`
`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.
`
`12/889,460
`
`09/24/2010
`
`Masaki MATSUMORI
`
`1497.51106X00
`
`63 68
`
`20457
`
`7590
`
`10/31/2013
`
`ANTONELLLTERRY,STOUT&KRAUS,LLP
`1300 NORTH SEVENTEENTH STREET
`SUITE 1 800
`ARLINGTON, VA 22209-3873
`
`STRAH,ELID
`
`1782
`
`MAIL DATE
`
`10/31/2013
`
`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.
` 12/889,460 MATSUMORI 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 3 October 2013.
`[I A declaration(s)/affidavit(s) under 37 CFR 1.130(b) was/were filed on
`
`2b)lX| This action is non-final.
`a)I:| 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)|XI Claim(s) 2and 4-19 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) 2and4- 19 is/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
`hit
`://www.usoto. ov/ atents/init events) .h/index.
`
`
`
`‘3 , 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 24 Sthember 2010 is/are: a)IXI accepted or b)I:I 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 All
`1le Certified copies of the priority documents have been received.
`2.I:I 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.
`
`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. 08-13)
`
`Part of Paper No./Mai| Date 20131025
`
`Office Action Summary
`
`

`

`Application/Control Number: 12/889,460
`
`Art Unit: 1782
`
`Page 2
`
`DETAILED ACTION
`
`Continued Examination Under 37 CFR 1. 114
`
`1.
`
`A request for continued examination under 37 CFR 1.114, including the fee set
`
`forth in 37 CFR 1.17(e), was filed in this application after final rejection. Since this
`
`application is eligible for continued examination under 37 CFR 1.114, and the fee set
`
`forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action
`
`has been withdrawn pursuant to 37 CFR 1.114. Applicant's submissions filed on
`
`October 3, 2013 and September 5, 2013 have been entered.
`
`Status of the Claims
`
`Claims 2 and 4-19 are pending in the current application.
`
`Claims 2 and 8 are amended in the current application.
`
`Claims 1 and 3 are cancelled in the current application.
`
`Response to Arguments
`
`Applicant’s arguments filed September 5, 2013 have been fully considered.
`
`Applicant argues that the present invention sets forth to solve the problem of
`
`2.
`
`3.
`
`4.
`
`5.
`
`6.
`
`residual images in LCD devices, where as the Matsumori reference '833 solves the
`
`problems of improving contrast ratio, stabilizing alignment, and reducing unsatisfactory
`
`display. Applicant further argues that Matsumori '833 discloses that decreasing the
`
`thickness of alignment layer improves afterimage, therefore, one of ordinary skill would
`
`

`

`Application/Control Number: 12/889,460
`
`Art Unit: 1782
`
`Page 3
`
`not have been motivated to investigate choosing specific compounds to improve
`
`afterimages like the present invention discusses.
`
`a.
`
`Examiner does not find this persuasive. The fact that applicant has
`
`recognized another advantage which would flow naturally from following the
`
`suggestion of the prior art cannot be the basis for patentability when the
`
`differences would otherwise be obvious. See Ex parte Obiaya, 227 USPQ 58, 60
`
`(Bd. Pat. App. & Inter. 1985). Additionally, one cannot show nonobviousness by
`
`attacking references individually where the rejections are based on combinations
`
`of references. See In re Keller, 642 F.2d 413, 208 USPQ 871 (CCPA 1981); In
`
`re Merck & Co., 800 F.2d 1091, 231 USPQ 375 (Fed. Cir. 1986). Matsumori '833
`
`in view of Matsumori '430 provides motivation that it would have been obvious to
`
`one of ordinary skill to have substituted the diamine of '430 into the polyimide/
`
`precursor of '833 to yield an LCD having an alignment film with reduced resistivity
`
`and very effective image persistence suppression as taught by '430 ('430, [0036],
`
`[0043]). Additionally, it has been held that a prior art reference must either be in
`
`the field of applicant’s endeavor or, if not, then be reasonably pertinent to the
`
`particular problem with which the applicant was concerned, in order to be relied
`
`upon as a basis for rejection of the claimed invention. See In re Oetiker, 977
`
`F.2d 1443, 24 USPQ2d 1443 (Fed. Cir. 1992).
`
`In this case, Matsumori ‘833 is
`
`clearly in the same field of endeavor as the present invention. Matsumori ‘833
`
`teaches liquid crystal display devices comprising alignment layers made of
`
`photoreactive polyimide or a polyimide and polyamic acid (i.e. polyimide
`
`

