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/Restriction
REQUIREMENT FOR UNITY OF INVENTION
As provided in 37 CFR 1.475(a), a national stage application shall relate to one invention only or to a group of inventions so linked as to form a single general inventive concept (“requirement of unity of invention”). Where a group of inventions is claimed in a national stage application, the requirement of unity of invention shall be fulfilled only when there is a technical relationship among those inventions involving one or more of the same or corresponding special technical features. The expression “special technical features” shall mean those technical features that define a contribution which each of the claimed inventions, considered as a whole, makes over the prior art.
The determination whether a group of inventions is so linked as to form a single general inventive concept shall be made without regard to whether the inventions are claimed in separate claims or as alternatives within a single claim. See 37 CFR 1.475(e).
When Claims Are Directed to Multiple Categories of Inventions:
As provided in 37 CFR 1.475 (b), a national stage application containing claims to different categories of invention will be considered to have unity of invention if the claims are drawn only to one of the following combinations of categories:
(1) A product and a process specially adapted for the manufacture of said product; or
(2) A product and a process of use of said product; or
(3) A product, a process specially adapted for the manufacture of the said product, and a use of the said product; or
(4) A process and an apparatus or means specifically designed for carrying out the said process; or
(5) A product, a process specially adapted for the manufacture of the said product, and an apparatus or means specifically designed for carrying out the said process.
Otherwise, unity of invention might not be present. See 37 CFR 1.475 (c).
Restriction is required under 35 U.S.C. 121 and 372.
This application contains the following inventions or groups of inventions which are not so linked as to form a single general inventive concept under PCT Rule 13.1.
In accordance with 37 CFR 1.499, applicant is required, in reply to this action, to elect a single invention to which the claims must be restricted.
Group I, claim(s) 1-4, 8-9, 11-14, drawn to a method to produce a maleimide resin according to claim 1, including an organic solvent.
Group II, claim(s) 5-7, 10, drawn to a poly-maleimide resin comprised of subunits derived from tetracarboxylic dianhydride, a dimer diamine, and a maleic anhydride.
The groups of inventions listed above do not relate to a single general inventive concept under PCT Rule 13.1 because, under PCT Rule 13.2, they lack the same or corresponding special technical features for the following reasons:
Groups I and II lack unity of invention a posteriori over Kawahara et al. (WIPO Pub. No. 2021182207 A1, machine translation) in view of Nonaka et al. (US 20220157484 A1), hereafter referred to as Kawahara and Nonaka, respectively.
After consideration of the content of the claims in light of the specification, it is determined that among Groups I and II, the common technical feature is encompassed by a poly-maleimide resin comprised of organic solvent 1,2,4-trimethylbenzene and subunits derived from tetracarboxylic dianhydride, a dimer diamine, and a maleic anhydride.
Kawahara teaches a maleimide resin composition derived from maleic anhydride, norbornane diamine (NBDA), 5-(2,5-dioxotetrahydrofuryl)-3-methyl-3-cyclohexene -1,2-dicarboxylic anhydride, and dimer diamine, where the 5-(2,5-dioxotetrahydrofuryl)-3-methyl-3-cyclohexene -1,2-dicarboxylic anhydride reads on the tetracarboxylic dianhydride (pgs. 4, 6, 12, 31 [0015, 0022, 0054-0055, 0148]). Kawahara teaches the use of N-methyl-pyrrolidone (NMP) among other solvents to produce the composition (pgs. 37, 49-50, [0180, 0242]).
Nonaka teaches a polymer composition that can be obtained using solvents such as 1,2,4-trimethylbenzene (1,2,4-TMB) and NMP, reactants such as maleic acid, polyamines, diamines, maleic acid anhydride, polycarboxylic acids having three or more reactive groups and/or other general polyhydric carboxylic acids (pgs. 19, 16, 26, [0075, 0088, 0090, 0121]).
It would have been obvious to a person of ordinary skill in the art prior to the effective filing date of the instant application to employ comparable solvents for the reaction of polyamines, anhydrides, and carboxylic acids.
Therefore, the common technical feature does not define a contribution over the prior art of Kawahara and thus does not contribute a special technical feature. Consequently, there is a lack of unity present between inventions of Groups I and II.
