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 .
Claim Objections
Claims 1-16 are objected to because of the following informalities:
Claim 1, line 5, the label “[Chemical compound 1]” should be “[Chemical Formula 1]”.
Claim 2, line 3, the label “[Chemical compound 2]” should be “[Chemical Formula 2]”.
Claim 2, line 11, the label “[Chemical compound 3]” should be “[Chemical Formula 3]”.
Claims 2-9, each preamble “A resin film” should be “The resin film”.
Claim 2 should end with a period.
Claim 7, line 5, the label “[Chemical compound 4]” should be deleted.
Claim 10, line 1, “a resin film” should be “the resin film”.
Claim 11, line 6, the label “[Chemical compound 5]” should be “[Chemical Formula 4]”.
Claim 12, line 3, the label “[Chemical compound 6]” should be “[Chemical Formula 5]”.
Claims 12-14, each preamble “A resin composition” should be “The resin composition”.
Claim 14, the label “[Chemical compound 7]” should be “[Chemical Formula 7]”.
Claim 15, line 1, “a resin composition” should be “the resin composition”.
Claim 16, lines 1-2, “a production method for a resin film” should be “the production method for the resin film”.
Appropriate correction is required.
Claim Rejections - 35 USC § 102
Claim(s) 1-2, 4-6, and 9-12 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Kunimune et al. (US 4,818,806).
Regarding claims 1-2 and 5-6:
Kunimune discloses a silicon-containing polyamic acid and a silicon-containing polyimide (abstract; 1:12+). The polyimide can be provided in the form of a film (9:19+). The polymers are formed from the reaction between a tetracarboxylic acid dianhydride, a diamine, and an aminosilicon compound (2:27+). Example 8 is formed from the reaction between 3,3',4,4'-benzophenonetetracarboxylic acid dianhydride, 3,3'-diaminodiphenyl-sulfone and m-aminophenyltrimethoxysilane (12:20+). These are the same materials used in the present invention (see, e.g., paragraphs [0026], [0037], and [0073] in the present specification). Therefore, the examiner submits Kunimune’s resins meet the claimed chemical formula requirements.
Although Kunimune is silent with regard to the presently claimed light transmittance, glass transition temperature, and weight loss starting temperature, the reference discloses a polyimide resin and a polyamic acid resin that otherwise comprises the same components as used in the present invention. Therefore, the examiner submits those resins comprising the same components as the present invention inherently have the same properties as presently claimed.
Regarding claim 4:
Example 8 discloses a ratio of moles of diamine to moles of tetracarboxylic acid is 0.170/0.221 = 0.769 (12:20+).
Regarding claim 9-10:
Kunimune teaches the film can be used in electronic materials comprising liquid crystal aligning agents, i.e., liquid crystal displays (9:6+). Additionally, with respect to claim 9, the examiner submits the claim limitation that the film is “designed to be used as a display substrate” represents an intended use of the film, which does not result in a structural difference between the presently claimed invention and the prior art.
Regarding claims 11-12:
See the above rejection of claim 1. Additionally, Kunimune teaches the polyamic acid is dissolved in solvent (4:29+; 7:14+).
Claim Rejections - 35 USC § 103
Claim(s) 3, 7-8, and 15 is/are rejected under 35 U.S.C. 103 as being unpatentable over Kunimune et al. (US 4,818,806).
Regarding claim 3:
Kunimune discloses a silicon-containing polyamic acid, a silicon-containing polyimide, and a film thereof as previously explained. Example 8 discloses a ratio of moles of aminosilane to moles of tetracarboxylic acid is 0.0255/0.221 = 0.115 (12:20+). Kunimune, however, teaches a broader range of moles of aminosilanes, in in particular, teaching the use of at least 10% by moles of the aminosilane (C) relative to the sum of the aminosilane (C) and diamine (B) to provide the desired adhesion properties to silicon and other substrates (7:30-54). As set forth in MPEP 2144.05, in the case where the claimed range “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); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990).
Before the effective filing date of the claimed invention, it would have been obvious to one of ordinary skill in the art to vary the relative amount of aminosilane, including over amounts falling within the presently claimed range, to provide the desired adhesion properties for a given end use.
