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 .
Information Disclosure Statement
With respect to the information disclosure statement (IDS) submitted on 6/3/2024, it is noted that the pdf files for several of the cited Japanese patent documents appear to have been either only partially printed or only partially uploaded such that the entire foreign patent document is not legible; and given that the partial submissions do not appear to be intentional, the Examiner has either lined through those documents or indicated that only an English language translation was submitted by adding “Only” under “English Translation” in the Relevant portions section of the IDS. For those Japanese patent documents that do not have a corresponding US patent document and have been considered by the Examiner, a copy of the complete Japanese patent document is attached with this Office Action and the document cited on the accompanying PTO-892 form.
Specification
The disclosure is objected to because of the following informalities: in Paragraphs 0018, 0034, and 0059 of the specification as filed, “1,2,4,5-tetracarboxylic dianhydride” should probably read “1,2,4,5-benzenetetracarboxylic dianhydride” (emphasis), given the further recitation to pyromellitic dianhydride (PMDA) at Paragraphs 0034 and 0059.
Appropriate correction is required.
Claim Objections
Claim 1 is objected to because of the following informalities: claim 1 recites, “[Chem. 1]” at line 8, however, given that square brackets are typically reserved for editing purposes, the square brackets at line 8 should be deleted. Appropriate correction is required.
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 1-11 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. Claim 1 includes parenthetic expressions at lines 4-5, and at lines 10-12, such that it is unclear whether the recitations within the parentheses are meant to be part of the claimed invention or are merely suggested guidelines, groups, or non-limiting examples thereof. Further, with respect to the parenthetic expression at lines 4-5, if meant to be part of the claimed invention, it is unclear whether the “provided that” limitation is requiring the “silicon-containing diamine” in general to have “a number average molecular weight of 500 or less” or whether the limitation is reciting that the silicon-containing diamine is represented by said formula (1) if or “provided that” the diamine has a number average molecular weight of 500 or less, such that if the diamine does not have a number average molecular weight of 500 or less, the silicone-containing diamine is not represented by the recited formula (1) and thus may be represented by a formula other than formula (1). Hence, one having ordinary skill in the art would not be reasonably apprised of the scope of the claimed invention and could not interpret the metes and bounds of the claim so as to understand how to avoid infringement.
Dependent claims 2-11 do not remedy the above and hence are indefinite for the same reasons. (Note: If the parenthetic expressions are meant to be required limitations of the claims, then the parentheses should be deleted in order to remove any ambiguity as to whether the limitations within the parentheses are part of the claimed invention.)
Claim 2 is 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. Claim 2 recites, “at least a structural unit derived from one or more selected from 1,2,4,5-tetracarboxylic dianhydride” (emphasis added) on lines 2-3, however, the claim fails to recite the core molecule of the 1,2,4,5-tetracarboxylic dianhydride that has the four (“tetra”) carboxylic acid groups at positions 1, 2, 4, and 5. Hence, one having ordinary skill in the art would not be reasonably apprised of the scope of the claimed invention and could not interpret the metes and bounds of the claim so as to understand how to avoid infringement.
Claim 4 is 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. Claim 4 recites, “the polyimide film comprising the polyimide…in an amount of 90 wt.% or more,” however, the claim fails to recite a basis for said wt.%, e.g., based on the total weight of all polymers of the film, based on the total weight of the film, etc. Hence, one having ordinary skill in the art would not be reasonably apprised of the scope of the claimed invention and could not interpret the metes and bounds of the claim so as to understand how to avoid infringement.
Claim 6 is 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. Claim 6 recites, “The polyimide film for a spacecraft according to claim 4, wherein a weight reduction rate in an irradiation area is 0.5 wt.% or less by irradiation with atomic oxygen under vacuum and under conditions of 20°C, a film thickness of 25 µm, and an irradiation dose of 1.0 x 1020 to 2.0 x 1021 atoms/cm2,” however, it is unclear whether the claimed “weight reduction rate” refers to “the polyimide film” given that the claim merely recites “a film thickness of 25 µm” without clearly specifying that said thickness refers to the claimed polyimide film, and if said thickness does refer to the claimed polyimide film, it is unclear whether said thickness is merely a condition for measuring said “weight reduction rate” or whether the claimed polyimide film is required to have said thickness. Hence, one having ordinary skill in the art would not be reasonably apprised of the scope of the claimed invention and could not interpret the metes and bounds of the claim so as to understand how to avoid infringement.
