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 .
DETAILED ACTION
Claims 5, 8, 14-16, 20 Cancelled
Claim 21 new
Claims 1-4, 6-7, 9-13, 17-19, 21 pending
Continued Examination Under 37 CFR 1.114
A request for continued examination under 37 CFR 1.114, including the fee set forth in 37 CFR 1.17(e), was filed in this application after final rejection. Since this application is eligible for continued examination under 37 CFR 1.114, and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114. Applicant's submission filed on 07/20/2026 has been entered.
Claim Rejections - 35 USC § 103
he 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.
The factual inquiries for establishing a background for determining obviousness under 35 U.S.C. 103 are summarized as follows:
1. Determining the scope and contents of the prior art.
2. Ascertaining the differences between the prior art and the claims at issue.
3. Resolving the level of ordinary skill in the pertinent art.
4. Considering objective evidence present in the application indicating obviousness or nonobviousness.
Claim(s) 1-2, 4, 6-7, 10, 12, 17, 19, 21 are rejected under 35 U.S.C. 103 as being unpatentable over Jee (PG Pub 2016/0264819 A1), in view of Banucci (US Pat 4,073,773).
Consider Claims 1 and 21, Jee teaches the process of forming “polyimide based film” using extrusion coating process [0008], where the “polyimide based film” is polyimide precursor such as polyamic acid [0044]. Where per the instant specification, the thermosetting resin is polyimide [0031]. Therefore, the thermosetting resin precursor is polyimide precursor/polyamic acid. Jee teaches the process of forming polyamic acid include first raw material (BPDA) and second raw material (TFDB) with solvent (NMP) forming/reacting coating composition including polyamic acid (prepolymer) solution having solid content of 22% [0111]. In the case where the claimed ranges, “overlap or lie inside ranges disclosed by the prior art” a prima facie case of obviousness exists. In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976). (MPEP 2144.05).
Jee does not explicitly state the solid content percentage.
However, Jee teaches the adjusting of the viscoelasticity of the composition include the adjusting of the solid content [0019], [0091]. Moreover, the composition of example 2, has a viscosity of 9500 cps [0112] and a solid content of 12% [0111], and the composition of example 3, has a viscosity of 6000 cps [0112] and a solid content of 22% [0111], where Jee teaches the viscosity range is from 1000 cps to 20,000 cps [0018]. Therefore, it would be obvious for ordinary skilled person in the art to calculate or extrapolate the solid content percentage range as below, where R2 is 0.999:
[Chart]
Therefore, for viscosity values of 10000 cps, 2500 cps, and 1000 cps, the extrapolated solid content percentage are 10.6%, 32% and 36% respectively. In the case where the claimed ranges, “overlap or lie inside ranges disclosed by the prior art” a prima facie case of obviousness exists. In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976). (MPEP 2144.05).
Jee does not teach the mixing using twin screw extruder.
However, Banucci teaches the process of mixing BPADA with MDA using twin screw extruder (Col. 7, lines 7-13).
A person having ordinary skill in the art before the effective date of the claimed invention would combine Jee with Banucci to use twin screw extruder, to provide with a continuous process of mixing the reaction materials (Col. 7, lines 14-17) for forming thermosetting resin film.
Consider Claims 2-3, the combined Jee (with Banucci) teaches the process of adding/mixing desired amount of reaction control agent/viscoelasticity controlling agent is to control the viscosity of the prepolymer solution (Jee, [0017]-[0019]), where the viscosity measurement is based on the rheometer (Jee, [0020]).
Consider Claims 4, 10, 12-13, the combined Jee (with Banucci) teaches the process of stirring at temperature ranging from 0-100℃ (Jee, [0072]). In the case where the claimed ranges, “overlap or lie inside ranges disclosed by the prior art” a prima facie case of obviousness exists. In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976). (MPEP 2144.05).