Applicant is reminded that upon the cancelation of claims to a non-elected invention, the inventorship must be corrected in compliance with 37 CFR 1.48(a) if one or more of the currently named inventors is no longer an inventor of at least one claim remaining in the application. A request to correct inventorship under 37 CFR 1.48(a) must be accompanied by an application data sheet in accordance with 37 CFR 1.76 that identifies each inventor by his or her legal name and by the processing fee required under 37 CFR 1.17(i).
The examiner has required restriction between product or apparatus claims and process claims. Where applicant elects claims directed to the product/apparatus, and all product/apparatus claims are subsequently found allowable, withdrawn process claims that include all the limitations of the allowable product/apparatus claims should be considered for rejoinder. All claims directed to a nonelected process invention must include all the limitations of an allowable product/apparatus claim for that process invention to be rejoined.
In the event of rejoinder, the requirement for restriction between the product/apparatus claims and the rejoined process claims will be withdrawn, and the rejoined process claims will be fully examined for patentability in accordance with 37 CFR 1.104. Thus, to be allowable, the rejoined claims must meet all criteria for patentability including the requirements of 35 U.S.C. 101, 102, 103 and 112. Until all claims to the elected product/apparatus are found allowable, an otherwise proper restriction requirement between product/apparatus claims and process claims may be maintained. Withdrawn process claims that are not commensurate in scope with an allowable product/apparatus claim will not be rejoined. See MPEP § 821.04. Additionally, in order for rejoinder to occur, applicant is advised that the process claims should be amended during prosecution to require the limitations of the product/apparatus claims. Failure to do so may result in no rejoinder. Further, note that the prohibition against double patenting rejections of 35 U.S.C. 121 does not apply where the restriction requirement is withdrawn by the examiner before the patent issues. See MPEP § 804.01.
During a telephone conversation with Alan E. Schiavelli on October 1, 2026 a provisional election was made without traverse to prosecute the invention of Group I, claims 1-4, 8-9, and 11-14. Affirmation of this election must be made by applicant in replying to this Office action. Claims 5-7 and 10 withdrawn from further consideration by the examiner, 37 CFR 1.142(b), as being drawn to a non-elected invention.
Double Patenting
Claims 1-4, 11, and 14 of this application is patentably indistinct from claims 2, 10-12, 16, and 18 of Application No. 18/859092. Pursuant to 37 CFR 1.78(f), when two or more applications filed by the same applicant or assignee contain patentably indistinct claims, elimination of such claims from all but one application may be required in the absence of good and sufficient reason for their retention during pendency in more than one application. Applicant is required to either cancel the patentably indistinct claims from all but one application or maintain a clear line of demarcation between the applications. See MPEP § 822.
The nonstatutory double patenting rejection is based on a judicially created doctrine grounded in public policy (a policy reflected in the statute) so as to prevent the unjustified or improper timewise extension of the “right to exclude” granted by a patent and to prevent possible harassment by multiple assignees. A nonstatutory double patenting rejection is appropriate where the conflicting claims are not identical, but at least one examined application claim is not patentably distinct from the reference claim(s) because the examined application claim is either anticipated by, or would have been obvious over, the reference claim(s). See, e.g., In re Berg, 140 F.3d 1428, 46 USPQ2d 1226 (Fed. Cir. 1998); In re Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993); In re Longi, 759 F.2d 887, 225 USPQ 645 (Fed. Cir. 1985); In re Van Ornum, 686 F.2d 937, 214 USPQ 761 (CCPA 1982); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Thorington, 418 F.2d 528, 163 USPQ 644 (CCPA 1969).
