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 .
Claim Rejections - 35 USC § 112
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 14-20 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.
Considering Claim 14: Claim 14 contains the language “polyimide film imidized comprising the polyamic acid resin according to claim 1”. It is not clear if the film comprises the polyamic acid resin, or if the film is the imidized product of the polyamic acid resin. As such, the scope of the claim is indefinite. For the purpose of further examination, the claim will be interpreted as comprising a polyimide prepared by imidizing the claimed polyamic acid resin, rather than a film comprising the polyamic acid resin.
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 14 and 18-20 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Zhang et al. (CN 111187436). Note: A machine translation is being used for CN 111187436.
Considering Claim 14: Zhang et al. teaches a polymide comprising a cycloaliphatic diamine, a polyhedral oligomeric silsesquioxane diamine, and an acid dianhydride (pg. 3).
Considering Claim 18: Zhang et al. teaches the film as having a thickness of 50 microns and a transmittance of greater than 88.8% (Table 1).
The Office realizes that all of the claimed effects or physical properties are not positively stated by the reference(s). However, the reference(s) teaches all of the claimed ingredients, in the claimed amounts, and teaches the composition as being made by a substantially similar process. The original specification does not provide any disclosure on how to obtain the claimed properties outside the components of the composition itself. Therefore, the claimed effects and physical properties, i.e. the yellow index would necessarily arise from a composition with all the claimed ingredients in the claimed amounts. "Products of identical chemical composition can not have mutually exclusive properties." In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990). A chemical composition and its properties are inseparable. Therefore, if the prior art teaches the identical chemical structure, the properties applicant discloses and/or claims are necessarily present. If it is the applicant’s position that this would not be the case: (1) evidence would need to be provided to support the applicant’s position; and (2) it would be the Office’s position that the application contains inadequate disclosure that there is no teaching enabling a person of ordinary skill in the art to obtain the claimed properties with only the claimed ingredients, absent undue experimentation.
Considering Claim 19: Zhang et al. teaches the elastic modulus as being 5.03 GPa (Table 1).
The Office realizes that all of the claimed effects or physical properties are not positively stated by the reference(s). However, the reference(s) teaches all of the claimed ingredients, in the claimed amounts, and teaches the composition as being made by a substantially similar process. The original specification does not provide any disclosure on how to obtain the claimed properties outside the components of the composition itself. Therefore, the claimed effects and physical properties, i.e. the pencil hardness would necessarily arise from a composition with all the claimed ingredients in the claimed amounts. "Products of identical chemical composition can not have mutually exclusive properties." In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990). A chemical composition and its properties are inseparable. Therefore, if the prior art teaches the identical chemical structure, the properties applicant discloses and/or claims are necessarily present. If it is the applicant’s position that this would not be the case: (1) evidence would need to be provided to support the applicant’s position; and (2) it would be the Office’s position that the application contains inadequate disclosure that there is no teaching enabling a person of ordinary skill in the art to obtain the claimed properties with only the claimed ingredients, absent undue experimentation.
Considering Claim 20: Zhang et al. teaches using the film as a cover material for a display screen (pg. 11).
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.
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.
Claims 1-13 are rejected under 35 U.S.C. 103 as being unpatentable over Cho et al. (US 2011/0196109) in view of Zhang et al. (CN 111187436). Note: A machine translation is being used for CN 111187436.
Considering Claims 1 and 6-10: Cho et al. teaches a polyamic acid (¶0008) prepared by reacting a diamine, an acid dianhydride, and a polyhedral oligomeric silsesquioxane (Example 2).
Cho et al. teaches that the diamine and acid dianhydride can be made from alicyclic groups (¶0086-93), but does not teach their use with sufficient specificity. However, Zhang et al. teaches using alicyclic diamines and dianhydrides in the preparation of a polyhedral oligomeric silsesquioxane modified polyimide (pg. 3). Zhang et al. teaches the aliphatic amine as being 100 mole percent of the non-silsesquioxane amine monomers and the dianhydride mixture as being 60 mole percent of cyclohexane tetracarboxylic acid dianhydride and 40 mole percent of biphenyltetracarboxylic dianhydride in the example (Example 1). Cho et al. and Zhang et al. are analogous art as they are concerned with the same field of endeavor, namely polyhedral oligomeric silsesquioxane modified polyimide. It would have been obvious to a person of ordinary skill in the art to have selected an cycloaliphatic monomer from the structure of Cho et al., as in Zhang et al., and the motivation to do so would have been, as Zhang et al. suggests, to improve the transparency of the polyimide film (pg. 2).