`

`Application/Control Number: 12/889,460
`
`Art Unit: 1782
`
`Page 4
`
`precursor). The alignment layers are provided with a liquid crystal alignment
`
`capacity (i.e. alignment regulating force) by being irradiated with linearly
`
`polarized light (Matsumori ‘833, Abstract, Para 0049-0054). Matsumori ‘833
`
`further teaches the alignment layer comprises cyclobutanetetracarboxylic
`
`dianhydride and an aromatic diamine compound (Matsumori ‘833, Para 0056-
`
`0061).
`
`7.
`
`Applicant argues that Matsumori ‘430 does not teach the compounds from the
`
`Group of compounds II in newly amended claim 2 of the present invention.
`
`b.
`
`Examiner does not find this argument persuasive. Matsumori ‘430 still
`
`teaches a structure that satisfies “-4 of claim 2 of the present invention
`
`(Matsumori ‘430, [0039] .)
`
`
`
`[Compound Group A] — Matsumori2 Aromatic compound group from diamine reactant
`
`structure
`
`Claim Rejections - 35 USC § 103
`
`The following is a quotation of pre-AIA 35 U.S.C. 103(a) which forms the basis
`
`for all obviousness rejections set forth in this Office action:
`
`(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
`
`

`

`Application/Control Number: 12/889,460
`
`Art Unit: 1782
`
`Page 5
`
`skill in the art to which said subject matter pertains. Patentability shall not
`be negatived by the manner in which the invention was made.
`
`8.
`
`The factual inquiries set forth in Graham v. John Deere 00., 383 U.S. 1, 148
`
`USPQ 459 (1966), that are applied for establishing a background for determining
`
`obviousness under pre-AIA 35 U.S.C. 103(a) 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.
`
`9.
`
`This application currently names joint inventors. In considering patentability of
`
`the claims under pre-AIA 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 pre-AIA 35 U.S.C. 103(c) and potential pre-AIA
`
`35 U.S.C. 102(e), (f) or (g) prior art under pre-AIA 35 U.S.C. 103(a).
`
`10.
`
`Claims 2, 5, and 11-15 are rejected under 35 U.S.C. 103(a) as being
`
`unpatentable over Matsumori et al. (US 2005/0271833 A1, from herein referred to
`
`as Matsumori) in view of Matsumori et al. (US 2009/0053430 A1, from herein
`
`referred to as Matsumori2) as evidenced by Tajiri et al. (US 2003/0050407 A1) and
`
`Lai et al. (Synthesis of novel polyimides with (tert-butyl-dimethyl-
`
`

`

`Application/Control Number: 12/889,460
`
`Art Unit: 1782
`
`Page 6
`
`siloxy)biphenyloxy groups and the effect of side-chains content on their
`
`properties, European Polymer Journal, 2008, 44, Pgs 3724-3731).
`
`11.
`
`Regarding Claim 2, Matsumori teaches a liquid crystal display device
`
`comprising a pair of substrates at least one of which is transparent, a liquid crystal layer
`
`placed between the pair of substrates, an electrode group formed on at least one of the
`
`substrates to apply an electrical field to the liquid crystal layer, and an alignment layer
`
`placed on at least one of the substrates wherein the alignment layer is made of
`
`photoreactive polyimide or a polyimide and polyamic acid (is. polyimide precursor).
`
`The alignment layer is provided with a liquid crystal alignment capacity (is. alignment
`
`regulating force) by being irradiated with linearly polarized light (Matsumori, Abstract,
`
`Para 0049-0054). Matsumori further teaches the alignment layer comprises
`
`cyclobutanetetracarboxylic dianhydride and an aromatic diamine compound (Matsumori,
`
`Para 0056-0061). Matsumori discloses example alignment layer compositions that
`
`comprise diamine components that satisfy compounds (l-1), (l-7), (l-8) of claim 2 of the
`
`present invention (Matsumori, Para 0060-0061, 0178, 0188, 0196, 0207, Compounds 4,
`
`11, 13, 31, 33, 35, 39) and a diamine component substantially similar to Group of
`
`compounds ll of claim 2 of the present invention (Matsumori, Para 0228, Compound
`
`44). Matsumori also teaches that more than one diamine can be utilized to form a
`
`polyimide for the alignment layer and discloses examples. The examples utilizing two
`
`diamines exhibit higher contrast ratio, wide viewing angle, no afterimage effects from
`
`image sticking, and high display characteristics (Matsumori, Para 0063, 0202-0206,
`
`0220-0231, 0254-0271).
`
`