Consider Claims 6-7, 17-19, the combined Jee (with Banucci) teaches the process of forming polyamic acid include first raw material 3,3′,4,4′-biphenyltetracarboxylic dianhydride (BPDA) and second raw material 2,2′-bis-trifluoromethyl-4,4′-biphenyldiamine (TFDB) forming polyamic acid (Jee, [0111], where the polyamic acid is polyimide precursor (Jee, [0044]). Where the reaction of forming (polymerization) polyimide (repeating imide group) using polyamic acid would inherently is capable to form an imide group by dehydration process.
Claim(s) 9 is rejected under 35 U.S.C. 103 as being unpatentable over Jee (PG Pub 2016/0264819 A1), in view of Banucci (US Pat 4,073,773), and in further view of Miyamoto (PG Pub 2010/0062188 A1).
Consider Claim 9, the combined Jee (with Banucci) teaches the viscosity measurement is based on the rheometer (Jee, [0020]).
Jee (with Banucci) does not teach the use of vibration viscometer
However, Miyamoto in the prior art of forming polyimide precursor solution [0073], teaches the measuring of the viscosity using vibration viscometer [0073].
A person having ordinary skill in the art before the effective date of the claimed invention would combine Jee (with Banucci) with Miyamoto measuring of the viscosity using vibration viscometer, with reasonable and predictable expectation of success.
Claim(s) 11 is rejected under 35 U.S.C. 103 as being unpatentable over Jee (PG Pub 2016/0264819 A1), in view of Banucci (US Pat 4,073,773), and in further view of Chalmer (US Pat 3,242,128).
Consider Claim 11, the combined Jee (with Banucci) teaches the process of extruding of prepolymer coating (Jee, abstract).
The combined Jee (with Banucci) does not explicitly teach the coating of conductive wire.
However, Chalmer is in the process of forming polyamic acid (Col. 1, lines 11-15), teaches the coating the wire and curing the coating forming polyimide insulating layer (Col. 13, lines 54-57).
A person having ordinary skill in the art before the effective date of the claimed invention would combine Jee (with Banucci) with Chalmer to coat the wire with polyimide layer, to provide with coating that exhibit advantageous electrical properties which makes these polymers particularly interesting as high temperature electrical insulation (Col. 2, lines 63-65).
Response to Arguments
Applicant's arguments filed 07/20/2026, with respect to the rejection(s) of claim(s) 1-4, 6-7, 9-13, 17-19, 21 under 103a have been fully considered and are persuasive. Therefore, the rejection has been withdrawn. However, upon further consideration, a new ground(s) of rejection is made in view of Jee with Banucci.
The previously applied 112 claims rejection, in light of the amended claim are now withdrawn.
The applicant argued against the prior art of Chu are moot in light of the new applied prior art of Jee, which was used previously.
The applicant argued against the prior art of Banucci, on the ground that the screw extruder have multiple zones and operate with different composition selected for different properties, as shown in Figure 1.
However, the referenced section of Banucci (example 1) in Col 7, discuses specifically the use of Werner-Pfleiderer twin-screw extrude, which is not the same as in figure 1 as argued by the applicant.
Additionally, majority of the applicant argument are not commensurate with the scope of the claimed invention, or a mere attempt to tie the broad claims to a very narrow and a specific unclaimed values in table 1, which are based on a specific polymer material, specific polymer MW, MN and MW/MN, for an exact amount of polymers, and an exact amount of solvent, processed under very specific rotation speed of the extruder.
All other applicant arguments not specifically addressed above are deemed unpersuasive as either not commensurate in scope with the broadly drafted claims or are unsupported by factual evidence and are deemed mere attorney speculation.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Mohammad Mayy whose telephone number is (571)272-9983. The examiner can normally be reached Monday to Friday, 11:00AM-7:00PM EST.
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/Mohammad Mayy/
Art Unit 1718
/GORDON BALDWIN/Supervisory Patent Examiner, Art Unit 1718
