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 .
The amendment filed 5/11/2026 has been entered. New claim 12 has been added. Claims 1-12 are pending in the application. The text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action.
Claim Objections
Claim 1 is objected to because of the following informalities: on line 8, “silicon containing” should have a hyphen between “silicon” and “containing” to be consistent with the other two occurrences of “silicon-containing” at lines 5 and 10 of claim 1; and at the end of line 11, “90 mol%; and; and” should probably just read “90 mol%; and” removing the extra “and;” or similar wording. Appropriate correction is required.
Claim Rejections - 35 USC § 112
Claims 4-11 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 4 has been amended to recite, “A polyimide film for a spacecraft, the polyimide film comprising the polyimide for a spacecraft described in claim 1 in an amount of 90% of the total weight of the polyimide film or more” (emphasis added), however, given the placement of the “or more” after “the total weight of the polyimide film” (e.g., versus “90% or more of the total weight of the polyimide film” which would be similar to the “0.5% or less of the total weight of the polyimide film” limitation of amended claim 6), it is unclear whether the “or more” refers to the amount of the polyimide in the polyimide film or to some arbitrary additional component with respect to the total weight basis (especially given the difference in placement of the added “of the total weight of the polyimide film” limitation in claim 4 versus claim 6) . 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 5-11 do not remedy the above and hence are indefinite for the same reasons.
Claim Rejections - 35 USC § 102
Claims 1-2 and 4-10 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Tokuhisa (US2003/0012882A1) for generally the reasons recited in the prior office action and restated below with respect to the amended claims, wherein it is further noted that Tokuhisa specifically discloses a working example, Synthesis example 4, wherein the polyimide is produced by reacting 0.0757 mol of 3,3',4,4'-oxydiphthalic acid dianhydride (ODPA) (aka 3,3’,4,4’ diphenyl ether tetracarboxylic dianhydride, i.e., providing an aromatic acid dianhydride-derived structural unit as in instant claims 1-2) with 0.0423 mol of PSX (n=1) having a molecular weight of 248.52 g/mol as a siloxane diamine (B2) (reading upon the claimed silicon-containing diamine represented by the claimed formula (1) as recited in instant claim 1); 0.0054 mol of PSX (vi) as a crosslinkable diamine (B1) that is not excluded by instant claims 1-2 and 4-10; and 0.0281 mol of 2,2-bis[4-(4-aminophenoxy)phenyl]propane (BAPP) as another diamine compound (B3) (as in instant claim 1), such that the PSX (n=1) as the claimed silicon-containing diamine of formula (1) with a number average molecular weight of 500 or less as in instant claim 1 constitutes 55.8 mol% relative to the entire diamine component or diamine-derived structural units falling within the amended mol% range of 50 to 90 mol% as recited in amended claim 1, and hence, given again that the claimed “for a spacecraft” constitutes intended end use of the claimed polyimide, the Examiner maintains her position that the claimed invention is anticipated by Tokuhisa for the detailed reasons discussed below with respect to the amended claims.
As discussed in the prior office action, 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) in a mol% within the claimed range of 50 to 90 mol% (Examples). Tokuhisa discloses that the dianhydride is preferably selected from 4,4'-oxydiphthalic acid (ODPA) (as utilized in the above referenced example, aka 3,3’,4,4’ diphenyl ether tetracarboxylic dianhydride as in instant claim 2), 3,3',4,4'-biphenyltetracarboxylic acid dianhydride (BPDA, as in instant claim 2), bis(3,4-dicarboxyphenyl)sulfone dianhydride (aka 3,3',4,4'-diphenyl sulfone tetracarboxylic dianhydride, DSDA, as in instant claim 2), 3,3',4,4'-benzophenone tetracarboxylic acid dianhydride, and pyromellitic acid dianhydride (PMDA, aka 1,2,4,5-benzenetetracarboxylic dianhydride 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 amended claim 1 (Paragraphs 0071-0084, Examples); and hence, the Examiner maintains her position that Tokuhisa discloses the claimed invention with sufficient specificity to anticipate instant claims 1-2, 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 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 instant 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 maintains her position that the claimed invention as recited in instant claims 4-10 is anticipated by Tokuhisa absent any evidence to the contrary.