Considering Claim 2: The Office realizes that all of the claimed effects or physical properties are not positively stated by the reference(s). However, the reference(s) teaches all of the claimed ingredients, in the claimed amounts, and teaches the composition as being made by a substantially similar process. The original specification does not provide any disclosure on how to obtain the claimed properties outside the components of the composition itself. Therefore, the claimed effects and physical properties, i.e. the transparency, would necessarily arise from a composition with all the claimed ingredients in the claimed amounts. "Products of identical chemical composition can not have mutually exclusive properties." In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990). A chemical composition and its properties are inseparable. Therefore, if the prior art teaches the identical chemical structure, the properties applicant discloses and/or claims are necessarily present. If it is the applicant’s position that this would not be the case: (1) evidence would need to be provided to support the applicant’s position; and (2) it would be the Office’s position that the application contains inadequate disclosure that there is no teaching enabling a person of ordinary skill in the art to obtain the claimed properties with only the claimed ingredients, absent undue experimentation.
Considering Claims 3-5: Cho et al. teaches the polyamic acid as comprising 0.1 mmol of octa(aminophenyl)silsesquioxane, 19.6 mmol of diamine, and 20 mmol of acid dianhydride (Example 2). Using molecular weights of 1153.6 g/mol, 216.24 g/mol and 294.2 g/mol of the compounds respectively, this results in a polymer with 1.1% of the polyhedral oligomeric silsesquioxane.
Considering Claims 11 and 12: Cho et al. and Zhang et al. teaches zero mole percent of the aromatic diamine as shown above. Thus the species of claim 12 are not required by the claim.
Considering Claim 13: Cho et al. teaches the ratio of the diamine to the dianhydride as being 1:0.9 to 1.1:1 (¶0138).
Claims 14-20 are rejected under 35 U.S.C. 103 as being unpatentable over Cho et al. (US 2011/0196109) in view of Zhang et al. (CN 111187436). Note: A machine translation is being used for CN 111187436.
Considering Claims 14: Cho et al. teaches a polyimide film (¶0143) made from a polyamic acid (¶0008) prepared by reacting a diamine, an acid dianhydride, and a polyhedral oligomeric silsesquioxane (Example 2).
Cho et al. teaches that the diamine and acid dianhydride can be made from alicyclic groups (¶0086-93), but does not teach their use with sufficient specificity. However, Zhang et al. teaches using alicyclic diamines and dianhydrides in the preparation of a polyhedral oligomeric silsesquioxane modified polyimide (pg. 3). Zhang et al. teaches the aliphatic amine as being 100 mole percent of the non-silsesquioxane amine monomers and the dianhydride mixture as being 60 mole percent of cyclohexane tetracarboxylic acid dianhydride and 40 mole percent of biphenyltetracarboxylic dianhydride in the example (Example 1). Cho et al. and Zhang et al. are analogous art as they are concerned with the same field of endeavor, namely polyhedral oligomeric silsesquioxane modified polyimide. It would have been obvious to a person of ordinary skill in the art to have selected an cycloaliphatic monomer from the structure of Cho et al., as in Zhang et al., and the motivation to do so would have been, as Zhang et al. suggests, to improve the transparency of the polyimide film (pg. 2).
Considering Claims 15-17: Cho et al. teaches the polyamic acid as comprising 0.1 mmol of octa(aminophenyl)silsesquioxane, 19.6 mmol of diamine, and 20 mmol of acid dianhydride (Example 2). Using molecular weights of 1153.6 g/mol, 216.24 g/mol and 294.2 g/mol of the compounds respectively, this results in a polymer with 1.1% of the polyhedral oligomeric silsesquioxane.
Considering Claims 18 and 19: The Office realizes that all of the claimed effects or physical properties are not positively stated by the reference(s). However, the reference(s) teaches all of the claimed ingredients, in the claimed amounts, and teaches the composition as being made by a substantially similar process. The original specification does not provide any disclosure on how to obtain the claimed properties outside the components of the composition itself. Therefore, the claimed effects and physical properties, i.e. the transmittance at 550 nm, the yellow index, the Young’s modulus, and the pencil hardness, would necessarily arise from a composition with all the claimed ingredients in the claimed amounts. "Products of identical chemical composition can not have mutually exclusive properties." In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990). A chemical composition and its properties are inseparable. Therefore, if the prior art teaches the identical chemical structure, the properties applicant discloses and/or claims are necessarily present. If it is the applicant’s position that this would not be the case: (1) evidence would need to be provided to support the applicant’s position; and (2) it would be the Office’s position that the application contains inadequate disclosure that there is no teaching enabling a person of ordinary skill in the art to obtain the claimed properties with only the claimed ingredients, absent undue experimentation.
Considering Claim 20: Cho et al. teaches the film as being a cover window for a flexible display device (¶0003).
Correspondence
Any inquiry concerning this communication or earlier communications from the examiner should be directed to LIAM J HEINCER whose telephone number is (571)270-3297. The examiner can normally be reached M-F 7:30-5:00.
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/LIAM J HEINCER/Primary Examiner, Art Unit 1767