`

`Application/Control Number: 12/889,460
`
`Art Unit: 1782
`
`Page 7
`
`12.
`
`Matsumori remains silent regarding a diamine component that completely
`
`satisfies any one of the Group of compounds ll of claim 2 of the present invention.
`
`13.
`
`Matsumori2, however, teaches a substantially similar liquid crystal display
`
`device comprising an orientation control film (i.e. alignment control film) made of
`
`polyimide and polyamide acid ester (Matsumori2, Para 0023-0024). Matsumori2 further
`
`discloses the chemical structures of the polyimide and polyimide precursor
`
`(Matsumori2, Para 0033, [Formula 102, 103, 116, 117]), where it is well established in
`
`the art that such chemical structures are the product of a reaction between diamine
`
`compounds and tetracarboxylic acid, acid anhydride, or an esterification product thereof
`
`as evidenced by Tajiri (Tajiri, Para 0014-0017, 0044-0051).
`
`{Fihssirulisl IE 3]
`
`
`
`t‘1 1 71
`
`[Formula 117] — Matsumori2 polyimide precursor with Aromatic group (Ar) contributed
`
`by diamine reactant
`
`Matsumori2 elaborates that the chemical structures of the polyimide and polyimide
`
`precursor comprises an Aromatic compound group (Ar), where it is well established in
`
`the art that the aforementioned Aromatic compound group (Ar) is imparted to the
`
`polyimide and polyimide precursor from the diamine reactant as evidenced by Lai (Lai,
`
`Pg 3724, 3727, Scheme 2). Matsumori2 discloses Aromatic compound groups that
`
`

`

`Application/Control Number: 12/889,460
`
`Art Unit: 1782
`
`Page 8
`
`when in diamine reactant state completely satisfy compound (ll-4) of group II of claim 2
`
`of the present invention (Matsumori2, Para 0036-0043).
`
`HO
`
`[Compound Group A] — Matsumori2 Aromatic compound group from diamine reactant
`
`structure
`
`14.
`
`Matsumori discloses a liquid crystal display having a diamine substantially
`
`similar to Group of compounds ll of claim 2, expresses the suggestion of improving
`
`afterimage/image sticking characteristics, and provides examples of polyimides and
`
`precursors with at least two diamines. Matsumori2 discloses a substantially identical
`
`liquid crystal display to Matsumori and teaches polyimides and precursors having a
`
`diamine that completely satisfies (ll-4) of Group of compounds ll of claim 2 that very
`
`effectively suppress image persistence (i.e. burn-in, afterimage/image sticking)
`
`(Matsumori2, Para 0036, 0043). Therefore, it would have been obvious to one of
`
`ordinary skill in the art at the time of the invention to have substituted the diamine of
`
`Matsumori2 into the polyimide/precursor having at least two diamines of Matsumori to
`
`yield a liquid crystal display having an alignment control film with reduced resistivity and
`
`very effective image persistence suppression as taught by Matsumori2 (Matsumori2,
`
`Para 0036, 0043).
`
`15.
`
`Regarding Claim 5, modified Matsumori further teaches the
`
`cyclobutanetetracarboxylic dianhydride satisfies formula (IV-1) of claim 5 of the present
`
`

