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 1-9 in the reply filed on August 11, 2026 is acknowledged. Claims 10-14 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected invention, there being no allowable generic or linking claim.
Specification
The disclosure is objected to because of the following informalities:
Formula 5 on page 15 should be replaced with a higher resolution version. In particular,
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appears as
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in the published application because the central variable is illegible.
Appropriate correction is required.
Claim Objections
Claim 2 is objected to because of the following informalities:
In claim 2, line 5, “500 °C less” should read “500 °C or less.”
Appropriate correction is 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, 3-4, and 6-7 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Koizumi (JP-2011084637-A, English translation provided).
Regarding claims 1, 4, and 6, Koizumi discloses polyimide films derived from a polyimide resin composition comprising phenanthroline derivatives ([0010] and [0013]). In Example 1, Koizumi demonstrates adding 1,10-phenanthroline to a polyimide composition having a solids content of 10 wt% (see [0057] for polyimide composition preparation, see [0061] for addition of 1,10-phenanthroline). Koizumi shows that 1,10-phenanthroline has a structure of
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([0085]), reading on a nitrogen-containing polycyclic compound having 12 carbon atoms wherein the polycyclic compound is heterocyclic (claim 4). The 1,10-phenanthroline is added in an amount of 1 part by weight relative to the polyimide solids content ([0061]) (claim 6).
Koizumi further discloses coating a polyimide film (reading on a substrate) with the polyimide composition containing 1,10-phenanthroline ([0062]). The coating is then dried at 120 °C. The coating is then heated at a heating rate of 5 °C/min at 150 °C for 30 minutes, at 200 °C for 30 minutes, and at 260 °C for 30 minutes to obtain a multilayer polyimide film ([0062]). Koizumi’s method corresponds to heating the coating at an elevated temperature rate of 5 °C/min when changing temperature within a temperature range of 150-260 °C. This reads on curing the dried coating by heat treatment at an elevated temperature rate of 5 °C/min.
Regarding claim 3, Koizumi discloses the method of preparing a polymeric resin film according to claim 1. Koizumi’s composition does not explicitly comprise any nitrogen-containing polycyclic compounds having 9 or less carbon atoms. Therefore, the quantity of nitrogen-containing polycyclic compounds having 9 or less carbon atoms is estimated as approximately 0 wt%.
Regarding claim 7, Koizumi discloses the method of preparing a polymeric resin film according to claim 1. The polyimide used in Example 1 is derived from bicycle[2.2.2]oct-7-ene-1,2,4-tetracarboxylic dianhydride (BTA), 3,3’,4,4’-biphenyltetracarboxylic dianhydride (BPDA), 3,5-diamino benzoic acid (DABz), and 1,3-bis(3-aminophenoxy)benzene (APB) ([0057]). BPDA, DABz, and APB produce 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.
Claims 5 and 8-9 are rejected under 35 U.S.C. 103 as being unpatentable over Koizumi (JP-2011084637-A, English translation provided) as applied to claim 1 above.
Regarding claim 5, Koizumi discloses the method of preparing a polymeric resin film according to claim 1. Koizumi’s Example 1 uses 1 part by mass 1,10-phenanthroline relative to polyimides solids content ([0061]) and a polyimide solids content of 10 wt% ([0057]). This corresponds to a nitrogen-containing polycyclic compound content of about 0.1 wt% based on the total weight of the polymeric resin composition.
Koizumi does not exemplify a composition wherein the nitrogen-containing polycyclic compound having 10 or more carbon atoms is included in the amount of 1 to 10 wt% based on the total weight of the polymeric resin composition.
However, Koizumi teaches that phenanthroline derivative (1,10-phenanthroline) can be used in an amount of 0.01-20 parts by mass based on 100 parts by mass of the polyimide ([0041]). Using the polyimide solids content of Example 1, this corresponds to about 0.001-2 wt% based on the total weight of the polymeric resin composition. It would have been obvious to one of ordinary skill in the art prior to the effective filing date to have used any 1,10-phenanthroline content in the range of 0.001-2 wt% because Koizumi teaches this range. A range of 0.001-2 wt% overlaps with the claimed range of 1-10 wt%. It would have been obvious to one of ordinary skill in the art before the effective filing date of the invention to have selected the overlapping portion of the ranges disclosed by the reference because selection of overlapping portion of ranges has been held to be a prima facie case of obviousness. See MPEP § 2144.05.I.
Regarding claims 8-9, Koizumi discloses the method of preparing a polymeric resin film according to claim 1. Koizumi’s example 1 is a copolymer derived from BTA, BPDA, DABz, and APB ([0057]). Residues of BPDA read on X1 is an aromatic tetravalent functional group represented by Formula 2.
Koizumi’s Example 1 does not anticipate claims 8-9 because the Y1 groups derived from the diamines of Example 1 either have more than 10 carbon atoms (APB) or have the potential to form tervalent Y1 groups (DABz).
However, Koizumi teaches that diamines can be used alone or in combination of two or more ([0029]) and teaches diamines that correspond to instant Y1. For example, Koizumi teaches paraphenylenediamine as a diamine ([0029]). It would have been obvious to one of ordinary skill in the art prior to the effective filing date to have selected any combination of diamines taught by Koizumi, including a combination of the ABP and DABz of Example 1 together with paraphenylenediamine. Including paraphenylenediamine in the diamine component of a polyimide film prepared by the method of Example 1 would result in repeating units derived from BPDA and paraphenylenediamine. Repeating units derived from BPDA and paraphenylenediamine read on wherein the polyimide resin comprises a polyimide repeating unit represented by Formula I where X1 is an aromatic tetravalent group represented by Formula 2 (residue of BPDA) and Y1 is an aromatic divalent functional group having 6 carbon atoms (residue of paraphenylenediamine).
