer. Therefore, the amount of solvent is 40-90 wt% in the varnish composition, which is equivalent to 67 parts or higher on 100 parts by weight based on the polyimide-based polymer, as calculated by the examiner.
Since the solvent is a combination of N,N-dimethylacetamide and y-butyrolactone (GBL), the amount of y-butyrolactone (GBL) can be less than 67 parts by weight based on the polyimide-based polymer, which meets the recited “99 parts by weight or less based on 100 parts by weight of the compound represented by Formula 1” in claim 2.
Sugiyama’s varnish composition does not contain the compound represented by Formula 3, meeting the limitation of “comprises less than 0.0001 wt % of the compound represented by Formula 3 based on the total polymeric resin composition” in claim 3.
Sugiyama’s varnish composition comprises a catalyst of tertiary amine D represented by Chemical formula 5, e.g., isoquinoline [0064-0065], which reads on the claimed nitrogen-containing heterocyclic compound having 5 or more carbon atoms specified in claims 4-5.
The amount of the tertiary amine D is 0.05-15 parts based on 100 parts of raw material monomer [0069] (i.e., the polyimide-based polymer), overlapping the recited “0.1 to 20 parts by weight of the nitrogen-containing polycyclic compound having 5 or more carbon atoms based on 100 parts by weight of the polyimide-based resin solids” in claim 7. Since the solid content of the polyimide-based polymer is 10-60 wt% as stated above, the amount of the tertiary amine D is in the rang of 0.005 to 9 wt% based on the total weight of the varnish composition, overlapping the recited “from 1 wt % to 10 wt % based on the total weight of the polymeric resin composition” in claim 6.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to JIANGTIAN XU whose telephone number is (571)270-1621. The examiner can normally be reached Monday-Thursday.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Robert Jones can be reached on (571) 270-7733. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/JIANGTIAN XU/Primary Examiner, Art Unit 1762
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