`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`UNITED STATES DEPARTMENT OF COMMERCE
`United States Patent and Trademark Office
`Address: COMMISSIONER FOR PATENTS
`P.O. Box 1450
`Alexandria1 Virginia 22313- 1450
`wwwnsptogov
`
`APPLICATION NO.
`
`
`
`
` F ING DATE
`
`FIRST NAMED INVENTOR
`
`ATTORNEY DOCKET NO.
`
`
`
`
`CONF {MATION NO.
`
`12/938,515
`
`11/03/2010
`
`Yasuo IMANISHI
`
`1497.51186X00
`
`3611
`
`20457
`
`7590
`
`05/21/2013
`
`ANTONELLLTERRY,STOUT&KRAUS,LLP
`1300 NORTH SEVENTEENTH STREET
`SUITE 1 800
`ARLINGTON, VA 22209-3873
`
`STRAH,ELID
`
`1782
`
`MAIL DATE
`
`05/21/2013
`
`PAPER NUMBER
`
`DELIVERY MODE
`
`PAPER
`
`Please find below and/or attached an Office communication concerning this application or proceeding.
`
`The time period for reply, if any, is set in the attached communication.
`
`PTOL—90A (Rev. 04/07)
`
`

`

`
`
`Applicant(s)
`Application No.
` 12/938,515 IMANISHI ET AL.
`
`Examiner
`Art Unit
`AIA (First Inventorto File)
`Office Action Summary
`
`1782ELI D. STRAH first“
`
`-- The MAILING DA TE of this communication appears on the cover sheet with the correspondence address --
`Period for Reply
`
`
`
`A SHORTENED STATUTORY PERIOD FOR REPLY IS SET TO EXPIRE 3 MONTH(S) OR THIRTY (30) DAYS,
`WHICHEVER IS LONGER, FROM THE MAILING DATE OF THIS COMMUNICATION.
`Extensions of time may be available under the provisions of 37 CFR 1.136(a).
`In no event however may a reply be timely filed
`after SIX () MONTHS from the mailing date of this communication.
`If NO period for reply is specified above, the maximum statutory period will apply and will expire SIX (6) MONTHS from the mailing date of this communication.
`Failure to reply within the set or extended period for reply will, by statute, cause the application to become ABANDONED (35 U.S.C. § 133).
`Any reply received by the Office later than three months after the mailing date of this communication, even if timely filed, may reduce any
`earned patent term adjustment. See 37 CFR 1.704(b).
`
`-
`-
`
`Status
`
`1)IXI Responsive to communication(s) filed on 25 February 2013.
`[I A declaration(s)/affidavit(s) under 37 CFR 1.130(b) was/were filed on
`
`2b)|:| This action is non-final.
`a)IXl This action is FINAL.
`3)I:I An election was made by the applicant in response to a restriction requirement set forth during the interview on
`
`
`; the restriction requirement and election have been incorporated into this action.
`
`4)|:I Since this application is in condition for allowance except for formal matters, prosecution as to the merits is
`closed in accordance with the practice under EX parte Quay/e, 1935 CD. 11, 453 O.G. 213.
`
`Disposition of Claims
`
`5)IXI Claim(s) 12 4-12 and 14-18 is/are pending in the application.
`5a) Of the above claim(s)
`is/are withdrawn from consideration.
`6)|:l Claim(s) _ is/are allowed.
`
`7)IZ| Claim(s) 124- 12 and 14- 18is/are rejected.
`8)I:I Claim(s) _ is/are objected to.
`
`9)|:l Claim((s)
`are subject to restriction and/or election requirement.
`* If any claims have been determined allowable, you may be eligible to benefit from the Patent Prosecution Highway program at a
`
`participating intellectual property office for the corresponding application. For more information, please see
`htt
`://www.usoto. ov/ atents/init events"
`
`
`
`h/index.‘s or send an inquiry to PF"I-Ifeedback{<‘buspto.qov.
`
`Application Papers
`
`10)I:I The specification is objected to by the Examiner.
`11)|Z| The drawing(s) filed on 03 November 2010 is/are: a)lZl accepted or b)|:l objected to by the Examiner.
`Applicant may not request that any objection to the drawing(s) be held in abeyance. See 37 CFR 1.85(a).
`
`Replacement drawing sheet(s) including the correction is required if the drawing(s) is objected to. See 37 CFR 1.121 (d).
`
`Priority under 35 U.S.C. § 119
`12)IZI Acknowledgment is made of a claim for foreign priority under 35 U.S.C. §119(a)-(d) or (f).
`Certified copies:
`
`b)I:I Some * c)I:I None of the:
`a)le AII
`LIZI Certified copies of the priority documents have been received.
`2.|:| Certified copies of the priority documents have been received in Application No.
`3.|:I Copies of the certified copies of the priority documents have been received in this National Stage
`
`application from the International Bureau (PCT Rule 17.2(a)).
`* See the attached detailed Office action for a list of the certified copies not received.
`
`Interim copies:
`
`a)|:l AII
`
`b)I:I Some
`
`c)I:I None of the:
`
`Interim copies of the priority documents have been received.
`
`Attachment(s)
`
`1) E Notice of References Cited (PTO-892)
`
`3) I] Interview Summary (PTO-413)
`
`Paper NOISI/Ma” Date —
`PTO/SB/08
`t
`St t
`I
`D'
`t'
`f
`2 I:l I
`)
`4) I:I Other:
`a emen (s)(
`Isc osure
`n orma Ion
`)
`Paper No(s)/Mai| Date
`US. Patent and Trademark Office
`PTOL-326 (Rev. 03-13)
`
`Part of Paper No./Mai| Date 20130508
`
`Office Action Summary
`
`