Claims 1-2 and 12 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Yonezawa (US2016/0198570A1). Yonezawa discloses an adhesive composition having good heat resistance that is particularly suitable for a printed wiring board and comprises a siloxane-modified polyimide, an epoxy resin, and an inorganic filler, wherein the siloxane-modified polyimide includes structural units represented by formulae (1) and (2) (copied below; Abstract), and is produced by reacting an aromatic tetracarboxylic acid anhydride(s) as an acid anhydride component with a diamine component, wherein the diamine component comprises a diaminosiloxane corresponding to residue R1 and an aromatic diamine(s) corresponding to residue R2 (Entire document, particularly Abstract, and Paragraphs 0079-0088, and Examples).
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(1)
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Yonezawa discloses that in formulae (1) and (2), Ar represents a tetravalent aromatic tetracarboxylic acid residue, R1 in formula (1) represents a divalent diamine siloxane residue, R2 in formula (2) represents a divalent aromatic diamine residue, and m represents a molar ratio of the first structural siloxane-containing unit to the total structural units and is 0.35 or more and 0.75 or less, while n represents a molar ratio of the second structural unit to the total structural units and is 0.25 or more and 0.65 or less, and the total of m and n does not exceed 1 (Abstract, Paragraphs 0006-0011 and 0026-0031). Yonezawa discloses that the divalent diamine siloxane residue represented by R1 is a group having a siloxane bond (-Si-O-Si-), such as a divalent group represented by formula (5) in Paragraph 0073, and preferably a residue of a diaminosiloxane represented by formula (9) (copied below), wherein a is an integer from 1 to 20, and when a (as the claimed m) is 1 or 2, reading upon the claimed formula (1) of instant claim 1 (i.e., with the claimed R1 and R2 being a divalent aliphatic hydrocarbon group having 3 carbons, and the claimed R3, R4, R5, and R6 each being a monovalent aliphatic hydrocarbon group having 1 carbon), which would provide a molecular weight within the claimed Mn range of 500 or less.
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(9)
Yonezawa discloses that examples of the divalent aromatic diamine residue represented by R2 include divalent groups represented by formulae (6) to (8) as recited in Paragraph 0075, with specific examples of the aromatic diamine providing said diamine residue including: “2,2-bis(4-aminophenoxy phenyl)propane (BAPP), 2,2′-divinyl-4,4′-diaminobiphenyl (VAB), 2,2′-dimethyl-4,4′-diaminobiphenyl (m-TB), 2,2′-diethyl-4,4′-diaminobiphenyl, 2,2′,6,6′-tetramethyl-4,4′-diaminobiphenyl, 2,2′-diphenyl-4,4′-diaminobiphenyl, and 9,9-bis(4-aminophenyl)fluorene” (Paragraphs 0075 and 0088); used alone or in combination of two or more thereof (Paragraph 0088), with working examples specifically utilizing BAPP in a molar ratio ranging from 0.1 to 0.6 in combination with 0.9 to 0.4, respectively, of a siloxane diamine (PSA) represented by formula (9) as the diamine component, with all but one example utilizing a molar ratio of PSA of 0.5 to 0.9 (i.e., 50 to 90 mol% as in instant claim 1) such that BAPP and PSA are the only diamine components utilized to produce the siloxane-modified polyimides of the working examples (i.e., wherein the polyimide consists of, as the diamine-derived structural units, the structural units derived from the silicon-containing diamine and the aromatic diamine as in new claim 12), and are reacted with 3,3′,4,4′-biphenyltetracarboxylic dianhydride (BPDA) (as in instant claim 2) as the aromatic tetracarboxylic acid anhydride component in all of the examples except Synthesis Example 5 (A5) which utilizes 4,4′-oxydiphthalic anhydride as the aromatic tetracarboxylic acid anhydride (still reading upon the aromatic acid dianhydride-derived structural unit of instant claim 1; Examples, Table I), and although the working examples utilize a PSA represented by formula (9) copied above with an amine equivalent of 420 g/eq (e.g., a=9), given that Yonezawa clearly discloses that the a in formula (9) may be 1 or 2 as in the claimed invention with respect to the claimed m, and that the claimed “for a spacecraft” constitutes intended end use of the claimed polyimide, wherein the polyimide as well as the polyimide adhesive composition and/or printed wiring board produced therefrom as disclosed by Yonezawa are capable of use “for a spacecraft” as in the claimed invention, the Examiner takes the position that Yonezawa discloses the claimed invention with sufficient specificity to anticipate instant claims 1-2 and 12.
