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 .
Response to Arguments
Applicant’s arguments have been considered but are moot because the new ground of rejection does not rely on any reference applied in the prior rejection of record for any teaching or matter specifically challenged in the argument. Due to amendments, the 35 USC 112 rejections have been withdrawn.
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.
This application currently names joint inventors. In considering patentability of the claims the examiner presumes that the subject matter of the various claims was commonly owned as of the effective filing date of the claimed invention(s) absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and effective filing dates of each claim that was not commonly owned as of the effective filing date of the later invention in order for the examiner to consider the applicability of 35 U.S.C. 102(b)(2)(C) for any potential 35 U.S.C. 102(a)(2) prior art against the later invention.
Claim(s) 1, 3-7, 9 and 15-18 is/are rejected under 35 U.S.C. 103 as being unpatentable over De et al. (US 2016/0313641 A1, hereafter De) in view of Ishii et al. (WO 2014/046180 A9; with citations taken from the previously provided Google patent document)
As to claim 1, De teaches a method comprising providing a substrate (para 0121), coating onto the substrate a composition comprising 3-30 weight percent based on total weight of the composition of a polyimide (para 0107), wherein the polyimide comprises a reaction product of a dianhydride and a diamine (para 0026), a solvent comprising cyclopentanone (para 0103) at the claimed weight percent (para 0104) and one or more inorganic pigments (para 0118-0119) at the claimed weight percent (para 0112), wherein the polyimide is soluble in the cyclopentanone at room temperature in the range of 5 to 30 weight percent (room temperature para 0104), drying to form a solid film on the substrate having a thickness of 1 to 5 micrometers (para 0105-0106).
De does not disclose wherein the polyimide is soluble in the cyclopentanone in the range of 5 to 30 weight percent specifically at room temperature. However, it is a known practice in the conventional art of forming polyimide films for optical display devices as taught by Ishii et al., in the field of endeavor to which Hayashi directly pertains, to dissolve polyimide in cyclopentanone in the range of 5 to 30 weight percent specifically at room temperature (polyimide powder is dissolved in cyclopentanone at room temperature to form a composition of 11.4 weight percent polyimide and 88.6 weight percent cyclopentanone, wherein the composition is then dried to form a solid film on a glass substrate; "Adjustment of polyimide solution and film formation of polyimide film"; pg. 10 in Ishii/ Examples in Ishii). Thus, it would have been obvious to one of ordinary skill in the art at the time of the invention to have dissolved the polyimide in the cyclopentanone of De specifically at room temperature, in order to reliably and sufficiently solubilize the polyimide in said solvent as taught by Ishii.
It is noted that regarding the weight percentages, De modifies the percentage amounts based upon desired properties, in addition to the ranges cited above. It has been held that where the general conditions of a claim are disclosed in the prior art, discovering the optimum or workable ranges involves only routine skill in the art. In re Aller, 220 F.2d 454, 105 USPQ 223 (CCPA 1955).
As to claims 3-4, the substrate is as claimed in De para 0124.
As to claim 5, the substrate will comprise a conductive layer in De as it fulfills several applications in para 0146, for example.
As to claim 6, De teaches one or more inorganic pigments (para 0118-0119) at the claimed weight percent.
As to claim 7, De teaches drying occurs at the claimed temperature in para 0126.
As to claim 9, De teaches the inorganic particles/pigments in para 0118-0119.
As to claim 15, as De and Ishii teach the claimed method, it follows that the claimed physical properties are inherent to the product as naturally flowing from the claimed method.
As to claims 16-17, titania is taught, for example, by De in para 0119.
As to claim 18, De teaches these components, for example, in para 0026-00.35, 0061-0070, and 0156.
Claim(s) 2 is/are rejected under 35 U.S.C. 103 as being unpatentable over De et al. (US 2016/0313641 A1, hereafter De) in view of Ishii et al. (WO 2014/046180 A9; with citations taken from the previously provided Google patent document) and in further view of Hayashi et al. (US 2006/0204678 A1)
De and Ishii do not teach gravure printing. Hayashi is in the same field of endeavor and deposits a polyimide composition using gravure printing (para 0034). Therefore, it would have been obvious to one of ordinary skill in the art at the time of filing to modify De and Ishii to include gravure printing as Hayashi teaches the art recognized suitability and utility of such.
Conclusion
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 nonprovisional extension fee (37 CFR 1.17(a)) 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 mailing date of this final action.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to KELLY M GAMBETTA whose telephone number is (571)272-2668. The examiner can normally be reached M-F 9-5:30.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Gordon Baldwin can be reached at 571-272-5166. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
KELLY M. GAMBETTA
Primary Examiner
Art Unit 1715
/KELLY M GAMBETTA/ Primary Examiner, Art Unit 1715
Prosecution Insights