`

`Application/Control Number: 12/938,515
`
`Art Unit: 1782
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`Page 2
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`DETAILED ACTION
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`Status of the Claims
`
`1.
`
`This is a final office action in response to applicant’s arguments and remarks
`
`filed on February 25, 2013.
`
`2.
`
`3.
`
`4.
`
`5.
`
`Claims 1, 2, 4-12, and 14-18 are pending in the current application.
`
`Claims 1 and 2 have been amended in the current application.
`
`Claims 15-18 are newly added in the current application.
`
`Claims 3 and 13 are cancelled in the current application.
`
`Response to Arguments
`
`6.
`
`Applicant’s arguments filed February 25, 2013 have been fully considered,
`
`however, all prior art rejections are maintained from the previous office action with
`
`changes made to reflect claim amendments. New grounds of rejection is also
`
`established below with regard to newly added claims 15-18.
`
`7.
`
`The Applicant requests withdrawal of the 35 U.S.C. 112 2nd paragraph rejections
`
`set forth in the previous office action.
`
`a.
`
`The 35 U.S.C. 112 2nd paragraph rejections from the previous office
`
`action have been withdrawn due to claim amendments and Applicant remarks.
`
`8.
`
`The Applicant requests that the provisional obviousness-type double patenting
`
`rejection set forth in the previous office action be held in abeyance since the copending
`
`applications have not yet been patented.
`
`

`

`Application/Control Number: 12/938,515
`
`Art Unit: 1782
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`Page 3
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`b.
`
`The obviousness-type double patenting rejections set forth in the previous
`
`office action are maintained with changes made to reflect claim amendments.
`
`9.
`
`The Applicant traverses the 35 U.S.C. 103(a) rejections over Matsumori in view
`
`of Ye in further view of Gibbons and Essafi. The Applicant argues that the equivalent
`
`"A" structure anionic organic acid groups disclosed by Ye and Essafi (-SOsM or -SOsH)
`
`are directly bonded to aromatic rings, where aromatic rings are a conjugated organic
`
`group, not a non-conjugated organic group as required by the claims.
`
`c.
`
`The Examiner does not find this argument persuasive for the following
`
`reasons. Ye and Essafi are not intended to address the limitation “wherein the
`
`chemical structure ‘D’...is in direct chemical bond to a non-conjugated organic
`
`group”, but merely to identify that the general genus/structure of sulfonated and
`
`phosphonated polyimides (i.e. polyimides having anionic organic acids except
`
`acids in the narrow sense, namely an “A” having a structure “D”) is well-known in
`
`the art. Applicant is advised to note that while Ye and Essafi do not disclose a_H
`
`the features of the present claimed invention, both references are used as
`
`teaching references, and therefore, it is not necessary for these secondary
`
`references to contain all the features of the presently claimed invention, In re
`
`Nieve/t, 482 F.2d 965, 179 USPQ 224, 226 (CCPA 1973), In re Keller 624 F.2d
`
`413, 208 USPQ 871, 881 (CCPA 1981). Rather these references teach a certain
`
`concept, and in combination with the primary reference and the Gibbons
`
`reference, disclose the presently claimed invention. Ye is utilized to identify that
`
`it is well-known by one of ordinary skill in the art to utilize anionic acids excluding
`
`