Claim Rejections - 35 USC § 103
Alternatively, claims 1-2 and 12, as well as claim 3, are rejected under 35 U.S.C. 103 as being unpatentable over Yonezawa as applied above to claims 1-2 and 12, and further discussed below.
The teachings of Yonezawa are discussed in detail above and incorporated herein by reference, and although the Examiner is of the position that the reference is anticipatory with respect to the instantly claimed invention as recited in instant claims 1-2 and 12 for the reasons discussed in detail above, especially in light of the working examples, the Examiner alternatively takes the position that the claimed invention as recited in instant claims 1-2 and 12 would have been obvious over the teachings of Yonezawa given again that Yonezawa clearly teaches that the a in the siloxane diamine formula (9), reading upon the instantly claimed formula (1), may similarly be an integer of 1 or 2 as in the claimed invention, such that absent any clear showing of criticality and/or unexpected results over the teachings of Yonezawa, the claimed invention as recited in instant claims 1-2 and 12 would have been obvious over the teachings of Yonezawa, particularly in light of the working examples, given that it is prima facie obviousness to choose from a finite number of identified, predictable solutions, with a reasonable expectation of success, and/or prima facie obviousness to simply substitute one known element for another to obtain predictable results.
With respect to instant claim 3, as noted above, Yonezawa clearly teaches that examples of the aromatic diamine for providing the aromatic diamine residue R2 in formula (2) include 2,2-bis(4-aminophenoxy phenyl)propane (BAPP) (as recited in instant claim 3), 2,2′-divinyl-4,4′-diaminobiphenyl (VAB), 2,2′-dimethyl-4,4′-diaminobiphenyl (m-TB), 2,2′-diethyl-4,4′-diaminobiphenyl, 2,2′,6,6′-tetramethyl-4,4′-diaminobiphenyl, 2,2′-diphenyl-4,4′-diaminobiphenyl, and 9,9-bis(4-aminophenyl)fluorene (i.e., BAFL, as also recited in instant claim 3); used alone (e.g., as in the working examples utilizing BAPP alone) or in combination of two or more compounds thereof (Paragraph 0088), such that it would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to utilize a combination of any two of the above aromatic diamines such as the above recited BAPP and BAFL, as in instant claim 3, as the aromatic diamine in combination with the siloxane diamine of the above formula (9) to be reacted with the aromatic acid dianhydride to produce the siloxane-modified polyimide as taught by Yonezawa given that it is prima facie obviousness to choose from a finite number of identified, predictable solutions, with a reasonable expectation of success, and/or prima facie obviousness to simply substitute one known element for another to obtain predictable results, thereby rending the claimed invention as recited in instant claim 3 obvious over the teachings of Yonezawa.
