Detailed Office Action
Notice of Pre-AIA or AIA Status
1. The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
Claim Rejections - 35 USC § 112
2. 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.
3. Claims 1-20 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.
Firstly, with respect to claim 1, the language, “the aromatic dianhydride”, ;lacks antecedent basis.
Secondly, with respect to claim 2, within the definition of Z, it cannot be determined how to distinguish the claimed heteroatoms from the claimed halogen atoms, since halogen atoms are heteroatoms.
Thirdly, with respect to claim 4, the claimed R2 variable is not within claim 1.
Fourthly, with respect to claim 4, within the definition of Q1, is it unclear how to interpret -CyH2- for values of y other than 1.
Fifthly, with respect to claim 5, variable Z is not within claim 1.
Sixthly, with respect to claim 6, the language, “the self-crosslinkable polyetherimide”, lacks antecedent basis.
Seventhly, with respect to claim 11, it is unclear what constitutes a chemical equivalent of formula (5). It cannot be determined exactly what criteria must be satisfied in order for chemical equivalency to exist.
Eighthly, with respect to claim 11, variable Z has not been defined; accordingly, the metes and bounds of the claim cannot be ascertained.
Ninthly, the claim number of the claim (formerly claim 15) following claim 14 has been improperly deleted (Note the strike-through of the claim number).
Tenthly, with respect to claim 16, it depends from claim 15; however, as amended, there is no claim 15 (See “Ninthly, …” above).
Eleventhly, with respect to claim 19, the language, “the branched polyetherimide”, lacks antecedence from claim 11.
Prior Art Rejection
4. 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.
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.
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.
5. Claims 1, 6, 8, 9, and 1`5-18 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by JP 2009155640 A.
JP 2009155640 A discloses within Example 2 the production of a polyetherimide adhesive, which maty be used to bond a metal or polyimide film by heating (see page 7, fourth through sixth paragraphs of the translation), wherein the polyetherimide is a phthalic anhydride end-capped product of a biphenyltetracarboxylic dianhydride, 3,5-diaminobenzoic acid, and 1,3-bis(3-aminophenoxybenzene, yielding the ether groups within the polyetherimide. The heating of the polyetherimide yields branching.
6. Claims 1-6, 8, 9, and 11-20 are rejected under 35 U.S.C. 103 as being unpatentable over JP 2003084434 A.
JP 2003084434 A discloses the production of polyimides that may be used to produce articles by applying the polyimide composition and subjecting it to heating (see abstract within translation), wherein in Example 1, a phthalic anhydride end-capped polyimide is produced by reacting 5,7-diamino-1,1,4,4-tetramethylindane; 3,5-diaminobenzoic acid; and 2,2-bis(3,4-dicarboxyphenyl)-1,1,1,3,3,3-hexafluoropropane dianhydride. Though this composition lacks the claimed ether segments to yield a polyetherimide, the reference discloses the use of ether containing aromatic dianhydrides to produce the polyimide, as evidenced by formula (I) and definitions of Z and W within columns 1 and 2 of page 2 of the reference, wherein ether containing dianhydrides are disclosed. Accordingly, since aromatic ether containing dianhydrides have been disclosed as being equivalents to the dianhydride used within Example 1, the position is taken that it would have been obvious to use the aromatic ether containing dianhydrides in place of the exemplified 2,2-bis(3,4-dicarboxyphenyl)-1,1,1,3,3,3-hexafluoropropane dianhydride, so as to arrive at the instant invention.
Conclusion
7. Any inquiry concerning this communication or earlier communications from the examiner should be directed to Rabon A Sergent whose telephone number is (571)272-1079. The examiner can normally be reached on Monday through Friday from 9:00 AM until 5:00 PM, ET.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Heidi Riviere Kelley, can be reached at telephone number 571-270-1831. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/RABON A SERGENT/ Primary Examiner, Art Unit 1765
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