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 .
Continued Examination Under 37 CFR 1.114
1. A request for continued examination under 37 CFR 1.114, including the fee set forth in 37 CFR 1.17(e), was filed in this application after final rejection. Since this application is eligible for continued examination under 37 CFR 1.114, and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114. Applicant's submission filed on 5/11/26 has been entered.
Response to Amendment
2. Applicant’s amendment and accompanying remarks filed 5/11/26 have been fully considered and entered. Claim 1 has been amended. Claims 2, 6-8 and 10 have been canceled. Applicant’s amendments are not found sufficient to overcome the obviousness type rejections made over the cited prior art of EP 2090609 A1 in view of WO2015122032A1 and Applicant’s arguments are not found persuasive of patentability for reasons set forth herein below.
Response to Arguments
3. Applicants argue that the cited prior art of EP 2090609 A1 either alone or in combination with WO2015122032A1 does not teach the claimed polyimide precursor resin having the combination claimed water content and imidization rate ranges. Applicants submit that the cited EP reference focuses on preparing a low viscosity polyamic acid solution, see EP reference paragraph [0005], and that the polyamic acid is formed by reaction conditions that suppress "excessive imidization reaction," see EP reference paragraph [0027], and the EP reference does not measure or optimize imidization rate at all. Applicants further argue a lack of motivation to combine the cited EP reference with cited WO reference on the grounds that the WO reference's 10-100% imidization rate is tied to "an amide bond derived from an alicyclic tetracarboxylic acid dianhydride" in a polyimide precursor having a TFMB and alicyclic and aromatic structure, not to the EP reference's polyamic acid solution. As such, Applicants submit that it would not have been obvious to a person of ordinary skill in the art to optimize the imidization rate of the polyamide disclosed in the EP reference as a function of desired heat oxidation resistance," because neither the EP reference nor the WO reference identifies imidization rate as a result-effective variable for the EP reference's polyamic acid solution, much less for solving Applicant's storage stability problem. Applicants further submit that the WO reference's general statement that polyimide resins have excellent heat resistance, oxidation resistance, and chemical resistance is not at all linked to any teaching or suggestion that varying imidization rate can adjust such "heat resistance, etc." properties in the EP reference's polyamic acid solution whereas the storage stability of the instant resin is improved when the "water content is 0.05 mass% to less than 0.5 mass%" and is further improved when the "imidization rate of the polyimide precursor is 8% to 20%" as claimed. These arguments are not found persuasive.
With respect to the cited primary reference (EP 2090609 A1), EP 2090609 A1 was relied upon to teach that the claimed polyimide precursor resin having the claimed water content is known in the art. The published EP reference teach forming a composition such as an adhesive or paste from the reaction of a tetracarboxylic dianhydride in a solvent containing more than 1/3 mole of water per mole of the tetracarboxylic dianhydride and in a second step adding to the polyamic acid solution an organic diamine (abstract and 0085). The Examiner considers this polyamic solution sufficient to meet the claimed polyimide precursor. The published EP reference teach that the polyamic acid solution obtained has a water content in the solution of 1 wt% or less (paragraph 0005). The Examiner is of the position that a water content of 1 wt. % reads on the claimed range of .05 % to less than .05 %; however, the EP reference further exemplifies a water content of .05 wt. % (paragraph 0031). With regard to the claimed imidization rate the cited EP reference further teach that reaction conditions used to form the polyamic acid solution are such that "excessive imidization reaction," is suppressed. (see EP reference paragraph [0027]). The Examiner is of the position that suppressing imidization does not necessarily mean that imidization does not take place. The EP reference teach that “excessive” imidization is suppressed. As such, the Examiner is of the position that polyamic solution does undergo imidization had thus has an imidization rate, though not disclosed or exemplified.
The secondary reference (WO2015122032A1) was relied upon to teach that is known to formulate a polyimide precursor resin comprising the claimed constituents and having the claimed imidization rate range to produce a resin having desirable properties including excellent storage capabilities. (see machine translation). The published WO reference teaches a polyimide resin having high heat resistance produced by solution polymerization of aromatic tetracarboxylic acid dianhydride and aromatic diamine to prepare a polyimide precursor, followed by thermal imidization or chemical imidization. The published WO reference exemplified polyimide precursor characterized by having a structure derived from 2,2'-bis(trifluoromethyl)benzidine (TFMB) or the like as a diamine-derived structure and also having both a structure derived from a specific alicyclic tetracarboxylic acid dianhydride and a structure derived from an aromatic tetracarboxylic acid dianhydride as structures each derived from a tetracarboxylic acid dianhydride, wherein the degree of imidization of an amide bond derived from the alicyclic tetracarboxylic acid dianhydride is 10 to 100% (see abstract). Since the WO reference also generally disclose the reaction of an aromatic tetracarboxylic acid dianhydrides and aromatic diamines to prepare a polyimide precursor that undergoes thermal or chemical imidization the exemplified imidization rate range is not just strictly linked to the specific "amide bond derived from an alicyclic tetracarboxylic acid dianhydride" in a polyimide precursor having a TFMB and alicyclic and aromatic structure” as Applicants assert. In other words, the WO reference appears to be concerned with producing a polyimide precursor resin having an imidization rate of 10-100 % for the purpose of producing a resin having the desirable properties of heat resistance, oxidation resistance and storage capabilities. The published WO reference teaches that polyimide resin is an insoluble and infusible super heat-resistant resin, and has excellent characteristics such as heat oxidation resistance, heat resistance, radiation resistance, low temperature resistance, and chemical resistance. Said resin also has excellent storage capability. Specifically, the WO reference teach that the polyimide precursor is excellent in storage stability. (see machine translation). The WO reference teach that the polyimide resins are used in a wide range of fields including electronic materials such as insulating coating agents, insulating films, semiconductors, and electrode protection films (see machine translation).
