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 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.
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.
Claims 1-6, 9-12 and 14-17 are rejected under 35 U.S.C. 103 as being unpatentable over Hwang et al. KR101949316B1.
Hwang teaches a polyamic acid composition with improved storage stability, and a method for preparing polyimide film (para [0001]).
Regarding claims 1, 4, 9 and 17, Hwang discloses Example 1 (para [0096]), where the polyamic acid composition consists of a dianhydride monomer 3,3',
4,4'-biphenyltetracarboxylic dianhydride, s-BPDA (instant claim 9) and a diamine monomer 1,4-diaminobenzene, PPD in the presence solvents NMP and methanol (instant claim 4). Hwang teaches (para [0133]) the creation of a polyimide film upon high temperature curing (instant claim 17).
Hwang highlights that, those skilled in the art will be able to make various modifications to the described embodiments (paras [0023] and [0185]), and that a combination of two or more diamines can be used to generate the polyimide along with the use of the selected diamine PPD (paras [0051] and [0043]). Hwang lists diamine monomer 2,2'-dimethylbenzidine (or m-tolidine) as an additional diamine (para [0048]).
In order to further enhance the storage stability and thermo-mechanical properties of the polyimide film (para [0010]), it would have been obvious to one of ordinary skilled in the art to generate an alternate embodiment of Example 1 where along with the PPD a second diamine 2,2'-dimethylbenzidine (or m-tolidine) is also incorporated into the polymer.
Hwang does not provide the corona half-life or volume resistance values, however owing to the closeness of the disclosed monomers to that of instant example 2, and the cured polyimide derived from them, the properties as defined by the claim would necessarily follow. Therefore, the invention as claimed is fully within the purview of Hwang and choosing the diamine monomers PPD and m-tolidine corresponding to the required monomers would have been obvious with reasonable expectation of achieving adequate results.
Regarding claim 2, the boiling point of NMP solvent is 202 oC, and that of methanol is 64.7 oC, meeting the claimed requirement.
Regarding claim 3, Hwang uses methanol as the second solvent and BPDA as the anhydride monomer, which are the same as used in the instant specification’s example 2, and therefore would have the same solubility level.
Regarding claim 5, Hwang teaches Example 1 (para [0096]) which utilizes 40.5 g of monomer PPD, and then adds 110.07g of anhydride monomer BPDA (which includes 8.67 g of BPDA which is added with additional 76.95g of solvent NMP(3 aliquots of 2.85g of BPDA dissolved in NMP at 10wt% ), which leads to 150.57 g of total monomers which are present in total 900.95g of solvent. Hwang incorporates 0.1 mol of methanol per 100 mol of PPD, which is equal to 0.00037 moles of methanol, and leads to 0.001 wt% of methanol in the overall polyamic acid composition including the solvent (Example 1, para [0096]). Thus, the amount of methanol (second solvent) of Hwang’s Example 1 differs from the required range.
Hwang however notes that the alcohol may be added in the range of 0.1 mol% to 1 mol%, per 100 mol% of the diamine monomer (para [0076]). Hwang further highlights that, those skilled in the art will be able to make various modifications to the described embodiments (para [0185]). In the obvious alternate embodiment of Hwang which includes the m-tolidine diamine monomer, as discussed when addressing claim 1, where 50 mol% of PPD is substituted with m-tolidine, and where 1 mol% of methanol with respect to the 100mol% of the total diamine monomer is utilized, results in 0.011 wt% of methanol (second solvent) in the overall polyamic acid composition.
Regarding claim 6, Hwang’s anhydride monomer s-BPDA, as discussed when addressing claim 1, would behave in a similar fashion (as instant specification example 1, page 22), where the majority of the S-BPDA monomer participates to create polymerization units (with the diamine monomer), while a small portion of it, reacts with methanol to create a ring-opened structure which does not participate in the polymerization reaction.