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`Application/Control Number: 12/938,515
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`Art Unit: 1782
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`Page 4
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`acids in the narrow sense. Ye discloses that it is known in the art that sulfonated
`
`and phosphonated polyimides are used in opto-electronic devices to improve
`
`performance by lowering driving voltages and enhance efficiency. Essafi is
`
`utilized to identify a polyimide structure that substantially satisfies chemical
`
`formula (1) of claims 1 and 2, and that polyimides having an “A” group
`
`represented by a divalent organic group having an anionic organic acid except in
`
`the narrow sense are well-known in the art. Additionally, it is noted that as
`
`presently recited, claims 1 and 2 do not prohibit the “D” group from being bonded
`
`to a conjugated group, but only require that a non-conjugate group be directly
`
`attached, whereby it is possible for the “D” group to be directly bonded on either
`
`side of the organic acid. As seen below the “D” group is both directly bonded to
`
`a conjugated group (i.e. aromatic ring) and a non-conjugated group (i.e. -CH3).
`
`SGECKTTeig
`
`
`
`The prior art reference Gibbons teaches that it is well-known to have an
`
`unconjugated (i.e. non-conjugated) organic group directly bonded to a divalent
`
`organic group (Gibbons, Col 4 Lines 10-67, Col 5 all, Col 6 Lines 1-5) within a
`
`polyimide polymer structure that satisfies chemical formula (1) of claim 1.
`
`Gibbons provides ample teaching and motivation for manipulation of multivalent
`
`organic groups (i.e. aromatic rings, “A” group) with the substituent group “”.Y
`
`Where “Y” as taught by Gibbons comprises heteroatoms of S and 0 (Le. an
`
`

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`Application/Control Number: 12/938,515
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`Art Unit: 1782
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`Page 5
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`anionic acid or acid ester such as —SOs when applying the teachings of Essafi)
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`and hydrocarbon chains having 1-4 carbon double bonds that are unconjugated
`
`(i.e. non-conjugated) directly bonded thereto. Therefore, the prior art reference
`
`Gibbons as used in combination with Matsumori, Ye, and Essafi provides the
`
`required teachings to render obvious the present invention. Lastly, Applicant is
`
`directed to the Yasuda prior art reference (Synthesis and Properties of
`
`Polyimides Bearing Acid Groups on Long Pendant Aliphatic Chains, Journal of
`
`Polymer Science: Part A: Polymer Chemistry, 2006, Vol 44, Pgs 3995-4005)
`
`utilized in the new grounds of rejection established below to address new claims
`
`15-18. Yasuda explicitly teaches polyimides having structure satisfying chemical
`
`formula (1) of claims 1 and 2 comprising a “D” structure (i.e. -SOsH) directly
`
`bonded to a non-conjugated organic group that is an alkylene group having 1
`
`carbon atom (i.e. —CH2) (Yasuda, Pgs 4000-4002, Scheme 3). Yasuda teaches
`
`specific example structures that anticipates the polyimide structure of claims 1
`
`and 2, and used in combination with Matsumori and Ye renders obvious the
`
`present invention.
`
`10.
`
`The Applicant further argues that the prior art reference Gibbons does not
`
`disclose the chemical structure “Y” is in direct chemical bond to a chemical structure
`
`6‘ D”-
`
`d.
`
`The Examiner does not find this argument persuasive for the following
`
`reasons. Gibbons teaches that it is well-known to have an unconjugated (i.e.
`
`non-conjugated) organic group directly bonded to a divalent organic group
`
`

