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 .
Priority
Receipt is acknowledged of certified copies of papers required by 37 CFR 1.55.
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 (i.e., changing from AIA to pre-AIA ) 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, 5, 7-8, and 11-12 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Kawabata (US 20080318072, US Patent Application reference #2 from IDS dated 5/26/2023).
Regarding Claims 1, 7-8, and 11-12,
Kawabata teaches a polymer comprised of the following units (Abstract):
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in which R1 and R2 (corresponding to R1-R4 of the instant claims) can be hydrogen or alkyl groups of 1 to 8 carbons (Paragraph 41) and R3 can be hydrogen or an alkyl chain of 1 to 18 carbons (Paragraph 41), with this structure meeting the requirements of units 1 and 2 of the instant claim. Kawabata also teaches that R4 and R5 (corresponding to R5 and R6 of the instant claims) can be hydrogen or alkyl chains of 1 to 8 carbons (Paragraph 42) and that R6 (corresponding to R7 of the instant claims) can be an alkyl group of 1 to 18 carbons, a cycloalkyl group of 3 to 12 carbons, or an aryl group of 6 to 10 carbons (Paragraph 42). Additionally, Kawabata teaches that R7 (corresponding to R8 of the instant claims) may be a hydrogen or alkyl group of 1 to 8 carbons (Paragraph 43) and that R8 (corresponding to R9 of the instant claims) is an aryl group of 6 to 10 carbons (Paragraph 43). Kawabata also teaches that the resin is used to generate compositions (Paragraph 189) and may be used to form a polarizer film (Paragraph 139), meeting the requirements of the instant claims.
Regarding Claims 2 and 3,
Kawabata teaches that the orientation birefringence of the resin is between -0.1 and 0.1x10-3 (Paragraph 40), meeting the requirements of the instant claims.
Regarding Claim 5,
Kawabata teaches that the glass transition temperature is preferably greater than 130 °C (Paragraph 101) and demonstrates several examples meeting the requirement of greater than 124 °C of the instant claim (Table 1, Examples 1-13).
Kawabata also teaches that the methacrylate-polystyrene polymer can be imidized to form the imide resin (Paragraph 109) with preferable imidizing agents including ammonia (Paragraph 119). Kawabata also teaches the use of Estyrene MS-800 as the methacrylate-polystyrene polymer (Paragraph 244) and further states that this polymer has styrene content of 20% (Paragraph 286), meeting the requirement of the instant claims.
Claim Rejections - 35 USC § 103
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 (i.e., changing from AIA to pre-AIA ) 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 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 4, 6, and 9-10 are rejected under 35 U.S.C. 103 as being unpatentable over Kawabata (US 20080318072) as applied to claims 1-3, 5, and 7-8 above.
Regarding Claim 4,
Kawabata teaches that styrene (corresponding to M4 of the instant claim) preferably represents 15 to 25% (Paragraph 130) which is contained within the range of the instant claim and additionally that the amount of glutarimide units can be from 20 to 95%, but is preferably between 50 and 80% (Paragraph 97), which is contained within the range of the instant claims. While Kawabata does not teach the amounts of glutarimide units with hydrogen substituents separate from those with methyl substituents, Kawabata does teach that the imidization reaction can take place in a batch reactor or extruder (Paragraph 112) and that temperatures can be between 200 and 280 °C (Paragraph 121). These conditions are broadly similar to those of the instant application (Specification Paragraph 73). As both Kawabata and the instant application use ammonia under similar reaction conditions, it would logically follow that the composition of Kawabata would have M1 and M2 unit values that are similar. As such, despite Kawabata’s silence on the amounts, the composition of Kawabata would meet the requirement based upon the similar materials and reaction conditions. It would therefore have been obvious prior to the effective filing date of the instant application to have set the amounts of M1 and M2 to be greater than 0.
Regarding Claim 6,
Kawabata is silent on the 5% weight loss temperature. However, Kawabata does teach that the reaction temperature for imidization should be below 400 °C, more preferably below 280 °C to avoid decomposition of the resin (Paragraph 220). As such, it would logically follow that the decomposition temperature of the resin would be above 400 °C based upon this information. Further, as the composition taught by Kawabata is comprised of the same components as that of the instant application as well as using overlapping amounts of these components, it would necessarily follow that the composition would have similar decomposition temperatures as well. "Products of identical chemical composition can not have mutually exclusive properties." In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990). See MPEP 2112.01.II.
Regarding Claims 9 and 10,
Kawabata teaches that the composition may be used as a molded product (Paragraph 79) or a polarizer-protective film (Paragraph 139). Further, Kawabata teaches that the polarizer protective film may be subjected to a coating treatment (Paragraph 154), which it would logically follow that by disclosing a molded item as well as the ability to be coated would read upon a substrate and stacking of film layers. Further, Kawabata teaches that films made of the resin can also be used in the formation of conductive materials in which an ITO layer is deposited on the film (Paragraph 179). While Kawabata does not explicitly disclose the conductive film as described in the instant claim, because Kawabata discloses additional coatings on the film as well as the deposition of electrically-conductive layers to form a similar article, it would logically follow that these aspects could be combined in order to obtain a film stack as required by the instant claims. It would therefore have been obvious prior to the effective filing date of the instant application to have used the composition as disclosed by Kawabata in an electrically-conductive film stack as described in the instant claims.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. Yonemura (US 20180267315) teaches an imidized composition comprised of a methacrylate-styrene resin (Paragraph 22) that contains cyclic structures such as glutarimides (Paragraph 22) that has low birefringence (Paragraph 21) with similar amounts of constituent units (Paragraph 23) to the instant application with an overlapping range of glass transition temperatures (Paragraph 166) that can be used in multilayer film stacks (Paragraph 513).
Any inquiry concerning this communication or earlier communications from the examiner should be directed to ADAM J BERRO whose telephone number is (703)756-1283. The examiner can normally be reached M-F 8:30-5.
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/A.J.B./Examiner, Art Unit 1765
/JOHN M COONEY/Primary Examiner, Art Unit 1765