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
Claims 1 - 7, 9 - 12 of this application are patentably indistinct from claims 1, 2, 5 - 8, 12 - 16 of Application No. 18/667,014. Pursuant to 37 CFR 1.78(f), when two or more applications filed by the same applicant or assignee contain patentably indistinct claims, elimination of such claims from all but one application may be required in the absence of good and sufficient reason for their retention during pendency in more than one application. Applicant is required to either cancel the patentably indistinct claims from all but one application or maintain a clear line of demarcation between the applications. See MPEP § 822.
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 1-7 and 9-12 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1, 2, 5-8, and 12-16 of copending Application No. 18/667,014 (hereafter ‘014). Although the claims at issue are not identical, they are not patently distinct from each other because the limitations in the application are clearly taught by '014.
Claim 1 of ‘014 differs from claim 1 of this application in that the reference claim recites a generic evaporation step, rather than requiring evaporation of most of the solvent via stream of hot air of nitrogen or by heating under reduced pressure. Nevertheless, the application’s claim falls within the scope of claim 1 of ‘014 and therefore the claims are not patently distinct.
The features of claims 2-7 and 9-12 are taught by claims 12, 2, 5, 10 and 11, 6 and 7, 8, 13, 14, 15, and 16, respectively, of ‘014.
These are a provisional nonstatutory double patenting rejections because the patentably indistinct claims have not in fact been patented.
Claim Interpretation
For the purpose of examination, claim 1’s “most of” will be interpreted as being synonymous to majority i.e. greater than 50%. Similarly, “reduced pressure” will be interpreted as below standard atmospheric pressure.
Similarly, in claims 1 and 4, the phrase “a low molecular weight polyamic acid in a polar organic solvent on a solid support in the form of a film, where said polyamic acid was obtained by …” and the outlining of ratios of reaction for the polyamic acid are product-by-process limitations in a process claim. The specified reaction in of dianhydride in excess of diamine seems to make it clear the resulting polymer chain of the polyamic acid is amine terminated (see application specifications, [0008], pg. 5).
Therefore a prior art teaching an amine-terminated polyamic acid used in the process outlined in claim 1 should anticipate or make obvious the claimed invention.
When a product recited in product-by-process format reasonably appears to be the same as or obvious from a product of the prior art, the burden is on applicant to show that the prior art product is in fact different from the claimed product, even though the products may be made by different processes. See MPEP § 2113. This principle applies even in the context of a process claim that recites a step of using a product that is defined by the method by which it is produced. The nesting of a product-by-process limitation within a method claim does not change the proper construction of the product-by-process limitation itself.
Claim Objections
Claims 5 and 12 are objected to because of the following informalities:
Claim 5 ends with a comma.
In Claim 12, "10 um" appears to be a typographical error attempting to put "10 μm". For the purposes of compact prosecution, "10 um" shall be interpreted as "10 μm".
Appropriate correction is required.
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 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.
The terms “low” and “hot” in claim 1 are relative terms which renders the claim indefinite. The terms “low” and “hot” are not defined by the claim, the specification does not provide a standard for ascertaining the requisite degree, and one of ordinary skill in the art would not be reasonably apprised of the scope of the invention. T.
For the purposes of compact prosecution, “low” molecular weight shall be interpreted as less than the end product polyimide. Claims 2-12, which are dependent on claim 1, are similarly interpreted and rejected.
Where applicant acts as his or her own lexicographer to specifically define a term of a claim contrary to its ordinary meaning, the written description must clearly redefine the claim term and set forth the uncommon definition so as to put one reasonably skilled in the art on notice that the applicant intended to so redefine that claim term. Process Control Corp. v. HydReclaim Corp., 190 F.3d 1350, 1357, 52 USPQ2d 1029, 1033 (Fed. Cir. 1999). The term “air of nitrogen” in claim 1 is used by the claim. The term is indefinite because the specification does not clearly redefine the term.
Examiner notes this could be a typographical error and for the purpose of compact prosecution interprets “air of nitrogen” to be air, as disclosed in [0010] of the specification. Claims 2-12, which are dependent on claim 1, are similarly interpreted and rejected.
In claim 1, the structure of is claimed to have a structure with R1, “where R1 is:”
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leaving the tetracarboxylic structure unresolved and indefinite as seen below.
For the purpose of compact prosecution, R1 shall be interpreted as being one of or some combination of (a) or (b) below.