`

`Application/Control Number: 12/938,515
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`Art Unit: 1782
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`Page 6
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`(Gibbons, Col 4 Lines 10-67, Col 5 all, Col 6 Lines 1-5) within a polyimide
`
`polymer structure that satisfies chemical formula (1) of claim 1. The “Y” group as
`
`taught by Gibbons comprises heteroatoms of S and 0 (Le. an anionic acid or
`
`acid ester, “D”) such as —SOs when taken in view of Essafi and hydrocarbon
`
`chains having 1-4 carbon double bonds that are unconjugated (i.e. non-
`
`conjugated). Although Gibbons remains silent with regard to the phrase "in direct
`
`chemical bond", the teachings of Gibbons implicitly necessitate that the
`
`heteroatom group within the “Y” group is in direct chemical bond with the non-
`
`conjugated hydrocarbon chain. Since Gibbons does not teach combinations that
`
`propose otherwise and does not expressly prohibit embodiments that teach away
`
`from the present invention, the prior art reference Gibbons as used in
`
`combination with Matsumori, Ye, and Essafi provides the required teachings to
`
`establish a prima facie case of obviousness.
`
`11.
`
`The Applicant argues regarding claim 5 that no apparent reason exists to
`
`combine the teachings of Yoo et al or Teranishi et al with Matsumori/Ye/Essafi/Gibbons.
`
`e.
`
`The Examiner does not find this argument persuasive for the following
`
`reasons. As established in the rejections below Yoo and Teranishi both teach
`
`film layers for use in optical elements and provide ample motivation (i.e. to
`
`improve orientation capabilities, improve orientation rate, improve adhesion
`
`properties, and allow for better reflection control of selective wavelengths) to
`
`prompt a person of ordinary skill in the art to consider and apply the disclosed
`
`

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`Application/Control Number: 12/938,515
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`Art Unit: 1782
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`Page 7
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`teachings in conjunction with Matsumori/Ye/Essafi/Gibbons where absent is any
`
`objective evidence to the contrary.
`
`12.
`
`The Applicant argues regarding claim 6 that no apparent reason exists to
`
`combine the teachings of Hedrick et al with Matsumori/Ye/Essafi/Gibbons.
`
`f.
`
`The Examiner does not find this argument persuasive for the following
`
`reasons. As established in the rejections below Hedrick teaches polyimide film
`
`layers for use in microelectronic devices and provide ample motivation (i.e.
`
`higher thermal stability and low dielectric constant) to prompt a person of
`
`ordinary skill in the art to consider and apply the disclosed teachings in
`
`conjunction with Matsumori/Ye/Essafi/Gibbons where absent is any objective
`
`evidence to the contrary.
`
`13.
`
`The Applicant argues regarding claim 14 that no apparent reason exists to
`
`combine the teachings of Matsumori2 and Adachi et al with
`
`Matsumori/Ye/Essafi/Gibbons.
`
`g.
`
`The Examiner does not find this argument persuasive for the following
`
`reasons. As established in the rejections below Matsumori2 and Adachi both
`
`teach display devices comprising film layers and provide ample motivation (i.e. to
`
`reduce defects, provide high image quality and contrast ratio, and to provide an
`
`extensive light emitting area realizing a bright display) to prompt a person of
`
`ordinary skill in the art to consider and apply the disclosed teachings in
`
`conjunction with Matsumori/Ye/Essafi/Gibbons where absent is any objective
`
`evidence to the contrary.
`
`

`

`Application/Control Number: 12/938,515
`
`Art Unit: 1782
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`Page 8
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`Claim Interpretation
`
`14.
`
`As already set forth in the previous office action, for the purposes of examination
`
`the phrases “an anionic organic acid except organic acids in the narrow sense” and “an
`
`acid ester group of an anionic organic acid except organic acids in the narrow sense”
`
`are interpreted to include any anionic organic acids or any ester groups of anionic
`
`organic acids excluding carboxylic acids. Special definitions for these phrases are
`
`defined within the present specification and are interpreted accordingly.
`
`Claim Rejections - 35 USC § 1 12
`
`15.
`
`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.
`
`16.
`
`Claims 15-18 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 pre-AIA the
`
`applicant regards as the invention.
`
`17.
`
`The variable "n" in claims 15 and 16 is not defined which renders the claims
`
`indefinite. For the purposes of examination the variable “n” is interpreted to be an
`
`

