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
Claims 17-34 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected invention, there being no allowable generic or linking claim.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 12/1/2025.
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.
Claims 8-10 and 14 recites the variable "R.” However the variable R is not defined by claims 8-10 or claim 14.
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 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- 7 are rejected under 35 U.S.C. 103 as being unpatentable over Matsuo JP 7-26018 in view of Rome US 20140135448A1.
Regarding claims 1-3 and 7, Matsuo teaches a polyimide comprising this structure: (Paragraph [0007]).
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Matsuo teaches the diamine comprising the diamine to form the structure can have the following formula where X and Y each represent an oxygen atom (p. 5, [0006]):
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This reads on the structure of W where m = 1. Matsuo’s examples include 1,3-bis(4-(4-aminophenoxy)phenoxy)benzene (p. 15-16, [0031]) which reads on the structure where m = 0.
Matsuo teaches that R in the dianhydride component has a structure of
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where W can be CH2. This structure differs from the claimed structure by the presence of a single repeating phenyl group. Nevertheless, 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." In re Payne, 606 F.2d 303, 313, 203 USPQ 245, 254 (CCPA 1979). See MPEP 2144.09.
The first claimed dianhydride differs from Matsuo only by the successive addition of a single phenyl group and therefore possesses similar structure. The claimed dianhydride and Matsuo’s dianhydride have similar utilities in that both are used to react with structurally similar diamines to obtain polyimides. Therefore, it would have been obvious to one of ordinary skill in the art at the time of filing to employ the first claimed dianhydride in Matsuo’s polyimides based on close structural similarity and similar utility, with a reasonable expectation that the resulting polyimides will have similar properties.
Matsuo teaches the composition can comprise a reinforcing agent such as glass fiber or carbon fiber. This reads on the claimed filler.
Matsuo is silent on the end capping agent of the composition.
Rome teaches that acetylenic end-cappers like PEPA are generally lead to polyimides with improved heat resistance and mechanical strength (p. 3, [0037] and [0042]). Rome teaches a polyimide comprises a reaction with the diamine 1,3-bis(4-aminophenoxy)benzene (Paragraph [0047) and a dianhydride with the structure of
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where G is a divalent group (Paragraph [0050]). It would have been obvious to one of ordinary skill in the art to end cap Matsuo’s polyimide with Rome’s PEPA for the advantage of improved heat resistance and mechanical strength. This reads on the claimed Z where Z is an alkyne group.
Matsuo is also silent regarding the number of repeating units and the molecular weight of the composition.
Rome teaches that polyimide include at least 1 but less than 20 residues of an aromatic di-amine (Claim 11). Rome also teaches that the polyimide comprises at least one residue of an aromatic non-acetylenic di-anhydride (Claim 11). This overlaps with the claimed range of n from 6-18.
It would have been obvious for the polyimide of Matsuo to comprise the number of residues as taught by Rome because Matsuo teaches a substantially structurally similar polyimide with a majority of the components taught in Rome and Rome teaches a suitable number of residues for a polyimide with this structure. The combination of familiar elements according to known methods is likely to be obvious when it does no more than yield predictable results." KSR Int'l Co. v. Teleflex Inc., 550 U.S. 398, 416-21 (2007). See MPEP 2141.
Therefore, Matsuo in view of Rome reads on the limitations of claims 1-3 and 7.
Regarding claims 4-6, the R group of claims 4-6 is not a required component of the polyimide. Therefore the limitations of this R group are additionally optional. Therefore, Matsuo in view of Rome read on the limitations of claims 4-6.
Regarding claim 16, the microparticle of claim 15 is not a required component of the composition, therefore the limitations of the microparticle or nanoparticle of claim 15 is optional.
Double Patenting
The nonstatutory double patenting rejection is based on a judicially created doctrine grounded in public policy (a policy reflected in the statute) so as to prevent the unjustified or improper timewise extension of the “right to exclude” granted by a patent and to prevent possible harassment by multiple assignees. A nonstatutory double patenting rejection is appropriate where the conflicting claims are not identical, but at least one examined application claim is not patentably distinct from the reference claim(s) because the examined application claim is either anticipated by, or would have been obvious over, the reference claim(s). See, e.g., In re Berg, 140 F.3d 1428, 46 USPQ2d 1226 (Fed. Cir. 1998); In re Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993); In re Longi, 759 F.2d 887, 225 USPQ 645 (Fed. Cir. 1985); In re Van Ornum, 686 F.2d 937, 214 USPQ 761 (CCPA 1982); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Thorington, 418 F.2d 528, 163 USPQ 644 (CCPA 1969).
