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 .
DETAILED ACTION
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 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.
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.
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 set forth in Graham v. John Deere Co., 383 U.S. 1, 148 USPQ 459 (1966), that are applied 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 1-6 and 10-15 are rejected under 35 U.S.C. 103 as being unpatentable over Hashimoto and Fukuta (JP 2022/133200 A, priority 01 Mar. 2021, published 13 Sep. 2022, hereinafter Hashimoto) and evidence provided by PubChem (“1,4-Cyclohexanedicarbonyl dichloride”, accessed 02 Jul. 2025, hereinafter PubChem) and Ohta et al. (US Patent 4,883,718, published 28 Nov. 1989, hereinafter Ohta).
Regarding claims 1-6, Hashimoto teaches a polyamide-imide film comprising a diamine monomer, an acid anhydride monomer, and a dicarboxylic acid compound or a precursor thereof (Abstract). Hashimoto teaches an exemplary example polyamide-imide comprising the monomers 1,2,3,4-cyclobutanetetracarboxylic dianhydride (CBDA), 1,4-cyclohexane-dicarbonyl dichloride (CHOC), and a diamine (paragraphs 0024, 0032-0033, and 0085, and Example 2, Table 1. Note: The chemical structure of CHOC is shown in a diagram in paragraph 0085, reproduced below, in the original Japanese patent document.)
PNG
media_image1.png
176
266
media_image1.png
Greyscale
1,4-cyclohexane-dicarbonyl dichloride (CHOC), a dicarbonyl halide, reads on formula I of claim 1, with x, y, and n equal to zero, X & Y are chlorine, and B is cyclohexane, a saturated C6 alicyclic group. Hashimoto teaches a polymer composition comprising 2,2'-bis(trifluoromethyl)benzidines (Claim 5). Hashimoto teaches his film has a yellowness index of less than 3 (paragraph 0076).
Hashimoto does not disclose the b* of his film. However, given that the polymer film of Hashimoto has yellow index of less than 3 and his film comprises a polyamide-imide polymer falling within the compositional requirements of claim 1, the polymer film of Hashimoto would inherently have the same b* as the claimed invention, and therefore, would fall within the claimed ranges for b*.
In light of the overlap between the claimed polymer film and that disclosed by Hashimoto, it would have been obvious to one of ordinary skill in the art to use a polymer film that is both disclosed by Hashimoto and is encompassed within the scope of the present claims, and thereby arrive at the claimed invention.
Regarding claim 10, Hashimoto teaches the elements of claim 1, and Hashimoto teaches his film has a tensile modulus of elasticity of 6.5 GPa or more (paragraph 0075).
Regarding claims 11, Hashimoto teaches the elements of claim 1.
Hashimoto does not disclose the coefficient of thermal expansion over a temperature range of 50 to 250°C of his film. However, given that the polymer film of Hashimoto has a polyamide-imide polymer falling within the compositional requirements of claim 1, the polymer film of Hashimoto would inherently have the coefficient of thermal expansion over a temperature range of 50 to 250°C as the claimed invention, and therefore, would fall within the claimed range for coefficient of thermal expansion over a temperature range of 50 to 250°C.
Regarding claims 13-14, Hashimoto teaches the elements of claim 1, and Hashimoto teaches the use of his film has a flexible panel in a display device or a foldable type organic EL display (paragraph 0078).
Regarding claim 15, Hashimoto teaches the elements of claim 1, and Hashimoto teaches the use of his film in a flexible printed circuit board (paragraph 0078), and Hashimoto teaches his films have good tensile modulus and tensile strength (paragraph 0090).
Hashimoto does not specifically refer to the flexible printed circuit board as incorporating a metal-clad laminate.
As evidenced by Ohta, flexible copper-clad laminates are used for printed circuit substates, and high temperature resins, such as polyamide imide, are used as flexible copper-clad circuit substrates (col. 1, lines 16-25).
