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 .
Information Disclosure Statement
The information disclosure statements (IDS) submitted on 03/31/2026 and 05/29/2026 have been considered by the examiner.
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.
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.
Claims 1, 4-6 and 9 are rejected under 35 U.S.C. 103 as being unpatentable over Ebara et al. (WO 2018/225825).
Regarding claim 1, Ebara teaches a resin thin film laminate which serves as a substrate for a flexible device which is a transparent hear resistant laminate (“a transparent heat-resistant laminate”) (Paragraph [0001]). The laminated comprise a release layer (“layer a”) and a resin thin film (“layer b”) in contact with each other which are both formed form polyimides (“layer a: a layer that comprises a polyimide composition”) (Paragraph [0014]-[0015]). The release layer does not comprise silicon dioxide particles and the resin thin film does contain silicon dioxide particles (“layer b: a layer that contains a polyimide composition and has a higher inorganic filler content that the layer a”) (Paragraph [0011]). Furthermore, a fine structure may be formed on the release layer in order to further enhance adhesion to the resin thin film (“an intermingled layer is present at an interface between the layer a and the layer b”) (Paragraph [0079]).
As discussed above, the release layer, equivalent to layer a, does not comprise silicon dioxide particles (“the layer (a) contains less than 0.03% by mass of an inorganic filler”).
Furthermore, the resin thin film, equivalent to layer b, contains silicon dioxide particles. The resin thin film is formed with a polyamide mixed with silicon dioxide particles at a ratio of 10:1 to 1:10 by mass and the solids content is 0.5 to 30% by mass (Paragraph [0070]). One of ordinary skill in the art would recognize that the resulting mass percentage of silica dioxide particles is at least 0.05% by mass or greater (“the layer (b) contains 0.03% by mass or more of an inorganic filler”).
Ebara further teaches the fine structure, or the intermediate layer, to the formed such that a portion of the release layer dissolves into the resin thin film, resulting in a gradient-like boundary between the release layer and the resin thin film layer (“wherein the intermingled layer is a transition layer in which the chemical composition contained in the layer (a) and the chemical composition in the layer (b) change with a gradient”) (Paragraph [0078]).
Ebara is silent with respect to the thickness of the intermediate layer being 3 microns or more.
However, one of ordinary skill in the art would find it obvious to optimize the thickness of the intermediate layer to be overlapping with 3 microns or more in order to enhance the adhesion between the release layer and the resin thin film as discussed above. MPEP 2144.05(II)(A): "[W]here the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation." In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955).
Ebara is further silent with respect to the surface of the resin thin film being superimposed on an inorganic substrate and a peel strength between the laminate and the inorganic substrate after heating at 300°C is 0.3 N/cm or less.
However, it is noted that the claims require a transparent heat-resistant laminated film and these limitations appear to be directed towards an intended use of the films due to the claim language of “to be superimposed” and the resulting superimposing is defined in withdrawn claim 7. As such, the property required by claim 1 may be taught by Ebara if the structure of the films from Ebara are identical to those of the claimed invention. MPEP 2112.01: 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. In re Best, 562 F.2d 1252, 1255, 195 USPQ 430, 433 (CCPA 1977). "When the PTO shows a sound basis for believing that the products of the applicant and the prior art are the same, the applicant has the burden of showing that they are not." In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990). Therefore, the prima facie case can be rebutted by evidence showing that the prior art products do not necessarily possess the characteristics of the claimed product. In re Best, 562 F.2d at 1255, 195 USPQ at 433.
In the instant case, Ebara teaches each of the features required by claim 1 above, including the layer (a), along with the required composition, the layer (b), along with the required composition, and the features of the intermingled layer having the required gradient.
Therefore, it would have been obvious to one of ordinary skill in the art that the identical structures of Ebara and the claimed invention would have identical properties, including being able to be superimposed on an inorganic substrate and a peel strength between the films and the substrate after heating at 300°C being 0.3 N/cm or less.
