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
Applicant’s election without traverse of Group I, claims 1-9 in the reply filed on July 27, 2026 is acknowledged.
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.
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 is rejected on the basis that it contains improper Markush groupings of alternatives. See In re Harnisch, 631 F.2d 716, 721-22 (CCPA 1980) and Ex parte Hozumi, 3 USPQ2d 1059, 1060 (Bd. Pat. App. & Int. 1984). A Markush grouping is proper if the alternatives defined by the Markush group (i.e., alternatives from which a selection is to be made in the context of a combination or process, or alternative chemical compounds as a whole) share a “single structural similarity” and a common use. A Markush grouping meets these requirements in two situations. First, a Markush grouping is proper if the alternatives are all members of the same recognized physical or chemical class or the same art-recognized class, and are disclosed in the specification or known in the art to be functionally equivalent and have a common use. Second, where a Markush grouping describes alternative chemical compounds, whether by words or chemical formulas, and the alternatives do not belong to a recognized class as set forth above, the members of the Markush grouping may be considered to share a “single structural similarity” and common use where the alternatives share both a substantial structural feature and a common use that flows from the substantial structural feature. See MPEP § 2117.
The Markush grouping of “the aprotic solvent” is improper because the alternatives defined by the Markush grouping do not share both a single structural similarity and a common use for the following reasons: cresol is protic rather than aprotic. The Markush grouping of “the protic solvent” is improper because the alternatives defined by the Markush grouping do not share both a single structural similarity and a common use for the following reasons: all of the listed solvents are aprotic rather than protic.
To overcome this rejection, Applicant may set forth each alternative (or grouping of patentably indistinct alternatives) within an improper Markush grouping in a series of independent or dependent claims and/or present convincing arguments that the group members recited in the alternative within a single claim in fact share a single structural similarity as well as a common use.
Claim 4 further contains the trademark/trade name “KJCMPA” in the last line. Where a trademark or trade name is used in a claim as a limitation to identify or describe a particular material or product, the claim does not comply with the requirements of 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph. See Ex parte Simpson, 218 USPQ 1020 (Bd. App. 1982). The claim scope is uncertain since the trademark or trade name cannot be used properly to identify any particular material or product. A trademark or trade name is used to identify a source of goods, and not the goods themselves. Thus, a trademark or trade name does not identify or describe the goods associated with the trademark or trade name. In the present case, the trademark/trade name is used to identify/describe 3-methoxy-N,N-dimethylpropanamide and, accordingly, the identification/description is indefinite. This issue can be corrected by deleting “(KJCMPA)” from the claim.
The following is a quotation of 35 U.S.C. 112(d):
(d) REFERENCE IN DEPENDENT FORMS.—Subject to subsection (e), a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
Claim 4 is rejected under 35 U.S.C. 112(d) or pre-AIA 35 U.S.C. 112, 4th paragraph, as being of improper dependent form for failing to further limit the subject matter of the claim upon which it depends, or for failing to include all the limitations of the claim upon which it depends.
Claim 4 contains lists of aprotic solvents and protic solvents. Claim 4 depends from claim 3. Claim 3 requires a mixed solvent of an aprotic solvent and a protic solvent. Claim 4 does not require all of the limitations of claim 3 because the not all of the solvents listed as “aprotic” solvents are aprotic (e.g. cresol is protic). In addition, all of the solvents listed as “protic” solvents are aprotic rather than protic because all of the hydrogen atoms in these solvents are bonded to carbon atoms.
Applicant may cancel the claim(s), amend the claim(s) to place the claim(s) in proper dependent form, rewrite the claim(s) in independent form, or present a sufficient showing that the dependent claim(s) complies with the statutory requirements.
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 1-4 and 6-9 are rejected under 35 U.S.C. 103 as being unpatentable over Mizobe (US 4,759,987).
Regarding claims 1-2 and 7-9, Mizobe teaches a method of preparing a polyimide powder (Abstract). The method comprises reacting an acid dianhydride with an amino compound in an organic solvent to synthesize a polyimide precursor (col. 2, lines 54-59). A filler is dispersed in an organic solvent and added to the production system at an appropriate stage (col. 2, lines 59-61). Appropriate stages to add the filler include before the synthesis of the polyimide precursor (col. 2, lines 61-63). The fillers taught by Mizobe include glass fibers (col. 4, lines 51-54).
