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 1-4, and 6-15 are currently pending. Claims 1, 3, 4, and 13 have been amended, claim 5 has been cancelled and claims 14 and 15 are newly added.
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 1-4, 6-8, and 13-15 are rejected under 35 U.S.C. 103 as being unpatentable over Okabe et al (WO2020/171115A1) with citations from English language equivalent US2022/0056229A1.
Regarding claims 1, 4, and 14-15, Okabe discloses a laminated resin film comprising a base film formed of a semi-aromatic polyamide (0019), the laminate having a haze of 3% or less (0020), overlapping the claimed haze of 13% or less (MPEP 2144.05).
Okabe does not expressly disclose the claimed loop stiffness; however, applicant’s specification teaches that loop stiffness is achieved by setting the stretching ratio in each of the machine direction and the transverse direction above a value of 2.0 (see specification paragraph 0043), and Okabe requires a stretching ratio of 2 to 5 times (0193; i.e., Okabe discloses a substantially identical process to the claimed invention). Furthermore, the composition (i.e., semi-aromatic polyamide) of Okabe and the claimed invention are substantially identical. Therefore, as Okabe uses a composition and process which is substantially identical to that of the claimed invention, the claimed loop stiffness is expected of the resin layer of Okabe.
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.
Okabe does not expressly teach the degree of crystallinity at the surface of the polyamide resin film.
Okabe, however, teaches adjusting different formation parameters (cooling, stretching speed) to reduce the crystal growth for smoother film stretching/surface characteristics (0185-0187, 0194).
It would have been obvious to a person of ordinary skill to have optimized the degree of crystallinity, including within the claimed range of 0.1 or more, since it has been held that the discovery of the optimum value of a result effective variable in a known process is ordinarily within the skill in the art. In re Boesch and Slaney, 205 USPQ 215 (CCPA 1980).
Alternatively, applicant argues that the present application demonstrates that crystallinity is influenced by the cooling treatment temperature (Remarks filed 08/11/2026). The specification teaches a cooling step before stretching of the film being brought into close contact with a cooling roll with a surface temperature of 40oC (specification 0076). Okabe teaches a substantially identical method in which the semi-aromatic polyamide film undergoes a cooling treatment on the surface by bring the film into contact with a cooling roll having a temperature of preferably 40-120oC (0183-0187), thus the film of Okabe would be expected to have a crystallinity as claimed in claims 1, 4, 14, and 15 (MPEP 2112).
Regarding claim 2, Okabe teaches a film thickness of after stretching of 0.5 to 1.5 mm, overlapping the claimed thickness of 40 µm or more (MPEP 2144.05).
Regarding claim 3, Okabe teaches the thermoplastic semi-aromatic polyamide having a glass transition temperature of 60oC or higher (0353 and 0357) (MPEP 2131.03).
Regarding claim 6, Okabe does not expressly teach the film passes 400,000 or more breakage inducing tests in a flexure test conducted using a clamshell type bending tester.
However, as Okabe teaches substantially the same semi-aromatic polyamide film as well as teaching the film suitable for a flexible display application (0267) this property would be expected of the prior art film (MPEP 2112).
Regarding claim 7, Okabe teaches the film comprising 0.1-0.3% by mass and lower fine particles (diameter 0.05-5.0µm) (0062), overlapping the claimed 0.01 to 0.4% by mass (MPEP 2144.05).
Regarding claim 8, Okabe does not expressly teach the kinetic friction coefficient for the polyamide layer. However, Okabe teaches that the polyamide layer may include lubricant particles in accordance with the frictional characteristics (0062) and teaches addition of the same particles in other layers to control the dynamic friction coefficient to 0.7 or less (0127, 0129, and 0133).
It would have been obvious to a person of ordinary skill in the art for the polyamide film of Okabe to have a friction coefficient of 0.7 or less as taught for other layers of Okabe, for excellent frictional characteristics and blocking resistance (0128).
Okabe teaches the dynamic friction coefficient in accordance with JIS K7125.
Regarding claim 13, Okabe teaches the film manufactured by biaxially stretching an unstretched film, heat setting the film and cooling the film (0192-0198).
Please note, claim 13 includes product by process language with regards to the recitation of is “manufactured by a method”. The above arguments establish a rationale tending to show the claimed product is the same as what is taught by the prior art. “[E]ven though product-by-process claims are limited by and defined by the process, determination of patentability is based on the product itself. The patentability of a product does not depend on its method of production. If the product in the product-by-process claim is the same as or obvious from a product of the prior art, the claim is unpatentable even though the prior product was made by a different process.” (In re Thorpe, 227 USPQ 964,966). Once the Examiner provides a rationale tending to show that the claimed product appears to be the same or similar to that of the prior art, although produced by a different process, the burden shifts to applicant to come forward with evidence establishing an unobvious different between the claimed product and the prior art product. In re Marosi, 710 F.2d 798, 802, 218 USPQ 289, 292 (Fed. Cir. 1983), MPEP 2113.
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 1-4, 6-8 and 13-15 are rejected under 35 U.S.C. 103 as being unpatentable over Okabe et al (WO2020/171115A1) with citations from English language equivalent US2022/0056229A1 and further in view of Ogura et al. (KR2019-0043458).
Regarding claims 1, 4, and 14-15, Okabe discloses a laminated resin film comprising a base film formed of a semi-aromatic polyamide (0019), the laminate having a haze of 3% or less (0020), overlapping the claimed haze of 13% or less (MPEP 2144.05).