(a)
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(b)
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Claims 2-12, which are dependent on claim 1, are similarly interpreted and rejected.
Regarding claim 2, the phrase "known techniques" renders the claim(s) indefinite because the claim(s) include(s) elements/techniques not actually disclosed (those encompassed by "known"), thereby rendering the scope of the claim(s) unascertainable. See MPEP § 2173.05(d).
Examiner notes that excluding the phrase “using known techniques” would likely render this rejection moot.
Claim 5 recites the limitation "3, 3’, 4, 4’-biphenyltetracarboxylic acid" in lines 2-3 of the claim. There is insufficient antecedent basis for this limitation in the claim. For the purpose of compact prosecution, claim 5 shall be considered to be dependent on claim 3 instead of claim 1, where “3, 3’, 4, 4’-biphenyltetracarboxylic acid” is claimed.
Claim 12 contains the trademark/trade name “Ultrascan VIS Hunterlab”. Where a trademark or trade name is used in a claim as a limitation to identify or describe a particular material or product, the claim does not comply with the requirements of 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph. See Ex parte Simpson, 218 USPQ 1020 (Bd. App. 1982). The claim scope is uncertain since the trademark or trade name cannot be used properly to identify any particular material or product. A trademark or trade name is used to identify a source of goods, and not the goods themselves. Thus, a trademark or trade name does not identify or describe the goods associated with the trademark or trade name. In the present case, the trademark/trade name is used to identify/describe a colorimeter/ spectrophotometer and, accordingly, the identification/description is indefinite.
For the purpose of compact prosecution, examiner will include measurement performed by any colorimeter and/or spectrophotometer.
Claim Rejections - 35 USC § 102/103
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 (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.
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 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.
Claim(s) 1, 3, 5-7, 9-12 is/are rejected under 35 U.S.C. 102(a)(2) as being anticipated by, or, in the alternative, under 35 U.S.C. 103 as being unpatentable over Hwang et al. (Pub. No. US 2023/0416465 A1), hereinafter referred to as Hwang.
Regarding Claim 1, Hwang anticipates the claim and teaches a polyimide produced by reacting 3, 3’, 4, 4’-biphenyltetracarboxylic dianhydride (BPDA) with p-phenylene diamine (PPD) in a polar organic solvent consisting of 99 wt.% N-methyl-pyrrolidone (NMP) : 1 wt.% methanol (MeOH) solvent (pg. 6, [0062]). Hwang teaches that some of the dianhydride used is ring-opened by the organic solvent, resulting in a carboxylic acid with at least 2 carboxylic acid groups present before curing (pg. 2, [0017-0019]). BPDA’s ring-opened derivatives (from reacting with the free water in NMP, NMP, and/or the MeOH, which would result in either methyl or H in the position of R2 in claim 1) are considered to be derivatives of 3, 3’, 4, 4’-biphenyltetracarboxylic acid, an aromatic tetracarboxylic acid and therefore Hwang reads on the addition of the tetracarboxylic acid and/or derivatives. Additionally, considering that the molar percent of BPDA is reduced through reacting with the solvent, the 1:1 stoichiometry of the BPDA:PPD reaction is no longer present and the PPD is in excess in this example (pg. 6, [0062]). Hwang additionally teaches that the carboxylic acid present will lower the viscosity of the polyamic acid composition, leading to enhanced processability and that after curing, the carboxylic acid may polymerize with the main chain to increase the length of the chain, resulting in excellent heat resistance, dimensional stability, and mechanical properties (pg. 2, [0018-0019]). Hwang goes on to teach that the polyamic acid can be coated on a support including inorganic substrates such as glass (pg. 6, [0055, 0059]) and removes solvent by drying at 20 to 120 °C for 5 to 60 minutes to prepare a gel film under a nitrogen atmosphere (pgs. 6-7, [0056, 0065]). Furthermore, Hwang teaches that the gel film is heated to 450 °C to cure into a polyimide film.
Alternatively, it would have been obvious to a person having ordinary skill in the art before the effective filing date of the application to add an aromatic tetracarboxylic acid like 3, 3’, 4, 4’-biphenyltetracarboxylic acid to a polyimide precursor solution to yield the increased processibility of the solution and better thermal, mechanical, and dimensional characteristics taught by Hwang (pg. 2, [0017-0019]).
