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 .
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.
Claims 1, 10, 12-13, and 16-18 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by U.S. Patent Pub. No. 2017/0283990 to Nakagaki et al.
As to claims 1, 10, 12-13, and 16-18, Nakagaki discloses a polyimide based resin film comprising repeating units derived from 136 grams of para-phenylenediamine (PPD), 259.0 grams of 3,3’,4,4’-biphenyltetracarboxylic dianhydride and 82.30 grams of pyromellitic dianhydride (Examples 1-11, and 13-14, Table 1). Nakagaki discloses a molar ratio of 60:40 and 70:30 of BPDA and PMDA and 100 of para-phenylenediamine
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244
585
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242
308
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124
250
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Claims 1, 10, 12-13, and 16-18 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by U.S. Patent Pub. No. 2013/0211040 to Nakao et al.
As to claims 1, 10, 12-13, and 16-18, Nakao discloses polyimide-based resin films comprising the following repeating units:
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Derived from 0.55 mols of 3,3’,4,4’-biphenyltetracarboxylic dianhydride and 0.442 mols of pyromellitic dianhydride, and mixtures of aromatic diamines that include 0.45-0.50 mols of p-phenylenediamine (Examples 1-7).
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.
Claims 2-9 are rejected under 35 U.S.C. 103 as being unpatentable over U.S. Patent Pub. No. 2013/0211040 to Nakao et al.
As to claims 2-9, Nakao discloses polyimide-based resin films comprising the following repeating units:
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414
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Derived from 0.55 mols of 3,3’,4,4’-biphenyltetracarboxylic dianhydride and 0.442 mols of pyromellitic dianhydride, and mixtures of aromatic diamines that include 0.45-0.50 mols of p-phenylenediamine (Examples 1-7).
Nakao discloses films of 30 microns and properties relating to elastic modulus, coefficient of thermal expansion, glass transition temperature, and water vapor transmission rate. With regards to the claimed properties, the Office realizes that all of the claimed effects or physical properties are not positively stated by the reference. However, the reference teaches all of the claimed ingredients used within the claimed amounts. Therefore, the claimed effects and physical properties would implicitly be achieved by a composite with all the claimed ingredients. If it is the applicants’ position that this would not be the case: (1) evidence would need to be provided to support the applicants’ position; and (2) it would the Office’s position that the application contains inadequate disclosure that there is no teaching as to how to obtain the claimed properties with only the claimed ingredients.
As to claims 14-15, Nakao discloses the use of 2,2-bis(3,4-dicarboxyphenyl)-1,1,1,3,3,3-hexafluoropropane dianhydride or 2,2-bis(2,3-dicarboxyphenyl)-1,1,1,3,3,3-hexzfluoropropane dianhydride (0046). At the time of filing it would have been obvious to a person of ordinary skill in the art to substitute the dianhydrides used in the examples of Nakao with the fluoro-containing dianhydrides taught in Nakao because they are suggested as functional equivalents.
Claims 11 and 19-20 are rejected under 35 U.S.C. 103 as being unpatentable over U.S. Patent Pub. No. 2013/0211040 to Nakao et al. in view of JP-2019/172746 to Uno et al.
As to claims 11, Nakao discloses polyimide-based resin films comprising the following repeating units:
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414
260
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Derived from 0.55 mols of 3,3’,4,4’-biphenyltetracarboxylic dianhydride and 0.442 mols of pyromellitic dianhydride, and mixtures of aromatic diamines that include 0.45-0.50 mols of p-phenylenediamine (Examples 1-7).
Nakao discloses the use of p-phenylenediamine. Uno within the same field of endeavor teaches polyimide-based resin films wherein the diamine component is selected from m-phenylenediamine (See Examples).
At the time of filing it would have been obvious to a person of ordinary skill in the art to substitute p-PDA in Nakao with m-PDA taught in Uno to improve transparency and low thermal expansion (desired by Nakao) of the film (0026-0027).
As to claims 19-20, Nakao in view of Uno teach suitable applications for the polyimide-based films including optical materials, such as display devices (0045). It is prima facie obvious to combine two compositions each of which is taught by the prior art to be useful for the same purpose, in order to form a third composition to be used for the very same purpose.... The idea of combining them flows logically from their having been individually taught in the prior art See MPEP 2100.
Conclusion
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/MICHAEL L LEONARD/ Primary Examiner, Art Unit 1763
