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
All the references cited in the International Search Report have been considered. The most pertinent of these references have been applied below.
Election/Restrictions
The applicant has elected Group I (claims 1-9) without traverse.
This restriction is made FINAL. See previous action for the reasons of applying restriction.
Claim Rejections - Double Patenting
The nonstatutory double patenting rejection is based on a judicially created doctrine grounded in public policy (a policy reflected in the statute) so as to prevent the unjustified or improper timewise extension of the “right to exclude” granted by a patent and to prevent possible harassment by multiple assignees. A nonstatutory obviousness-type double patenting rejection is appropriate where the conflicting claims are not identical, but at least one examined application claim is not patentably distinct from the reference claim(s) because the examined application claim is either anticipated by, or would have been obvious over, the reference claim(s). See, e.g., In re Berg, 140 F.3d 1428, 46 USPQ2d 1226 (Fed. Cir. 1998); In re Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993); In re Longi, 759 F.2d 887, 225 USPQ 645 (Fed. Cir. 1985); In re Van Ornum, 686 F.2d 937, 214 USPQ 761 (CCPA 1982); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); and In re Thorington, 418 F.2d 528, 163 USPQ 644 (CCPA 1969).
A timely filed terminal disclaimer in compliance with 37 CFR 1.321(c) or 1.321(d) may be used to overcome an actual or provisional rejection based on a nonstatutory double patenting ground provided the conflicting application or patent either is shown to be commonly owned with this application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement.
Effective January 1, 1994, a registered attorney or agent of record may sign a terminal disclaimer. A terminal disclaimer signed by the assignee must fully comply with 37 CFR 3.73(b).
Claim(s) 1-5 and 7-9 is (are) rejected on the ground of nonstatutory obviousness-type double patenting as being unpatentable over claims 1-7 of copending Application No. 18/247504. This is a provisional obviousness-type double patenting rejection because the conflicting claims have not in fact been patented.
‘504 (claims 1-7) meets instant claims 1-5 and 7-9, because it discloses the claimed optical film comprising a polyamide-imide having the claimed 1st, 2nd, 3rd, and 4th repeating units comprising diamines of bis(trifluoromethyl)benzidine (TFDB) and bis(3-aminophenyl)sulfone (3DDS, out of about 20 candidates in claim 2) and 80 mol% of amide units owing to terephthaloyl chloride (TPC). The molar ratio of TFDB: 3DDS is 95:5-50:50, falling within the range of claim 5. The laundry list case law (Merck & Co. v. Biocraft Laboratories) may apply to meet the diamine (3DDS) of claims 2-4. 3DDS would inherently meet the ionization energy of claim 2 for meeting the structure. The optical film (50 microns) exhibits a yellowness index of 3 or less and a light transmittance of 88.5% or more, both falling within the ranges of claims 7-8.
‘504 is silent on the haze of claim 9; however, one ordinary skill in the art would have expected the disclosed polyamide-imide film to feature the same haze, because ‘504 obviously satisfy all of the material and chemical limitations (comonomers, molar ratio, and the properties of yellowness index and light transmittance) of the instant invention-see MPEP 2112.01.
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(s) 1 is(are) rejected under 35 U.S.C. 102(a)(1) as being anticipated by Yang et al. (US 20180002487) listed on IDS and ISR.
As to claim 1, Yang (claims, abs., examples) discloses an optical film for image display application (1, 10) comprising a polyamide-imide. The polyimide-amide (Ex.1, Table 1) comprises comonomers of bis(3,4-dicarboxyphenyl)hexafluoropropane dianhydride (6FDA, 20 mol%), terephthaloyl chloride (TPC, 80 mol%), bis(trifluoromethyl)benzidine (TFDB or TFMB, 20 mol%), and 9,9-bis(3-fluoro-4-aminophenyl) fluorene (FFDA). The polyimide-amide would inherently comprise the claimed 1st repeating unit (TFDB /6FDA), 2nd repeating unit (FFDA/6FDA), 3rd TFDB repeating unit (TFDB/TPC), and 4th repeating unit ((FFDA/TPC), and the amide repeating units owing to TPC would inherently be 80 mol%.
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 of this title, 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.
