DETAILED ACTION
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
Acknowledgment is made of applicant's claim for foreign priority under 35 U.S.C. §119(a)-(d) by Application No. KR 10-2023-0085001 filed 6/30/2023, which papers have been placed of record in the file.
Claims 1-20 are pending.
Claim Rejections - 35 USC § 103
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 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 1-19 are rejected under 35 U.S.C. 103 as being unpatentable over
Fang et al. (CN 111253601, cited in IDS filed 5/15/2025) in view of Yamashita et al. (US 2021/0040370).
Regarding claim 1: Fang is directed to a polyimide varnish comprising:
A polyamic acid solution containing diamine monomer and dianhydride monomer as polymerized units,
a first additive containing boron nitride;
a second additive containing nanosilica and
A dispersant is not mentioned.
Yamashita is directed to a polyimide composition ([0220] Yamashita), a filler of boron nitride or silica (Table 1), wherein the composition comprises a dispersant. One skilled in the art would have been motivated to have included a dispersant in the composition of Fang to improve the dispersibility of the filler in the composition ([0183] Yamashita). Therefore, it would have been obvious to one skilled in the art at the time the invention was filed to have included a dispersant in the composition of Fang.
Regarding claim 2: The total filler content, including the boron nitride and nanosilica is 15-20 wt%, wherein the weight ratio of boron nitride to nanosilica is 8-9:1. Hence, an amount of boron nitride of 1-40 wt% of the solid content of the polyimide varnish is well within the scope of Fang.
Regarding claim 3: The total filler content, including the boron nitride and nanosilica is 15-20 wt%, wherein the weight ratio of boron nitride to nanosilica is 8-9:1. Hence, an amount of nanosilica of 0.01-60 wt% of the solid content of the polyimide varnish is well within the scope of Fang.
Regarding claim 4: The particle size of the boron nitride is 20-25 nm and the particle size of the nanosilica is 10-15 nm.
Regarding claims 5-6: A polyurethane based dispersant is disclosed ([0215] Yamashita).
Regarding claim 7: The amount of dispersant is 0.1-30% by weight relative to the filler content ([0218] Yamashita).
Regarding claim 8: Preferably, the aromatic dianhydride is 3,3',4,4'-biphenyltetracarboxylic dianhydride.
Regarding claim 9: Preferably, the aromatic diamine is at least one of 4,4'-diaminodiphenyl ether, p-phenylenediamine, and 3,4'-diaminodiphenyl ether.
Regarding claims 10-11: Solvents of N,N-dimethylacetamide or N-methylpyrrolidone are disclosed.
Regarding claim 12: A silane coupling agent of 3-aminopropyltriethoxysilane is utilized in the working examples.
Regarding claim 13: The solid content is 15-25 wt% (abstract Feng).
Regarding claims 14, 16-18: Properties of claims 14, 16-18 are not mentioned. However, the polyimide varnish produced in Fang and Yamashita is substantially identical to the polyimide varnish produced in the instant invention.
Case law holds that the claimed and prior art products are identical or substantially identical in structure or composition, or are produced by identical or substantially identical processes, a prima facie case of either anticipation or obviousness has been established. In re Best, 562 F.2d 1252, 1255, 195 USPQ 430, 433 (CCPA 1977). MPEP 2112.01(I).
Hence, Fang and Yamashita suggests a polyimide varnish having properties within the scope of the claims. Since PTO cannot conduct experiments the proof of burden is shifted to the applicants to establish an unobviousness difference, see In re Best, 562 F.2d 1252, 195 USPQ 430 (CCPA 1977). See MPEP § 2112.01.
Regarding claim 15: Example 1 has a thermal conductivity after curing of 0.76 Wm-1K-1 (Table).
Regarding claim 19: A cured product of the varnish is disclosed.
Claim 20 is rejected under 35 U.S.C. 103 as being unpatentable over Fang and Yamashita as applied to claim 19 above, and further in view of Kang et al. (US 2019/0031844).
Regarding claim 20: The combination of Fang and Yamashita doesn’t mention an electric wire comprising the polyimide.
Kang is directed to an insulating coating material comprising a polyimide resin that can comprise inorganic fillers including silica ([0113] Kang). Kang teaches that polyimide resins are used as insulating coating materials for electric wires due to high heat resistance and bending resistance and also abrasion resistance ([0148] Fang). Therefore, it would have been obvious to one skilled in the art at the time the invention was filed to have used the coatings of Fang and Yamashita to produce an electric wire comprising the polyimide coating of Fang and Yamashita.
Contact Information
Any inquiry concerning this communication or earlier communications from the examiner should be directed to ROBERT T BUTCHER whose telephone number is (571)270-3514. The examiner can normally be reached Telework M-F 9-5 Pacific Time Zone.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Lanee Reuther can be reached at (571) 270-7026. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/ROBERT T BUTCHER/Primary Examiner, Art Unit 1764
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