Regarding claims 10-11, In Hwang’s Example 1 (see also original Table 1, para [0122], translated para [0096]; also see discussion for claim 5) equimolar amounts of PPD and BPDA are utilized to create the polyamic acid, where 40.5g of PPD is reacted with 110.07g of BPDA, which are present in total 900.95g of solvent. The solid content of the polyamic acid composition is determined to be 14.3 wt%. Hwang notes that the viscosity is 7,100 cP measured at 23 oC. Obvious embodiment of Hwang incorporating the diamine m-tolidine, maintained at the same solids level and final viscosity of Hwang’s Example 1, satisfy the claimed requirements.
Regarding claims 12 and 15, Hwang does not provide the weight average molecular weight of the polyamic acid composition or the glass transition temperature, Tg, (of the cured polyimide), however since the prior art compositions are being utilized for similar end products such as display materials (Hwang, para [0017]) which is the same as indicated by the instant specification (page 2, lines 5-14), it would be obvious to optimize the polyimide compositions such that they exhibit similar molecular weight and Tg, so as to attain the desired thermo-mechanical properties.
Regarding claim 14, Hwang teaches the coefficient of thermal expansion (CTE) of 4.5 ppm/oC for Example 7, which is the polyimide derived upon curing of polyamic composition of example 1 (see Hwang para [0133], original Table 3, para [0167]). Obvious embodiment derived from Hwang’s example 1, consisting of monomers PPD, m-tolidine and BPDA, as discussed when addressing claim 1, would be reasonably expected to meet the CTE requirement similar instant specification’s Example 2.
Regarding claim 16, Hwang sets the reactor temperature at 50 oC, for preparing the polyamic acid composition, meeting the claimed requirement (para [0096]).
Claim 13 is rejected under 35 U.S.C. 103 as being unpatentable over Hwang as applied to claims 1-4, 6-12 and 14-17 above, and in view of Kim et al. KR20200030268A.
Regarding claim 13, Hwang, does not address the incorporation of inorganic particles in the polyamic acid composition, but notes that those skilled in the art will be able to make various modifications (para [0185]). A skilled artisan would look to analogous art such as Kim to determine suitable modifications. Kim recommends the incorporation of inorganic fillers such as silica during the production of polyamic acid to improve the corona resistance of the final polyimide film (para [0080]).
It would have been obvious to one of ordinary skilled in the art before the effective filing date of the invention to have modified Hwang’s polyamic acid with the silica particles as taught by Kim for the same application of creating a polyimide film with improved corona resistance.
The following rejections involving Ezzell et al. are set forth in the alternative to the above rejections under 35USC103:
Claims 1-6, 9-12 and 14-17 are rejected under 35 U.S.C. 103 as being unpatentable over Hwang et al. KR101949316B1 and in view of Ezzell et al. US 5,750,641.
Hwang teaches a polyamic acid composition with improved storage stability, and a method for preparing polyimide film (para [0001]), which is useful as a display substrate (para [0017]).
Ezzell teaches polyimides for display applications (abstract).
Regarding claims 1, 4, 9 and 17, Hwang discloses Example 1 (para [0096]), where the polyamic acid composition is derived from 4,4'-biphenyltetracarboxylic dianhydride, s-BPDA (instant claim 9) and a diamine monomer 1,4-diaminobenzene, PPD in the presence solvents NMP and methanol (instant claim 4). Hwang teaches (para [0133]) the creation of a polyimide film upon high temperature curing (instant claim 17).
Hwang is silent on the second diamine monomer 9,9-bis(4-aminophenyl)fluorene, but notes that, those skilled in the art will be able to make various modifications to the described embodiments (paras [0023] and [0185]), and that a combination of two or more diamines can be used to generate the polyimide along with the use of the selected diamine PPD (paras [0051] and [0043]). In order to optimize the polyimide composition for display applications an artisan skilled in the art would look to analogous reference Ezzell who teaches polyimide with fluorene groups, which include monomer 9,9-bis(4-aminophenyl)fluorene (col 6, lines 63-64). Advantageously, Ezzell provides the motivation to incorporate the fluorene based diamine monomer 9,9-bis(4-aminophenyl)fluorene in the polyimide to increase the negative birefringence of the polyimide film which enhances the viewing angle of displays (col 9, line 5; col 1, line 7).