`

`Application/Control Number: 12/889,460
`
`Art Unit: 1782
`
`Page 9
`
`invention (Matsumori, Para 0056-0059, 0154, 0178, 0188, 0196, 0207, 0213, 0228,
`
`0261, Compound 1, 24, 29, 33, 34, 40, 42, 45, 56, 57).
`
`16.
`
`Regarding Claim 11, modified Matsumori further teaches the electrode group is
`
`formed on only one of the pair of substrates (Matsumori, Para 0082, 0090, 0095-0102,
`
`Figure 1).
`
`17.
`
`Regarding Claim 12, modified Matsumori further teaches the liquid crystal layer
`
`has a pre-tilt of 10 or less (Matsumori, Para 0064).
`
`18.
`
`Regarding Claims 13-15, modified Matsumori teaches the liquid crystal display
`
`device as discussed for claim 2. Modified Matsumori identifies example polyimide
`
`alignment layers that are dense (Matsumori, Para 0154-0155, 0261-0262). Modified
`
`Matsumori remains silent regarding the specific hardness of the polyimide alignment
`
`layers. However, given that the alignment film of modified Matsumori when compared
`
`to the alignment film of the present invention is formed of a substantially similar diamine
`
`and cyclobutanetetracarboxylic dianhydride components and is formed by a
`
`substantially similar method (Matsumori, Para 0138-0144), it is deemed to possess the
`
`same hardness properties as instantly described in claims 13-15 of the present
`
`invention. "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).
`
`19.
`
`Claims 4 and 9 are rejected under 35 U.S.C. 103(a) as being unpatentable
`
`over Matsumori et al. (US 2005/0271833 A1, from herein referred to as Matsumori)
`
`

`

`Application/Control Number: 12/889,460
`
`Art Unit: 1782
`
`Page 10
`
`in view of Matsumori et al. (US 2009/0053430 A1, from herein referred to as
`
`Matsumori2) as evidenced by Tajiri et al. (US 2003/0050407 A1) and Lai et al.
`
`(Synthesis of novel polyimides with (tert-butyl-dimethyl-siloxy)biphenyloxy
`
`groups and the effect of side-chains content on their properties, European
`
`Polymer Journal, 2008, 44, Pgs 3724-3731) as applied to claim 2 above, and in
`
`further view of D’Alelio (USPat# 4075171).
`
`20.
`
`Regarding Claim 4, modified Matsumori teaches the liquid crystal display
`
`device comprising a polyimide/precursor as set forth above in the rejection of claim 2.
`
`21.
`
`Matsumori remains silent regarding a liquid crystal display device comprising a
`
`polyimide with a compound from Group III of claim 4 of the present invention.
`
`22.
`
`D’Alelio, however, teaches aromatic polyimides. D’Alelio further teaches the
`
`composition to form the aromatic polyimides comprises at least one tetracarboxylic acid
`
`dianhydride, at least one aromatic diamine, and a carboxylic acid monoanhydride.
`
`D’Alelio elaborates that the monoanhydride provides reactive end groups which enable
`
`the polyimide to cure by coupling together by addition or condensation thereby
`
`increasing molecular weight with little or no by-product (D’Alelio, Abstract). D’Alelio
`
`identifies that the monoanhydrides include maleic anhydride, phthalic anhydride, and
`
`norbornene dicarboxylic acid anhydride; these anhydrides satisfy structures (Ill-3), (Ill-
`
`4), and (Ill-5) of Group III, respectively (D’Alelio, Col 6 Lines 61-68, Col 7, Col 8 Lines 1-
`
`38).
`
`23.
`
`Since modified Matsumori and D’Alelio both teach substantially similar
`
`polyimide compositions, it would have been obvious to one of ordinary skill in the art at
`
`

`

`Application/Control Number: 12/889,460
`
`Art Unit: 1782
`
`Page 11
`
`the time of the invention to have added the carboxylic monoanhydrides of D’Alelio (i.e.
`
`maleic anhydride, phthalic anhydride, and norbornene dicarboxylic acid anhydride) into
`
`the polyimide composition of modified Matsumori to yield a polyimide with reactive end
`
`groups that enable polyimide coupling by addition or condensation, and thereby
`
`increasing molecular weight with little or no by-product as taught by D’Alelio.
`
`24.
`
`Regarding Claim 9, modified Matsumori teaches the liquid crystal display
`
`device comprising a polyimide/precursor as set forth above in the rejection of claim 2.
`
`25.
`
`Modified Matsumori remains silent regarding a liquid crystal display device that
`
`comprises a compound from Group III in a ratio from 1 to 2.5 mol%.
`
`26.
`
`D’Alelio, however, teaches aromatic polyimides. D’Alelio further teaches the
`
`composition to form the aromatic polyimides comprises at least one tetracarboxylic acid
`
`dianhydride, at least one aromatic diamine, and a carboxylic acid monoanhydride.
`
`D’Alelio elaborates that the monoanhydride provides reactive end groups which enable
`
`the polyimide to cure by coupling together by addition or condensation thereby
`
`increasing molecular weight with little or no by-product (D’Alelio, Abstract). D’Alelio
`
`identifies that the monoanhydrides include maleic anhydride, phthalic anhydride, and
`
`norbornene dicarboxylic acid anhydride; these anhydrides satisfy structures (Ill-3), (Ill-
`
`4), and (Ill-5) of Group III, respectively (D’Alelio, Col 6 Lines 61-68, Col 7, Col 8 Lines 1-
`
`38). Although D’Alelio does not explicitly teach monoanhydride content from 125
`
`mol%, D’Alelio discusses that the monoanhydrides are used to end-cap the polyimide,
`
`and therefore, when the molar ratio of dianhydride to diamine is (m):(m+1), two moles of
`
`monoanhydride are added to provide the polyimide end-cap units (D’Alelio, Col 6 Lines
`
`

