`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`
`
`
`
`12/938,515
`
`11/03/2010
`
`Yasuo lMANlSHl
`
`7590
`”72“
`Lowe Hauptman & Ham, LLP
`2318 Mill Road
`Suite 1400
`Alexandria, VA 22314
`
`02/27/2015
`
`UNITED STATES DEPARTMENT OF COMMERCE
`United States Patent and Trademark Office
`Address: COMIVHSSIONER FOR PATENTS
`P.O. Box 1450
`Alexandria1 Virginia 22313-1450
`www.uspto.gov
`
`RNEYDOCKETNO-—
`1497-51186X00
`3611
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`W
`
`STRAH’ ELI D
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`1782
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`PAPER NUMBER
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`NOTIFICATION DATE
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`DELIVERY MODE
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`02/27/2015
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`ELECTRONIC
`
`Please find below and/0r attached an Office communication concerning this application or proceeding.
`
`The time period for reply, if any, is set in the attached communication.
`
`Notice of the Office communication was sent electronically on above—indicated "Notification Date" to the
`following e—mail address(es):
`
`ayamada@ ipfirm.com
`docketing @ ipfirm.com
`pair_lhhb @ firsttofile.com
`
`PTOL—90A (Rev. 04/07)
`
`

`

`
`
`Applicant(s)
`Application No.
` 12/938,515 IMANISHI ET AL.
`
`Examiner
`Art Unit
`AIA (First Inventor to File)
`Office Action Summary
`
`1782ELI D. STRAH its“
`
`-- 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 g MONTHS FROM THE MAILING DATE OF
`THIS COMMUNICATION.
`Extensions of time may be available under the provisions of 37 CFR1. 136( a).
`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).
`
`In no event, however, may a reply be timely filed
`
`Status
`
`1)IZI Responsive to communication(s) filed on 4 February 2015.
`El A declaration(s)/affidavit(s) under 37 CFR 1.130(b) was/were filed on
`
`2b)|ZI This action is non-final.
`2a)|:l This action is FINAL.
`3)|: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)|:| Since this application is in condition for allowance except for formal matters, prosecution as to the merits is
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`closed in accordance with the practice under Exparte Quay/e, 1935 CD. 11, 453 O.G. 213.
`
`Disposition of Claims*
`
`5)|Z| Claim(s) 12 4-6 8-12 and 14-18 is/are pending in the application.
`5a) Of the above claim(s)
`is/are withdrawn from consideration.
`
`6)|:I Claim(s)
`is/are allowed.
`
`7)|Z| Claim(s) 12468- 12 and 14- 18 is/are rejected.
`8)|:I Claim(s)_ is/are objected to.
`
`
`are subject to restriction and/or election requirement.
`9)|:I Claim((s)
`* 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 Z/I’\WII‘IN.USDI.O. ovI’ atentS/init events/
`
`
`
`h/index.‘s or send an inquiry to PPI-iieedback{®usgto.00v.
`
`Application Papers
`
`10)I:l The specification is objected to by the Examiner.
`11)|Xl The drawing(s) filed on 3 November 2010 is/are: a)lX| 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)IXI Acknowledgment is made of a claim for foreign priority under 35 U.S.C. § 119(a)-(d) or (f).
`Certified copies:
`
`a)IZl All
`
`b)|:l Some” c)I:l None of the:
`
`1.IXI Certified copies of the priority documents have been received.
`2.|:l Certified copies of the priority documents have been received in Application No.
`3.|:| 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)
`
`
`
`3) D Interview Summary (PTO-413)
`1) D Notice of References Cited (PTO-892)
`Paper No(s)/Mai| Date.
`.
`.
`4) I:I Other'
`2) I] InformatIon DIsclosure Statement(s) (PTO/SB/08a and/or PTO/SB/08b)
`Paper No(s)/Mai| Date
`US. Patent and Trademark Office
`PTOL—326 (Rev. 11-13)
`
`Office Action Summary
`
`Part of Paper No./Mai| Date 20150219
`
`

