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 2, 6 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.
Claim 2 requires “amine reagent” applied to inorganic substrate and amine reagent applied to the polymer layer; however, claim 1 does not require the amine reagent to be applied to both (as it is optional) and therefore this claim lacks antecedent basis in the claims.
Claim 6 requires “before applying amine reagent to the surface of the polymer”; however, claim 1 does not require the amine reagent to be applied to the polymer (as it is optional) and therefore this claim lacks antecedent basis in the claims.
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.
Claim(s) 1-2, 4-6, 8-10 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by
JP 2015178237 A, hereinafter JP 237
Claim 1: JP 237 discloses a process for forming an article, wherein the article comprises: an inorganic substrate comprising a material comprising a ceramic, a glass, a glass-ceramic or a mixture thereof, wherein the material comprises a metal cation selected from silicon, aluminum, titanium, zirconium, tantalum, niobium and mixtures thereof, and oxygen (“quartz glass, high silicate glass” or “silicon wafers with silicon oxide layers“);
and a polymer film layer comprising a polymer comprising an imide group (“The polymer film particularly preferably used in the present invention is a polyimide film”), wherein the process comprises:
(a) applying an amine reagent to a surface of the inorganic substrate, a surface of the polymer film layer, or both (“The silane coupling agent layer inorganic substrate on which the silane coupling agent layer is formed” and “3-triethoxysilyl-N- (1,3-dimethyl-butylidene) propylamine”);
(b) contacting the inorganic substrate with the polymer film layer, such that a surface having an amine reagent is at an interface between the inorganic substrate and the polymer film layer (“an inorganic substrate on which a silane coupling agent layer thin film is formed in a predetermined pattern is used as a temporary support, and a polymer film is bonded through the silane coupling agent layer, or dry film formation is performed.”); and
(c) applying heat and pressure to the article (“the polymer film is bonded, the activated surface of the polymer film is overlapped on the temporary supporting inorganic substrate on which the silane coupling agent layer is formed, and pressed to obtain a laminate.” And “ The temperature during the pressure treatment can be arbitrarily set within the range not exceeding the heat resistance temperature of the polymer film to be used,” degree of heating not claimed and thus met by the prior art reference).
Claim 2: JP 237 discloses the same amine reagent to bond the inorganic and polymer film layer and thus this is applied to both as claimed (and also meets the optional language of claim 1).
Claim 4: JP 237 discloses amine reagent including “propylamine” and while the reference does not disclose the term passivated, the applicant’s describe the passivation as taking the specification of the instant application discloses “alkyl chains as passivating groups” and therefore the disclosure of a amine that has an alkyl group would can reasonably read on the requirement of passivated. Here, the requirement “can be” thermally activated by applying heat is not an active process step and thus is met by the prior art that disclose the same passivation group as instantly claimed.
Claim 5: This claim is not an active process step, as there is no requirement that the crosslinking of the polymer occurs (“can, upon activation”) and therefore the prior art discloses the same disclosed passivated amine as noted above and heating would read on this broadly drafted claim requirement.
Claim 6: JP 237 discloses wherein before applying the amine reagent to the surface of the polymer film layer, the surface of the polymer film layer undergoes a corona treatment or a plasma treatment (see “By the surface activation treatment, the surface of the polymer film is modified to a state in which a functional group is present (so-called activated state), and adhesion to the inorganic substrate is improved.” And “dry treatment of the present invention, treatment of irradiating active energy rays such as ultraviolet rays, electron beams, and X-rays on the surface, corona treatment, vacuum plasma treatment, atmospheric pressure plasma treatment, flame treatment, and intro treatment can be used”)
Claim 8: JP 237 discloses polyimides, poly(amide-imides), poly(ether-imides), etc. (“The polymer film particularly preferably used in the present invention is a polyimide film, and aromatic polyimide, alicyclic polyimide, polyamideimide, polyetherimide, and the like can be used”)
Claim 9: JP 237 discloses the polyimide is derived from a dianhydride, a fluorinated aromatic diamine and an aliphatic diamine (see “aromatic diamine . . . 1,4-bis (4-amino-2-trifluoromethylphenoxy) benzene”, “aliphatic diamines” and “having two anhydride structures (dianhydrides) are preferred.”