Regarding Claim 3, it is read as only specifying the tetracarboxylic acid and not the tetracarboxylic acid derivative. So the claim reads as
“… casting a solution of 3, 3’, 4, 4’-biphenyltetracarboxylic acid or pyromellitic acid or an aromatic tetracarboxylic acid derivative…”
Therefore the disclosure of Hwang using BPDA discussed for claim 1 applies to claim 3 as well, where the BPDA is ring opened to be a carboxylic acid with at least 2 carboxyl groups.
Regarding Claim 4, Hwang discloses a polyimide film production that follows the previously discussed method in (21), where the BPDA is reacted with excess PPD. Given the claimed BPDA and PPD are used in the process of making the polyamic acid product, they fall under the previously mentioned product-by-process framework, where the polyamic acid should be amine terminated, as is the result from a reaction done in the presence of excess PPD.
When a product recited in product-by-process format reasonably appears to be the same as or obvious from a product of the prior art, the burden is on applicant to show that the prior art product is in fact different from the claimed product, even though the products may be made by different processes. See MPEP § 2113. This principle applies even in the context of a process claim that recites a step of using a product that is defined by the method by which it is produced. The nesting of a product-by-process limitation within a method claim does not change the proper construction of the product-by-process limitation itself.
Hwang goes on to teach that the BPDA-PPD reaction is done in excess of PPD where the molar ratios between each are “substantially equal” (pg. 5, [0049, 0051]). This polyamic acid formed from reacting dianhydride in excess of diamine will be necessarily amine-terminated and so Hwang’s excess BPDA-excess-PPD reaction reads on the structure of the product implied by the claimed product-by-process limitation.
Regarding Claim 5, Hwang discloses a polyimide film production that follows the previously discussed method in (23), where the ratio of BPDA plus derivatives to PPD is 100:100 (pg. 6, Table 1).
Regarding Claim 6, Hwang teaches a polyimide film production that follows the previously discussed method in (21), where the polyamic acid is prepared after the addition of BPDA and its derivatives (pgs. 2, 6, [0017-0019, 0062]).
Regarding Claim 7, Hwang teaches the polyimide film production previously discussed method in (21), where the polar organic solvent is comprised of N-methylpyrrolidone (pg. 6, [0062]).
Regarding Claim 9, Hwang teaches a polyimide film production that follows the previously discussed method in (21), where it further discloses the solution may have a solid content of 15 – 25 wt.% and a viscosity of 20,000 cPs or less or 10,000 cPs or less and more than 1,000 cPs at 23 °C (pg. 3, [0031]). This is sufficient to anticipate the claimed range of 2,000 – 10,000 cPs.
Regarding Claim 10, Hwang teaches the polyimide film production previously discussed method in (21), where the polyimide film has a 10 – 20 μm thickness (pg. 6, [0062]).
Regarding Claim 11, Hwang teaches the polyimide film production previously discussed method in (21), where the resulting film has a 20 – 60% elongation and a modulus of 6 – 11 GPa, and a tensile strength of 300 – 600 MPa (pgs. 4 – 5, [0039- 0040]). Other claimed characteristics not disclosed by Hwang are considered to be inherent to the disclosed invention given the composition is considered the same and inherent properties and features need not be recognized at the relevant time. For more information, see MPEP § 2112 and MPEP § 2112.01 (II).
Regarding Claim 12, Hwang teaches the polyimide film production previously discussed method in (21), where the polyimide film has a 10 – 20 μm thickness. Hwang also teaches the light transmittance in the visible light range (380 – 780 nm) is 50 – 80%, but does not teach beyond that spectrum as claimed by claim 12 (“total transmission”). Therefore, total transmission and other characteristics not specifically disclosed by Hwang are considered to be inherent to the disclosed invention given the composition is considered the same and inherent properties and features need not be recognized at the relevant time. For more information, see MPEP § 2112 and MPEP § 2112.01 (II).
Alternatively, Hwang teaches the light transmittance in the visible light range (380 – 780 nm) is 50 – 80%. Claim 12 claims a total transmission of greater than 80%. The difference between the claimed lower limit and Hwang’s upper limit of 80% are close and can be considered prima facie obvious to the claimed transmittance where the claimed ranges or amounts do not overlap with the prior art but are merely close. The obviousness reasoning discussed in (22), along with the above, applies to claim 12 as an alternative rejection under 35 U.S.C. 103. For more information, see MPEP § 2144.05.
