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 with traverse of claims 1-9 in the reply filed on 6/16/2025 is acknowledged. The traversal is on the ground(s) that the search of all groups would not constitute a serious burden. This is not found persuasive because the application is a 35 USC 371 application where the special technical feature does not make a contribution over the prior art as described in the previous office action. Further, examination of all groups consists of a serious burden as they are drawn to separate categories of invention and thus separate searches. A product by process claim does not include the method steps, only the structure that is created by the steps. See MPEP 2113.
The requirement is still deemed proper and is therefore made FINAL.
Claim Rejections - 35 USC § 112
The following is a quotation of the first paragraph of 35 U.S.C. 112(a):
(a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
The following is a quotation of the first paragraph of pre-AIA 35 U.S.C. 112:
The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention.
Claims 1-9 are rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, because the specification, while being enabling for making a film with particular polyimides and pigments, does not reasonably provide enablement for the entire class of polyimides as claimed. The specification does not enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the invention commensurate in scope with these claims. As to the In re Wands 858 F.2d 731, 737, 8 USPQ2d 1400, 1404 (Fed. Cir. 1988) factors: The breadth of the claims is such that all polyimides may be used, but their resultant film including pigments has to fit certain criteria. The nature of the invention, predictability and state of the prior art is such that, to arrive at the particular dielectric constant, transmission and breakdown voltage of the film, an undue amount of experimentation would be needed to use the correct materials. The instant specification and working examples use particular polyimides and pigments for this purpose. One of ordinary skill in the art, when seeking to make and use the invention as broadly claimed, would have to go through a large number of possible polyimide/pigment combinations to arrive at those that would make the film as claimed.
The following is a quotation of 35 U.S.C. 112(b):
(b) CONCLUSION.—The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the inventor or a joint inventor regards as the invention.
The following is a quotation of 35 U.S.C. 112 (pre-AIA ), second paragraph:
The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.
Claims 1-9 are rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor (or for applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention.
Claim 1 requires a film resulting in a particular dielectric constant, transmission and breakdown voltage of the film without claiming what polyimides and pigments are used to arrive at these constraints. For examination purposes, then, it is assumed that if the film is made by the claimed method with the broadly claimed ‘polyimide’ and ‘pigment’ that it would be inherent that the resulting film has these properties.
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, 5-6 and 8-9 is/are rejected under 35 U.S.C. 103 as being unpatentable over Hayashi et al. (US 2006/0204678 A1) in view of Ishii et al. (WO 2014/046180 A9; with citations taken from the attached Google patent document)
As to claim 1, Hayashi et al. teaches a method comprising providing a substrate, coating onto the substrate a composition comprising the claimed weight percent based on total weight of the composition of a polyimide; a solvent comprising cyclopentanone in the claimed weight percent based on total weight of the solvent; and 0.1-15 weight% of one or more pigments, wherein the polyimide is soluble in the cyclopentanone in the range of 5 to 30 weight percent, drying form a solid film on the substrate having a thickness of 1 to 5 micrometers (polyimide powder (present at 14 weight percent based on the total weight of the composition) is dissolved in cyclopentanone (present at 86 weight percent based on the total weight of the composition). wherein the composition further comprises weight percent of one or more pigments; the composition is then dried to form a solid film on the substrate having a thickness of 5 micrometers; Example 1 and para 0127, pigments in 0063-0064.
Hayashi 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 HAYASHI specifically at room temperature, in order to reliably and sufficiently solubilize the polyimide in said solvent as taught by Ishii. As was discussed above, it is assumed that if the film is made by the claimed method with the broadly claimed ‘polyimide’ and ‘pigment’ taught by Hayashi and Ishii that it would be inherent that the resulting film has these properties.
As to claim 2, the coating comprises gravure coating (the polyimide composition is applied to the substrate using gravure printing; Hayashi et al. para 0034).
As to claim 3, Hayashi et al. further teaches where the substrate comprises a flexible polymeric substrate (the substrate comprises biaxially stretched polymethyl methacrylate-based polymer resin; paras 0023, 0119)
As to claim 5, a conductive ITO layer is used by Hayashi para 0102.
As to claim 6, the drying is as claimed in Hayashi Examples.
As to claims 8-9, the pigment is as claimed in Hayashi para 0063-0064.
Claim(s) 1-9 is/are rejected under 35 U.S.C. 103 as being unpatentable over Hayashi et al. (US 2006/0204678 A1) in view of Ishii et al. (WO 2014/046180 A9; with citations taken from the attached Google patent document) in further view of Lee et al. (US 2020/0354634 A1)
As to claims 1-3, Hayashi and Ishii are discussed above, with Hiyashi including pigment particles. Lee further includes pigments in para 0061 to produce the appropriate wavelength and properties in the film. Therefore, it would be obvious to include the particles as dye as Lee et al. teaches the art recognized suitability and utility of such.
Hayashi and Ishii are discussed above, but do not include wherein the flexible polymeric substrate comprises polyethylene terephthalate or polyethylene naphthalene. However, it is known in the conventional art of forming polyimide films for optical display devices as taught by Lee et al., the field of endeavor to which Hayashi and Ishii directly pertain. that polyethylene terephthalate is a typical material for forming display substrates upon which polyimide composition are to be coated (the base substrate upon which a polyimide/cyclopentanone composition is applied comprises polyethylene terephthalate; paragraphs 0017, 0019 and 0039 of Lee). Thus, it would have been obvious to one of ordinary skill in the art at the time of the invention to have modified and/or substituted the substrate of Hayashi and Ishii such that the resulting substrate specifically comprises polyethylene terephthalate, as taught by Lee, in order to provide a conventionally reliable substrate for the coating.
As to claim 5, a conductive ITO layer is used by Hayashi para 0102 and Lee para 0069.
As to claim 6, the drying is as claimed in Hayashi Examples.
As to claim 7, the amount of pigment is in Lee para 0065.
As to claims 8-9, the pigment is as claimed in Hayashi para 0063-0064, Lee para 0063-0065.
Conclusion
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.
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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.
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KELLY M. GAMBETTA
Primary Examiner
Art Unit 1715
/KELLY M GAMBETTA/ Primary Examiner, Art Unit 1715