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 .
Examiner Notes
Claims 1-2 and 5-18 are currently pending. Claim 1 has been amended, claims 3-4 have been cancelled and claims 14-18 are newly added.
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 1-2, and 5-18 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.
Claim 1 recites the polyimide includes “an alicyclic tetracarboxylic dianhydride as a tetracarboxylic dianhydride component” as well as “at least one selected from the group…as the tetracarboxylic dianhydride component, in addition to the alicyclic tetracarboxylic dianhydride” which are contradictory statements. By reciting that the polymers from the listed group are “the tetracarboxylic dianhydride component” suggests they are the alicyclic tetracarboxylic dianhydride. However, the claim also recites the polymer of the listed group “in addition to the alicyclic tetracarboxylic dianhydride” suggests they are a third different component. Thus, it is unclear if the polymers from the selected group are a third component of the polyimide or a part of the alicyclic tetracarboxylic dianhydride.
For sake of further examination, the listed group polymers will be viewed as either part of the alicyclic tetracarboxylic dianhydride or as a third different component.
Claims 2 and 5-18 are rejected as being dependent upon indefinite claim 1.
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.
Claims 1-2, 7-16, and 18 are rejected under 35 U.S.C. 103 as being unpatentable over Okada et al. (JP2003-344999) and further in view of Li et al. (CN 109666251A).
Regarding claims 1 and 14-16, Okada discloses a polyimide composition comprising two or more acid dianhydride components and diamine components (0031). Okada teaches the acid dianhydride components including a alicyclic tetracarboxylic dianhydride, fluorine-containing aromatic tetracarboxylic dianhydride, bis(trimellitic anhydride) ester, and diphthalic anhydride having an ether bond (0040); where the bis(trimellitic) anhydride esters includes those represented by instant formula (1) (0043, Formula 2) where R2 includes structures obviating claimed structures (A)-(K) (0044-0045, Formula 4). The diamine component including perfluoroalkyl group (0047).
Okada teaches adding equal moles of diamine and acid dianhydride components (0031).
Okada does not teach an amount of the alicyclic tetracarboxylic dianhydride based on an amount of all the tetracarboxylic dianhydride or a total content of the alicyclic tetracarboxylic dianhydride of the claimed group as claimed in claims 1, and 14-16, however, Okada teaches the alicyclic dianhydride added to increase heat resistance of the composition (0039) as well as facilitate synthesis of polyimide with sufficient molecular weight (0039). It would have been obvious to one having ordinary skill in the art to have determined the optimum value of a cause effective variable such as alicyclic tetracarboxylic dianhydride amounts through routine experimentation in the absence of a showing of criticality. In re Woodruff, 16 USPQ2d 1934, 1936 (Fed. Cir. 1990).
Okada further does not teach the polyimide composition including an acryl-based resin.
Li, in the analogous field of polyimide resin compositions discloses a polymer blend comprising polyimide and polymethyl methacrylate (0008)
A person of ordinary skill in the art before the effective filing date of the claimed invention would have found it obvious for the resin composition of Okada to include polymethyl methacrylate, as taught by Li, providing a composition with complementary and synergistic mechanical properties including high surface strength, good weather resistance and flexibility (0013).
Regarding claim 2, Okada teaches 1,2,3,4-cyclobutanetetracarboxylic acid dianhydride and 1,2,3,4-cyclopentanetetracarboxylic acid dianhydride (0040).
Regarding claim 7, Okada teaches adding 5 to 95 mol% diamine (0049), overlapping the claimed 50 mol% or more (MPEP 2144.05).
Regarding claim 8, Li teaches only polymethyl methacrylate thus, the total amount of methyl methacrylate would be 100 wt%, overlapping the claimed 60 wt% or more.
Regarding claim 9, as polymethyl methacrylate is an exemplary acryl-based resin (see specification 0064), and overlapping range for glass transition temperature would be expected from the prior art.
Once a reference teaching product appearing to be substantially identical is made the basis of a rejection, and the examiner presents evidence or reasoning tending to show inherency, the burden shifts to the applicant to show an unobvious difference. "[T]he PTO can require an applicant to prove that the prior art products do not necessarily or inherently possess the characteristics of his [or her] claimed product. Whether the rejection is based on inherency’ under 35 U.S.C. 102, on prima facie obviousness’ under 35 U.S.C. 103, jointly or alternatively, the burden of proof is the same, and its fairness is evidenced by the PTO’s inability to manufacture products or to obtain and compare prior art products." In re Best, 562 F.2d 1252, 1255, 195 USPQ 430, 433-34 (CCPA 1977)), see MPEP 2112. Applicant has not clearly shown an unobvious difference between the instant invention and the prior art’s product.