Claim 10: JP 237 discloses the dianhydride comprises an alicyclic dianhydride. (“alicyclic tetracarboxylic acids include 1,2,3,4-cyclobutanetetracarboxylic dianhydride”)
Claim 11 and 12: JP 237 discloses glass and silicate i.e. metal cation comprises silicon with oxygen (“8Examples of the glass plate include quartz glass, high silicate glass (96% silica), soda lime glass, lead glass, aluminoborosilicate glass, borosilicate glass”
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) 1-6 and 8-12 is/are rejected under 35 U.S.C. 103 as being unpatentable over JP 237.
Claim 1-2. 4-6, 8, 11-12: While the examiner maintains the position as set forth above, the examiner notes the reference specifically discloses applying pressure and discloses “The temperature during the pressure treatment can be arbitrarily set within the range not exceeding the heat resistance temperature of the polymer film to be used” and therefore taking the reference for its entire teaching and that known to one of ordinary skill in the art it would have been obvious to have utilized heat during the pressure as such is taught by JP 237 and one would recognize the application of heat would lead to predictable results.
Claim 3: The heating temperature is taught by JP 237 as being adjustable to the range as it relates to the polyimide (see above citation) and therefore illustrates the heating temperature is a result effective variable and determination of the optimum temperature would have been obvious to one of ordinary skill in the art through routine experimentation. Generally, differences in concentration or temperature will not support the patentability of subject matter encompassed by the prior art unless there is evidence indicating such concentration or temperature is critical. "[W]here the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation." In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955)
Claim 9-10: At the very least, JP 237 explicitly discloses these components for the polyimide film and therefore using such would have been obvious as predictable. Additionally, all the claimed elements were known in the prior art and one skilled in the art could have combined the elements as claimed by known methods with no change in their respective functions, and the combination would have yielded predictable results to one of ordinary skill in the art at the time of the invention. See KSR Int'l Inc. v. Teleflex Inc., 127 S Ct. 1727, 1741, 82 USPQ2d. A predictable use of prior art elements according to their established functions to achieve a predictable result is prima facie obvious. See KSR Int’l Inc. v. Teleflex Inc., 127 S Ct. 1727, 1741, 82 USPQ2d 1385, 1396 (2007).
Claim(s) 7 is/are rejected under 35 U.S.C. 103 as being unpatentable over JP 237 taken collectively with WO 2020255864 A1, hereinafter WO 864.
JP 237 discloses a polyimide film and laminating such onto glass as discussed above; however, fails to explicitly disclose the hard coat as claimed. However, WO 864, also in the art of laminate including a polyimide and glass (“polyimide film is laminated on the glass base material”) and discloses including a hard coat layer on the polyimide (“the glass base material and the polyimide film may be located adjacent to each other. Further, the second laminate of the present invention further has a hard coat layer”) applying a curable resin coating composition to a surface of the polymer film layer and curing to form a hard coat layer adhered to a polymer film layer, such that, upon forming the article, the hard coat layer is on a side opposite the inorganic substrate (“As a method for forming a coating film of the hard coat layer forming composition on at least one surface of the polyimide film, for example, the hard coat layer forming composition is known on at least one surface of the polyimide film.” And “the curable resin composition for the hard coat layer is applied to the coating film and dried as necessary. By curing the coating film by at least one of light irradiation and heating, a hard coat layer containing at least one polymer of a radical polymerizable compound and a cationically polymerizable compound is formed on at least one surface of the polyimide film. Can be formed.”). Therefore, taking the references collectively, it would have been obvious to have modified JP 237 to include the hard coating and method of forming as taught by WO 864, as JP 237 discloses a laminate of glass and polyimide and WO 864 discloses using hard coating on laminates and one would desire to include such to reap the benefits of their inclusion (“the "hard coat layer" is a layer for improving the surface hardness”)
Conclusion
Pertinent prior art cited on PTO 892 as it relates to the instant claims.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to DAVID P TUROCY whose telephone number is (571)272-2940. The examiner can normally be reached Mon, Tues, Thurs, and Friday, 7:00 a.m. to 5:30 p.m.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Gordon Baldwin can be reached at 571-272-5166. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/DAVID P TUROCY/Primary Examiner, Art Unit 1718