It would have been obvious to one of ordinary skilled in the art before the effective filing date of the invention to have modified Hwang’s polyimide derived from BPDA and PPD with the 9,9-bis(4-aminophenyl)fluorene as taught by Ezzell for the same application of creating a display substrate with increased negative birefringence.
Hwang and Ezzell do not provide the corona half-life or volume resistance values, however owing to the closeness of the disclosed monomers to that of instant example 3, and the cured polyimide derived from them, the properties as defined by the claim would necessarily follow. Therefore, the invention as claimed would have been obvious from the combined teachings of Hwang and Ezzell and using the diamine 9,9-bis(4-aminophenyl)fluorene in the invention of Hwang in addition to diamine PPD would have been obvious in view of teachings of Ezzell, in order to obtain a final polyimide with improved negative birefringence consistent with the teachings of Ezzell as discussed above.
Regarding claim 2, the boiling point of NMP solvent is 202 oC, and that of methanol is 64.7 oC, meeting the claimed requirement.
Regarding claim 3, Hwang uses methanol as the second solvent and BPDA as the anhydride monomer, which are the same as used in the instant specification’s example 2, and therefore would inherently have the same solubility level.
Regarding claim 5, Hwang teaches Example 1 (para [0096]) which utilizes 40.5 g of monomer PPD, and then adds 110.07g of anhydride monomer BPDA (which includes 8.67 g of BPDA which is added with additional 76.95g of solvent NMP(3 aliquots of 2.85g of BPDA dissolved in NMP at 10wt% ), which leads to 150.57 g of total monomers which are present in total 900.95g of solvent. Hwang incorporates 0.1 mol of methanol per 100 mol of PPD, which is equal to 0.00037 moles of methanol, and leads to 0.001 wt% of methanol in the overall polyamic acid composition including the solvent (Example 1, para [0096]). Thus, the amount of methanol (second solvent) of Hwang’s Example 1 differs from the required range.
Hwang however notes that the alcohol may be added in the range of 0.1 mol% to 1 mol%, per 100 mol% of the diamine monomer (para [0076]). Hwang further indicates that, those skilled in the art will be able to make various modifications to the described embodiments (para [0185]). Ezzell discloses incorporation of 25 mol% of 9,9-bis(4-aminophenyl)fluorene (FDA) in the overall polyimide (Ezzell Table 7, Polymer #30). In the obvious alternate embodiment of Hwang in view of Ezzell which also includes 25 mol% 9,9-bis(4-aminophenyl)fluorene (FDA) diamine monomer in the overall polyimide (which is 50 mol% of the diamine monomers), and where 1 mol% of methanol with respect to the 100mol% of the total diamine monomer is utilized, results in 0.011 wt% of methanol (second solvent) in the overall polyamic acid composition.
Regarding claim 6, Hwang’s anhydride monomer s-BPDA, as discussed when addressing claim 1, would behave in a similar fashion (as instant specification example 1, page 22), where the majority of the S-BPDA monomer participates to create polymerization units (with the diamine monomer), while a small portion of it, reacts with methanol to create a ring-opened structure which does not participate in the polymerization reaction.
Regarding claims 10-11, In Hwang’s Example 1 (see also original Table 1, para [0122], translated para [0096], also see discussion for claim 5) equimolar amounts of PPD and BPDA are utilized to create the polyamic acid, where 40.5g of PPD is reacted with 110.07g of BPDA, which are present in total 900.95g of solvent. The solid content of the polyamic acid composition is determined to be 14.3 wt%. Hwang notes that the viscosity is 7,100 cP measured at 23 oC. Obvious composition generated by the combined teaching of Hwang and Ezzell and incorporation of the diamine 9,9-bis(4-aminophenyl)fluorene, maintained at the same solids level and final viscosity of Hwang’s Example 1, satisfy the claimed requirements.
Regarding claim 12, Hwang does not provide the weight average molecular weight of the polyamic acid composition. Ezzell discloses (Ezzell claim 7) the number average molecular weight to be in the range of 20,000 to 140,000 and therefore expected to overlap the required Mw claimed range. 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, 191USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990).
