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
The previous 102 rejection has been overcome by the amendment supported by the original claim.
The previous ODP rejections have been overcome by the approved TD.
The text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action.
The previous restriction and 103 rejections have been maintained, but the position has been modified due to the amendment.
Claim Rejections - 35 USC § 103
Claim(s) 1 is (are) rejected under 35 U.S.C. 103(a) as being unpatentable over 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%. The disclosed range (80%) is close to the new limitation of “more than 80% of claim 1. A prima facie case of obviousness exists where the claimed ranges and prior art ranges do not overlap but are close enough that one skilled in the art would have expected them to have the same properties. Titanium Metals Corp. of America v. Banner, 778 F.2d 775, 227 USPQ 773 (Fed. Cir. 1985).
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 Yang et al. (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 disclosed range (80%) is close to the new limitation of “more than 80% of claim 1. A prima facie case of obviousness exists where the claimed ranges and prior art ranges do not overlap but are close enough that one skilled in the art would have expected them to have the same properties. Titanium Metals Corp. of America v. Banner, 778 F.2d 775, 227 USPQ 773 (Fed. Cir. 1985).
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.
Response to Arguments
The argument for allowance of amended claims has been fully considered but not persuasive.
Applicant’s argument pertaining to the amendment has been rendered moot.
Therefore, the previous restriction and 103 rejections have been maintained, but the position has been modified due to the amendment.
Applicant’s amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). 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 extension fee 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 date of this final action.
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.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Randy Gulakowski can be reached on 571.572.1302. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/SHANE FANG/Primary Examiner, Art Unit 1766
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