Claim Interpretation
Consistent with MPEP § 2111, claims are given their broadest reasonable interpretation wherein “the meaning given to a claim term must be consistent with the ordinary and customary meaning of the term (unless the term has been given a special definition in the specification), and must be consistent with the use of the claim term in the specification and drawings. Further, the broadest reasonable interpretation of the claims must be consistent with the interpretation that those skilled in the art would reach. In re Cortright, 165 F.3d 1353, 1359, 49 USPQ2d 1464, 1468 (Fed. Cir. 1999).” However, although the claims are interpreted in light of the specification, limitations from the specification are not read into the claims. See In re Van Geuns, 988 f.2d 1181, 26 USPQ2d 1057 (Fed. Cir. 1993.) It is also noted that a recitation of the intended use of the claimed invention must result in a structural difference between the claimed invention and the prior art in order to patentably distinguish the claimed invention from the prior art. If the prior art structure is capable of performing the intended use, then it meets the claim. It is further noted that in general, when reading a preamble in the context of an entire claim, preamble recitations may not be limiting if the body of the claim describes a complete invention and the language recited solely in the preamble does not provide any distinct definition of any of the claimed invention’s limitations; and in such case, the preamble of the claim(s) is not considered a limitation and is of no significance to claim construction. See Pitney Bowes, Inc. v. Hewlett-Packard Co., 182 F.3d 1298, 1305, 51 USPQ2d 1161, 1165 (Fed. Cir. 1999). See MPEP § 2111.02.
For examination purposes with respect to prior art, the Examiner has assumed that the parenthetic expressions in claim 1 are optional; that “1,2,4,5-tetracarboxylic dianhydride” in claim 2 is meant to recite “1,2,4,5-benzenetetracarboxylic dianhydride” (i.e., pyromellitic dianhydride or PMDA); that the wt.% range of claim 4 is calculated on any basis; and that the weight reduction rate of claim 6 refers to the claimed polyimide film but that the claimed polyimide film is not required to have the recited non-limiting thickness which is merely a condition for measuring or determining the weight reduction rate.
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.
Claims 1 and 4-8 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Holub (USPN 3,325,450A). Holub discloses polysiloxaneimides having recurring units corresponding to formula I as recited in Col. 1, and films formed from the polysiloxaneimides, wherein the polysiloxaneimides comprise a diamine-derived structural unit and an aromatic acid dianhydride-derived structural unit (i.e., benzophenonetetracarboxylic dianhydride), and wherein as the diamine-derived structural unit, a silicon-containing diamine represented by formula III as recited in Col. 1 is utilized, with working examples specifically utilizing as the sole diamine component (i.e., 100 mol% as in instant claim 1), 1,3-bis-delta-aminobutyl tetramethyldisiloxane in Example 1 and 1,3-bis-gamma-aminopropyl tetramethyldisiloxane in Example 2, both of which have a structure as recited in the claimed formula (1) of instant claim 1 and a number average molecular weight of less than 500 g/mol, reacted with benzophenone dianhydride to produce polyimide films therefrom such that the films consist of the polyimide (100wt% as in instant claim 4, Entire document, particularly page 1 and Examples); and given that the claimed “for a spacecraft” as recited in instant claims 1 and 4-7 constitutes intended end use of the polyimide or polyimide film, the Examiner takes the position that the claimed invention as recited in instant claims 1 and 4 is anticipated by Holub, particularly given that the polyimide and polyimide film disclosed by Holub is capable of the same end use.