Regarding claim 4, Ebara teaches the laminates as discussed above with respect to claim 1. The thickness of the resin thin film layer is from 5 to 50 microns and the thicknes of the release layer is from 1 nm to 200 microns resulting in a total thicknes from 5 microns to 250 microns (Paragraphs [0070]; [0080]).
Regarding claim 5, Ebara teaches the laminates as discussed above with respect to claim 1. As discussed above, the release layer and the resin thin film layers are both formed from a polyimide resin composition.
Regarding claim 6, Ebara teaches the laminates as discussed above with respect to claim 1. As shown in figure 7, the laminates only include the release layer, the resin thin film layer and the interface between the two (Paragraph [0098]).
Regarding claim 9, Ebara teaches the laminates as discussed above with respect to claim 1. Ebara further teaches the laminates having a light transmittance of 75% or more (Paragraph [0086]).
Response to Arguments
Applicant's arguments filed 06/09/2026 have been fully considered but they are not persuasive.
On pages 5-10, applicant argues that the amendments to claim 1 overcome the 35 U.S.C 103 rejection in view of Ebara.
The limitation of “wherein the intermingled layer is a transition layer in which the chemical composition contained in the layer (a) and the chemical composition contained in the layer (b) change with a gradient” overcomes Ebara such that the methods of the instant invention and Ebara are different. The instant invention aims to provide a diffusion between the two layers resulting in the desired intermingled layer whereas Ebara relies on forming the release layer and heating and drying the layer before the addition of the resin thin film. As such, this method would not teach a transition layer with a gradient.
The examiner is not persuaded by this argument/amendment such that Ebara teaches applicant’s method. While paragraph [0075] describes the heating and drying steps argued by the applicant, paragraph [0078] specifically teaches “a portion of the release layer dissolves into the resin thin film forming composition, resulting in a gradient-like boundary between the release layer and the resin thin film.” As such, Ebara teaches this amendment such that the resin thin film may dissolve directly into the release layer resulting in the claimed gradient.
Applicant further argues that the amendment to claim 1 now requiring the specific inorganic filler contents for both of the layers (a) and (b) and the resulting peel strength overcomes the teaching of Ebara. Instead, Ebara appears to require the release layer to be superimposed on an inorganic substrate rather than the resin thin film layer. As such, Ebara cannot teach the required peel strength.
The examiner does not find this argument persuasive such that this particular limitation appears to be direct towards an intended use of the laminates. This is evidenced by the language “to be superimposed” and the resulting placement of the layers is required by a withdrawn claim 7. As such, the examination of this limitation is based on whether or not the films of Ebara are capable of achieving the desired peel strength wherein one of ordinary skill in the art would recognize that identical structures would have identical properties (MPEP 2112.01).
As noted in the rejection above, Ebara and the instantly claimed invention have an identical structure with respect to each of the layers. This includes the silica/inorganic filler contents for each of the layers. The release layer contains no silica and the resin thin film contains at least 0.05% by mass or greater. Ebara further teaches the intermingling of the two layers to form a gradient. Lastly, the examiner notes that the inorganic substrate described in Ebara is only a support for the layers during formation which is different from a substrate to which the final laminate is applied to. This is expressly stated in paragraph [0084]: [Step to obtain a resin thin film laminate] This step involves peeling the release layer and the resin thin film together from the support substrate to obtain a resin thin film laminate.
Therefore, the examiner contends that the identical structures of Ebara and the claimed invention would teach the required peel strength of claim 1.
Ultimately, the examiner contends that the amendments to claim 1 do not overcome the teachings of Ebara and the current rejection is made FINAL.
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 DANIEL P DILLON whose telephone number is (571)270-5657. The examiner can normally be reached Mon-Fri; 8 AM to 5 PM.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, MARIA V EWALD can be reached at 571-272-8519. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/DANIEL P DILLON/Examiner, Art Unit 1783
/MARIA V EWALD/Supervisory Patent Examiner, Art Unit 1783
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