A timely filed terminal disclaimer in compliance with 37 CFR 1.321(c) or 1.321(d) may be used to overcome an actual or provisional rejection based on nonstatutory double patenting provided the reference application or patent either is shown to be commonly owned with the examined application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. See MPEP § 717.02 for applications subject to examination under the first inventor to file provisions of the AIA as explained in MPEP § 2159. See MPEP § 2146 et seq. for applications not subject to examination under the first inventor to file provisions of the AIA . A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
The filing of a terminal disclaimer by itself is not a complete reply to a nonstatutory double patenting (NSDP) rejection. A complete reply requires that the terminal disclaimer be accompanied by a reply requesting reconsideration of the prior Office action. Even where the NSDP rejection is provisional the reply must be complete. See MPEP § 804, subsection I.B.1. For a reply to a non-final Office action, see 37 CFR 1.111(a). For a reply to final Office action, see 37 CFR 1.113(c). A request for reconsideration while not provided for in 37 CFR 1.113(c) may be filed after final for consideration. See MPEP §§ 706.07(e) and 714.13.
The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The actual filing date of the application in which the form is filed determines what form (e.g., PTO/SB/25, PTO/SB/26, PTO/AIA /25, or PTO/AIA /26) should be used. A web-based eTerminal Disclaimer may be filled out completely online using web-screens. An eTerminal Disclaimer that meets all requirements is auto-processed and approved immediately upon submission. For more information about eTerminal Disclaimers, refer to www.uspto.gov/patents/apply/applying-online/eterminal-disclaimer.
Claims 1-4, 11, and 14 provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claim 2, 10-12, 16, and 18 of copending Application No. 18/859092 (hereafter ‘092). Although the claims at issue are not identical, they are not patentably distinct from each other because limitations in the application are clearly taught by '092.
Claim 2 of ‘092 differs from claim 1 of this application in that the reference claim recites equivalent solvents other than 1,2,4-trimethylbenzene. Nevertheless, the application’s
claim falls within the scope of claim 2 of ‘092 and therefore the claims are not patently distinct. The features of claims 2-4, 11, and 14 are taught by claims 10-12, 16, and 18 of ‘092, respectively.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
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.
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.
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.
Claim(s) 1-4 and 8-9 is/are rejected under 35 U.S.C. 103 as being unpatentable over Kawahara et al. (WO 2021182207 A1, machine translation), in view of Nonaka et al. (US 20220157484 A1), hereafter referred to as Kawahara and Nonaka, respectively.
Regarding claim 1, Kawahara teaches a maleimide resin composition derived from maleic anhydride, norbornane diamine (NBDA), 5-(2,5-dioxotetrahydrofuryl)-3-methyl-3-cyclohexene -1,2-dicarboxylic anhydride, and dimer diamine, where the 5-(2,5-dioxotetrahydrofuryl)-3-methyl-3-cyclohexene -1,2-dicarboxylic anhydride reads on instant tetracarboxylic dianhydride (pgs. 4, 6, 12, 31, 35 [0015, 0022, 0054-0055, 0148, 0170]). This is exemplified in the repeating units of formula (X3), with the instant’s components labeled below for convenience (pgs. 4-5, [0017]).
[AltContent: textbox (Tetracarboxylic dianhydride)][AltContent: ][AltContent: textbox (Tetracarboxylic dianhydride)][AltContent: ][AltContent: textbox (Maleic anhydride)][AltContent: textbox (Dimer diamine (Priamine 1075))][AltContent: ][AltContent: textbox (NBDA)][AltContent: ]
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Kawahara teaches this further in Synthesis Example 3, reacting a dimer diamine (brand name Priamine 1075), NBDA, and 5-(2,5-dioxotetrahydrofuryl)-3-methyl-3-cyclohexene -1,2-dicarboxylic anhydride in organic solvent, obtaining a polyimide composition, later adding maleic anhydride to produce the compound according to Formula (X3), a polymaleimide (pgs. 4-5, 47, 49-50 [0017, 0234, 0242]). Kawahara teaches examples of solvent to include acetone, methanol, ethanol, butanol, 2-propanol, 2-methoxyethanol, 2-ethoxyethanol, 1-methoxy-2-propanol, 2-acetoxy-1-methoxypropane, toluene, xylene, methyl ethyl ketone, N, N-dimethylformamide, methyl isobutyl ketone, N-methyl-pyrrolidone (NMP), n-hexane, cyclohexane, cyclohexanone, and naphtha as a mixture, and uses N-methyl-pyrrolidone in Synthesis Example 3 (pgs. 37, 49-50, [0180, 0242]).
