Patent Application 17760759 - POLYIMIDE-BASED FILM HAVING EXCELLENT SURFACE - Rejection
Appearance
Patent Application 17760759 - POLYIMIDE-BASED FILM HAVING EXCELLENT SURFACE
Title: POLYIMIDE-BASED FILM HAVING EXCELLENT SURFACE EVENNESS AND METHOD FOR PRODUCING SAME
Application Information
- Invention Title: POLYIMIDE-BASED FILM HAVING EXCELLENT SURFACE EVENNESS AND METHOD FOR PRODUCING SAME
- Application Number: 17760759
- Submission Date: 2025-04-10T00:00:00.000Z
- Effective Filing Date: 2022-03-15T00:00:00.000Z
- Filing Date: 2022-03-15T00:00:00.000Z
- National Class: 528
- National Sub-Class: 353000
- Examiner Employee Number: 83924
- Art Unit: 1767
- Tech Center: 1700
Rejection Summary
- 102 Rejections: 0
- 103 Rejections: 1
Cited Patents
The following patents were cited in the rejection:
Office Action Text
DETAILED ACTION Claim Rejections - 35 USC § 112 The following is a quotation of the first paragraph of 35 U.S.C. 112(a): (a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention. The following is a quotation of the first paragraph of pre-AIA 35 U.S.C. 112: The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention. Claims 1-12 are rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, because the specification, while being enabling for a polyimide-based film made from preparation examples 1-4 in the specification and dried in the manner of examples 1-32, does not reasonably provide enablement for all other polyimide-based films that have this property. The specification does not enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make the invention commensurate in scope with these claims. There is undue experimentation needed for a person having ordinary skill in the art to make the invention. The breadth of claims 1-3 are any polyimide-based film that has a Kc value of 1.55 or less, 1.45 or less, or 1.10 to 1.45, respectively. Therefore, in order to determine the scope/breadth of claims 1-3, a person having ordinary skill in the art would have to test each film made out of any polyimide, made by any method of film formation in order to determine the Kc value of the film. In order to determine the scope/breadth of claim 12, a person having ordinary skill in the art would have to test each film made out of any polyimide, made by any method of film formation in order to determine the haze, average optical transmittance and yellow index. A polyimide is a polymer usually made with monomers of diamines and dianhydrides, potentially with additional polymers. A polyimide-based film does not limit the film to only polyimides, but instead opens the composition of the film to any other ingredient in any amount as long as a polyimide is also present. In the state of the prior art the curvature parameter of a polyimide film is not often measured. However, haze, average optical transmittance and yellow index are more common properties to be measured, but not in conjunction with a curvature parameter measurement. A person having ordinary skill in the art would not be able to predict which polyimide-based films would have these properties merely by knowing the monomers used to make the film and the drying methods. For example, in the instant specification, preparation examples 1-4 have the same monomers and the same solvents except that the dianhydride monomer that is used is varied among three different monomers, and the dicarbonyl monomer is either used or not. However, some drying methods (examples 1-32) yield the correct Kc value while other drying methods (comparative examples 1-20) use the same polyimides of preparation examples 1-4 and yet do not meet the claimed property. There are no tests of polyimide-based films that have a portion of another resin, no variation in the diamine monomer, no variation in the dicarbonyl monomer chosen, and no variation in the solvents used to make the polyimide. Therefore, besides the four polyimide resins of preparation examples 1-4 dried with the methods of examples 1-32, there is no other direction provided in the specification to make a polyimide-based film having the claimed Kc value but with a different composition. The amount of experimentation needed to make the invention based on the content of the disclosure is nearly boundless when the number of dianhydride and diamine monomer combinations are considered in combination with the number of different film formation methods, including but not limited to different drying temperatures, wind speed and drying periods, also in combination with other film components that may be present. 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 1-20 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. Regarding claims 1-3: The Kc value is undefined in the claim. It is referred to as “a curvature parameter”, but does teach how it is measured other than by “phase stepped deflectometry”, which is a measurement technique with many variables. A person having ordinary skill in the art would not know what films read on the claim and what films are outside of the scope of the claims without this term being defined. A curvature parameter can be a single point measurement of a curve. If any point on the film has a curvature parameter in the claimed range, the film would read on the claim. Does the applicants intend that the average of curvature parameters over the whole film is within the claimed range? Further, it is unclear if the wavelength range in the phase stepped deflectometry refers to the distance the grid is displaced when measuring, or the wavelength of the beam used to measure the curvature, or the waviness of the film itself has that wavelength. If the last interpretation is correct and the film does have a waviness with that wavelength range, the curvature parameter as a single number is even more unclear in that waves would have many different curvature parameters over the surface. From the instant specification, it appears this property is measured with specific modes selected. However, the particulars of the measurement method and modes selected are not read into the claims. Regarding claim 1: The parentheses in the last line of claim 1 render the claim indefinite and must be removed. It is unclear if the text within the parentheses is included in the claim and further limits the subject matter of the claim, or whether it is an aside to the claim and is not further limiting. For the purpose of further examination, it is taken that the text within the parentheses further limits the claim. Appropriate correction is required. Regarding claim 5: The parentheses in claim 5 around each acronym of each monomer render the claim indefinite and must be removed. It is unclear if the text within the parentheses