`

`Application/Control Number: 12/889,460
`
`Art Unit: 1782
`
`Page 12
`
`61 -67). Therefore, it would have been obvious to one of ordinary skill in the art at the
`
`time of the invention to optimize the molar ratio of the composition to achieve a
`
`polyimide sufficiently formed with monoanhydride end-caps.
`
`27.
`
`Since modified Matsumori and D’Alelio both teach substantially similar
`
`polyimide compositions, it would have been obvious to one of ordinary skill in the art at
`
`the time of the invention to have added the carboxylic monoanhydrides of D’Alelio (i.e.
`
`maleic anhydride, phthalic anhydride, and norbornene dicarboxylic acid anhydride) in a
`
`sufficient molar ratio into the polyimide composition of modified Matsumori to yield a
`
`polyimide with reactive end groups that enable polyimide coupling by addition or
`
`condensation, and thereby increasing molecular weight with little or no by-product as
`
`taught by D’Alelio.
`
`28.
`
`Claims 6-8 and 10 are rejected under 35 U.S.C. 103(a) as being
`
`unpatentable over Matsumori et al. (US 2005/0271833 A1, from herein referred to
`
`as Matsumori) in view of Matsumori et al. (US 2009/0053430 A1, from herein
`
`referred to as Matsumori2) as evidenced by Tajiri et al. (US 2003/0050407 A1) and
`
`Lai et al. (Synthesis of novel polyimides with (tert-butyl-dimethyl-
`
`siloxy)biphenyloxy groups and the effect of side-chains content on their
`
`properties, European Polymer Journal, 2008, 44, Pgs 3724-3731) as applied to
`
`claim 2 above, and in further view of Tajiri et al. (US 2003/0050407 A1).
`
`29.
`
`Regarding Claim 6, modified Matsumori teaches the liquid crystal display as
`
`discussed for claim 2. Modified Matsumori further teaches that the alignment layer is
`
`formed by imidization of precursor components to yield the polyimide material
`
`

`

`Application/Control Number: 12/889,460
`
`Art Unit: 1782
`
`Page 13
`
`(Matsumori, Para 0138-0145). Modified Matsumori discusses polyamide acid ester
`
`precursor structures (Matsumori2, Para 0023-0024, 0033, [Formula 116, 117]).
`
`30.
`
`Modified Matsumori remains silent regarding a polyimide precursor comprising
`
`a polyamide acid alkyl ester having 1-3 carbon atoms.
`
`31.
`
`Tajiri, however, teaches a polyimide excelling in heat resistance, chemical
`
`resistance, water repellency, dielectric characteristics, electrical characteristics, and
`
`optical characteristics, and a polyamide acid useful as the raw material to form the
`
`polyimide. Tajiri discusses the polyamide acid comprises a polyamide acid alkyl ester
`
`group with 1 carbon atom that is in the repeat unit structure of the polyamide acid
`
`polymer (Tajiri, Abstract, Formula (1)). Tajiri also discusses that the polyamide acid
`
`polymer undergoes a ring closure reaction (i.e. imidization) to form polyimide (Tajiri,
`
`Para 0072-0074).
`
`32.
`
`Since modified Matsumori and Tajiri both teach polyimide compositions, it
`
`would have been obvious to one of ordinary skill in the art at the time of the invention to
`
`form the polyimide precursor of modified Matsumori with the polyamide acid of Tajiri
`
`comprising a polyamide acid alkyl ester group to yield a polyimide having excellent heat
`
`resistance, chemical resistance, water repellency, dielectric characteristics, electrical
`
`characteristics, and optical characteristics as taught by Tajiri.
`
`33.
`
`Regarding Claim 7, modified Matsumori teaches the liquid crystal display as
`
`discussed for claim 2 and identifies an example composition with two diamines similar
`
`to diamines of groups | and II where the molar ratio of the two diamines is 2:1
`
`(Matsumori, Para 0228).
`
`