Example 1 of Mizobe exemplifies preparing a specific polyimide composite powder comprising graphite (col. 6, lines 35-60). Mizobe first prepares a dispersion of 294 g 3,3’,4,4’-biphenyltetracarboxylic dianhydride (s-BPDA), 200 g 4,4’-diaminodiphenyl ether (ODA), and 80.8 g of graphite in N-methyl-2-pyrrolidone (NMP). The reaction mixture is heated at 170-175 °C to cyclize the polyamide acid followed by precipitation of polyimide particles to form a slurry. Then the temperature is elevated to 190 °C. After the polymerization is complete, the reaction mixture is filtered and dried to obtain a polyimide composite powder.
Mizobe lacks sufficient specificity for anticipation. In addition, Example 1 differs from instant claim 1 in that the filler is graphite rather than glass fibers.
However, it would have been obvious to one of ordinary skill in the art prior to the effective filing date to have prepared the composite powder as in Mizobe’s Example 1 using glass fibers rather than graphite because the fillers taught by Mizobe include glass fibers (col. 4, lines 51-54). Mizobe therefore teaches a method of preparing a polyimide powder, comprising: preparing a polyamic acid solution by solution polymerizing a dianhydride monomer (s-BPDA reading on claim 8) and a diamine monomer (ODA reading on claim 9) in an organic solvent (NMP) including glass fibers; heating the polyamic acid solution to prepare a polyimide mixed solution (slurry); and filtering and drying a precipitate present in the mixed solution to obtain a polyimide powder. The glass fiber is included in an amount of 16 parts by weight based on 100 parts by weight of the total amount of the dianhydride monomer and diamine monomer (80.8/(294+200)=0.16) (claim 2). The reaction temperatures of 170-175 °C and 190 °C correspond to preparing the polyimide mixed solution at 170-190 °C (claim 7).
Regarding claims 3-4, Mizobe teaches the method of claim 1. Mizobe exemplifies NMP as the organic solvent in Example 1. NMP is an aprotic solvent. Mizobe is also lists NMP in the broader disclosure as an organic solvent for polymerization (col. 3, lines 60-65). Mizobe further teaches that the organic solvents may be used in combination with commonly employed solvents such as hexane, benzene, toluene, xylene, and alcohols (col. 3, lines 65-68).
Mizobe does not anticipate a solvent mixture that is the combination of a protic solvent and an aprotic solvent.
However, it would have been obvious to one of ordinary skill in the art prior to the effective filing date to have used any of hexane, benzene, toluene, xylene, and alcohols in combination with NMP because Mizobe teaches that these solvents can be used in combination with the organic solvent for polymerization. In particular, it would have been obvious to one of ordinary skill to have selected an alcohol because Mizobe teaches it. A solvent that is a combination of NMP and an alcohol reads on a mixed solvent that is an aprotic solvent (NMP) and a protic solvent (alcohol) (claim 3). Alternatively, it would have been obvious to select toluene or xylene because Mizobe teaches it. A combination of NMP and either of toluene or xylene reads on the specific solvents listed in claim 4. It is noted that all three of NMP, toluene, and xylene are aprotic, but claim 4 includes NMP in the list of protic solvents.
Regarding claim 6, Mizobe teaches the method of claim 1. In example 1, Mizobe teaches heating the system to completely dissolve the monomers (col. 6, lines 43-44). Mizobe’s broader disclosure teaches that the temperature of the dissolving is 150 °C or lower (col. 5, 35-40). In example 2, stirring at 30 °C leads to the formation of polyamide acid (col. 6, lines 61-66). In example 3, the composition is stirred at 80 °C to dissolve the monomers (col. 7, lines 29-32).
Mizobe does not explicitly prepare a polyamic acid solution at 50-100 °C.
However, it would have been obvious to one of ordinary skill in the art prior to the effective filing date to have heated the mixture at 80 °C before elevating the temperature to 170-175 °C because Mizobe exemplifies heating a reaction mixture at 80 °C to ensure that the monomers are dissolved. Heating at 80 °C would necessarily lead to the formation of polyamic acid, as evidenced by Mizobe’s example 2 where polyamic acid is formed at a temperature of 30 °C, but polyimide particles have not yet precipitated. A temperature of 80 °C falls within the claimed range of 50 to 100 °C.