With respect to instant claims 5-6, although Holub does not specifically discloses the amount of cyclic siloxane generated by heat treatment as in instant claim 5 nor the weight reduction rate as in instant claim 6, given that the polyimide/polysiloxaneimide and resulting polyimide film disclosed by Holub are produced from the same monomer components and by essentially the same process as in the instant invention, particularly as in the working examples, the Examiner takes the position that the polyimide film disclosed by Holub would inherently exhibit the same properties as instantly claimed. Hence, absent any evidence to the contrary, Holub anticipates instant claims 5-6.
With respect to instant claims 7 and 8, it is noted that the claimed “material for a spacecraft” and the claimed “solar battery panel structure” of instant claims 7 and 8, respectively, do not provide any additional structural or material limitations to the claimed polyimide film to differentiate the claimed “material” and “panel structure” from the claimed polyimide film nor from the polyimide film disclosed by Holub, such that the claimed “material for a spacecraft” and the claimed “solar battery panel structure” constitute intended end use of the claimed polyimide film; and given that the polyimide film disclosed by Holub, particularly as in the working examples, is capable of the same intended end use, the Examiner takes the position that instant claims 7 and 8 are anticipated by Holub.
Claims 1-10 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Watanabe (US2007/0260035A1). Watanabe discloses a polyimide resin, a polyimide film formed from the polyimide resin, and a metal layer-bearing laminate film comprising the polyimide film laminated to a metal layer (as in instant claim 9), wherein the polyimide resin contains a siloxane type diamine residual group of a siloxane diamine defined by formula (1), a fluorene type diamine residual group of a fluorene diamine defined by formula (2), and specified tetracarboxylic acid dianhydride residual groups of aromatic dianhydrides defined by formula (3) at specified ratios as recited in Claim 1, with the siloxane diamine of formula (1) disclosed by Watanabe reading upon the claimed formula (1) and the residual group thereof present in a content of 2 to 40% by mole in the total diamine residual groups (Abstract, Claims 1 and 5-7); and given that Watanabe specifically discloses working examples utilizing 1,1,3,3-tetramethyl-1,3-bis(3-aminopropyl)disiloxane (SiDA) which has a structure and number average molecular weight as instantly claimed, in a portion falling within the claimed 5 to 100 mol% relative to the entire diamine-derived structural unit, in combination with 9,9-bis(4-aminophenyl)fluorene (FDA) as in instant claim 3 for the diamine components, and 3,3',4,4'-diphenyl sulfone tetracarboxylic acid dianhydride (DSDA) or 3,3',4,4'-diphenyl tetracarboxylic acid dianhydride (BPDA) for the aromatic acid dianhydride-derived structural unit as in instant claim 2 (e.g., Production Examples 15, 31, 49, 52, etc.), to form polyimide films consisting of the resulting polyimide resins (100wt% as in instant claim 4) and metal laminates thereof (as in instant claim 9), the Examiner takes the position that Watanabe anticipates the claimed invention as recited in instant claims 1-10 given again that the instantly claimed “for a spacecraft”, “material for a spacecraft”, “solar battery panel structure” as well as the claimed “thermal blanket for a low-earth orbit satellite” of claims 1-10 constitute intended end use of the claimed polyimide resin, polyimide film, and/or laminated film, without provide any additional structural and/or material limitations to differentiate the claimed invention from the polyimide resin, polyimide film, and/or laminated film disclosed by Watanabe which is capable of the same intended end use, and that the claimed properties as recited in instant claims 5-6 would be inherent to the polyimide films disclosed by Watanabe which are formed from the same monomer units in the same contents and by the same method as in the instant invention (Entire document, particularly Abstract, Paragraphs 0012-0013, Claims, Examples, and Tables 1-4).