Claim(s) 1-9 is (are) rejected under 35 U.S.C. 103(a) as being unpatentable over Miyamoto et al. (US 20180002487) in view of (US 20180002487), both listed on IDS and ISR.
As to claims 1-9, Miyamoto (claims, abs., examples) discloses an optical film for image display application (1-2, 5) comprising a polyamide-imide having Mw of 100k-600k (37), overlapping with the range of claim 6 (200k-500k). The polyamide-imide (10, 13, 39, 41) is preferably having 80 mol% of amide, and exemplary commoners (Ex.10, Table 1) of 6FDA as dianhydride, TFMB+4,4’-ODA (4,4-diaminodiphenyl ether) as diamines, and 4,4’-oxybis(benzoyl chloride) (OBBC) + TPC as dicarbonxyl chlorides are used. The molar ratio of TFMB is 60 -100 mol% (Table 1), a range that yields a ratio (100:0 to 60:40) of TFMB to a second diamine, such as ODA, overlapping with the range of claim 5 (95:5-65:35). It has been found that where claimed ranges overlap ranges disclosed by the prior art, a prima facie case of obviousness exists - see MPEP 2144.05.
Miyamoto is silent on the claimed second diamine such as the claimed 3DDS of claims 1-4.
Disclosure of Yang is adequately set forth in ¶2 and is incorporated herein by reference. Yang further (20) discloses ODA (4,4’ or 3,3’) and bis(3-aminophenyl)sulfone (3DDS) are functionally equivalent diamines for producing a polyamide-imide to obtain desired mechanical properties. Yang’s 3DDS would inherently meet the ionization energy of claim 2 for meeting the structure.
Therefore, it would have been obvious to one of ordinary skill in the art to have replaced ODA in Miyamoto’s polyamide-imide with Yang’s 3DDS because of their equivalent functionality as primary diamines for producing a polyamide-imide to obtain desired mechanical properties. These conditions appear to equally apply to both productions using similar diamines. This adaptation would have obviously yielded instantly claimed polyamide-imide that comprises the claimed 1st repeating unit (TFDB /6FDA), the 2nd repeating unit (3DDS/6FDA), the 3rd TFDB repeating unit (TFDB/TPC+ OBBC), and 4th repeating unit (3DDs/ TPC+ OBBC); the amide repeating units owing to TPC+ OBBC would be 80 mol%. TFDB, 6FDA, 3DDS, TPC, and OBBC are comonomers used for producing the claimed polyamide-imide according to instant clams 1-4 and pgpub [0082] and Ex. 1-12.
The references are silent on the claimed yellowness index, light transmittance, and haze of claims 7-9. Accordingly, the examiner recognizes that not all of the claimed effects or physical properties are positively stated by the references. However, the references teach a composition containing the claimed components in the claimed amounts prepared by substantially similar components, in this particular case, the aforementioned comonomers, molar ratio, Mw, and amide mol%. Therefore, one of ordinary skill would have a reasonable expectation that the claimed effects and physical properties, i.e. yellowness index, light transmittance, and haze, would necessarily flow from a composition containing all of the claimed components in the claimed amounts prepared by a substantially similar process. Where the claimed and prior art products are identical or substantially identical in structure or composition, or are produced by identical or substantially identical processes, a prima facie case of either anticipation or obviousness has been established. See In re Best, 562 F.2d 1252, 1255, 195 USPQ 430, 433 (CCPA 1977); In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990); see also MPEP § 2112.01(I)-(II). If it is the applicant’s position that this would not be the case: (1) applicant must provide evidence to support the applicant’s position, and (2) it would be the examiner’s position that the application contains inadequate disclosure on how to obtain the claimed effects or properties with only the claimed components in the claimed amounts by the disclosed or claimed process.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to SHANE FANG whose telephone number is (571)270-7378. The examiner can normally be reached on Mon-Thurs. 8am-6pm. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Randy Gulakowski can be reached on 571.572.1302. Information regarding the status of an application may be obtained from the Patent Application Information Retrieval (PAIR) system. Status information for published applications may be obtained from either Private PAIR or Public PAIR. Status information for unpublished applications is available through Private PAIR only. For more information about the PAIR system, see http://pair-direct.uspto.gov. Should you have questions on access to the Private PAIR system, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative or access to the automated information system, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/SHANE FANG/Primary Examiner, Art Unit 1766