The Examiner maintains that both cited prior art references are analogous and concerned with forming similar resin compositions. As such, it would have been obvious to a person of ordinary skill in the art to optimize the imidization rate of the polyamide precursor resin of the cited EP reference as a function of desired storage capabilities, heat oxidation resistance, heat resistance, radiation resistance, low temperature resistance, and chemical resistance and/or desired end use (e.g., coating/insulating resin) as taught by the cited WO reference. It has been held that the determination of the optimum or workable ranges of said variable that might be characterized as routine experimentation is not patentable. In re Boesch, 617 F.2d 272, 205 USPQ 215 (CCPA 1980).
For these reasons, the Examiner maintains that the cited combination of prior art renders the rejected claims obvious.
Claim Rejections - 35 USC § 103
4. 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.
5. Claim(s) 1, 3-5, 9 and 11-13 stand rejected under 35 U.S.C. 103 as being unpatentable over EP 2090609 A1 in view of WO2015122032A1.
The published EP reference teach forming a composition such as adhesive or paste from the reaction of a tetracarboxylic dianhydride in a solvent containing more than 1/3 mole of water per mole of the tetracarboxylic dianhydride and in a second step adding to the polyamic acid solution an organic diamine (abstract and 0085). The Examiner considers this polyamic solution sufficient to meet the claimed polyimide precursor. The published EP reference teach that the polyamic acid solution obtained has a water content in the solution of 1 wt% or less (paragraph 0005). The Examiner is of the position that a water content of 1 wt. % or less would the claimed .05 or less range. The EP reference further exemplifies a water content of .05 wt. % (paragraph 0031). With regard to the diamine, the published EP reference teach the claimed aromatic diamine of 4,4'-diaminodiphenyl ether (paragraph 0020). As such, the Examiner considers the aromatic diamine of claims 1 and 4. With regard to the claimed tetracarboxylic dianhydride, the published EP reference teach the claimed pyromellitic dianhydride (paragraph 0021). As such, the Examiner is of the position that tetracarboxylic dianhydride of claims 1 and 3 met. With regard to the diamine, the published EP reference teach the claimed aromatic diamine of 4,4'-diaminodiphenyl ether (paragraph 0020). As such, the Examiner considers the aromatic diamine of claims 8, 9 and 13 met. With regard to the claimed tetracarboxylic dianhydride, the published EP reference teach the claimed pyromellitic dianhydride (paragraph 0021). As such, the Examiner is of the position that tetracarboxylic dianhydride of claims 7 and 13 met. With regard to claims 5, 10, 11, 12, the published EP reference teach that the solid content of the polyimide solution obtained ranges from 25-50 wt. % (claim 6). With regard to insulating wire of claim 13, the published EP reference does not specifically teach the claimed wire, but does teach that the composition can be combined with a copper foil to form a CCL (copper clad laminate) (paragraph 0085). The Examiner is of the position that since copper is also used to form wiring it would be within the skill of a worker in the art to employ the adhesive composition in combination with a copper wires/wiring to form the claimed insulated wire. Applicants are invited to evidence otherwise.
The published EP reference does not teach the limitation of wherein an “imidization rate of the polyimide precursor is 5% to 25%”.
The published WO reference teaches a polyimide precursor characterized by having a structure derived from 2,2'-bis(trifluoromethyl)benzidine (TFMB) or the like as a diamine-derived structure and also having both a structure derived from a specific alicyclic tetracarboxylic acid dianhydride and a structure derived from an aromatic tetracarboxylic acid dianhydride as structures each derived from a tetracarboxylic acid dianhydride, wherein the degree of imidization of an amide bond derived from the alicyclic tetracarboxylic acid dianhydride is 10 to 100% (see abstract). The published WO reference teaches that polyimide resin is an insoluble and infusible super heat-resistant resin, and has excellent characteristics such as heat oxidation resistance, heat resistance, radiation resistance, low temperature resistance, and chemical resistance. Accordingly, polyimide resins are used in a wide range of fields including electronic materials such as insulating coating agents, insulating films, semiconductors, and electrode protection films (see machine translation).
The Examiner is of the position that both cited prior art references are analogous and concerned with forming similar resin compositions. It would have been obvious to a person of ordinary skill in the art to optimize the imidization rate of the polyamide as a function of desired heat oxidation resistance, heat resistance, radiation resistance, low temperature resistance, and chemical resistance and/or desired end use (e.g., coating/insulating resin). It has been held that the determination of the optimum or workable ranges of said variable that might be characterized as routine experimentation is not patentable. In re Boesch, 617 F.2d 272, 205 USPQ 215 (CCPA 1980).
Conclusion
6. 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 LYNDA SALVATORE whose telephone number is (571)272-1482. The examiner can normally be reached M-F.
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/LYNDA SALVATORE/Primary Examiner, Art Unit 1789
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