Okabe does not expressly teach the degree of crystallinity at the surface of the polyamide resin film or a loop stiffness value of the film..
Regarding the degree of crystallinity, Okabe teaches adjusting different formation parameters (cooling, stretching speed) to reduce the crystal growth for smoother film stretching/surface characteristics (0185-0187, 0194).
It would have been obvious to a person of ordinary skill to have optimized the degree of crystallinity, including within the claimed range of 0.1 or more, since it has been held that the discovery of the optimum value of a result effective variable in a known process is ordinarily within the skill in the art. In re Boesch and Slaney, 205 USPQ 215 (CCPA 1980).
Alternatively, applicant argues that the present application demonstrates that crystallinity is influenced by the cooling treatment temperature (Remarks filed 08/11/2026). The specification teaches a cooling step before stretching of the film being brought into close contact with a cooling roll with a surface temperature of 40oC (specification 0076). Okabe teaches a substantially identical method in which the semi-aromatic polyamide film undergoes a cooling treatment on the surface by bring the film into contact with a cooling roll having a temperature of preferably 40-120oC (0183-0187), thus the film of Okabe would be expected to have a crystallinity as claimed in claims 1, 4, 14, and 15.
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 the loop stiffness, Ogura, in the analogous field of thermoplastic resin films (Technical-Field, page 2) teaches the film having a loop stiffness of 150 mN/cm or less (page 6), overlapping the claimed loop stiffness of 140 mN/cm or more (MPEP 2144.05).
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 Okabe to have a loop stiffness of 150 mN/cm or less, as taught by Ogura, to reduce springback and stress at the joining points of the film to an electronic component (page 6).
Regarding claim 2, Okabe teaches a film thickness of after stretching of 0.5 to 1.5 mm, overlapping the claimed thickness of 40 µm or more (MPEP 2144.05).
Regarding claim 3, Okabe teaches the thermoplastic semi-aromatic polyamide having a glass transition temperature of 60oC or higher (0353 and 0357) (MPEP 2144.05).
Regarding claim 6, Okabe does not expressly teach the film passes 400,000 or more breakage inducing tests in a flexure test conducted using a clamshell type bending tester.
However, as Okabe teaches substantially the same semi-aromatic polyamide film as well as teaching the film suitable for a flexible display application (0267) this property would be expected of the prior art film (MPEP 2112).
Regarding claim 7, Okabe teaches the film comprising 0.1-0.3% by mass and lower fine particles (diameter 0.05-5.0µm) (0062), overlapping the claimed 0.01 to 0.4% by mass (MPEP 2144.05).
Regarding claim 8, Okabe does not expressly teach the kinetic friction coefficient for the polyamide layer. However, Okabe teaches that the polyamide layer may include lubricant particles in accordance with the frictional characteristics (0062) and teaches addition of the same particles in other layers to control the dynamic friction coefficient to 0.7 or less (0127, 0129, and 0133).
It would have been obvious to a person of ordinary skill in the art for the polyamide film of Okabe to have a friction coefficient of 0.7 or less as taught for other layers of Okabe, for excellent frictional characteristics and blocking resistance (0128).
Okabe teaches the dynamic friction coefficient in accordance with JIS K7125.
Regarding claim 13, Okabe teaches the film manufactured by biaxially stretching an unstretched film, heat setting the film and cooling the film (0192-0198).
Please note, claim 13 includes product by process language with regards to the recitation of is “manufactured by a method”. The above arguments establish a rationale tending to show the claimed product is the same as what is taught by the prior art. “[E]ven though product-by-process claims are limited by and defined by the process, determination of patentability is based on the product itself. The patentability of a product does not depend on its method of production. If the product in the product-by-process claim is the same as or obvious from a product of the prior art, the claim is unpatentable even though the prior product was made by a different process.” (In re Thorpe, 227 USPQ 964,966). Once the Examiner provides a rationale tending to show that the claimed product appears to be the same or similar to that of the prior art, although produced by a different process, the burden shifts to applicant to come forward with evidence establishing an unobvious different between the claimed product and the prior art product. In re Marosi, 710 F.2d 798, 802, 218 USPQ 289, 292 (Fed. Cir. 1983), MPEP 2113.
Response to Arguments
Applicant’s amendments filed 08/11/2026 have been entered. Accordingly, the 35 U.S.C. 112(b) rejections of claims 4 and 13 have been withdrawn.
Applicant’s arguments have been fully considered. Applicant argues that a low haze value does not necessarily mean that the degree of crystallinity falls with the claimed range. Applicant cites evidence from comparative examples 4 and 6 and example 26.
This evidence has been fully considered and is persuasive. Thus, the rejection over this line of reasoning has been withdrawn.
However, applicant has not provided any argument over the optimization line of reasoning which was also used in rejecting the degree of crystallinity thus this rejection is maintained.
Additionally, applicant argues that that the present applicant demonstrates that crystallinity is influenced by the cooling treatment temperature (Remarks filed 08/11/2026). The specification teaches a cooling step before stretching of the film being brought into close contact with a cooling roll with a surface temperature of 40oC (specification 0076). Okabe teaches a substantially identical method in which the semi-aromatic polyamide film undergoes a cooling treatment on the surface by bring the film into contact with a cooling roll having a temperature of preferably 40-120oC (0183-0187), thus the film of Okabe would be expected to have a crystallinity as claimed (MPEP 2112).
Correspondence
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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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Frank Vineis can be reached at 571-270-1547. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/ALICIA J WEYDEMEYER/ Primary Examiner, Art Unit 1781
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