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 .
Election/Restrictions
Applicant’s election of Claims 1-13 in the reply filed on 02/19/2026 is acknowledged. Because applicant did not distinctly and specifically point out the supposed errors in the restriction requirement, the election has been treated as an election without traverse (MPEP § 818.01(a)).
Claims 14-18 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected invention, there being no allowable generic or linking claim. Election was made without traverse in the reply filed on 2/19/2026.
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 1-11 and 13 are rejected under 35 U.S.C. 102 (a)(1) as being anticipated by Daimatsu et al. US 2020/0103694 A1.
Regarding claims 1-7 and 10-11, Daimatsu teaches a polyamideimide varnish composition (3) with 5.7 mass% of UV absorbent [2-(2-hydroxy-5-tert octylphenyl)benzotriazole] (corresponding to structure (A)) relative to the mass of the resin. The varnish is utilized to create an optical film (paras [0174], [0175], Table 1 and [0178]). The varnish composition (3) is composed of polyamideimide resins PAI-1 and PAI-2. Both PAI-1 are derived from monomers TFMB, and aromatic dianhydride (6FDA) and aromatic diacid chloride (4,4'-oxybis(benzoyl chloride) (OBBC) and terephthaloyl chloride (TPC)). The units derived from aromatic diacid dichloride are comprised in an amount of ~71 mol % based on the moles of the unit derived from the aromatic diamine in both the polyamide PAI-1 and PAI-2 (paras [0170] and [0172]). The optical film (Example 3, Table 2) generated from Varnish (3) has a yellow index YI of 1.8, and meets the claimed requirement.
Therefore, the invention as claimed is fully anticipated by Daimatsu as disclosing each limitation of the rejected claims as per discussion above.
Regarding claims 8-9, as discussed when addressing claim 1, Daimatsu teaches the required polyamideimide film with the required amount of UV blocker [2-(2-hydroxy-5-tert octylphenyl)benzotriazole] (corresponding to structure (A)), and thus would inherently satisfy ∆E requirements. "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). A chemical composition and its properties are inseparable. Therefore, if the prior art teaches the identical chemical structure, the properties applicant discloses and/or claims are necessarily present.
Regarding claim 13, Daimatsu (para [0017]) teaches the haze of the optical film to be less than 0.2%, meeting the claimed requirement.
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.
Claim 12 is rejected under 35 U.S.C. 103 as being unpatentable over Daimatsu et al. US 2020/0103694 A1 as applied to claims 1-11 and 13 above.
Regarding claim 12, Daimatsu does not measure the modulus of the polyamideimide film per the required conditions. However, Daimatsu discloses (reference claim 2) modulus at 80°C is 4GPa to 9GPa, which would overlap the claimed requirements when measured per the required ASTM D882. 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, 191 USPQ 90 (CCPA 1976).
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Surbhi M Du whose telephone number is (571)272-9960. The examiner can normally be reached M-F 9:00 am to 5:00pm.
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/S.M.D./
Examiner
Art Unit 1765
/JOHN M COONEY/Primary Examiner, Art Unit 1765