`

`Application/Control Number: 12/938,515
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`Art Unit: 1782
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`Page 2
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`DETAILED ACTION
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`Notice of Pre-AIA or AIA Status
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`1.
`
`The present application is being examined under the pre-AIA first to invent
`
`provisions.
`
`Continued Examination Under 37 CFR 1. 1 14
`
`2.
`
`A request for continued examination under 37 CFR 1.114, including the fee set
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`forth in 37 CFR 1.17(e), was filed in this application after final rejection. Since this
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`application is eligible for continued examination under 37 CFR 1.114, and the fee set
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`forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action
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`has been withdrawn pursuant to 37 CFR 1.114. Applicant's submission filed on
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`February 4, 2015 has been entered.
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`Status of Claims
`
`3.
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`4.
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`5.
`
`Claims 1, 2, 4-6, 8-12, and 14-18 are pending in the current application.
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`Claims 1, 2, 9, and 10 are amended in the current application.
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`Claims 3, 7, 13, and 19 are cancelled in the current application.
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`Response to Arguments
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`6.
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`Applicant’s amendments and remarks filed February 4, 2015 have been fully
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`considered.
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`

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`Application/Control Number: 12/938,515
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`Art Unit: 1782
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`Page 3
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`7.
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`Applicant requests withdrawal of the objections over claims 9 and 10 set forth in
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`the previous office action.
`
`a.
`
`The objections over claims 9 and 10 set forth in the previous office action
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`are withdrawn due to claim amendments.
`
`8.
`
`Applicant argues that the field of Kuromatsu relates to a polyfunctional
`
`component which contains three or more amino groups, a polyimide copolymer, and a
`
`polyimide film, and therefore, Kuromatsu must introduce a polyfunctional component in
`
`the structure of the polyimide.
`
`b.
`
`Examiner does not find this persuasive for the following reasons. 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). Kuromatsu is not relied upon alone to satisfy the
`
`present invention. Kuromatsu is used in combination with Matsumori, Tsutsui,
`
`and Yasuda to establish a prima facie case of obviousness over present claims 1
`
`and 2. Note that while Kuromatsu does not disclose all the features of the
`
`present claimed invention, Kuromatsu is used as a teaching reference, and
`
`therefore, it is not necessary for this secondary reference to contain all the
`
`features of the presently claimed invention, In re Nievelt, 482 F.2d 965, 179
`
`USPQ 224, 226 (CCPA 1973), In re Keller624 F.2d 413, 208 USPQ 871, 881
`
`(CCPA 1981 ). Rather this reference teaches a certain concept (namely, that it is
`
`known in the art to utilize phosphonated diamines in the formation of polyimide
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`Art Unit: 1782
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`Page 4
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`copolymers for optical films), and in combination with the primary reference,
`
`discloses the presently claimed invention. Additionally, “The use of patents as
`
`references is not limited to what the patentees describe as their own inventions
`
`or to the problems with which they are concerned. They are part of the literature
`
`of the art, relevant for all they contain.” In re Heck, 699 F.2d 1331, 1332-33, 216
`
`USPQ 1038, 1039 (Fed. Cir. 1983) (quoting In re Leme/son, 397 F.2d 1006,
`
`1009, 158 USPQ 275, 277 (CCPA 1968)). See MPEP 2123, I. Also, the present
`
`claims use the transitional phrase “comprising” for all recited elements. The
`
`transitional term “comprising”, which is synonymous with “including,
`
`containing,”
`
`or “characterized by,” is inclusive or open-ended and does not exclude additional,
`
`unrecited elements or method steps. See, e.g., Mars Inc. v. H.J. Heinz Co., 377
`
`F.3d 1369, 1376, 71 USPQZd 1837, 1843 (Fed. Cir. 2004). See MPEP 2111.03.
`
`Therefore, the present claims do not prohibit or forbid the inclusion of other
`
`diamine precursor components into the claimed polyimide; specifically for
`
`example the polyfunctional amine components of Kuromatsu can suitably be
`
`included. And when included, the polyfunctional amine components of
`
`Kuromatsu still yield a polyimide copolymer structure for optical films, where the
`
`polyimide chain structure still satisfies chemical formula (1) of claims 1 and 2 of
`
`the present invention.
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`9.