Regarding claim 14, Hwang teaches the coefficient of thermal expansion (CTE) of 4.5 ppm/oC for Example 7, which is the polyimide derived upon curing of polyamic composition of example 1 (see Hwang para [0133], original Table 3, para [0167]). Obvious embodiment derived from the combined teaching of Hwang’s example 1 and Ezzell, consisting of monomers PPD, 9,9-bis(4-aminophenyl)fluorene (FDA) and BPDA, as discussed when addressing claim 1, would be reasonably expected to meet the CTE requirement similar instant specification’s Example 3.
Regarding claim 15, Hwang is silent on the glass transition temperature of the cured polyimide. Since the prior art compositions derived from the combined teaching of Hwang and Ezzell are being utilized for similar end products such as display materials (Hwang, para [0017], Ezzell col 1, lines 5-10) which is the same as indicated by the instant specification (page 2, lines 5-14), it would be obvious to optimize the polyimide compositions such that they exhibit similar Tg, so as to attain the desired thermo-mechanical properties.
Regarding claim 16, Hwang sets the reactor temperature at 50 oC, for preparing the polyamic acid composition, meeting the claimed requirement (para [0096]).
Claim 13 is rejected under 35 U.S.C. 103 as being unpatentable over Hwang in view of Ezzell as applied to claims 1-6, 9-12 and 14-17 above, and further in view of Kim et al. KR20200030268A.
Regarding claim 13, Hwang and Ezzell, do not address the incorporation of inorganic particles in the polyamic acid composition, but note that those skilled in the art will be able to make various modifications (Hwang para [0185]). A skilled artisan would look to analogous art such as Kim to determine suitable modifications. Kim recommends the incorporation of inorganic fillers such as silica during the production of polyamic acid to improve the corona resistance of the final polyimide film (para [0080]).
It would have been obvious to one of ordinary skilled in the art before the effective filing date of the invention to have modified Hwang and Ezzell’s polyamic acid composition with the silica particles as taught by Kim for the same application of creating a polyimide film with improved corona resistance.
Response to Arguments
Applicant's arguments filed 03/13/2026 have been fully considered, please see the response below.
The rejection under 35 U.S.C. § 112 of claim 7 is withdrawn, since the claim has been cancelled.
In light of the amended claims the provisional non-statutory double patenting rejections over claims of copending Applications # 18/037,839, 18/037,862, 18/037,874 and 18/037,888 have been withdrawn.
Applicant argues that Hwang’s Example 1 would not achieve the amended volume resistance values since it does not disclose at least one of 2,2-dimethylbenzidine (M-TOLIDINE) and 9,9-bis(4-aminophenyl)fluorene (BAPF) as the diamine monomer along with the p-phenylene diamine (PPD) monomer.
While it is acknowledged that Hwang’s Example 1 does not teach one of 2,2-dimethylbenzidine (M-TOLIDINE) or 9,9-bis(4-aminophenyl)fluorene (BAPF), Hwang’s general disclosure teaches the 2,2-dimethylbenzidine (M-TOLIDINE). As discussed in the rejection above obvious embodiment of Hwang’s Example 1 which includes 2,2-dimethylbenzidine (M-TOLIDINE) is similar to instant example 2 and therefore renders the claimed composition and the required volume resistance obvious. Applicant’s attention is directed to the case law: Disclosed examples and preferred embodiments do not constitute a teaching away from a broader disclosure or nonpreferred embodiments. In re Susi, 440 F.2d 442, 169 USPQ 423 (CCPA 1971). See MPEP 2123 I. and II.
The amended claim 1 is additionally rejected under 35 U.S.C.§103 as being unpatentable over the combination of Hwang KR101949316B1 and Ezzell US 5,750,641, which consists of polyimide derived from monomers p-phenylene diamine (PPD), 9,9-bis(4-aminophenyl)fluorene (BAPF) and 4,4'-biphenyltetracarboxylic dianhydride, s-BPDA, which are the same monomers as utilized by instant example 3 and thus expected to satisfy the volume resistance.
References Hwang (and Kim), the combination of Hwang and Ezzell (and Kim) continue to provide the foundation to maintain the rejection of the amended claims.
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.
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/S.M.D./
Examiner
Art Unit 1765
/JOHN M COONEY/ Primary Examiner, Art Unit 1765
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