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 1-4 and 6-12 are rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as failing to set forth 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 is 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 amide repeating unit are required in the proportion of 80% or more, it is unclear if the proportions are based on weight % or mole%. Appropriate correction to the claim language is required.
Regarding claim 7, the last line of the claim recites, and isomers of cis, trans and mixture of the compounds. There is insufficient antecedent basis for “compounds”, since an aliphatic diamine-based compound is introduced.
Regarding claims 10-11, since the yellowness index and transmittance properties are dependent on the thickness of the optical film, the claimed ranges without the thickness values are indefinite. The optical film thickness for the measurements are required.
Claim Interpretation
Claim 1 is interpreted to require the amide repeating unit in proportion of 80 mole % or more. For claims 10-11, it is understood that the yellowness index and transmittance are measured for optical film thickness of 50 µm.
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) 1-3 and 10-12 rejected under 35 U.S.C. 102 (a) (1) as being anticipated by Miyamoto et al. US 2019/0390057 A1.
Regarding claims 1 and 10-11, Miyamoto teaches (paras [0130]-[0131] and Table 1) polyamideimide resin Example 2 and an optical film derived from the polyamideimide resin, which is synthesized by polymerization of 80 mol% 4,4'-oxybis(benzoyl chloride) (OBBOC) and 20 mol% 4,4'-(hexafluoroisopropylidene )diphthalic dianhydride (6FDA), and 100 mol% 2,2'-bis(trifluoromethyl) benzidine (TFDB) diamine, resulting in the amide repeat units which are present at 80 mol% with respect to the total amount of the imide and the amide repeating units. Miyamoto discloses that the 50 µm thick optical film which has the light transmittance of 91% and yellow index of 2.5, which read on the claimed requirements.
Regarding claims 2-3, instant specification (page 49, line 25; page 50, line 11) discusses that the precipitation process in methanol removes the reaction byproducts and the obtained solid polymer resin does not contain chlorine. Since Miyamoto also discloses precipitation of the polyamideimide resin in methanol, with further washing and drying of the resin under reduced pressure and elevated temperature (Miyamoto, para [0128]), the resulting optical film would be inherently free of the chlorine. 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).
Regarding claim 12, Miyamoto teaches (reference claim 10 and para [0105]) a display device where the optical film is disposed at the front of the display surface, meeting the claimed requirement.
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.
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) 4 and 6-9 are rejected under 35 U.S.C. 103 as being unpatentable over Miyamoto as applied to claims 1-3 and 10-12 above.
Regarding claims 4 and 6-9, as discussed when addressing claim 1, Miyamoto teaches an optical film generated by the polyamideimide resin of example 2, which is synthesized by polymerization of 80 mol% 4,4'-oxybis(benzoyl chloride) (OBBOC) and 20 mol% 4,4'-(hexafluoroisopropylidene )diphthalic dianhydride (6FDA), and 100 mol% 2,2'-bis(trifluoromethyl) benzidine (TFDB) diamine, resulting in imide and amide repeating units corresponding to the required first and third repeating units. Miyamoto’s Example 2 utilizes only one diamine TFDB. Miyamoto teaches inclusion of an aliphatic diamine such as 4,4'-diaminodicyclohexylmethane (MBCA) (para [0059]-[0060]) along with an aromatic diamine to create the polyamideimide resin.
Per Miyamoto’s disclosure, it would have been obvious to one of ordinary skilled in the art before the effective filing date of the invention to have incorporated in Miyamoto’s Example 2 an aliphatic diamine such as MBCA for the same application of creating a polyimideamide resin, which would result in the required second and fourth repeating units.
Claim(s) 13-14 and 16-21 are rejected under 35 U.S.C. 103 as being unpatentable over Miyamoto as applied to claims 1-4 and 6-12 above, and further in view of Stephens et al. US3,347,828.