`

`Application/Control Number: 12/938,515
`
`Art Unit: 1782
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`Page 9
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`integer value greater than zero representing the number of carbon atoms in the
`
`disclosed formulae.
`
`18.
`
`The variable "n" in claims 17 and 18 is not explicitly defined which renders the
`
`claims indefinite. For the purposes of examination the variable “n” is interpreted to be
`
`an integer value of 1 or 2 representing the number of carbon atoms in the disclosed
`
`formulae.
`
`Double Patenting
`
`19.
`
`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
`
`obviousness-type 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); and In re Thorington, 418 F.2d 528, 163 USPQ
`
`644 (CCPA 1969).
`
`

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`Application/Control Number: 12/938,515
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`Art Unit: 1782
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`Page 10
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`A timely filed terminal disclaimer in compliance with 37 CFR 1.321 (c) or 1.321(d)
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`may be used to overcome an actual or provisional rejection based on a nonstatutory
`
`double patenting ground provided the conflicting application or patent either is shown to
`
`be commonly owned with this application, or claims an invention made as a result of
`
`activities undertaken within the scope of a joint research agreement.
`
`Effective January 1, 1994, a registered attorney or agent of record may sign a
`
`terminal disclaimer. A terminal disclaimer signed by the assignee must fully comply with
`
`37 CFR 3.73(b).
`
`20.
`
`Claim 1, 2, 5, and 8 are provisionally rejected on the ground of nonstatutory
`
`obviousness-type double patenting as being unpatentable over claims 1 and 13 of
`
`copending Application No. 13/029323 in view of Ye et al. (PGPub# US
`
`2008/0145669 A1), and in further view of Gibbons et al. (USPat# 6491988) and
`
`Essafi et al. (NPL Sulfonated Polyimide lonomers, Macromolecules 2004, 37,
`
`1431-1440).
`
`21.
`
`Regarding Claims 1, 2, 5, and 8, 13/029323 claims a liquid crystal display device
`
`comprising first and second substrates of which at least one is transparent; a liquid
`
`crystal layer arranged between the pair of substrates; an electrode group that applies an
`
`electric field to the liquid crystal layer formed on at least one of the substrates; a
`
`plurality of active elements connected to the electrode group; an alignment film (i.e.
`
`orientation film) disposed on one of the substrates; and an underlying layer (i.e. an
`
`interlayer) disposed on one of the substrates that contacts the alignment film. The
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`alignment film includes an organic compound of polyimide formed using a polyamide
`
`

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`Application/Control Number: 12/938,515
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`Art Unit: 1782
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`Page 11
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`acid ester (i.e. polyamic acid ester) precursor where the refractive index of the
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`alignment film monotonically increases from a boundary surface between the alignment
`
`film/liquid crystal layer interface to a boundary surface between the alignment
`
`film/underlying layer interface (13/029323, Claims 1 and 13).
`
`22.
`
`13/029323 remains silent regarding a polyimide with an anionic organic acid or
`
`an acid ester group, excluding organic acids in the narrow sense.
`
`23.
`
`Ye, however, teaches an opto-electronic device containing sulfonated and/or
`
`phosphonated aromatic copolymers that include sulfonated and phosphonated
`
`polyimides (Ye, Para 0009-0013, 0042-0048). Sulfonation is the reaction of an organic
`
`compound with an anionic sulfonic acid functional group. Phosphonation is the reaction
`
`of an organic compound with an anionic phosphoric acid functional group. Ye identifies
`
`that the sulfonated monomers and phosphonated monomers allow for greater control of
`
`polymer architectures (Ye, Para 0021, 0035). Ye also identifies that such sulfonated/
`
`phosphonated aromatic copolymers significantly improve device performance by
`
`exhibiting lowered driving voltages and enhanced efficiency (Ye, Para 0066-0068).
`
`24.
`
`Since 13/029323 and Ye both teach similar electronic optical devices utilizing
`
`polyimides, it would have been obvious to one or ordinary skill in the art at the time of
`
`the invention to substitute the polyimide in the liquid crystal display device of 13/029323
`
`with the sulfonated/phosphonated polyimide of Ye to yield a liquid crystal display device
`
`with significantly improved performance with lowered driving voltages and enhanced
`
`efficiency as taught by Ye.
`
`

