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 .
Claims 1-10 are pending.
Claim Rejections - 35 USC § 102
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 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.
Claim(s) 1-5 and 10 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by US 4,246,374 (“Kopchik”).
As to claims 1 and 5, Kopchik teaches a resin, and therefore resin composition as required by claim 5, containing imide units of
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which meets recited formula (1) when R3 is hydrogen, and formula (2) when R3 is methyl (2:24-52). Kopchik teaches example 20 of such resin (Table 1), reacting a raw material resin D with ammonia (8:15-9:40), where resin D is polymethyl methacrylate. While Kopchik does not discuss that the repeating units meet formula (1) (glutarimide group) and formula (2) (N-methyl glutarimide group), the process for preparation, imidization with ammonia, is the same as taught by applicant to provide resins having both units, and therefore it may be presumed that both M1 and M2 are greater than 0. Example 20 teaches that the ammonia imidization of the PMMA results in a resin having 2.18 % nitrogen. Based on the structure of glutarimide units, and remaining non-imidized methyl methacrylate units, it is calculated that this resin has M1+M2 of approximately 17.4-17.6 mol percent, which is within the recited range, and therefore also contain units of formula (3) where R6 is methyl, R5 is hydrogen, and R7 is methyl.
As to claim 2, Kopchik does not state the glass transition temperature; however, since the resin is the same as stated, it is presumed to have the glass transition temperature in the recited range.
As to claim 3, Kopchik does not state the 5% weight loss temperature; however, since the resin is the same as stated, it is presumed to have the 5% weight loss transition temperature in the recited range.
As to claim 4, Kopchik does not discuss orientation birefringence. However, given that Kopchik teaches the same methods to provide the same resins as recited and as disclosed, it is presumed to have orientation birefringence in the recited range.
As to claim 10, Kopchik teaches a resin containing imide units of
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, thus a glutarimide resin (2:25-49). Kopchik teaches example 20 of such resin (Table 1), reacting a raw material resin D with ammonia (8:15-9:40), where resin D is polymethyl methacrylate, which has no acrylic ester monomer units and comprises repeating units of formula (3) where R5 is hydrogen, R6 is methyl, R7 is methyl.
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.
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) 6-8 are rejected under 35 U.S.C. 103 as being unpatentable over US 4,246,374 (“Kopchik”) in view of JP 2002-293956 A (“Kawabata”).
A partial machine translation of JP 2002-293956 A is enclosed.
As to claim 6, the discussion of Kopchik with respect to claim 5 is incorporated by reference. Kopchik does not teach forming an optical film of the resin compostion. However, Kawabata teaches that optical films, specifically polarizer protective films as required by claim 8 (para. 0004). Kawabata teaches that glutarimide resins of the same type can be used (para. 0052-0056), including resins having the same degree of glutarimide content. Kawabata teaches the use of such polymers in forming films, having in plane retardation at 589 nm of less than 10 nm (para. 0136), which is reasonable to expect the same in plane retardation at the recited wavelength. Further, Kawabata teaches thickness (out of plane) retardation in the recited range (para. 0135).
As such, the use of glutarimide resins of Kopchik, in polarizer protective films, including in the recited retardation range, is an obvious end use of the glutarimide polymers of Kopchik as taught by Kawabata.
Claim(s) 9 is rejected under 35 U.S.C. 103 as being unpatentable over US 4,246,374 (“Kopchik”).
As to claim 9, the discussion of Kopchik with respect to claim 5 is incorporated by reference. While not exemplified with the polymer of example 20, Kopchik teaches the polymer can be obtained in forms such as sheet (6:51-55), which is a substrate, and therefore use as a substrate is an obvious modification suggested by Kopchik.
Double Patenting
The nonstatutory double patenting rejection is based on a judicially created doctrine grounded in public policy (a policy reflected in the statute) so as to prevent the unjustified or improper timewise extension of the “right to exclude” granted by a patent and to prevent possible harassment by multiple assignees. A nonstatutory double patenting rejection is appropriate where the conflicting claims are not identical, but at least one examined application claim is not patentably distinct from the reference claim(s) because the examined application claim is either anticipated by, or would have been obvious over, the reference claim(s). See, e.g., In re Berg, 140 F.3d 1428, 46 USPQ2d 1226 (Fed. Cir. 1998); In re Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993); In re Longi, 759 F.2d 887, 225 USPQ 645 (Fed. Cir. 1985); In re Van Ornum, 686 F.2d 937, 214 USPQ 761 (CCPA 1982); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Thorington, 418 F.2d 528, 163 USPQ 644 (CCPA 1969).
A timely filed terminal disclaimer in compliance with 37 CFR 1.321(c) or 1.321(d) may be used to overcome an actual or provisional rejection based on nonstatutory double patenting provided the reference application or patent either is shown to be commonly owned with the examined application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. See MPEP § 717.02 for applications subject to examination under the first inventor to file provisions of the AIA as explained in MPEP § 2159. See MPEP § 2146 et seq. for applications not subject to examination under the first inventor to file provisions of the AIA . A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
The filing of a terminal disclaimer by itself is not a complete reply to a nonstatutory double patenting (NSDP) rejection. A complete reply requires that the terminal disclaimer be accompanied by a reply requesting reconsideration of the prior Office action. Even where the NSDP rejection is provisional the reply must be complete. See MPEP § 804, subsection I.B.1. For a reply to a non-final Office action, see 37 CFR 1.111(a). For a reply to final Office action, see 37 CFR 1.113(c). A request for reconsideration while not provided for in 37 CFR 1.113(c) may be filed after final for consideration. See MPEP §§ 706.07(e) and 714.13.
The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The actual filing date of the application in which the form is filed determines what form (e.g., PTO/SB/25, PTO/SB/26, PTO/AIA /25, or PTO/AIA /26) should be used. A web-based eTerminal Disclaimer may be filled out completely online using web-screens. An eTerminal Disclaimer that meets all requirements is auto-processed and approved immediately upon submission. For more information about eTerminal Disclaimers, refer to www.uspto.gov/patents/apply/applying-online/eterminal-disclaimer.
Claim 1 is provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claim 4 of copending Application No. 18/202,707 (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other because copending claim 4 recites a glutarimide resin having repeating units 1-3, where M1 and M2 are both greater than 0, and a range for M1 + M2 overlapping the recited range. As such, glutarimide resins having the recited value of M1 + M2 are an obvious modification within the range of copending claim 4.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to KREGG T BROOKS whose telephone number is (313)446-4888. The examiner can normally be reached Monday to Friday 9 am to 5:30 pm.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Arrie Reuther can be reached at (571)270-7026. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/KREGG T BROOKS/Primary Examiner, Art Unit 1764