Claims 1-7 are rejected under 35 U.S.C. 103 as being unpatentable over Kim (US-2021/0206921-A1) and further in view of Koizumi (JP-2011084637-A, English translation provided).
Regarding claims 1-2, 4, and 7, Kim teaches a method of preparing a polymeric resin film, comprising: applying to a substrate a polymeric resin composition comprising a polyimide-based resin to form a coating; drying the coating; and heat treating and curing the dried coating ([0088]). The polyimide-based resin can be a polyimide ([0047]). The polyimide contains aromatic imide repeating units ([0011-0014]) (claim 7). Kim teaches that the drying step is performed at 50-100 °C ([0095]). The step of heat treatment and curing is then performed at 400-500 °C ([0096]). Kim further exemplifies a heating rate of 5 °C/min for the heat treatment and curing step ([0126]). Therefore, it would have been obvious to one of ordinary skill in the art prior to the effective filing date to have cured the dried coating by heat treating the dried coating from an initial temperature of from at least 50 °C to 100 °C or less to a final temperature of from at least 400 °C to 500 °C or less at an elevation temperature rate of 5 °C/min because Kim teaches these curing conditions (claim 2).
Kim differs from claim 1 in that Kim does not teach a nitrogen-containing polycyclic compound having 10 or more carbon atoms.
However, Koizumi teaches that polyimide films comprising phenanthroline derivatives (Koizumi, [0010]). Like Kim, Koizumi teaches using the polyimide films as substrates in electronics (Kim, [0108]; Koizumi, [0087]). Koizumi teaches that using a phenanthroline derivative as an additive is desirable from the viewpoint of high adhesive action (Koizumi, [0038]). Koizumi teaches that an amount of 0.01-20 parts by mass based on 100 parts by mass of polyimide is desirable from the viewpoint of adhesive strength and heat resistance (Koizumi, [0041]). Koizumi exemplifies using 1,10-phenanthroline, 4,7-phenanthroline, or bathophenanthroline, the structures of which are shown below (Koizumi, [0061], [0069], [0071], and [0085]).
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It would have been obvious to one of ordinary skill in the art prior to the effective filing date to have prepared a polyimide film according to Kim including 0.01-20 parts by mass based on 100 parts by mass of the polyimide of 1,10-phenanthroline, 4,7-phenanthroline, or bathophenanthroline in the coating composition, as taught by Koizumi. One would have been motivated to make this combination in order to improve the adhesive strength of the film. The specific phenanthrolines taught by Koizumi (1,10-phenanthroline, 4,7-phenanthroline, and bathophenanthroline) read on a nitrogen-containing polycyclic compound having 12-24 carbon atoms. In addition, these compounds are nitrogen-containing heterocyclic compounds having 12-24 carbon atoms (claim 4).
Regarding claim 3, modified Kim teaches the method of preparing a polymeric resin film according to claim 1. Modified Kim’s composition does not explicitly comprise any nitrogen-containing polycyclic compounds having 9 or less carbon atoms. Therefore, it would have been obvious to prepare a composition with approximately 0 wt% of nitrogen-containing polycyclic compounds having 9 or less carbon atoms.
Regarding claims 5-6, modified Kim teaches the method of preparing a polymeric resin film according to claim 1 where the phenanthroline compound is used in an amount of 0.01-20 parts by mass based on 100 parts by mass of the polyimide. Kim further teaches that the polyimide is 5-25 wt% of the coating composition ([0092]). This corresponds to a phenanthroline compound content of up to about 5 wt% of the coating composition.
Kim does not anticipate the claimed content of the nitrogen-containing polycyclic compound having 10 or more carbon atoms.
However, it would have been obvious to one of ordinary skill in the art prior to the effective filing date to have selected any phenanthroline compound content in the range of 0.01-20 parts by mass based on 100 parts by mass of the polyimide because modified Kim teaches this range. A range of 0.01-20 parts by mass based on the polyimide overlaps with the claimed range of 1 to 20 parts by weight of the nitrogen-containing polycyclic compound having 10 or more carbon atoms based on 100 parts by weight of polyimide resin solids (claim 6). It would also have been obvious to select any combination of phenanthroline content up to 5 wt% based on the total weight of the polymeric resin composition because modified Kim teaches this. A range of up to 5 wt% overlaps with the claimed range of 1 to 10 wt% based on the total weight of the polymeric resin composition (claim 5). It would have been obvious to one of ordinary skill in the art before the effective filing date of the invention to have selected the overlapping portion of the ranges disclosed by the reference because selection of overlapping portion of ranges has been held to be a prima facie case of obviousness. See MPEP § 2144.05.I
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to AUDRA DESTEFANO whose telephone number is (703)756-1404. The examiner can normally be reached Monday-Friday 9-5.
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/AUDRA J DESTEFANO/Examiner, Art Unit 1766
/RANDY P GULAKOWSKI/Supervisory Patent Examiner, Art Unit 1766
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