Claims 3-5 are rejected under 35 U.S.C. 103 as being unpatentable over Mizobe (US 4,759,987) as applied to claim 1 above, and further in view of Kuroki (US 2003/0158370 A1).
Mizobe teaches the method of claim 1.
Mizobe does not anticipate a use of an aprotic solvent and a protic solvent.
However, Kuroki teaches mixtures of NMP and cresol. Like Mizobe, Kuroki teaches a processing of preparing a polyimide powder (Kuroki, [0039]) comprising reacting a diamine and a tetracarboxylic acid and precipitating a polyimide during the imidization reaction to form a slurry (Kuroki, [0001]). Kuroki teaches that using a specific composition as a reaction solvent can provide biphenyltetracarboxylic acid type polyimides by means of simple, easy, cost-effective steps (Kuroki, [0020]). The dianhydrides taught by Kuroki include s-BPDA (Kuroki, [0124]) and the diamines taught by Kuroki include ODA (Kuroki, [0113]), as used in Mizobe’s example 1. Kuroki teaches a solvent composition that is a mixture of two solvents (Kuroki, [0021]). The first solvent preferably NMP or 1,3-dimethyl-2-imidazolidinone (Kuroki, [0065]). The second solvent is preferably m-cresol, p-cresol, or p-chlorophenol (Kuroki, [0072]). Kuroki exemplifies a 47.8 wt%/ 52.2 wt% (1:1 by molar ratio) of NMP and m-cresol (Kuroki, [0201]). Kuroki teaches that the reaction solution does not become viscous, but keeps a slurry state when cooled to room temperature (Kuroki, [0174]). In addition, Kuroki teaches that the solvent mixture improves the productivity of industrial processes because concentration of polyimide can be higher than in conventional processes (Kuroki, [0178]).
Given the disclosure of Kuroki, one of ordinary skill would have recognized that NMP could be substituted for a mixture of 47.8 wt%/ 52.2 wt% mixture of NMP and m-cresol. Therefore, it would have been obvious to one of ordinary skill in the art prior to the effective filing date to have substituted the NMP of Mizobe for a 47.8 wt%/ 52.2 wt% NMP/m-cresol solvent mixture, as taught by Kuroki. One would have been motivated to make this substitution in order to enable a higher polyimide concentration and room temperature slurry. One would have had a reasonable expectation of success because the organic solvents taught by Mizobe include both NMP and cresol (Mizobe, col. 3, lines 60-65). Modified Mizobe’s solvent mixture is an organic solvent that is a mixture of 47.8 wt% NMP (aprotic) and 52.2 wt% m-cresol (protic, reads on cresol).
Claim 6 is rejected under 35 U.S.C. 103 as being unpatentable over Mizobe (US 4,759,987) as applied to claim 1 above, and further in view of Nakayama (US 2017/0137571 A1).
Mizobe teaches the method of claim 1. In example 1, Mizobe teaches heating the system to completely dissolve the monomers (col. 6, lines 43-44). Mizobe’s broader disclosure teaches that the dissolving temperature is 150 °C or lower (col. 5, 35-40).
Mizobe does not explicitly prepare a polyamic acid solution at 50-100 °C.
However, prior to the effective filing date of the claimed invention, a temperature range of 50-80 °C was known to be suitable for preparing a polyamic acid. Nakayama teaches that it is preferable to prepare polyamic acid at a temperature of 80 °C or lower in order to suppress the imidization reaction (Nakayama, [0039]). Nakayama’s preferable temperature range is 50-80 °C. It would have been obvious to one of ordinary skill in the art prior to the effective filing date to have used a temperature of 50-80 °C as taught by Nakayama when dissolving the monomers of Mizobe in order to suppress imidization. One would have had a reasonable expectation of success because 50-80 °C is within Nakayama’s range of 150 °C or lower. Heating at 50-80 °C would necessarily lead to the formation of polyamic acid, as evidenced by Mizobe’s example 2 where polyamide acid is formed at a temperature of 30 °C (col. 6, lines 61-66).
Conclusion
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/AUDRA J DESTEFANO/Examiner, Art Unit 1766
/RANDY P GULAKOWSKI/Supervisory Patent Examiner, Art Unit 1766
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