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
Claim Rejections - 35 USC § 112
The following is a quotation of 35 U.S.C. 112(b):
(b) CONCLUSION.—The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the inventor or a joint inventor regards as the invention.
The following is a quotation of 35 U.S.C. 112 (pre-AIA ), second paragraph:
The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.
Claims 1-19 are rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor, or for pre-AIA the applicant regards as the invention.
Claim 1 is rejected as being vague and indefinite when the claim recites “a refractive index difference…is 0.0068 or less”. The refractive index n1 and n2 as recited in the claim generally also depends on the wavelength. The scope of the n1 and n2 is not clear without setting forth wavelength at which the n1 and n2 are measured. Claims 2-19 are also rejected from depending from claim 1, thus inclusion of its indefinite features.
Claim 3 is rejected as being vague and indefinite when these claims recite “wherein the polyimide-based resin film has a thickness direction retardation Rth value at a thickness of 10 μm of 10 nm to 52 nm”. The Rth value generally also depends on the wavelength. The scope of the Rth value is not clear without setting forth wavelength at which the Rth is measured.
Claim Rejections - 35 USC § 102
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 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 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.
Claims 1-3, 7-15 and 18-19 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Auman et al (US 2020/0216614, of record, IDS 04/09/24, ‘614 hereafter).
Regarding claims 1-3 and 7, ‘614 discloses a polyimide film with a thickness of 10 microns ([0025], [0040], [0242]) having refractive index difference being less than 0.002 ([0026], [0041], [0243]); yellow index being less than 5, specifically 3.77 as in Example 2 ([0029], [0044], Table 1); color coordinate b* being less than 3, specifically 2.51 as in Example 2 ([0028], [0043], [0245], Table 1); thickness direction retardation Rth being less than 20 nm at wavelength of 550 nm, specifically 18 nm as in Example 2 ([0025], [0040], [0242], [0268], Table 1); and haze being less than 1.0% ([0027], [0042], [0244]); satisfying the all the limitations of present claims 1-3 and 7.
Regarding claims 8-15, ‘614 also discloses that the polyimide can be formed from 4,4’-oxydiphthalic anhydrate (ODPA), satisfying Chemical Formula 2 as in present claim 9; 1,3-phenylene diamine (m-PD) and 4,’4-oxydianiline (ODA), satisfying Chemical Formulae (3-1) and 5 as in the present claims 10-11 and 14 (ODPA/3,4ODA/MPD=100/40/60, [0505]); thus the polyimide as disclosed satisfies all the limitations of present claims 8-15.
Regarding claims 18 and 19, ‘614 also discloses an optical device comprising the polyimide film as a substrate ([0447]-[0468]).
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 set forth in Graham v. John Deere Co., 383 U.S. 1, 148 USPQ 459 (1966), that are applied 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.
Claims 4-6 are rejected under 35 U.S.C. 103 as being unpatentable over Auman et al (US 2020/0216614. of record, ‘614 hereafter).
Regarding claims 4-6, ‘614 teaches all the limitations of claim 1, but ‘614 does not expressly set forth that the polyimide film having refractive indexes as recited in the present claims 4-6. However, as discussed above in the paragraphs 9-10, 614 discloses a polyimide film having chemical structure (OPDA/ODA/MPD) being substantially identical to the polyimide film as disclosed in the present application (see examples of present application, Table 2), which also shows similar optical properties related to the refractive indexes of the film, such as refractive index difference, color coordinate, and thickness direction retardation; thus it is reasonable to expect that the polyimide film of ‘614 would have possessed the presently claimed refractive index, in absence of an objective showing to the contrary (See MPEP 2112).
Claims 16-17 are rejected under 35 U.S.C. 103 as being unpatentable over Auman et al (US 2020/0216614. of record, ‘614 hereafter) in view of Nakayama et al (US 2014/0134428, ‘428 hereafter).
Regarding claims 16-17, ‘614 teaches all the limitations of claim 1, but ‘614 does not set forth that the polyimide film further includes a phosphate-based additive. However, in the same field of endeavor, ‘428 discloses a polyimide film formed from a polyimide acid solution and a phosphate-based compound ([0018]), preferably triaryl phosphate ([0058]), to suppress thermal decomposition of polyimide resin ([0062]), and renders a polyimide film having excellent heat resistance, chemical resistance and radiation resistance ([0035]). In light of these teachings, one of ordinary skill in the art would have been motivated to use the phosphate-based additive as taught by ‘428, to modify the polyimide film of ‘614, in order to render a polyimide film having better heat resistance.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to RUIYUN ZHANG whose telephone number is (571)270-7934. The examiner can normally be reached on 8:00-5:00 PM.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Arron Austin can be reached on 571-272-8935. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/RUIYUN ZHANG/Primary Examiner, Art Unit 1782