Claims 1-10 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Tokuhisa (US2003/0012882A1). Tokuhisa discloses a siloxane polyimide resin (Abstract) as well as a polyimide film (Paragraph 0038) and laminate produced from the siloxane polyimide resin (Abstract, Paragraphs 0053-0055), wherein the siloxane polyimide resin is “obtained from (A) an aromatic tetracarboxylic dianhydride and (B) a diamine ingredient comprising (B1) a diamine having a phenolic hydroxyl group, carboxyl group, or vinyl group as a crosslinkable reactive group and (B2) a siloxanediamine” (Abstract), wherein the siloxanediamine (B2) is preferably used in a proportion of 5 to 95 mol% with respect to the total diamine (B) (Paragraph 0029) and has a preferred general formula (1) as in Paragraphs 0026-0027, with working examples specifically utilizing ω,ω’-bis(3-aminopropyl)dimethylsiloxane, abbreviated as “PSX(n=1)” with n=1 in formula (1) and a molecular weight of 248.52 (Paragraph 0079). Hence, Tokuhisa anticipates instant claim 1 given again that the claimed “for a spacecraft” constitutes intended end use of the claimed polyimide and does not provide any additional material or structural limitations to the claimed polyimide to differentiate the claimed invention from the polyimide disclosed by Tokuhisa (Entire document, particularly as noted above and Examples).
With respect to instant claims 2-3, Tokuhisa discloses that the dianhydride is preferably selected from 4,4'-oxydiphthalic acid (ODPA), 3,3',4,4'-biphenyltetracarboxylic acid dianhydride (BPDA, as in instant claim 2), bis(3,4-dicarboxyphenyl)sulfone dianhydride, 3,3',4,4'-benzophenone tetracarboxylic acid dianhydride, and pyromellitic acid dianhydride (PMDA, as in instant claim 2) (Paragraph 0021), with several working examples specifically utilizing PMDA and/or BPDA; and also discloses that the diamine component (B) may further comprise diamines (B3) other than (B1) and (B2) with working examples specifically utilizing 2,2-bis[4-(4-aminophenoxy)phenyl]propane (BAPP) in combination with the siloxanediamine, particularly the PSX(n=1) as in instant claim 3 (Paragraphs 0071-0084, Examples), and hence, the Examiner takes the position that Tokuhisa discloses the claimed invention with sufficient specificity to anticipate instant claims 2-3.
With respect to instant claims 4-10, Tokuhisa discloses polyimide films consisting of the polyimide resins including from the resins produced in the working examples, as well as metal-resin laminates comprising the resin films laminated to a metal substrate/film (Examples), and given again that the instantly claimed “for a spacecraft”, “material for a spacecraft”, “solar battery panel structure”, and “thermal blanket for a low-earth orbit satellite” of claims 4-10 constitute intended end use of the claimed polyimide resin, polyimide film, and/or laminated film, without provide any additional structural and/or material limitations to differentiate the claimed invention from the polyimide resin, polyimide film, and/or laminated film disclosed by Tokuhisa which is capable of the same intended end use, and that the claimed properties as recited in instant claims 5-6 would be inherent to the polyimide films disclosed by Tokuhisa which are formed from the same monomer units in the same contents and by the same method as in the instant invention, the Examiner takes the position that the claimed invention as recited in instant claims 4-10 is anticipated by Tokuhisa.