Response to Arguments
Applicant's arguments filed 5/11/2026 have been fully considered but they are not persuasive and/or moot in view of the new grounds of rejection and additional remarks above with respect to the anticipation rejection over Tokuhisa as applied to the amended claims. More specifically, the Applicant argues that “Tokuhisa [allegedly] does not anticipate amended independent claim 1 because Tokuhisa discloses a different type of polyimide polymer” and “discloses a polyimide used as an adhesive resin for electronic parts, while amended independent claim 1 recites a polyimide for spacecraft,” arguing that the “different use follows from a different resin formulation and is not relied upon as a mere intended use distinction” (see the paragraph bridging pages 13-14 of the response). The Applicant argues that “Tokuhisa's adhesive resin requires a crosslinkable diamine B1 and a siloxane diamine B2, with the B1 diamine including a phenolic hydroxyl group, a carboxyl group, or a vinyl group” and that “[a]mended independent claim 1 instead requires an aromatic diamine selected from BAPP and BAFL in combination with a silicon containing diamine in a proportion of 50 to 90 mol% relative to the entire diamine derived structural units” (see the paragraph bridging pages 13-14 of the response). The Applicant then argues that “Tokuhisa mentions BAPP [allegedly] only in a separate listing of optional other diamines B3,” wherein the “B3 diamines are separate from Tokuhisa’s required B1 crosslinkable diamine and required B2 siloxane diamine,” arguing that “BAPP is therefore disclosed [allegedly] only as an optional additional diamine for an adhesive resin composition already defined by B1 and B2” and that “Tokuhisa [allegedly] does not use BAPP as the claimed aromatic diamine in combination with the 50 to 90 mol% silicone containing diamine” and “also does not disclose BAFL as an alternative claimed aromatic diamine” (see first full paragraph on page 14). The Applicant alleges that the “Examiner’s anticipation rejection relies on an [alleged] unsupported reconstruction of Tokuhisa” and that the “rejection [allegedly] selects BAPP from an optional B3 list and treats BAPP as supplying the claimed aromatic diamine, while Tokuhisa continues to require the B1 crosslinkable diamine” (see second full paragraph on page 14). The Applicant further argues that “Tokuhisa does not disclose a resin in which BAPP replaces the required B1 crosslinkable diamine, nor does Tokuhisa disclose a resin in which the diamine derived structural units are limited to the silicon containing diamine and BAPP or BAFL” and that “[b]ecause the aromatic diamine arrangement is different, the claimed polyimide coating is [allegedly] different from the adhesive polyimide resin of Tokuhisa” (see second full paragraph on page 14). However, the Examiner respectfully disagrees and first notes that the claimed invention is drafted in open transitional language (i.e., “comprising” and “comprises”) and contrary to Applicant’s arguments, the claims, except for new claim 12, do not limit the diamine-derived structural units to only those derived from the silicon containing diamine and BAPP or BAFL as argued by the Applicant, nor do the claims (other than new claim 12) exclude the crosslinkable diamine B1 that is required by Tokuhisa. It is also noted that contrary to Applicant’s arguments, Tokuhisa does not merely mention BAPP only in a separate listing of optional other diamines B3 and instead actually utilizes BAPP in the working examples as discussed in detail above, and given that Tokuhisa specifically discloses that the polyimide of Synthesis example 4 is produced by reacting 0.0757 mol of 3,3',4,4'-oxydiphthalic acid dianhydride (ODPA) (aka 3,3’,4,4’ diphenyl ether tetracarboxylic dianhydride as in instant claim 2) with 0.0423 mol of PSX (n=1) having a molecular weight of 248.52 g/mol as a siloxane diamine (B2) (i.e., a silicon-containing diamine represented by the claimed formula (1) with a number average molecular weight of 500 or less as recited in instant claim 1); 0.0054 mol of PSX (vi) as a crosslinkable diamine (B1) that is not excluded by instant claims 1-2 and 4-10; and 0.0281 mol of 2,2-bis[4-(4-aminophenoxy)phenyl]propane (BAPP) as a diamine compound (B3) (as in instant claim 1), such that the PSX (n=1) as the claimed silicon-containing diamine of formula (1) with a number average molecular weight of 500 or less as in instant claim 1 constitutes 55.8 mol% relative to the entire diamine component or diamine-derived structural units, falling within the amended mol% range of 50 to 90 mol% as recited in amended claim 1, the Examiner’s anticipation rejection is not based on an unsupported reconstruction of Tokuhisa as alleged by the Applicant. Further, given that the polyimide adhesive composition and resulting polyimide film formed therefrom as disclosed by Tokuhisa are capable of use “for a spacecraft” and that the remaining intended end use limitations of instant claims 4-10 do not provide any additional material or structural limitations to differentiate the claimed invention from the invention disclosed by Tokuhisa, Applicant’s arguments over Tokuhisa as applied to amended claims 1-2 and 4-10 are not persuasive.
Any objection or rejection from the prior office action not restated above has been withdrawn by the Examiner in light of Applicant’s claim amendments and arguments filed 5/11/2026.
Allowable Subject Matter
Claim 11 would be allowable if rewritten to overcome the rejection(s) under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), 2nd paragraph, set forth in this Office action and to include all of the limitations of the base claim and any intervening claims.
Conclusion
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 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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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Callie Shosho can be reached at 571-272-1123. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/MONIQUE R JACKSON/Primary Examiner, Art Unit 1787
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