`
`Applicant argues Matsumori includes a film with polyimide containing no
`
`polyfunctional component, and therefore, one of ordinary skill in the art would recognize
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`the polyimide of Kuromatsu to be totally different than that of Matsumori's polyimide.
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`Page 5
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`c.
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`Examiner does not find this persuasive for the following reasons.
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`Kuromatsu teaches that it is well known and well within the capabilities of one of
`
`ordinary skill in the art to utilize phosphonated diamines in the formation of
`
`polyimide copolymers for optical films, where both Matsumori and Kuromatsu
`
`share an identical polyimide precursor component of pyromellitic acid
`
`dianhyrdide (Kuromatsu, [OOO4]-[0006], [OO24]-[OO26], [OO29]-[0030], Matsumori,
`
`[0098]). One of ordinary skill in the art would understand that both references
`
`are synthesizing polyimides, both references are both utilizing some identical
`
`polyimide synthesis precursor components, and therefore, both references are
`
`focused in the same field of endeavor; the synthesis, study and application of
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`polyimide copolymers for optical applications.
`
`It would have been obvious to one
`
`of ordinary skill in the art to combine the polyimide precursor elements by the
`
`known polyimide synthesis methods to achieve predictable polyimide products
`
`possessing the advantages as discussed by both Matsumori and Kuromatsu (see
`
`MPEP 2143). Also, Kuromatsu is used as a teaching reference, and therefore, it
`
`is not necessary for this secondary reference to contain all the features of the
`
`presently claimed invention, In re Nievelt, 482 F.2d 965, 179 USPQ 224, 226
`
`(CCPA 1973), In re Keller624 F.2d 413, 208 USPQ 871, 881 (CCPA 1981).
`
`Kuromatsu is a teaching reference, and in combination with the primary
`
`reference, discloses the presently claimed invention. Additionally, “The use of
`
`patents as references is not limited to what the patentees describe as their own
`
`inventions or to the problems with which they are concerned. They are part of the
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`Application/Control Number: 12/938,515
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`Art Unit: 1782
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`Page 6
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`literature of the art, relevant for all they contain.” In re Heck, 699 F.2d 1331,
`
`1332-33, 216 USPQ 1038, 1039 (Fed. Cir. 1983) (quoting In re Lemelson, 397
`
`F.2d 1006, 1009, 158 USPQ 275, 277 (CCPA 1968)). See MPEP 2123, l.
`
`Furthermore, if included, the polyfunctional amine components of Kuromatsu still
`
`yield a polyimide copolymer structure for optical films, where the polyimide chain
`
`structure still satisfies chemical formula (1) of claims 1 and 2 of the present
`
`invenflon.
`
`10.
`
`Applicant argues that claim 1 has been amended to omit the structure X-1
`
`(representative of pyromellitic acid dianhyrdide), therefore, Kuromatsu cannot be
`
`properly combined with Matsumori, because the X-1 structure was part of the basis for
`
`combination.
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`d.
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`Examiner does not find this persuasive for the following reasons. The
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`amendments to the present claims in no way affect the teachings that are
`
`provided by the prior art of record. As discussed in the rejections below,
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`Matsumori teaches a mixture of dianhydrides is used in the polyimide, where the
`
`mixture includes 1,2,3,4-cyclobutane tetra carbonic acid dianhydride (that
`
`satisfies X-2 of the present claims) and pyromellitic acid dianhyrdide. Matsumori
`
`uses pyromellitic acid dianhyrdide to form polyimide, and Kuromatsu uses
`
`pyromellitic acid dianhyrdide to form polyimide. The basis of shared identical
`
`precursor components to form polyimide is still a basis of the present rejection
`
`and is still valid. Additionally, the present claims use the transitional phrase
`
`“comprising” for all recited elements. The transitional term “comprising”, which is
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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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`synonymous with “including,
`
`containing,” or “characterized by,” is inclusive or
`
`open-ended and does not exclude additional, unrecited elements or method
`
`steps. See, e.g., Mars Inc. v. H.J. Heinz Co., 377 F.3d 1369, 1376, 71 USPQ2d
`
`1837, 1843 (Fed. Cir. 2004). See MPEP 2111.03. Therefore, the present claims
`
`do not prohibit or forbid the inclusion of pyromellitic acid dianhyrdide into the
`
`claimed polyimide. Therefore, the combination of Matsumori in view of
`
`Kuromatsu as evidenced by Tsutsui and Yasuda is still deemed proper, and the
`
`rejections are maintained.
`
`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
`skill in the art to which said subject matter pertains. Patentability shall not
`be negatived by the manner in which the invention was made.
`
`11.
`
`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
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`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.
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`