Claims 1-2 and 4-11 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Connell (US2016/0280858A1, with Holub, USPN 3,325,450; and Heath, USPN 3,847,867, incorporated therein by reference). Connell discloses “random copolyimides that may possess the mechanical, thermal, chemical and optical properties associated with polyimides yet achieve a low energy surface” as well as coatings, films, and articles produced therefrom such as a rocket, a satellite (as in instant claims 10-11), an interplanetary vehicle, or other type spacecraft (as in instant claims 1-9; Abstract, Paragraph 0041); wherein “the copolyimides may be prepared using a minor amounts [sic] of a diamino terminated fluorinated alkyl ether oligomer and a diamino terminated siloxane oligomer” with a representative chemical structure of the diamino terminated siloxane oligomer shown in Fig. 1 with n being a non-zero value such as at least 1 (reading upon the claimed structure when m=2), or may be selected from those described in Holub (USPN 3,325,450) and Heath (USPN 3,847,867), both of which are incorporated into Connell (Paragraphs 0024 and 0048, Fig. 1), with both Holub (discussed in detail above and incorporated herein by reference) and Heath (Examples) disclosing diamino disiloxanes reading upon the claimed silicon-containing diamine represented by the claimed formula (1) and having a number average molecular weight of 500 or less as instantly claimed. Connell discloses that the combined oligomer content of the copolymer may be less than about 15 mass percent of the copolyimide (Paragraph 0032), and that in various embodiments, the fluorine containing alkyl ether oligomer and the siloxane oligomer combined constitute a minor portion by mass of the diamine components used in the polyimide synthesis, such as less than about 20 mass percent (Paragraph 0044), with working examples specifically utilizing 5 mol% (as in instant claim 1) of an aminopropyl terminated dimethylsiloxane having a structure as shown in Fig. 2 (as in instant claim 1) with BPDA (as in instant claim 2) as the dianhydride component (Table 2), and given that Connell produces copolyimide films consisting of said copolyimide resins (as in instant claim 4) and laminates produced therefrom with a steel plate or an aluminum plate (as in instant claims 10-11; Examples), the Examiner takes the position that Connell discloses the claimed invention with sufficient specificity to anticipate instant claims 1-2, 4, and 7-11 given that Connell clearly discloses the use thereof for spacecraft and satellites, although the Examiner contends that such recitations constitute intended end use of the polyimide, polyimide film, and/or laminate as discussed in detail above, and the metal-copolyimide film laminates disclosed by Connell, particularly as in the examples, would read upon the broadly claimed “thermal blanket” as recited in instant claims 10-11.
Further, with respect to instant claims 5-6, the Examiner takes the position that the claimed properties as recited in instant claims 5-6 would be inherent to the copolyimide films disclosed by Connell which are formed from the same monomer units in the same contents and by the same method as in the instant invention, and hence absent any evidence to the contrary, the Examiner takes the position that Connell anticipates instant claims 5-6.
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.
Alternatively, claims 1-2 and 4-11 as well as claim 3 are rejected under 35 U.S.C. 103 as being unpatentable over Connell as applied above and further discussed below.
The teachings of Connell are discussed in detail above and although the Examiner is of the position that the reference is anticipatory for the reasons discussed in detail above, the Examiner alternatively takes the position that it would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to select from any of the suitable dianhydrides and diamines disclosed by Connell in a content as taught by Connell, particularly as in the examples, to produce a copolyimide film for a particular end use, including for spacecraft and/or satellites as taught by Connell in Paragraphs 0041 and 0053. Hence, the claimed invention as recited in instant claims 1-2 and 4-11 (alternatively) would have been obvious over the teachings of Connell given that it is prima facie obviousness to choose from a finite number of identified, predictable solutions, with a reasonable expectation of success, and given it would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to reasonable expect the copolyimide film taught by Connell to exhibit properties as recited in instant claims 5-6.
Further, with respect to instant claim 3, Connell also teaches that in various embodiments, the diamine terminated fluorine containing alkyl ether oligomer and the diamino organo siloxane oligomer may be reacted in the presence of one or more diamines of the formula recited in Paragraphs 0038-0039, with examples of suitable diamines recited in Paragraph 0049 including 2,2-bis[4-(3-aminophenoxy)phenyl]propane and 2,2-bis[4-(4-aminophenoxy)phenyl] propane (as in instant claim 3) as well as 1,3-bis (3-aminophenoxy) benzene (1,3-APB) as utilized in the working examples such that it would have been obvious to one having ordinary skill in the art to utilize any of the diamines taught by Connell as an optional diamine component with or in place of the APB in the examples. Hence, the claimed invention as recited in instant claim 3 would have been obvious over the teachings of Connell given that it is prima facie obviousness to simply substitute one known element for another to obtain predictable results and/or prima facie obviousness to choose from a finite number of identified, predictable solutions, with a reasonable expectation of success.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to MONIQUE R JACKSON whose telephone number is (571)272-1508. The examiner can normally be reached Mondays-Thursdays from 10:00AM-5:00PM.
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/MONIQUE R JACKSON/Primary Examiner, Art Unit 1787