Regarding claim 10, Li teaches a mas ratio of polyimide to polymethyl methacrylate of 1 to 50:1, overlapping the claimed ratio of 98:2 to 2:98 (MPEP 2144.05).
Regarding claims 11 and 12, Okada teaches the polyimide prepared into a film (instant formed article or film) (0079).
Regarding claim 13, Okada teaches a film thickness of 10 to 50 µm, overlapping the claimed 5 to 300 µm.
Li teaches a pencil hardness greater than 3H, overlapping the greater than or equal to F; transmittance greater than or equal to 90%, overlapping 85% or more; and tensile modulus of 2800 to 3400 MPa (2.8-3.4 GPa), overlapping the 3.3 GPa or more.
A person of ordinary skill in the art before the effective filing date of the claimed invention would have found it obvious for the film of Okada to have a hardness, transmittance and tensile modulus, as taught by Li to form a film for use as a cover plate (0022, 0055, 0058).
Okada and Li do not expressly teach a haze of 10% or less and yellowness index of 2.0 or less however given the prior art combination teaches the same composition and overlapping range of film thickness as well as overlapping ranges for total light transmittance, tensile modulus and pencil hardness, an overlapping range for haze and yellowness index would be expected from the prior art film.
Once a reference teaching product appearing to be substantially identical is made the basis of a rejection, and the examiner presents evidence or reasoning tending to show inherency, the burden shifts to the applicant to show an unobvious difference. "[T]he PTO can require an applicant to prove that the prior art products do not necessarily or inherently possess the characteristics of his [or her] claimed product. Whether the rejection is based on inherency’ under 35 U.S.C. 102, on prima facie obviousness’ under 35 U.S.C. 103, jointly or alternatively, the burden of proof is the same, and its fairness is evidenced by the PTO’s inability to manufacture products or to obtain and compare prior art products." In re Best, 562 F.2d 1252, 1255, 195 USPQ 430, 433-34 (CCPA 1977)), see MPEP 2112. Applicant has not clearly shown an unobvious difference between the instant invention and the prior art’s product.
Claims 5 and 6 are rejected under 35 U.S.C. 103 as being unpatentable over Okada in view of Li as applied to claim 1 above and further in view of Li (CN111484615A) herein after Li ‘615.
Regarding claims 5 and 6, modified Okada discloses the limitations of claim 1 as discussed above. Okada does not teach the diamine comprising 2,2’-bis(trifluoromethyl)benzidine.
Li ‘615, in the analogous field of polyimide compositions, teaches a diamine comprising 2,2’-bis(trifluoromethyl)benzidine (TFDB; 0087).
A person of ordinary skill in the art before the effective filing date of the claimed invention would have found it obvious for the composition of Okada to include the diamine as taught by Li ‘615, to increase light transparency of the film (0029).
Claim 18 is rejected under 35 U.S.C. 103 as being unpatentable over Okada in view of Li as applied to claim 1 above and further in view of Abiko et al. (US 2021/0395568).
Regarding claim 18, modified Okada discloses the limitations of claim 1 as discussed above. Okada does not teach diphthalic anhydride being one of 3,4’-oxydiphthalic anhydride, 4,4’-oxydiphthalic anhydride, and 4,4’-(4,4’-isopropylidenediphenoxy)diphthalic anhydride.
Abiko, in the analogous field of polyimide resin and films (0001), teaches a composition comprising 3,4’-oxydiphthalic anhydride and 4,4’-oxydiphthalic anhydride
A person of ordinary skill in the art before the effective filing date of the claimed invention would have found it obvious for the composition of Okada to include the diphthalic anhydride as taught by Abiko, to increase film transparency and provide a film with low retardation and low residual stress (0010).
Response to Arguments
Applicant’s arguments with respect to the instant claims have been considered but are moot due to the new grounds of rejection under 35 U.S.C. 103 in view of the new combination of prior art.
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 ALICIA WEYDEMEYER whose telephone number is (571)270-1727. The examiner can normally be reached M-Th 9-4.
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/ALICIA J WEYDEMEYER/Primary Examiner, Art Unit 1781