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 .
DETAILED ACTION
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 5-11 are 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.
With respect to “obtainable” of claim 5, see Atlantic Thermoplastics Co. Inc. v Faytex Corp. 23 USPQ 2nd 1481 (footnote 6 on page 1486), Ex parte Tanksley 26 USPQ 2nd 1389, and Purdue Research v Watson 1959 CD 124 (Dist. Ct.) affirmed by CCPA 120 USPQ 521. It is unclear what is encompassed by “obtainable”. One does not exactly and precisely know what a given polymer is particularly considering the lack of recitation of a myriad of parameters which affect the polymer identity. MPEP 2133.03 (C).
Thus, the examiner suggests “obtained” instead.
Other claims 6-11 depending on indefinite claim 5 would be also indefinite.
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 1-10 are rejected under 35 U.S.C. 103 as being unpatentable over CN 109337070 A (Feb. 15, 2019) with Machine translation in view of Matsuyama et al. (US 2017/0210854 A1).
Machine translated CN teaches polyamic acid solution comprising dianhydride and diamine in middle of page 4. Machine translated CN teaches a first dianhydride such as TAHQ in middle of page 4. Machine translated CN teaches a second dianhydride such as BPDA or PMDA or a combination thereof in middle of page 4.
Thus, utilization of a combination of TAHQ, BPDA and PMDA as dianhydride would have been obvious.
Machine translated CN teaches diamines such as 2,2’-dimethyl benzidine (i.e. m-tolidine) or diaminobenzene (PPD, i.e., phenylenediamine) or a combination thereof in bottom of page 4.
Utilization of a combination of TAHQ, BPDA and PMDA as dianhydrides is known in the art.
Matsuyama et al. teach a polyimide resin precursor (i.e., polyamic acdi) comprising a combination of TAHQ, BPDA and PMDA in examples 2 and 5 in Table 1.
Thus, utilization of a combination of 2,2’-dimethyl benzidine (i.e. m-tolidine) and diaminobenzene (PPD, i.e., phenylenediamine) as diamine would have been obvious. Regarding the recited para-phenylenediamine of claim 1, there are para-phenylenediamine, meta-phenylenediamine and ortho-phenylenediamine and the para-phenylenediamine is expected to form a linear structure yielding higher mechanical/physical properties inherently.
Also, a court held that very limited choice is anticipation. See In re Arkley, 455 F2d 586, 172 USPQ 524 (CCPA 1972); In re Petering, 301 F2d 676, 133 USPQ 275 (CCPA 1962). MPEP 2131. Thus, choosing para-phenylenediamine would be at least obvious.
Thus, it would have been obvious to one skilled in the art before the effective filing date of invention to obtain a polyamic acid comprising TAHQ, BPDA and PMDA as dianhydride taught by Matsuyama et al. and 2,2’-dimethyl benzidine (i.e. m-tolidine) and para-phenylenediamine (PPD) in CN since CN teaches utilization of a combination of dianhydrides and a combination of diamines and since utilization of a combination of TAHQ, BPDA and PMDA as dianhydrides is known as taught by Matsuyama et al. absent showing otherwise.
Although examples in Table 2 of CN do not teach such combinations, reference must be considered for all that it discloses and must not be limited to preferred embodiments or working examples. See In re Mills, 477 F.2d 649, 176 USPQ 196 (CCPA), In re Lamberti, 545 F.2d 747, 750 (CCPA 1976). MPEP 2123.
Regarding claims 2 and 6, Matsuyama et al. teach amounts of different dianhydrides comprising the instant mol % in examples 2 and 5 in Table 1. Thus, further utilization of such mol% taught by Matsuyama et al. in CN would have been obvious.
Regarding claims 3 and 7, Matsuyama et al. teach a content of p-phenylene diamine being 75 mol % of more in [0038] and thus further utilization 25 mol % or less of 2,2’-dimethyl benzidine (i.e. m-tolidine) would have been obvious.
