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 .
Claims 1-10 are pending as submitted on 7/14/2026.
Election/Restrictions
Applicant’s election without traverse of Group I, claims 1-7, in the reply filed on 7/14/2026 is acknowledged.
Claims 8-10 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected invention, there being no allowable generic or linking claim.
Claim Rejections - 35 USC § 102
The following is a quotation of the appropriate paragraphs of 35 U.S.C. 102 that form the basis for the rejections under this section made in this Office action:
A person shall be entitled to a patent unless –
(a)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention.
Claim(s) 1 and 5-7 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Masui et al (WO 2020138041 A1; included machine translation cited herein).
As to claims 1, 5, 6 Masui discloses an optical film which contains a polyamide-imide (PAI) resin (translation p 1). The PAI is obtained by reacting a dicarboxylic compound, a diamine compound and a tetracarboxylic acid compound (translation p 3). Masui exemplifies a film comprising a PAI resin obtained by copolymerizing 6FDA (an aromatic dianhydride, and the third species recited in instant claim 5) and aromatic dicarbonyl compounds (OBBC, 6FTPC) with TFMB (an aromatic diamine, and the fourth species recited in claim 6). See translation p 38, Example 1. OBBC is a non-fluorinated aromatic dicarbonyl compound, and 6FTPC is a fluorinated aromatic dicarbonyl compound.
As to claim 7, in Masui’s example 1, the ratio of aromatic dianhydride compounds (30.3 mol added) to aromatic dicarbonyl compounds (total of 70.7 mol added) is 1:2.3, which falls within the claimed range.
Claim Rejections - 35 USC § 103
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.
Claim(s) 3 is/are rejected under 35 U.S.C. 103 as being unpatentable over Masui et al (WO 2020138041 A1; included machine translation cited herein).
The rejection of claim 1 above over Masui is incorporated here by reference. Masui does not exemplify a PAI resin utilizing one of the recited compounds as the non-fluorinated dicarbonyl compound. However, Masui teaches that other dicarboxylic acid compounds may be used, and teaches compounds according to formula 7’
PNG
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153
347
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wherein s can be 0, the R groups can H, and Rc and Rd can be chloride (see translation p 20), which is terepthaloyl chloride as recited in claim 3. When forming a PAI resin as taught by Masui, the person having ordinary skill in the art would have been motivated to select any non-fluorinated dicarbonyl reactant encompassed by Masui’s formula 7’ in order to provide a PAI resin having a desired set of properties based on an intended application. It would have been obvious to the person having ordinary skill in the art, therefore, to have selected any compound encompassed by Masui’s formula 7’ as Masui’s non-fluorinated aromatic dicarbonyl compound, including terephthaloyl chloride as presently recited.
Claim(s) 1-3 and 5-7 is/are rejected under 35 U.S.C. 103 as being unpatentable over Ren et al (CN 113583443, cited as D1 on ISR; included machine translation cited herein).
As to claims 1-3 and 6, Ren discloses a polyimide-polyamide (PAI) copolymer film from a diamine, dianhydride and diacyl chloride polycondensation [n0010]. The dianhydride comprises a meta-terphenyl dianhydride [n0016], which is aromatic as presently recited. The diamine is selected from a group taught in [n0017], the majority of which are aromatic diamines; TFMB (an aromatic diamine and the fourth species recited in claim 6) is exemplified [n0055].
Ren teaches that the diacid chloride is selected from “at least one” of a group which includes both terephthaloyl chloride (TPC) and 2,3,5,6-tetrafluoroterephthaloyl chloride (TF-TPC) [n0018]. TPC is exemplified in [n0055].
Ren fails to specifically teach utilizing a combination of TPC (a non-fluorinated aromatic dicarbonyl compound) and TF-TPC (a fluorinated aromatic dicarbonyl compound).