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 (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.
Claim(s) 2 is/are rejected under 35 U.S.C. 103 as being unpatentable over Hwang as applied to claim 1 above, and further in view of Hsieh et al. (Hsieh, H.-H., et al. Jnl Soc Info Display, 2013, vol. 21, p. 326-332.), hereinafter referred to as Hsieh.
Regarding Claim 2, Hwang teaches the polyimide film production previously discussed method in (21), as well as dipping the polyimide film attached to the glass substrate in distilled water to strip the film from the support (pg. 7, [0066]). Hwang does not disclose the construction of an optical display directly on the film while on the support.
Hsieh teaches the fabrication process of active matrix organic light-emitting displays (AMOLEDs), where the polyimide film, still attached to a glass support has thin film transistors and then organic light-emitting display (OLED) devices fabricated onto the film directly, later capped with a top barrier film before being debonded with the glass. After debonding, the transistors stay attached to the polyimide-based display (pg. 327, Fig. 1 & Sec. 2, Par. 2-3) .
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have modified Hwang to incorporate the fabrication process taught by Miura to construct an optical display with a polyimide while still on the support since the film itself is too flexible, resulting in a display with a high glass temperature substrate film and, as well as improve post-curing mechanical, dimensional, and thermal properties, as taught by Hsieh (pg. 327, Sec. 2, Par. 2-3)
Claim(s) 8 is/are rejected under 35 U.S.C. 103 as being unpatentable over Hwang as applied to claim 1 above, and further in view of Miura et al. (Pub. No. US 20200407593 A1), hereinafter referred to as Miura.
Regarding Claim 8, Hwang teaches a polyimide, as discussed in (21-22), produced by reacting BPDA with PPD to eventually produce a polyimide.
Miura teaches a polyimide film produced from a polyamic acid,
“wherein the polyamic acid satisfies following equations (1) and (2):
0.97≤X/Y<1.00 Equation (1)
0.5≤(Z/2)/(Y−X)≤1.05 Equation (2)
wherein X represents a number of moles of tetracarboxylic acid component, Y represents a number of moles of diamine component, and Z represents a number of moles of the carboxylic acid monoanhydride” (Cover Page, Abstract).
The carboxylic monoanhydride can be considered a derivative of an aromatic tetracarboxylic acid. In example 1, Miura discloses use of 2 %mol of phthalic anhydride after addition of 100 %mol PPD and 98 %mol 4,4′-Biphthalic anhydride (BPDA) (pg. 6, [0070]).
It would have been prima facie obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have modified Hwang to incorporate the molar ratio of the aromatic tetracarboxylic acid derivative taught by Miura to further reduce the viscosity and improve processibility, as well as improve post-curing mechanical, dimensional, and thermal properties, as taught by Hwang (pg. 2, [0017-0019]).
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
Yamaguchi (JP 2008266416 A) discloses an oligomeric polymerization strategy to develop polyimide films using a tetracarboxylic dianhydride, a diamine, and an alkoxysilane compound.
Lee and Li (US 4973661 A) discloses coupling end-capped polyamic acid intermediates with carboxylic acid and carboxylic ester.
Hwang and Park (WO 2023038322 A1) discloses a polyimide prepared from a tetracarboxylic dianhydride and derivatives and PPD.
Zhu et al. (CN 115626987 A) discloses a polyimide developed from BPDA and PPD with pyromellitic dianhydride and 4, 4'-diamino diphenyl ether added afterwards.
Choi et al. (WO 2022145891 A1) discloses the integration of an optical polyimide film into a display device.
Oka et al. (WO 2019131896 A1) teaches a polyimide composition made with tetracarboxylic acid and excess diamine, where tetracarboxylic acid or a derivative is added after to make diamine : tetracarboxylic acid and derivative approximately equivalent.
Hull and Zoombelt (US 20240059839 A1) teaches an optically transparent polyimide, derived from BPDA and diamine, for use in displays.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to ARMAN M. FARAZDAGHI whose telephone number is (571)270-5813. The examiner can normally be reached Monday - Friday, Monday - Thursday, 8:30 am - 5:00 pm.
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, Robert Jones can be reached at (571) 270-7733. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/A.M.F./Examiner, Art Unit 1762
/ROBERT S JONES JR/Supervisory Patent Examiner, Art Unit 1762
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