Further regarding mol %, when patentability is predicated upon a change in a condition of a prior art composition, such as a change in concentration or in temperature, or both, the burden is on Applicant to establish with objective evidence that the change is critical, i.e., it leads to a new unexpected result. It is not inventive to discover the optimum or workable ranges by routine experimentation when the general conditions of a claim are disclosed in the prior art. See In re Woodruff, 919 F.2d 1575, 1578 (Fed. Cir. 1990); In re Aller, 220 F.2d 454, 456 (CCPA 1955). MPEP 2144.05.
Regarding claims 4, 8 and 9 Machine translated CN teaches heating all components together in example at top of page 6 which is same as the instant Preparation Example taught at page 14 of specification, and thus the example taught by Machine translated CN would be expected to yield a block copolymer.
Regarding claims 5 and 8, Machine translated CN teaches a film in example at top of page 6 and thus a film from a composition comprising a combination of 2,2’-dimethyl benzidine (i.e. m-tolidine) and diaminobenzene (PPD, i.e., phenylenediamine) as diamine would make claims 5 and 8 obvious.
Regarding claim 9, utilization of the above discussed obvious mol % of components in CN and polymerization thereof would be expected to yield the recited block copolymer.
Regarding claim 10, Examples 1, 5 and 10 in Table 1 of CN teaches tan delta (i.e., dielectric dissipation factor, see page 5 of Machine translated CN) of 0.0030 or less. Table 1 of CN also shows an elastic modulus of 0.20 GPa (200 MPa) or higher at 300oC and thus the film of CN would be expected to have the recited storage modulus of 100 MPa or higher at 300oC.
Claim 11 is rejected under 35 U.S.C. 103 as being unpatentable over CN 109337070 A (Feb. 15, 2019) with Machine translation in view of Matsuyama et al. (US 2017/0210854 A1) as applied to claims 1-10 above, and further in view of Machine translated CN 107250277 A (Oct. 13, 2017).
Regarding claim 11, Machine translated CN’277 teaches coating of polyamic acid/polyimide on various thermoplastic substrates such as polycarbonate, polymethylmethacrylate, polystyrene polyester and polyolefin at bottom of page 8.
Thus, it would have been obvious to one skilled in the art before the effective filing date of invention to utilize the polyamic acid taught by CN’070 and Matsuyama et al. thereof to coat various thermoplastic substrates taught by CN’277 since all teach utilization of polyamic acid/polyimide as coatings absent showing otherwise.
Selection of a known material based on its suitability for its intended use is prima facie obvious, see Sinclair & Carroll Co. v. Interchemical Corp., 325 US 327, 65 USPQ 297 (1945). MPEP 2144.07.
The combination of familiar elements according to known methods is likely to be obvious when it does no more than yield predictable results. KSR Co. v. Teleflex Inc., 550 U.S. 398, 416 (2007). MPEP 2141.
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.
Claims 1-3, 5-7 and 10 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-3, 5-7 and 10 of copending Application No. 18/713,613 (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other because the recited two or more dianhydrides and one or more diamines in claim 1 of the copending Application would encompass the instantly recited components of claim 1.
Regarding claims 2 and 3, see claims 2 and 3 of the copending Application.
Regarding claims 5-7, see claims 5-7 of the copending Application.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Regarding claim 10, see claim 10 of the copending Application.
Claims 5-8 and 11 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1, 4, 11 and 12 of copending Application No. 18/860,296 (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other because Claims 1, 11 and 12 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims of copending Application No. 18/860,296 (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other because the recited two or more dianhydrides and two or more diamines in claim 1 of the copending Application would encompass the instantly recited components of claim 5.
Regarding claims 2 and 3, see claims 2 and 3 of the copending Application.
Regarding claims 6-8, see claims 1 and 4 of the copending Application.
Regarding claim 11, see claims 11 and 12 of the copending Application.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
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/TAE H YOON/ Primary Examiner, Art Unit 1762