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`Application/Control Number: 12/938,515
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`Art Unit: 1782
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`Page 12
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`25.
`
`13/029323/Ye also remains silent regarding a polyimide represented by chemical
`
`formula (1) of claim 1 of the present invention.
`
`26.
`
`Gibbons and Essafi both teach polyimide structures that satisfy chemical formula
`
`(1) of claim 1 of the present invention. Gibbons teaches a polyimide for use in liquid
`
`crystal displays with an “M” group (i.e. “X” group of the present invention) represented
`
`by a tetravalent organic group and “A” and “Y” groups (i.e. “A” group of the present
`
`invention) represented by a multi-valent organic group comprising sulphur heteroatom
`
`double bonds (Gibbons, Abstract, Col 4, Lines 10-67, Col 5, Col 6 Lines 1-5). Gibbons
`
`identifies that such polyimides are known for their excellent thermal and electrical
`
`stability properties, such polyimides also provide high sensitivity to polarized light and
`
`improved electrical properties that makes them useful in optical alignment layers for
`
`liquid crystal displays. Furthermore, Essafi teaches a polyimide that is sulfonated (i.e.
`
`“A” of the present invention having an anionic organic acid group) with an organic
`
`tetravalent core structure (i.e. “X” of the present invention) that satisfies chemical
`
`formula 1 of claim 1 of the present invention as seen below in Figure 2. Essafi
`
`discusses the sulfonated polyimides have higher stability and better conductivity, and
`
`are also highly anisotropic and induce anisotropic transport properties (Essafi, Pgs
`
`1431 -1432). Gibbons further teaches the anionic organic acid/acid ester group (i.e.
`
`chemical structure “D” of the present invention) is in direct contact to a non-conjugated
`
`(i.e. unconjugated) organic group (Gibbons, Col 4, Lines 10-67, Col 5, Col 6 Lines 1-5).
`
`

