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
Response to Amendment
Applicant's amendments filed on 05/18/2026 have been entered. Claims 1-7,12-15 and 17-19 are currently under examination on the merits.
Any rejections and/or objections made in the previous Office action and not repeated below are hereby withdrawn.
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 1-7, 12-15 and 17-19 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 1-3, 7, 12-15 and 17, ‘614 discloses a polyimide film with a thickness of 10 microns ([0025], [0040], [0242]) having refractive index difference being 0.002 at 633 nm ([0026], [0041], ‘614 does not disclose that the refractive index of the polyimide film significantly depends upon wavelength, thus the refractive index of ‘614 should be close enough to 0.002 and satisfy instantly claimed range of less than 0.0067 at 532 nm); 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. ‘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 1 and 12-15. ‘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, chemical resistance and radiation resistance.
Regarding claims 4-6, modified ‘614 teaches all the limitations of claim 1, but 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 13, ‘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).
Regarding claims 18 and 19, modified ‘614 teaches all the limitations of claim 1, ‘614 also discloses an optical device comprising the polyimide film as a substrate ([0447]-[0468]).
Response to Arguments
Applicant's arguments filed on 05/18/2026 have been fully considered and they are not persuasive in part.
Applicant argues that the rejection is an impermissible hindsight reconstruction because the polyimide film of Auman’614 already possesses excellent heat resistance with thermal decomposition temperature of 450°C or more. The examiner does not agree this assertion because the thermal decomposition being of 450°C for a polyimide film is common which does not necessarily sufficient for some application, and nowhere in ‘614 set forth that the polyimide film has excellent heat resistance. ‘428 teaches the phosphate-based compound can be used to suppress thermal decomposition of polyimide resin ([0062]), which may increase the thermal decomposition temperature of the film as high as 650 °C ([0036]), and also renders the film having excellent chemical resistance and radiation resistance ([0035]). Thus one of ordinary skill in the art would have been motivated to use the phosphate-based additive to modify the polyimide film of ‘614, to render a polyimide film having excellent heat resistance, chemical resistance and radiation resistance (related to yellow index). It also noted that any judgment on obviousness is in a sense necessarily a reconstruction based upon hindsight reasoning. But so long as it takes into account only knowledge which was within the level of ordinary skill at the time the claimed invention was made, and does not include knowledge gleaned only from the applicant's disclosure, such a reconstruction is proper. See In re McLaughlin, 443 F.2d 1392, 170 USPQ 209 (CCPA 1971, See MPEP 2145). Regarding refractive index difference as argued, it is also noted that discovery of new property or use of previously known composition even if unobvious from prior art cannot impart patentability to claims to a known composition. In re Spada, 911 F. 2d 705, 709, 15 USPQ 2d 1655 (CAFC 1990).
For the reasons set forth above and of record, the claims stand properly rejected.
Conclusion
THIS ACTION IS MADE FINAL. 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.
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
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