However, Ren teaches that the development of transparent polyimide films is constantly enriching, and that solutions for preparing colorless and transparent polyimides include introducing fluorine-containing units to reduce charge transfer forces within or between molecules [n0003]. Additionally, based on Ren’s teaching in [n0018] that the diacid chloride is selected from “at least one” of those named, one having ordinary skill in the art would have immediately envisaged utilizing combination of at least two of the diacyl chlorides named by Ren. It would have been obvious to the person having ordinary skill in the art, therefore, to have formed a PAI resin by copolymerizing an aromatic diamine (TFMB), aromatic dianhydride and TPC as dicarbonyl compound, as taught by Ren, by further adding any other dicarbonyl compound named by Ren in [n0018] as an additional comonomer, including TF-TPC, in order to tailor the properties of the PAI (such as improving transparency and colorlessness by increasing fluorine content) as appropriate for a given application. A PAI resin obtained by copolymerizing TFMB, aromatic dianhydride, and dicarbonyl compounds which include both TPC and TF-TPC, as suggested by Ren, meets the instant claims.
As to claim 5, Ren suggests a film according to claim 1, as set forth above. Ren teaches utilizing fluorinated meta-terphenyl dianhydride and another dianhydride [n0015], and names several other dianhydrides, including the following which are recited in claim 5: 3,3’,4,4’-biphenyltetracarboxylic dianhydride (BPDA), 4,4’-hexafluroisopropylphthalic anhydride (6FDA), 3,3’,4,4’-benzophenonetetracarboxylic dianhydride (BTDA) and 4,4’-oxobisphthalic acid anhydride (ODPA). Ren exemplifies utilizing 6FDA (n0043, example 1), BPDA (n0046, example 2), and BTDA (n0058, example 6). A PAI, as suggested by Ren, which includes any of 6FDA, BTDA, BPDA or ODPA as the other dianhydride meets instant claim 5.
As to claim 7, Ren suggests a film according to claim 1, as set forth above. Ren teaches that the molar ratio of diamine:dianhydride:diacyl chloride is 1:0.05-0.95:0.05-0.95 [n0019], which encompasses the presently claimed range of dianhydride to dicarbonyl compounds. It would have been obvious to the person having ordinary skill in the art to have formed a PAI resin (having a combination of amide units derived from diacyl chlorides and imide units derived from dianhydrides), as suggested by Ren, by selecting any appropriate molar ratio of dianhydride to diacyl chloride within Ren’s disclosed range, including a ratio within the presently claimed range, in order to achieve a desired balance in properties associated with each type of structural unit. Case law has established that a prima facie case of obviousness is established where the claimed ranges overlap the ranges disclosed by the prior art. See MPEP 2144.05.
Claim(s) 4 is/are rejected under 35 U.S.C. 103 as being unpatentable over Ren et al (CN 113583443, cited as D1 on ISR; included machine translation cited herein) in view of Schork (Control of Polymerization Reactors, 1993, Marcel Dekker, p 52).
The rejection over Ren above is incorporated here by reference.
As to instant claim 4, Ren suggests a film according to claim 1, as set forth above, wherein the PAI copolymer includes a dicarbonyl component which is a combination of TPC (a non-fluorinated aromatic dicarbonyl compound) and TF-TPC (a fluorinated aromatic dicarbonyl compound). However, Ren fails to teach a molar ratio of TF-TPC to TPC.
Schork teaches that the ability to create a macromolecule containing two or more types of monomer units gives the polymer chemist a greatly increased ability to custom design a polymer to yield specific end-use properties (p 52, first paragraph). Additionally, Schork teaches that as a general rule, a copolymer from monomers A and B will have properties intermediate between those of the two homopolymers of A and B, with the percent of A units in the polymer determining whether the copolymer more nearly resembles homopolymer A or B. See 2.3.1 on p 52.
Accordingly, in light of Schork’s disclosure, when combining two different types of a monomer within a polymer, the person having ordinary skill in the art would have been motivated to select any appropriate ratio of the two comonomers depending on the degree to which properties more nearly resembling a homopolymer of the first or the second comonomer are desired. It would have been obvious to the person having ordinary skill in the art, therefore, to have prepared a PAI resin utilizing a combination of TPC and TF-TPC as the dicarbonyl component, as suggested by Ren, by selecting any appropriate ratio of TF-TPC to TPC depending on whether properties more nearly resembling a homopolymer from TF-TPC or TPC are desired, including a ratio within the presently claimed range of 1-1.5:1.
Conclusion
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/RACHEL KAHN/ Primary Examiner, Art Unit 1766
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