`

`Application/Control Number: 12/889,460
`
`Art Unit: 1782
`
`Page 14
`
`34.
`
`Modified Matsumori remains silent regarding the ratio content of the group I
`
`diamines in the overall polyimide/polyimide precursor composition.
`
`35.
`
`Tajiri, however, teaches a polyimide excelling in heat resistance, chemical
`
`resistance, water repellency, dielectric characteristics, electrical characteristics, and
`
`optical characteristics, and a polyamide acid useful as the raw material to form the
`
`polyimide (Tajiri, Abstract). Tajiri identifies that the content of the diamine (i.e. 1,3-
`
`diaminobenzene that is substantially similar to diamine (H) of claim 2) in the
`
`composition is required to be an amount to react efficiently with a tetracarboxylic acid
`
`derivative (i.e. tetracarboxylic acid dianhydride). Tajiri further discusses the quantity of
`
`the diamine be 0.8-1.2 mols relative to 1 mol of tetracarboxylic acid derivative (this
`
`correlates to 0.8diamme / [0.8mmhe + 1.0,etracarboxync] = 44.4 mol% to 1.2diamine / [1 .2diamine +
`
`1.0,etracarboxync] = 54.5 mol°/o of diamine). Tajiri identifies that content below 0.8 mols and
`
`above 1.2 mols will result in complications during purification and prevent increased
`
`degree of polymerization (Tajiri, Para 0052). Tajiri does not teach the exact same range
`
`as recited in the instant claims (diamine ratio from 50-95 mol°/o). However, one of
`
`ordinary skill in the art at the time of the invention would have considered the invention
`
`to have been obvious because the range taught by Tajiri (diamine ratio from 44.4-54.5
`
`mol°/o) substantially overlaps with the claimed range, and therefore establishes a prima
`
`facie case of obviousness.
`
`It would have been obvious to one of ordinary skill in the art
`
`to form a polyimide composition with diamine content within the instantly claimed range
`
`from the range disclosed in the prior art reference to avoid purification complications,
`
`promote increased degree of polymerization, and also in view of the fact that; “The
`
`

`

`Application/Control Number: 12/889,460
`
`Art Unit: 1782
`
`Page 15
`
`normal desire of scientists or artisans to improve upon what is already generally known
`
`provides the motivation to determine where in a disclosed set of percentage ranges is
`
`the optimum combination of percentages”, In re Peterson, 65 USPQ 2d 1379 (CAFC
`
`2003) (see MPEP 2144.05, land ll).
`
`36.
`
`Since modified Matsumori and Tajiri both teach polyimide compositions, it
`
`would have been obvious to one of ordinary skill in the art at the time of the invention to
`
`form the polyimide/polyimide precursor composition of Matsumori with diamine content
`
`within the claimed range to yield a composition free of purification complications and
`
`capable of higher degree of polymerization as taught by Tajiri.
`
`37.
`
`Regarding Claim 8, modified Matsumori teaches the liquid crystal display as
`
`discussed for claim 2 and identifies an example composition with two diamines similar
`
`to diamines of groups | and II where the molar ratio of the two diamines is 2:1
`
`(Matsumori, Para 0228).
`
`38.
`
`Modified Matsumori remains silent regarding the ratio content of the group II
`
`diamines in the overall polyimide/polyimide precursor composition.
`
`39.
`
`Tajiri, however, teaches a polyimide excelling in heat resistance, chemical
`
`resistance, water repellency, dielectric characteristics, electrical characteristics, and
`
`optical characteristics, and a polyamide acid useful as the raw material to form the
`
`polyimide (Tajiri, Abstract). Tajiri identifies that the content of the diamine in the
`
`composition is required to be an amount to react efficiently with a tetracarboxylic acid
`
`derivative (i.e. tetracarboxylic acid dianhydride). Tajiri further discusses the quantity of
`
`the diamine be 0.8-1.2 mols relative to 1 mol of tetracarboxylic acid derivative (this
`
`