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`Application/Control Number: 12/938,515
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`Art Unit: 1782
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`Page 13
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`SP! 135'
`
`Figure 2 — Essafi Sulfonated Polyimide
`
`27.
`
`Since 13/029323/Ye and Gibbons both teach polyimide films for use in liquid
`
`crystal display devices and Essafi teaches a polyimide exhibiting optical properties such
`
`as anisotropy, it would have been obvious to one or ordinary skill in the art at the time of
`
`the invention to utilize a polyimide satisfying the structure of chemical formula 1 of claim
`
`1 of the present invention to yield a liquid crystal display device having an orientation
`
`film with excellent thermal properties, improved electrical properties, and high sensitivity
`
`to polarized light as taught by Gibbons and also high stability, better conductivity, and
`
`high anisotropy as taught by Essafi.
`
`This is a provisional obviousness-type double patenting rejection.
`
`28.
`
`Claim 1 and 7-9 are provisionally rejected on the ground of nonstatutory
`
`obviousness-type double patenting as being unpatentable over claims 1-2 and 9-
`
`10 of copending Application No. 13/253998 in view of Ye et al. (PGPub# US
`
`2008/0145669 A1), and in further view of Gibbons et al. (USPat# 6491988) and
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`Essafi et al. (NPL Sulfonated Polyimide lonomers, Macromolecules 2004, 37,
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`1431-1440).
`
`29.
`
`Regarding Claims 1 and 7, 13/253998 claims a liquid crystal display device
`
`comprising first and second substrates of which at least one is transparent; a liquid
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`crystal layer arranged between the pair of substrates; an electrode group that applies an
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`Art Unit: 1782
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`Page 14
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`electric field to the liquid crystal layer formed on at least one of the substrates; a
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`plurality of active elements connected to the electrode group; and an alignment film (i.e.
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`orientation film) disposed on one of the substrates. The alignment film comprises a
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`polyimide where the polyimide is formed from a diamine containing a sulfonic acid group
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`or a phosphoric acid group (13/253998, Claims 1 and 2).
`
`30.
`
`13/253998 remains silent regarding a polyimide with an anionic organic acid or
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`an acid ester group, excluding organic acids in the narrow sense.
`
`31.
`
`Ye, however, teaches an opto-electronic device containing sulfonated and/or
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`phosphonated aromatic copolymers that include sulfonated and phosphonated
`
`polyimides (Ye, Para 0009-0013, 0042-0048). Sulfonation is the reaction of an organic
`
`compound with an anionic sulfonic acid functional group. Phosphonation is the reaction
`
`of an organic compound with an anionic phosphoric acid functional group. Ye identifies
`
`that the sulfonated monomers and phosphonated monomers allow for greater control of
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`polymer architectures (Ye, Para 0021, 0035). Ye also identifies that such sulfonated/
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`phosphonated aromatic copolymers significantly improve device performance by
`
`exhibiting lowered driving voltages and enhanced efficiency (Ye, Para 0066-0068).
`
`32.
`
`Since 13/253998 and Ye both teach similar electronic optical devices utilizing
`
`polyimides, it would have been obvious to one or ordinary skill in the art at the time of
`
`the invention to substitute the polyimide in the liquid crystal display device of 13/253998
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`with the sulfonated/phosphonated polyimide of Ye to yield a liquid crystal display device
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`with significantly improved performance with lowered driving voltages and enhanced
`
`efficiency as taught by Ye.
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`33.
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`13/253998/Ye also remains silent regarding a polyimide represented by chemical
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`formula (1) of claim 1 of the present invention.
`
`34.
`
`Gibbons and Essafi both teach polyimide structures that satisfy chemical formula
`
`(1) of claim 1 of the present invention. Gibbons teaches a polyimide for use in liquid
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`crystal displays with an “M” group (i.e. “X” group of the present invention) represented
`
`by a tetravalent organic group and “A” and “Y” groups (i.e. “A” group of the present
`
`invention) represented by a multi-valent organic group comprising sulphur heteroatom
`
`double bonds (Gibbons, Abstract, Col 4, Lines 10-67, Col 5, Col 6 Lines 1-5). Gibbons
`
`identifies that such polyimides are known for their excellent thermal and electrical
`
`stability properties, such polyimides also provide high sensitivity to polarized light and
`
`improved electrical properties that makes them useful in optical alignment layers for
`
`liquid crystal displays. Furthermore, Essafi teaches a polyimide that is sulfonated (i.e.
`
`“A” of the present invention having an anionic organic acid group) with an organic
`
`tetravalent core structure (i.e. “X” of the present invention) that satisfies chemical
`
`formula 1 of claim 1 of the present invention as seen below in Figure 2. Essafi
`
`discusses the sulfonated polyimides have higher stability and better conductivity, and
`
`are also highly anisotropic and induce anisotropic transport properties (Essafi, Pgs
`
`1431 -1432). Gibbons further teaches the anionic organic acid/acid ester group (i.e.
`
`chemical structure “D” of the present invention) is in direct contact to a non-conjugated
`
`(i.e. unconjugated) organic group (Gibbons, Col 4, Lines 10-67, Col 5, Col 6 Lines 1-5).
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`SP! 135'
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`Figure 2 — Essafi Sulfonated Polyimide
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`35.
`
`Since 13/253998/Ye and Gibbons both teach polyimide films for use in liquid
`
`crystal display devices and Essafi teaches a polyimide exhibiting optical properties such
`
`as anisotropy, it would have been obvious to one or ordinary skill in the art at the time of
`
`the invention to utilize a polyimide satisfying the structure of chemical formula 1 of claim
`
`1 of the present invention to yield a liquid crystal display device having an orientation
`
`film with excellent thermal properties, improved electrical properties, and high sensitivity
`
`to polarized light as taught by Gibbons and also high stability, better conductivity, and
`
`high anisotropy as taught by Essafi.
`
`36.
`
`Regarding Claim 8, 13/253998/Ye/Gibbons/Essafi claims the polyimide was
`
`formed from a polyamide acid ester precursor (13/253998, Claims 1 and 10).
`
`37.
`
`Regarding Claim 9, 13/253998/Ye/Gibbons/Essafi claims the alignment film (i.e.
`
`orientation film) is given liquid crystal alignment by irradiation with polarized ultraviolet
`
`light (i.e. by a photo-alignment process) (13/253998, Claims 1 and 9).
`
`This is a provisional obviousness-type double patenting rejection.
`
`Claim Rejections - 35 USC § 103
`
`38.
`
`The following is a quotation of 35 U.S.C. 103(a) which forms the basis for all
`
`obviousness rejections set forth in this Office action:
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`Application/Control Number: 12/938,515
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`Art Unit: 1782
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`(a) A patent may not be obtained though the invention is not identically disclosed
`or described as set forth in section 102 of this title, if the differences between the
`subject matter sought to be patented and the prior art are such that the subject
`matter as a whole would have been obvious at the time the invention was made
`
`to a person having ordinary skill in the art to which said subject matter pertains.
`Patentability shall not be negatived by the manner in which the invention was
`made.
`
`39.
`
`The factual inquiries set forth in Graham v. John Deere Co., 383 U.S. 1, 148
`
`USPQ 459 (1966), that are applied for establishing a background for determining
`
`obviousness under 35 U.S.C. 103(a) are summarized as follows:
`
`999?)?“
`
`Determining the scope and contents of the prior art.
`Ascertaining the differences between the prior art and the claims at issue.
`Resolving the level of ordinary skill in the pertinent art.
`Considering objective evidence present in the application indicating
`obviousness or nonobviousness.
`
`40.
`
`This application currently names joint inventors.
`
`In considering patentability of
`
`the claims under 35 U.S.C. 103(a), the examiner presumes that the subject matter of
`
`the various claims was commonly owned at the time any inventions covered therein
`
`were made absent any evidence to the contrary. Applicant is advised of the obligation
`
`under 37 CFR 1.56 to point out the inventor and invention dates of each claim that was
`
`not commonly owned at the time a later invention was made in order for the examiner to
`
`consider the applicability of 35 U.S.C. 103(c) and potential 35 U.S.C. 102(e), (f) or (9)
`
`prior art under 35 U.S.C. 103(a).
`
`41.
`
`Claims 1, 2, 4, and 7-12 are rejected under 35 U.S.C. 103(a) as being
`
`unpatentable over Matsumori et al. (PGPub# US 2009/0053430 A1) in view of Ye et
`
`al. (PGPub# US 2008/0145669 A1), and in further view of Gibbons et al. (USPat#
`
`

