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 .
Priority
Applicant cannot rely upon the certified copy of the foreign priority application to overcome this rejection because a translation of said application has not been made of record in accordance with 37 CFR 1.55. When an English language translation of a non-English language foreign application is required, the translation must be that of the certified copy (of the foreign application as filed) submitted together with a statement that the translation of the certified copy is accurate. See MPEP §§ 215 and 216.
Claim Analysis
A review of the data provided in Tables 1 and 2 of the original disclosure is at least suggestive that
where both the conditions that (a) the amount of filler added to the polyamide is outside the range set forth in claim 3 and (b) the particle size distribution of said filler, defined by D90- D10/D50, is outside the range disclosed in claim 6, and/or
the evaporation amount of the solvent during the drying operation that follows the application of the polyamide material in solution to a belt is outside the range disclosed in claim 11,
the natural volume between the film surface and a reference plane parallel to the surface plane and set at the elevation of the highest protrusion above the film surface will not necessarily conform with the range stipulated in claim 1. (In Table 1, the film of comparative examples 1-4 simultaneously contain a filler in quantities outside the range of claim 3 and also have a particle size distribution not conforming with claim 6. Table 2 reflects that the natural volume defined supra is not within a range of 100 μm3 and 2800 μm3. Likewise, comparative examples 5 and 6 report an evaporation rate not adhering to the limitation of claim 11 and Table 2 indicates these films to also have a natural volume that is non-compliant with the volume aspect of claim 1. When the volume aspect that is related to surface roughness is not met, it can be seen from Table 2 that desirable optical properties and/or windability properties of the film are deleteriously impacted.)
The data is not clear that, where the amount of filler deviates from that in claim 3 or the particle size distribution is beyond the bounds of the range in claim 6, but not both, the resulting polyamide film will fail to possess a comparable roughness (as manifested in the claimed volume) but neither does it confirm that the volume limitation will be necessarily satisfied. The Examiner also surmises that the average particle size of the particles will have to be within certain limits inclusive of the range of claim 4, and possibly defined entirely by claim 4.
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 1-11 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Lee et al., U.S. Patent Application Publication No. 2023/0093730.
Applicant is encouraged to review the subject matter of prior art Test Example 1 and compare it with that of Example 1 beginning at the bottom of page 52 of the instant Specification. The monomers from which the polyamides of the two disclosures are derived exactly the same as is the commercial embodiment of a silica filler (and, therefore, all the silica properties including the average particle size D50 and particle size distribution, D90- D10/D50, will be the same.) Whereas the amounts of the silica incorporated into instant example 1 and prior art test example 1 are admittedly different, 1,000 ppm and 1,500 ppm respectively, the amount of this component added to the prior art example is still well within the limits of claim 3. In both cases, a silica-filled polyamide solution in DMAc is cast onto a belt and dried. The stated amount of evaporated solvent also differ somewhat, 1.4 kg/m3 versus 1.8 kg/m3 but, as before, the latter figure is within the bounds of the range set forth in claim 11.
Given the very strong parallels in the two films, both compositionally and in terms of the process by which the film is made and the amount of solvent evaporate being similar, the Examiner asserts that the volume limitation of claim 1 is inherently met by the prior art polyamide film.
As for claims 2 and 5, the reference, of course, also does not directly address the roughness of the second, or belt, side of prior art polyamide film. It is, observed, however, that the windability of the prior art film is designated as “good” and the instant Specification states that this property is dependent, at least in part on the natural volume of the second side (page 7, line 21 to page 8, line 9). Hence, the skilled artisan has a reasonable expectation that the prior art polyamide is also in possession of a similar degree of roughness on its second/belt side.
Concerning claims 7 and 8, given that the claimed- and prior art polyamide films are similarly-constituted, and are produced using a comparable process, the Examiner submits that they will inherently be in possession of the properties described in these claims.
The prior art film has application in the manufacture of cover windows also comprising a functional layer according to the teachings of [0015].
A check of the contents of the global dossier yielded opinions from a couple of foreign offices that commonly assigned disclosures with earlier publication dates also formed a basis for rejection but the current Examiner did not concur at least because one or more of the film attributes thought crucial to obtaining a surface roughness consistent with that claimed was not clearly held by those prior art films. For instance, U.S. Patent Application Publication No. 2022/0402254 teaches a polyamide film made from the same monomers and also contained corresponding quantities of silica filler with a D50 anticipatory of the requirements of claim 3. However, it was not evident that said filler had a comparable particle size distribution and the data in Applicants’ Specification seems to be suggestive that this property must be held by the filler component too. Similarly, while Example 1 mentions addig barium sulfate as a filler to a polyamide-based film-forming solution, and [0047,0051] teach filler particles of comparable D50 and similar amounts of the same, there is once more no indication of its particle size distribution.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to MARC S ZIMMER whose telephone number is (571)272-1096. The examiner can normally be reached M-F 8:30-5:00.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Heidi Kelley can be reached at 571-270-1831. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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January 29, 2026
/MARC S ZIMMER/Primary Patent Examiner, Art Unit 1765