`

`Application/Control Number: 12/889,460
`
`Art Unit: 1782
`
`Page 16
`
`correlates to 0.8diamme / [0.8mmhe + 1.0,etracarboxync] = 44.4 mol% to 1.2diamine / [1 .2diamine +
`
`1.0,etracarboxync] = 54.5 mol% of diamine). Tajiri identifies that content below 0.8 mols and
`
`above 1.2 mols will result in complications during purification and prevent increased
`
`degree of polymerization (Tajiri, Para 0052). Tajiri does not teach the exact same range
`
`as recited in the instant claims (diamine ratio from 5-50 mol°/o). However, one of
`
`ordinary skill in the art at the time of the invention would have considered the invention
`
`to have been obvious because the range taught by Tajiri (diamine ratio from 44.4-54.5
`
`mol°/o) substantially overlaps with the claimed range, and therefore establishes a prima
`
`facie case of obviousness.
`
`It would have been obvious to one of ordinary skill in the art
`
`to form a polyimide composition with diamine content within the instantly claimed range
`
`from the range disclosed in the prior art reference to avoid purification complications,
`
`promote increased degree of polymerization, and also in view of the fact that; “The
`
`normal desire of scientists or artisans to improve upon what is already generally known
`
`provides the motivation to determine where in a disclosed set of percentage ranges is
`
`the optimum combination of percentages”, In re Peterson, 65 USPQ 2d 1379 (CAFC
`
`2003) (see MPEP 2144.05, land ll).
`
`40.
`
`Since modified Matsumori and Tajiri both teach polyimide compositions, it
`
`would have been obvious to one of ordinary skill in the art at the time of the invention to
`
`form the polyimide/polyimide precursor composition of Matsumori with diamine content
`
`within the claimed range to yield a composition free of purification complications and
`
`capable of higher degree of polymerization as taught by Tajiri.
`
`

`

`Application/Control Number: 12/889,460
`
`Art Unit: 1782
`
`Page 17
`
`41.
`
`Regarding Claim 10, modified Matsumori teaches the liquid crystal display as
`
`discussed for claim 2. Modified Matsumori further teaches the
`
`cyclobutanetetracarboxylic dianhydride satisfies formula (IV-1) of claim 5 of the present
`
`invention (Matsumori, Para 0056-0059, 0154, 0178, 0188, 0196, 0207, 0213, 0228,
`
`0261, Compound 1, 24, 29, 33, 34, 40, 42, 45, 56, 57).
`
`42.
`
`Modified Matsumori remains silent regarding the ratio content of the
`
`cyclobutanetetracarboxylic dianhydride in the overall polyimide/polyimide precursor
`
`composition.
`
`43.
`
`Tajiri, however, teaches a polyimide excelling in heat resistance, chemical
`
`resistance, water repellency, dielectric characteristics, electrical characteristics, and
`
`optical characteristics, and a polyamide acid useful as the raw material to form the
`
`polyimide (Tajiri, Abstract). Tajiri identifies that the content of the diamine in the
`
`composition is required to be an amount to react efficiently with a tetracarboxylic acid
`
`derivative (i.e. tetracarboxylic acid dianhydride). Tajiri further discusses the quantity of
`
`the diamine be 0.8-1.2 mols relative to 1 mol of tetracarboxylic acid derivative (this
`
`correlates to 1.0tetracarboxync / [1 .2diamine + 1.0tetracarboxync] = 45.5 mol% to 1.0,etracarboxync/
`
`[0.8mmhe + 1.0,etracarboxync] = 55.5 mol% of tetracarboxylic dian hydride). Tajiri identifies
`
`that content outside of the aforementioned molar ratio will result in complications during
`
`purification and prevent increased degree of polymerization (Tajiri, Para 0052). Tajiri
`
`does not teach the exact same range as recited in the instant claims (tetracarboxylic
`
`dianhydride ratio from 70-100 mol°/o). However, one of ordinary skill in the art at the
`
`time of the invention would have considered the invention to have been obvious
`
`

`

`Application/Control Number: 12/889,460
`
`Art Unit: 1782
`
`Page 18
`
`because the teachings of Tajiri identify that the molar ratio of the polyimide composition
`
`must be in an amount to effectively react. Therefore, Tajiri is considered to establish a
`
`prima facie case of obviousness.
`
`It would have been obvious to one of ordinary skill in
`
`the art to form a polyimide composition with tetracarb