is included in the claim and further limits the subject matter of the claim, or whether it is an aside to the claim and is not further limiting. For the purpose of further examination, it is taken that the text within the parentheses further limits the claim. Appropriate correction is required. Further, the capital letters in 1,2,4,5-cyclohexanetetracarboxylic dianhydride in the second to the last line are incorrect and should be lower case. Regarding claim 6: The parentheses in claim 6 around each acronym of each monomer render the claim indefinite and must be removed. It is unclear if the text within the parentheses is included in the claim and further limits the subject matter of the claim, or whether it is an aside to the claim and is not further limiting. For the purpose of further examination, it is taken that the text within the parentheses further limits the claim. Appropriate correction is required. Regarding claims 13 and 17-19: The term “type” in claims 13and 17-19 is a relative term which renders the claim indefinite. The term “type” is 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. It is suggested to delete the word. 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. 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. This application currently names joint inventors. In considering patentability of the claims the examiner presumes that the subject matter of the various claims was commonly owned as of the effective filing date of the claimed invention(s) absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and effective filing dates of each claim that was not commonly owned as of the effective filing date of the later invention in order for the examiner to consider the applicability of 35 U.S.C. 102(b)(2)(C) for any potential 35 U.S.C. 102(a)(2) prior art against the later invention. Claims 1-20 are rejected under 35 U.S.C. 103 as being unpatentable over Jo et al. (US 2018/0355108). Regarding claims 1-3, 13, and 16: Jo et al. teaches preparing a liquid resin composition/solvent based composition using monomer components of a dianhydride and a diamine (para. 121). A film is produced (para. 120). The monomers used are 2,2’-bis(trifluoromethyl)-4,4’-biphenyldiamine (TFDB), terephthaloyl chloride (TPCL), 4,4’-hexafluoroisopropylidene diphthalic anhydride (6FDA) and 3,3’,4,4’-biphenyltetracarboxylic dianhydride (BPDA) (para. 159), as is the case in the examples of the instant application. Jo et al. teaches casting and drying the film (para. 162) at a temperature of 80-100 °C (table 1) at a windspeed of 0.7 m/s (examples 2 and 4, zone 1, see tables 1 and 2). The process from casting the film to separating the film is about 15 minutes (para. 162). The detention time of the casting film in each drying zone may range from about 30 seconds to about 5 minutes (para. 156). Therefore, the equations 1 and 2 that are claimed are satisfied: [(100-40) x 0.7 x 5]/100 = 2.1 and [(100-40) x 5]/100 = 3. In the case where the claimed ranges overlap or lie inside ranges disclosed by the prior art, a prima facie case of obviousness exists (MPEP 2144.05 I). Before the effective filing date of the claimed invention a person having ordinary skill in the art would have found it obvious to choose overlapping drying times and would have been motivated to do so since Jo et al. teaches the overlapping times are acceptable to achieve the disclosed invention. The Kc value property claimed is disclosed in the instant invention as being dependent on the method of making and drying the polyimide film. Since Jo et al. teaches the same monomers in the polyimide film and the claimed drying method is disclosed, the latent property of the Kc value would flow naturally from the suggestion of the prior art. Regarding claim 4: Jo et al. teaches the polyimide composition uses monomer components of a dianhydride and a diamine (para. 121). Regarding claim 5: Jo et al. teaches 4,4’-hexafluoroisopropylidene diphthalic anhydride (6FDA) and 3,3’,4,4’-biphenyltetracarboxylic dianhydride (BPDA) (para. 159). Regarding claim 6: Jo et al. teaches 2,2’-bis(trifluoromethyl)-4,4’-biphenyldiamine (TFDB) (para. 159). Regarding claims 7-10 and 14: Jo et al. teaches a dicarbonyl compound such as terephthaloyl chloride (TPCL) (para. 159), which has the structure PNG media_image1.png 100 238 media_image1.png Greyscale . This is the claimed formula where X1 and X2 are chloride and R1 is a single bond. Regarding claim 11: Jo et al. teaches the aromatic dicarbonyl compound. Therefore, the aliphatic dicarbonyl compound is optional. Regarding claim 12: Jo et al. does not explicitly teach the haze, transmittance or yellow index. However, the reference does teach the need to optimize these properties (para. 120). Further, since the reference teaches the same polyimide made by substantially the same method, the properties of the film would naturally flow from the method and product. Mere recognition of latent properties or additional advantages in the prior art does not render nonobvious an otherwise known invention (MPEP 2145 II). Regarding claim 15: While Jo et al. does not explicitly teach the viscosity of the composition, mere recognition of latent properties or additional advantages in the prior art does not render nonobvious an otherwise known invention (MPEP 2145 II). Regarding claim 17: Jo et al. teaches a second drying/2nd zone with a wind speed of 2.0 m/s and a temperature of 100 °C (tables 1 and 2). Regarding claim 18: Jo et al. teaches a post heat treatment from room temperature to 250 °C at a heating rate of 3 °C/minute (para. 163). From the temperature of 100 °C (first overlapping amount with the claimed temperature range), to 250 °C, there is 150 °C, at a rate of 3 °C/minute, the process would take 50 minutes, which overlaps the claimed range. Regarding claim 19: Jo et al. teaches casting the composition onto a support (para. 162). Regarding claim 20: Jo et al. teaches reacting the monomer components in the presence of a first solvent/dimethyl acetamide (para. 159), then adding a second solvent/water to the first solution to precipitate/filter and dry (para. 159), and then dissolving in a third solvent/dimethyl acetamide. Contact Information Any inquiry concerning this communication or earlier communications from the examiner should be directed to Megan McCulley whose telephone number is (571)270-3292. The examiner can normally be reached Monday - Friday 9-5:30. 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, Mark Eashoo can be reached on 571-272-1197. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300. Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000. /MEGAN MCCULLEY/ Primary Examiner, Art Unit 1767