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 .
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.
Claims 1-20 rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-20 of recently patented copending Application No. 18/254,543 (App. No. 18/254,543).
Although the claims at issue are not identical, they are not patentably distinct from each other because App. No. 18/254,543 teaches each and every component and reads upon the claims in an anticipatory manner.
Regarding claims 1-20, App. No. 18/254,543 teaches a polyimide-based resin film comprising a polyimide containing a repeating unit of chemical formula 1 and a repeating unit of formula 2, wherein Y2 is formula (3-1), (claim 1), the polyimide film having a residual stress of 46 MPa or less in an inorganic substrate at a thickness of 10 microns (claim 2), a retardation value of 300 nm or less at a thickness of 10 microns (claim 3), a refractive index of 1.71 or more in a thickness direction at a wavelength of 532 nm based on a thickness of 10 microns (claim 4), a haze value of less than 1.0% at a thickness of 10 microns, a Bow value of 48 microns or less at a thickness of 10 microns (claim 6), a yellow index of 25 or less at a thickness of 10 microns, (claim 7), wherein X2 of formula (2) is formula (4-1) (claims 12-15), and a substrate and optical device comprising the polyimide film of claim 1. (claims 19-20).
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.
(a)(2) the claimed invention was described in a patent issued under section 151, or in an application for patent published or deemed published under section 122(b), in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention.
Claim(s) 1-20 is/are rejected under 35 U.S.C. 102(a)(1) and/or 102(a)(2) as being anticipated by WO 2022/091813 A1 to Abiko et al. (hereinafter Abiko).
Regarding claims 1-20, Abiko teaches a polyimide resin and a polyimide film (See abstract), wherein the polyimide film can have a thickness of 1-80 microns, preferably 10-80 microns (para 61), and specifically, a polyimide film having a thickness of about 10 microns
PNG
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418
1008
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Greyscale
(See Table 1), wherein the polyimide contains repeating units Norbornan-2-spiro-α-cyclopentanone-α'-spiro-2''-norbornane-5,5'',6,6''-tetracarboxylic acid dianhydride (CpODA), and/or 3,3',4,4' - Biphenyltetracarboxylic acid dianhydride (BPDA), with 1,3-phenylenediamine (MPD) and 9,9-bis(4-aminophenyl)fluorene (BAFL) (See examples 1-4 and specifically example 4), which meets the claimed repeating units of formula 1 and 2 cited in claims 1, 10, 15-18. The above is used asl films for optical and display devices. (para 92), which meets claims 19-20.
In regard to the properties such as residual stress, Rth, haze value, and Bow value, one skilled in the art would have a reasonable expectation for the polyimide film of Abiko to have the claimed properties of the claimed invention because Abiko teaches a substantially identical polyimide film to the claimed invention such as a polyimide film with repeating units of BPDA, MPD and BAFL, with the MPD and BAFL in about the same molar ratios as those used by the Applicant in their examples, and the Applicant further teaches that the m-PDA units and FDA units directly affects the transmittance and retardation properties (para 63-64 and 76-77 of US publication), and the molar ratios directly affects the warpage properties. (para 88 of US publication). See MPEP 2112.01. (Where the claimed and prior art products are identical or substantially identical in structure or composition, or are produced by identical or substantially identical processes, a prima facie case of either anticipation or obviousness has been established. In re Best, 562 F.2d 1252, 1255, 195 USPQ 430, 433 (CCPA 1977)).
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to HA S NGUYEN whose telephone number is (571)270-7395. The examiner can normally be reached Mon-Fri, Flex schedule 7:30am-4:00pm.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Randy Gulakowski can be reached at (571)272-1302. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/HA S NGUYEN/Primary Examiner, Art Unit 1766
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