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`Application/Control Number: 12/938,515
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`Art Unit: 1782
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`Page 18
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`6491988) and Essafi et al. (NPL Sulfonated Polyimide lonomers, Macromolecules
`
`2004, 37, 1431-1440).
`
`42.
`
`Regarding Claim 1, Matsumori teaches a liquid crystal display device
`
`comprising a pair of substrates at least one of which is transparent; a liquid crystal layer
`
`arranged (i.e. disposed) between the pair of substrates; a group of electrodes for
`
`applying an electric field to the liquid crystal layer as formed on at least one of the
`
`substrates; a plurality of active elements connected to the group of electrodes; and an
`
`orientation film arranged (i.e. disposed) on at least one of the substrates, wherein the
`
`orientation film contains a polyimide (Matsumori, Abstract). Matsumori also identifies
`
`that the material of the orientation film may include sulfonated structures (Matsumori,
`
`Para 0035-0039).
`
`43.
`
`Matsumori remains silent regarding a polyimide with an anionic organic acid or
`
`an acid ester group, excluding organic acids in the narrow sense.
`
`44.
`
`Ye, however, teaches an opto-electronic device containing sulfonated and/or
`
`phosphonated aromatic copolymers that include sulfonated and phosphonated
`
`polyimides (Ye, Para 0009-0013, 0042-0048). Sulfonation is the reaction of an organic
`
`compound with an anionic sulfonic acid functional group. Phosphonation is the reaction
`
`of an o