Nonaka teaches a polymer composition that can be obtained using solvents such as 1,2,4-trimethylbenzene (1,2,4-TMB) and NMP, reactants such as maleic acid, polyamines, diamines, maleic acid anhydride, polycarboxylic acids having three or more reactive groups and/or other general polyhydric carboxylic acids (pgs. 19, 16, 26, [0075, 0088, 0090, 0121]).
It would have been obvious to a person of ordinary skill in the art prior to the effective filing date of the instant application to modify the teachings of Kawahara with the teachings of Nonaka to yield a method to produce a polyimide composition comprised of reacting a tetracarboxylic dianhydride with polyamine, including dimer diamine, in 1,2,4-TMB and reacting the polyimide composition with maleic anhydride.
Regarding claim 2, Kawahara modified by Nonaka teaches a method to produce a polyimide composition comprised of reacting a tetracarboxylic dianhydride with polyamine, including dimer diamine, in 1,2,4-TMB and reacting the polyimide composition with maleic anhydride, as discussed in (26-29) (Kawahara pgs. 4-6, 12, 31, 35, 37, 47, 49-50 [0015, 0017, 0022, 0054-0055, 0148, 0170, 0180, 0234, 0242]; Nonaka pgs. 19, 16, 26, [0075, 0088, 0090, 0121]).
Kawahara teaches the dimer diamine can be chosen among Versamine 551 (trade name, 3,4-bis (1-aminoheptyl)-6-hexyl-5-(1-octenyl) cyclohexene, manufactured by BASF Japan Inc.), Versamine 552 (product name, hydrogenated product of Versamine 551, manufactured by Cognitive Japan Co. Ltd.), Priamine 1075, and Priamine 1074 (trade name, all manufactured by Clod Japan Co. Ltd.) (pg. 12, [0054-0055]). Priamine 1075, as exemplified in the labeled Formula (X3) above, reads on instant Formula (3), where q=6, n=6, m=4, and p=6 (pgs. 4-5, [0017]).
Regarding claim 3, Kawahara modified by Nonaka teaches a method to produce a polyimide composition comprised of reacting a tetracarboxylic dianhydride with polyamine, including dimer diamine, in 1,2,4-TMB and reacting the polyimide composition with maleic anhydride, as discussed in (26-29) (Kawahara pgs. 4-6, 12, 31, 35, 37, 47, 49-50 [0015, 0017, 0022, 0054-0055, 0148, 0170, 0180, 0234, 0242]; Nonaka pgs. 19, 16, 26, [0075, 0088, 0090, 0121]).
Kawahara additionally teaches Synthesis Example 4, represented by formula X4 (shown below), comprised of method steps of Synthesis Example 3, using organic solvent NMP, dimer diamine Priamine 1075, NBDA, tetracarboxylic dianhydrides 4,4 ′-biphthalic anhydride and bicyclo [2.2.2] oct-7-ene -2,3,5,6-tetracarboxylic dianhydride, and maleic anhydride (pgs. 50-51, [243]). As discussed above in (29), it would have been obvious to a person of ordinary skill in the art to modify the teachings of Kawahara with the teachings of Nonaka to use 1,2,4-TMB instead of NMP. In Synthesis Example 4, Kawahara teaches the use of 16.3 g of Priamine 1075 and 7.81 g of NBDA, which correspond to .0314 and .0629 mol, respectively (based on molar masses of 518.94 g/mol (Priamine 1075) and 124.10 g/mol NBDA) (pgs. 50-51, [243]). In this scheme taught by Kawahara, the amount of dimer diamine comprises 33.3% by mol based on the total amount of polyamine.
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Regarding claim 4, Kawahara modified by Nonaka teaches a method to produce a polyimide composition comprised of reacting a tetracarboxylic dianhydride with polyamine, including dimer diamine, in 1,2,4-TMB and reacting the polyimide composition with maleic anhydride, as discussed in (26-29) (Kawahara pgs. 4-6, 12, 31, 35, 37, 47, 49-50 [0015, 0017, 0022, 0054-0055, 0148, 0170, 0180, 0234, 0242]; Nonaka pgs. 19, 16, 26, [0075, 0088, 0090, 0121]). Kawahara additionally teaches the composition to have a molecular weight for the compound within to be where the molecular weight of the compound is not less than 3000 and not more than 30000 (pg. 23, [0105]). Kawahara’s range overlaps with sufficient specificity to anticipate the claimed range. For more information, see MPEP § 2131.03.
