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
All the references cited in the International Search Report have been considered. None is anticipatory to the amended claims.
Election/Restrictions
The applicant has elected Group III (claims 7 and 11-14) without traverse.
This restriction is made FINAL. See previous action for the reasons for applying the restriction.
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.
Claim(s) 7 and 11-14 (is)are rejected under 35 U.S.C. 112(b) as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor, or for pre-AIA the applicant regards as the invention. The language within parentheses, '(but the first….. from each other)”, is unclear and lacks a definitive meaning in the context of the claim. It is unclear what the applicant intends this parenthetical text to mean or how it relates to the remainder of the claim. As a result, the scope of the claim is ambiguous and does not particularly point out and distinctly define the metes and bounds of the invention. Claims 11-14 depend upon claim 7 and fail to rectify the issue in claim 1. See MPEP § 2173.05(d).
Claim Rejections - 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 obviousness-type 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); and 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 a nonstatutory double patenting ground provided the conflicting application or patent either is shown to be commonly owned with this application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement.
Effective January 1, 1994, a registered attorney or agent of record may sign a terminal disclaimer. A terminal disclaimer signed by the assignee must fully comply with 37 CFR 3.73(b).
Claim(s) 7 and 11-14 is (are) rejected on the ground of nonstatutory obviousness-type double patenting as being unpatentable over claims 1-9 of US 12497487.
‘487 (claims 1-9) meets instant claims 7 and 11-14 in an anticipatory manner, because it discloses:
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Furthermore, one ordinary skill in the art would have expected the disclosed by ‘487 to feature the same haze value and Tg, because ‘487 obviously satisfy all the material and chemical limitations of the instant invention-see MPEP 2112.01.
Claim(s) 7 and 11-14 is (are) rejected on the ground of nonstatutory obviousness-type double patenting as being unpatentable over claims 1-6 of US 12497488.
‘488 (claims 1-6) meets instant claims 7 and 11-14 in an anticipatory manner, because it discloses:
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The disclosed Df overlapping with the claimed range. It has been found that where claimed ranges overlap ranges disclosed by prior art, a prima facie case of obviousness exists - see MPEP 2144.05 I. In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990). Therefore, it would have been obvious to one skilled in the art to have created/selected the claimed compositional elements from the composition disclosed in the‘488 since it discloses all applicants' components, values and methods of making. Furthermore, one ordinary skill in the art would have expected the disclosed by ‘487 to feature the same haze value and Tg, because ‘487 obviously satisfy all the material and chemical limitations of the instant invention-see MPEP 2112.01.
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.
Claim(s) 7 and 11-14 is(are) rejected under 35 U.S.C. 102(a)(1) as being anticipated by Nakayama et al. (US 20130327982).
As to claims 7 and 11-14, Yamaguchi (abs., examples, claims, figures, tables, 74) discloses a polyimide film (Ex.1-10, Comp Ex.1,4,7):
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The polyimide films in those examples would inherently exhibit the claimed properties of Df, haze, and Tg, dupability, and solubility, because in view of the substantially identical composition (in this case, the disclosed polyimide structure, i.e., comonomers and mol%), it appears that the adduct would have inherently possessed the claimed properties. See MPEP § 2112.
Claim(s) 7, 11-12, and 14 is(are) rejected under 35 U.S.C. 102(a)(1) as being anticipated by Yamaguchi et al. (US 20100130628).
As to claims 7, 11-12, and 14, Yamaguchi (abs., examples, claims, figures, tables, 70) discloses a polyimide film (Ex.3-5,8-9):
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The polyimide films in those examples would inherently exhibit the claimed properties of Df, haze, and Tg, dupability, and solubility, because in view of the substantially identical composition (in this case, the disclosed polyimide structure, i.e., comonomers and mol%), it appears that the adduct would have inherently possessed the claimed properties. See MPEP § 2112.
Claim(s) 7 is(are) rejected under 35 U.S.C. 102(a)(1) as being anticipated by Suto et al. (US 20190100624).
As to claim 7, Yamaguchi (abs., examples, claims, figures, tables, 59) discloses a polyimide film (Ex.25-27 and 30):
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The polyimide films in those examples would inherently exhibit the claimed properties of haze and Tg, dupability, and solubility, because in view of the substantially identical composition (in this case, the disclosed polyimide structure, i.e., comonomers and mol%), it appears that the adduct would have inherently possessed the claimed properties. See MPEP § 2112.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to SHANE FANG whose telephone number is (571)270-7378. The examiner can normally be reached on Mon-Thurs. 8am-6pm. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Randy Gulakowski can be reached on 571.572.1302. Information regarding the status of an application may be obtained from the Patent Application Information Retrieval (PAIR) system. Status information for published applications may be obtained from either Private PAIR or Public PAIR. Status information for unpublished applications is available through Private PAIR only. For more information about the PAIR system, see http://pair-direct.uspto.gov. Should you have questions on access to the Private PAIR system, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative or access to the automated information system, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/SHANE FANG/Primary Examiner, Art Unit 1766
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