A timely filed terminal disclaimer in compliance with 37 CFR 1.321(c) or 1.321(d) may be used to overcome an actual or provisional rejection based on nonstatutory double patenting provided the reference application or patent either is shown to be commonly owned with the examined application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. See MPEP § 717.02 for applications subject to examination under the first inventor to file provisions of the AIA as explained in MPEP § 2159. See MPEP § 2146 et seq. for applications not subject to examination under the first inventor to file provisions of the AIA . A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
The filing of a terminal disclaimer by itself is not a complete reply to a nonstatutory double patenting (NSDP) rejection. A complete reply requires that the terminal disclaimer be accompanied by a reply requesting reconsideration of the prior Office action. Even where the NSDP rejection is provisional the reply must be complete. See MPEP § 804, subsection I.B.1. For a reply to a non-final Office action, see 37 CFR 1.111(a). For a reply to final Office action, see 37 CFR 1.113(c). A request for reconsideration while not provided for in 37 CFR 1.113(c) may be filed after final for consideration. See MPEP §§ 706.07(e) and 714.13.
The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The actual filing date of the application in which the form is filed determines what form (e.g., PTO/SB/25, PTO/SB/26, PTO/AIA /25, or PTO/AIA /26) should be used. A web-based eTerminal Disclaimer may be filled out completely online using web-screens. An eTerminal Disclaimer that meets all requirements is auto-processed and approved immediately upon submission. For more information about eTerminal Disclaimers, refer to www.uspto.gov/patents/apply/applying-online/eterminal-disclaimer.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Claims 1-14 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-14 of copending application No. US 18/299353 (henceforth called ‘353) in view of Rome US 20140135448A1.
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‘652 teaches the exact structure of claims 1-14:
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where W is
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and m is zero or 1 and,
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where m is one or 2. ‘652 also teaches Ar is
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and Z is
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or a hydrogen.
However the claims are silent on the polyimide being a composite comprising a filler. Rome teaches a polyimide comprises a reaction with the diamine 1,3-bis(4-aminophenoxy)benzene (Paragraph [0047). and a dianhydride with the structure of
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where G is a divalent group (Paragraph [0050]). Rome also teaches the incorporation of the acetylenic end-cappers like PEPA (Paragraph [0036]). Rome teaches that polyimide include at least 1 but less than 20 residues of an aromatic di-amine (Claim 11). Rome also teaches that the polyimide comprises at least one residue of an aromatic non-acetylenic di-anhydride (Claim 11). Therefore, Rome teaches a substantially similar polyimide to the one taught in the claims of ‘353.
Rome teaches that a filler can be added to this substantially similar polyimide (Paragraph [0130]). It would have been obvious to one of ordinary skill in the art to combine the teaching of the substantially similar polyimide of Rome which is blended with a filler with the polyimide taught in ‘353 as this added filler is recognized as a suitable additive substantially similar polyimides. The selection of a known material based on its suitability for its intended use is prima facie obvious. See MPEP 2144.07
Therefore, though the filler is not referenced in the claims, ‘353 reads on the limitations of claim 1-14.
This is a provisional nonstatutory double patenting rejection.
Allowable Subject Matter
Claims 8-14 are objected to as being dependent upon a rejected base claim, but would be allowable if the 112(b) and nonstatutory double patenting rejections presented above re overcome and claim 8 is rewritten in independent form including all of the limitations of the base claim and any intervening claims.
Regarding claim 8, and all dependent claims, neither JP JP07-026018 A(1995) nor Rome US 20140135448 A1 teach the limitations of claim 8.
Relevant Prior Art
Katano US 20150275089 teaches a polymer used for liquid crystal alignment comprising the structure of dianhydride PAN-1
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(Paragraph [0027]). Katano also teaches the polymer comprises a diamine
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(DI-7), (Paragraph [0046]) where G can be -O-. Katano also teaches that this diamine is present in addition to a photopolymerization diamine (Paragraph [0046]). Because this second diamine is present with a second diamine, this does not read on the claimed structure.
Tamura KR20100088072A teaches a polyimide for a liquid crystal alignment film comprising the dianhydride structure
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(Paragraph [0039]). Tamura also teaches that the composition comprises a diamine
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(Paragraph [0121]). Tamura teaches this diamine is the second diamine used, therefore this does not read on the structure of claim 1 or claim 8 (Page 7).
Oguchi CN104059227A teaches a liquid crystal alignment film comprising the structure
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where G22 can be -O- (Page 5) and a dianhydride with the structure of formula 1. Oguchi also teaches the liquid crystal alignment film has the anhydride of
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(Page 4). However Oguchi teaches two dianhydrides in the film (Paragraph [0001]).
Shoji JPH05112644A teaches a polyimide film comprising 2 types of amine components (Paragraph [0030]). Shoji also teaches the polyimide film comprises a dianhydride component and an amine component where the amine component can have the structure of
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(Paragraph [0010]). Shoji also teaches the dianhydride component has a structure of
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where R is
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. Shoji does not read on the limitations of claim 1 or claim 8 because of the two types of amine components required resulting in a fundamentally different structure.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to LILY K SLOAN whose telephone number is (703)756-5875. The examiner can normally be reached Monday-Friday 9:00-5:30 ET.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Robert Jones can be reached at (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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/LILY K SLOAN/Examiner, Art Unit 1762
/ROBERT S JONES JR/Supervisory Patent Examiner, Art Unit 1762