Regarding claim 8, Kawahara modified by Nonaka teaches a method to produce a polyimide composition comprised of reacting a tetracarboxylic dianhydride with polyamine, including dimer diamine Priamine 1075, in 1,2,4-TMB and reacting the polyimide composition with maleic anhydride, as discussed in (26-31) (Kawahara pgs. 4-6, 12, 31, 35, 37, 47, 49-50 [0015, 0017, 0022, 0054-0055, 0148, 0170, 0180, 0234, 0242]; Nonaka pgs. 19, 16, 26, [0075, 0088, 0090, 0121]).
Kawahara additionally teaches Synthesis Example 4, represented by formula X4, comprised of method steps of Synthesis Example 3, using organic solvent NMP, dimer diamine Priamine 1075, NBDA, tetracarboxylic dianhydrides 4,4 ′-biphthalic anhydride and bicyclo [2.2.2] oct-7-ene -2,3,5,6-tetracarboxylic dianhydride, and maleic anhydride (pgs. 50-51, [243]). As discussed above in (29), it would have been obvious to a person of ordinary skill in the art to modify the teachings of Kawahara with the teachings of Nonaka to use 1,2,4-TMB instead of NMP. In Synthesis Example 4, Kawahara teaches the use of 16.3 g of Priamine 1075 and 7.81 g of NBDA, which correspond to .0314 and .0629 mol, respectively (based on molar masses of 518.94 g/mol (Priamine 1075) and 124.10 g/mol NBDA) (pgs. 50-51, [243]). In this scheme taught by Kawahara, the amount of dimer diamine comprises 33.3% by mol based on the total amount of polyamine.
Regarding claim 9, Kawahara modified by Nonaka teaches a method to produce a polyimide composition comprised of reacting a tetracarboxylic dianhydride with polyamine, including dimer diamine Priamine 1075, in 1,2,4-TMB and reacting the polyimide composition with maleic anhydride, as discussed in (26-31) (Kawahara pgs. 4-6, 12, 31, 35, 37, 47, 49-50 [0015, 0017, 0022, 0054-0055, 0148, 0170, 0180, 0234, 0242]; Nonaka pgs. 19, 16, 26, [0075, 0088, 0090, 0121]). Kawahara additionally teaches the composition to have a molecular weight for the compound within to be where the molecular weight of the compound is not less than 3000 and not more than 30000. Kawahara’s range overlaps with sufficient specificity to anticipate the claimed range (pg. 23, [0105]). For more information, see MPEP § 2131.03.
Allowable Subject Matter
Claims 11-14 are objected to as being dependent upon a rejected base claim, but would be allowable if rewritten in independent form including all of the limitations of the base claim and any intervening claims.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
Sato et al. (WIPO Pub. No. 2022025123 A1, machine translation) discloses a bismaleimide resin formed by reacting aromatic tetracarboxylic acid (a1), a dimer diamine (a2), and maleic anhydride (a3); and (B) an inorganic filler.
Mizuno et al. (JP 2020196789 A, machine translation) discloses a bismaleimide resin (A), an epoxy resin (B), an active ester-based curing agent (C) and a curing accelerator (D).
Sato et al. (JP 2020045446 A, machine translation) discloses a bismaleimide resin obtained by reacting a dimer diamine being a diamine derived from a dimer acid with maleic anhydride, and at least one of a polymerization initiator and a curing accelerator.
Kim et al. (US 11960159 B2) teaches a polymaleimide resin with a fluorine-based diamine.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to ARMAN M. FARAZDAGHI whose telephone number is (571)270-5813. The examiner can normally be reached Monday - Friday, Monday - Thursday, 8:30 am - 5:00 pm.
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, Robert Jones can be reached at (571) 270-7733. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/ARMAN M. FARAZDAGHI/Examiner, Art Unit 1762
/ROBERT S JONES JR/Supervisory Patent Examiner, Art Unit 1762
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