Regarding claims 7-8:
Kunimune teaches Example 8 is formed from the reaction between 3,3',4,4'-benzophenone-tetracarboxylic acid dianhydride, 3,3'-diaminodiphenylsulfone and m-aminophenyltrimethoxysilane (12:20+). The reference further teaches 3,3’,4,4’-biphenyltetracarboxylic acid dianhydride can be used in its invention (4:52+). (Also see Kunimune’s teaching of other diamines (4:65+).)
Before the effective filing date of the claimed invention, it would have been obvious to one of ordinary skill in the art to substitute another dianhydride, including 3,3’,4,4’-biphenyltetracarboxylic acid dianhydride, for the 3,3',4,4'-benzophenonetetracarboxylic acid dianhydride used in Example 8 given that the reference teaches these are interchangeable components suitable for creating a polymer according to its invention.
Regarding claim 15:
Kunimune teaches the baking temperature is 50-450°C (9:1+). As set forth in MPEP 2144.05, in the case where the claimed range “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); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990). Before the effective filing date of the claimed invention, it would have been obvious to one of ordinary skill in the art to vary the baking temperature, including over temperatures falling within the claimed range, to cure the polymer in accordance with Kunimune’s teaching.
Claim(s) 13 is/are rejected under 35 U.S.C. 103 as being unpatentable over Kunimune et al. (US 4,818,806) in view of Miyamoto et al. (US 2016/0024256).
Regarding claim 13:
Kunimune discloses a polyamic acid as previously explained.
Kunimune is silent with regard to an imidization ratio.
One of ordinary skill in the art recognized this ratio could be adjusted to achieve known effects. For example, Miyamoto discloses polyimide precursor compositions [0003]. The reference teaches the imidization rate is 0.2 (20%) or less to suppress gelation or precipitation of the polyimide precursor, which maintains other properties of the final film [0076-0078].
Before the effective filing date of the claimed invention, it would have been obvious to one of ordinary skill in the art to vary the imidization ratio, including over values falling within the claimed range, to prevent suppress gelation or precipitation and undesirable properties in the final film as known in the art.
Claim(s) 14 is/are rejected under 35 U.S.C. 103 as being unpatentable over Kunimune et al. (US 4,818,806) in view of Kunimune et al. (US 4,970,283)
Regarding claim 14:
Kunimune ‘806 discloses a silicon-containing polyamic acid and a silicon-containing polyimide as previously explained.
Kunimune ‘806 is silent with regard to a silane compound according to chemical formula (7) as presently claimed.
The use of such compounds was known in the art to have utility. For example, Kunimune ‘283 discloses a silicon-containing polyimide and polyimide precursor (abstract; 1:8+; 2:20+). The reference teaches that after reacting the dianhydride, diamine, and aminosilanes components, a silane compound (IX) is added (4:66-5:40). The compound (IX) falls within present chemical formula (7) (8:12+). The compound increases the crosslinking of the resin via additional condensation reactions, which increases hardness, toughness, etc. (9:3+; 10:7+; 11:30+).
Before the effective filing date of the claimed invention, it would have been obvious to one of ordinary skill in the art to add a silane compound as taught by Kunimune ‘283 to the polyamic acid composition of Kunimune ‘806 to further increase the crosslinking of the final film.
Claim(s) 16 is/are rejected under 35 U.S.C. 103 as being unpatentable over Kunimune et al. (US 4,818,806) in view of Uno et al. (WO 2011/122199)
Note: citations of WO ‘199 refer to the machine translation provided with this Office Action.
Regarding claim 16:
Kunimune discloses a silicon-containing polyamic acid, a silicon-containing polyimide, and a film thereof as previously explained. The films have utility in electronic devices, including displays (9:6+).
Kunimune is silent with regard to a method of making a display as presently claimed.
Such a method was known in the art to provide utility. For example, Uno discloses a process of forming a display comprising a polyimide film [abstract; 0001; 0008-0009]. The process comprises applying a polyamic acid-containing solution onto a support, drying and heating to form a polyimide film, forming a display element on the film, and peeling the film from the support [0031; 0151-0152].
Before the effective filing date of the claimed invention, it would have been obvious to one of ordinary skill in the art to use the polyamic acid and polyimide of Kunimune in known processes, including the known process of making a display as taught by Uno, to provide a display device as known in the art.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to JOHN D FREEMAN whose telephone number is (571)270-3469. The examiner can normally be reached Monday-Friday 11-8PM EST.
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/JOHN D FREEMAN/Primary Examiner, Art Unit 1787