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 1, 20 amended
Claims 5, 8, 14-16 canceled
Claims 1-4, 6-7, 9-12, 17-20 pending
Claim Rejections - 35 USC § 112
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.
The following is a quotation of pre-AIA 35 U.S.C. 112, fourth paragraph:
Subject to the following paragraph [i.e., the fifth paragraph of pre-AIA 35 U.S.C. 112], 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.
Claims 6 and 20 are 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.
Both of claims 6 and 20 states “The method of manufacturing a prepolymer solution according to claim 1, wherein the prepolymer has a group capable of forming an imide group through a dehydration reaction, the first raw material is a carboxylic anhydride, and the second raw material is a diamine compound.”
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
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, 19-20 are rejected under 35 U.S.C. 103 as being unpatentable over Chu (CN 113604045 A, English Translated), in view of Banucci (US Pat 4,073,773).
Consider Claim 1, Chu teaches the process of forming thermoplastic polyamide resin composite film [0018] from polyamic acid solution having a solid content 10-30% [0021], where the polyamic acid solution is formed using first raw material (diamine monomers containing large side group), second raw material (copoly dianhydride monomers) dissolved in organic solvent [0019], as polyamic acid solution [0020]-[0021]. Chu teaches the first raw material and the second raw material react in dehydrating imidization process (using dehydrating agent and catalyst) [0022]. 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).
Chu does not explicitly teaches the solid content percentage in mass.
However Chu teaches the addition of raw materials (into flask) where the amount of raw materials are in grams, and in volume (for solvent) [0055]. Therefore, it would be obvious for ordinary skilled in the art to calculate the resulting solid content percentage in mass, using the calculated total weight using grams of the added amount and the density of the solvent, and the measure of the resulting solid content in grams, using routine experimentation and known engineering principles.
Chu 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 Chu 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 Claim 2, the combined Chu (with Banucci) teaches the further addition of catalyst as a reaction control agent (Chu, [0022]).
Consider Claims 4, 10 and 12, the combined Chu (with Banucci) teaches the stirring of the raw materials at room temperature (Chu, [0059]). 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 and 19-20, the combined Chu (with Banucci) teaches prepolymer (having the first raw material (diamine monomers containing large side group such as BPDA [0015]), second raw material (copoly dianhydride monomers, such as TFMB [0016]) dissolved in organic solvent, Chu, [0019]) react in dehydrating imidization process using dehydrating agent and catalyst (Chu, [0022]), forming polyimide solution (Chu, [0023]). Where the reaction of forming (polymerization) the polyimide (repeating imide group) using polyamic acid would obvious/inherently is capable to form an imide group by dehydration process.
Claim(s) 3, 13 and 18 are rejected under 35 U.S.C. 103 as being unpatentable over Chu (CN 113604045 A, English Translated), in view of Banucci (US Pat 4,073,773), and in further view of Jee (PG Pub 2016/0264819 A1).
Consider Claim 3, the combined Chu (with Banucci) teaches the measuring of the viscosity using viscometer at 30℃ (Chu, [0037]).
The combined Chu (with Banucci) does not teach the addition of reaction control agent based on the measured viscosity of the prepolymer solution.
However, Jee is in the prior art of forming “polyimide based film” using extrusion coating process [0008], where the “polyimide based film” is polyimide precursor such as polyamic acid [0044], teaches the process of adding/mixing desired amount of reaction control agent/viscoelasticity controlling agent is to control the viscosity of the prepolymer solution [0017]-[0019], where the viscosity measurement is based on the rheometer [0020].
A person having ordinary skill in the art before the effective date of the claimed invention would combine Chu (with Banucci) with Jee and add the reaction control agent with an amount, to provide with a desired viscosity of the prepolymer solution during the mixing using the twin extruder, with reasonable and predictable expectation of succuss.
Consider Claim 13, the combined Chu (with Banucci) teaches the stirring of the raw materials at room temperature (Chu, [0059]). 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 Claim 18, the combined Chu (with Banucci) teaches prepolymer (having the first raw material (diamine monomers containing large side group such as BPDA [0015]), second raw material (copoly dianhydride monomers, such as TFMB [0016]) dissolved in organic solvent, Chu, [0019]) react in dehydrating imidization process using dehydrating agent and catalyst (Chu, [0022]), forming polyimide solution (Chu, [0023]). Where the reaction of forming (polymerization) the polyimide (repeating imide group) using polyamic acid would obvious/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 Chu (CN 113604045 A, English Translated), 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 Chu (with Banucci) teaches the Ubbelohde measurement is based on the rheometer (Chu, [0037]).
Chu (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 Chu (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 Chu (CN 113604045 A, English Translated), 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 Chu (with Banucci) teaches that it is known to coat the conductive lines (wire) with insulating layer (Chu, [0002]).
The combined Chu (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 Chu (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 03/19/2026, with respect to the rejection(s) of claim(s) 1-4, 6-7, 9-12, 17-20 under 102/103 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 Chu with Banucci.
The applicant’s argument regarding the prior art of Jee is moot, in light of the newly applied rejection, and the newly amended claim.
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.
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
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 Mohammad Mayy whose telephone number is (571)272-9983. The examiner can normally be reached Monday to Friday, 11:00AM-7:00PM EST.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Gordon Baldwin can be reached at 571-272-5166. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/Mohammad Mayy/
Art Unit 1718
/GORDON BALDWIN/Supervisory Patent Examiner, Art Unit 1718
Prosecution Insights