Regarding claims 13 and 17-19, Miyamoto teaches a method for generating an optical polyamideimide film Example 2 (paras [0130]-[0131]) where one diamine TFDB, 80 mol% 4,4'-oxybis(benzoyl chloride) (OBBOC) and 20 mol% 4,4'-(hexafluoroisopropylidene )diphthalic dianhydride (6FDA), form the first reaction solution in solvent DMAc (paras [0127]-[0131]). Dehydrating agent acetic anhydride and imidization catalyst pyridine is added to the first reaction mixture, and the reaction is conducted at elevated temperature to obtain the second reaction mixture. The resulting second reaction mixture is cooled and treated with methanol to generate the polymer resin in precipitated form. The solid precipitated polymer resin is dissolved in DMAC and then coated on a substrate to generate the optical film. Miyamoto is silent on a chlorine acceptor.
Analogous reference Stephens (reference claim 1) who also teaches a process of producing a polyamide-imide discloses incorporation of scavenger such as propylene oxide in the polyamide solution at about 1 to 8 moles of propylene oxide per mole of halide, which overlaps the required amount of chlorine acceptor (Stephens col 3, lines 20-25; line 60, lines 66-70). Advantageously, Stephens provides the motivation to incorporate the propylene oxide to remove entrained chloride by forming a chlorohydrin which can be volatilized easily, which decreases corrosion and improves resultant properties of the polyamide-imide (Stephens col 3, lines 15-20 and reference claims 1 and 12).
While Stephens discloses the addition of propylene oxide in the polyamide solution, it is noted that there is a finite list of immediately recognizable options available to one of ordinary skill in the art, including a) addition of propylene oxide in the first reaction solution and b) addition of propylene oxide in the polymer resin solution. With the presence of a finite number of options which are immediately recognizable to a person having ordinary skill in the art, and the options do not produce new or unexpected results, it would have been obvious to a skilled artisan before the effective filing date of the claimed invention to try any of the immediately recognizable and finite options of adding the propylene oxide as taught by Stephens at any particular stage, including in the first reaction solution of Miyamoto’s Example 2 with reasonable expectation of scavenging the chloride and creating a polyamide-imide with improved properties. (see MPEP 2143 I. E.).
Regarding claims 14 and 16, as discussed when addressing claim 4, Miyamoto teaches inclusion of an aliphatic diamine such as 4,4'-diaminodicyclohexylmethane (MBCA) (para [0059]-[0060]) along with an aromatic diamine to create the polyamideimide resin.
Miyamoto does not suggest an amount of aliphatic diamine, however the inclusion of small amount of aliphatic diamine (in Miyamoto’s Example 2) complying with the claimed amounts would have been obvious to one of ordinary skilled in the art before the effective filing date of the invention for the same application of creating a polyimideamide resin such that the properties of high surface hardness and high bending resistance can be maintained (Miyamoto paras [0158]-[0159]).
Regarding claims 20-21, as discussed when addressing claim 13, Miyamoto in view of Stephens render obvious, the presence of excess chlorine acceptor which scavenges HCl, and the imidization catalyst pyridine in the second reaction solution, which would result in slightly basic pH as required. Miyamoto teaches precipitation and washing of the solid polyamide-imide resin which removes excess acidic and basic byproducts and thus the redissolved polymer resin solution would be reasonably expected to be neutral (Miyamoto paras [0127]-[0131]).
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, 4, 6, and 10-12 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1, 2, 4, 5 and 8 of U.S. Patent No. 12,619,005B2. Although the claims at issue are not identical, they are not patentably distinct from each other because they teach the same optical film comprising imide and amide repeating units where the amide repeating units are present in a proportion of 80% or more.
Claims 1, 4, 6 and 10-11 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1, 4, 7 and 8 of copending Application No. 18/247,520 (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other because the same optical film comprising imide and amide repeating units where the amide repeating units are present in a proportion of 80% or more.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Conclusion
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/S.M.D./
Examiner
Art Unit 1765
/JOHN M COONEY/ Primary Examiner, Art Unit 1765
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