Thus, it is the examiner’s position that Hashimoto is teaching the use of his film in a metal-clad laminate.
Claim 16 is rejected under 35 U.S.C. 103 as being unpatentable over Miyamoto et al. (KR 2020/0010081 A, published 30 Jan. 2020, hereinafter Miyamoto).
Regarding claim 16, Miyamoto teaches a polyamide-imide resin comprising 2,2’-bis(trifluoromethyl)benzidine, 3,3',4,4'-biphenyltetracarboxylic dianhydride, and 1,4-cyclohexanedicarboxylic acid (Abstract, claim 2, and paragraphs 0114 and 0119). Miyamoto teaches his polyamide-imide film is used in flexible liquid crystal or organic EL display devices (paragraph 0125). Miyamoto teaches a polyamide formed from 55.61 millimoles of 2,2’-bis(trifluoromethyl)benzidine, 22.57 millimoles of dianhydride, and 33.72 millimoles of 1,4-cyclohexanedicarboxylic acid (paragraph 0248). That is, based on 100 moles of the diamine, Miyamoto’s polyamide-imide is composed of 100 moles of 2’-bis(trifluoromethyl)benzidine, about 41 millimoles of dianhydride, and about 60 millimoles of 1,4-cyclohexanedicarboxylic acid, which corresponds to the composition recited in claim 16. Miyamoto teaches the thickness of his polyamide-imide film is 25 µm or more (paragraph 0133), and the yellowness of his polyamide-imide film is 1.1 or less (paragraph 0135). Thus, Miyamoto teaches a film with the claimed yellowness index at a thickness of 25 µm.
Miyamoto does not disclose the b* of his film. However, given that the polymer film of Miyamoto has yellow index of 1.1 or less and his film comprises a polyamide-imide polymer falling within the compositional requirements of claims 1 and 16, the polymer film of Miyamoto would inherently have the same b* as the claimed invention, and therefore, would fall within the claimed ranges for b*.
In light of the overlap between the claimed polymer film and that disclosed by Miyamoto, it would have been obvious to one of ordinary skill in the art to use a polymer film that is both disclosed by Miyamoto and is encompassed within the scope of the present claims, and thereby arrive at the claimed invention.
Allowable Subject Matter
Examiner notes that none of the prior art known to the examiner teaches the dicarbonyl halide of claim 1 in which any one of x, y, or n is non-zero, although further search would be required to determine if an independent claim incorporating this new limitation is allowable.
Response to Arguments
Applicant's arguments filed 08 Oct. 2025 have been fully considered, but they were not persuasive regarding the rejections based on Hashimoto. The claim amendments have overcome the rejections based on Alvina. Applicant’s amendments have necessitated new grounds of rejection, which are presented above.
Applicant amended claims 1-6, 10-11, and 13, cancelled claims 7-9 and 12, and added claim 16.
Applicant argues that Hashimoto teaches the inclusion of a diamine different than those claimed.
However, Hashimoto teaches the inclusion of a second diamine besides the diamine represented by his formula (1), including the diamines listed in claim 1.
Applicant argues that none of the examples taught by Hashimoto have the claimed yellowness index.
However, “applicant must look to the whole reference for what it teaches. Applicant cannot merely rely on the examples and argue that the reference did not teach others.” In re Courtright, 377 F.2d 647, 153 USPQ 735,739 (CCPA 1967). As presented above, Hashimoto teaches resins with a yellowness index of less than 3 (paragraph 0076). Note: Hashimoto’s films have a thickness of 50 µm (paragraph 0087), rather than the 25 µm cited in the claims for the yellowness index.
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 extension fee 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 date of this final action.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to JOHN VINCENT LAWLER whose telephone number is 571-272-9603. The examiner can normally be reached on M - F 8:00 am - 5:00 pm ET. 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, Callie Shosho, can be reached at 571-272-1123. 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.
/JOHN VINCENT LAWLER/
Primary Examiner, Art Unit 1787