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`Application/Control Number: 12/938,515
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`Art Unit: 1782
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`Page 8
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`12.
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`This application currently names joint inventors. In considering patentability of the
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`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
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`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
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`not commonly owned at the time a later invention was made in order for the examiner to
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`consider the applicability of pre-AIA 35 U.S.C. 103(c) and potential pre-AIA 35 U.S.C.
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`102(e), (f) or (g) prior art under pre-AIA 35 U.S.C. 103(a).
`
`13.
`
`Claims 1, 2, 8-11, 15, and 16 are rejected under pre-AIA 35 U.S.C. 103(a) as
`
`being unpatentable over Matsumori et al. (US 2005/0088598 A1), in view of
`
`Kuromatsu et al. (JP 2002-121281 A, herein English Machine translation utilized
`
`for all citations), as evidenced by Tsutsui et al. (US 2006/0142538 A1), and as
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`evidenced by Yasuda et al. (Synthesis and Properties of Polyimides Bearing Acid
`
`Groups on Long Pendant Aliphatic Chains, Journal of Polymer Science: Part A:
`
`Polymer Chemistry, Vol 44, Pgs 3995-4005).
`
`14.
`
`Regarding Claims 1, 2, 15, and 16, Matsumori teaches a liquid crystal display
`
`that includes a pair of substrates where one substrate is transparent, a liquid crystal
`
`layer arranged between the substrates, a plurality of electrodes formed on at least one
`
`substrate for applying an electric field to the liquid crystal layer, a plurality of active
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`elements connected to the electrodes, and an alignment layer (i.e. orientation film)
`
`formed on each of the surfaces of the substrates. An organic insulating film (i.e.
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`interlayer) is formed between the alignment layer and the electrodes, where the
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`Art Unit: 1782
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`Page 9
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`electrodes include common electrodes and source electrodes (i.e. pixel electrodes)
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`(Matsumori, Abstract, [0026]-[0027], [0030], [0036]-[0038], [0070]-[0072], Figure 6).
`
`Matsumori further teaches the alignment layer is formed of a polyimide having a
`
`structure similar to formula (1) of claims 1 and 2 of the present invention, because it is
`
`well-known in the art that polyimides are formed by reacting diamines and dianhydrides
`
`together to yield such a structure of formula (1) as evidenced by Tsutsui (Tsutsui,
`
`[0005], [0038], [0048]-[0061], formulae 2-1 and 2-2). The polyimide alignment film is
`
`formed by coating (i.e. casting) the polyimide solution on a substrate and then bake to
`
`remove solvent (Matsumori, [0075]). The polyimide is formed with a mixture of
`
`pyromellitic acid dianhydride and 1,2,3,4-cyclobutane tetra carbonic acid dianhydride;
`
`where 1,2,3,4-cyclobutane tetra carbonic acid dianhydride satisfies the tetravalent
`
`organic “X-2” group of the present invention (Matsumori, [0098]-[0099], [0159]-[0160],
`
`formulae [1]-[4]).
`
`
`
`Matsumori Dianhydrides
`
`Matsumori discloses divalent organic groups similar to group “A” of formula (1) of claims
`
`1 and 2 (diamines of formulae [1] and [2] of Matsumori [0098]) as seen below.
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`

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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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`i1 l
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`
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`2m}
`x» a lent
`g{08:08
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`Matsumori Divalent Diamines
`
`15. Matsumori remains silent regarding divalent organic groups (“A”) that also
`
`comprise a chemical structure “D” comprising a phosphoric acid or a phosphoester
`
`group that is in direct chemical bond to a non-conjugated organic group.
`
`16.
`
`Kuromatsu, however, teaches a polyimide film useful as a proton conductive film
`
`and useful in optical waveguides (Kuromatsu, [0001]-[0002], [0004]). Kuromatsu
`
`teaches the polyimide is preferably formed with pyromellitic acid dianhydride from the
`
`standpoint of ease of synthesis, ease of film formation, and physical properties; where
`
`pyromellitic acid dianhydride is identical to the pyromellitic acid dianhydride utilized in
`
`the polyimide of Matsumori as discussed above (Kuromatsu, [0005], [0021]).
`
`Kuromatsu teaches specific diamine structures for forming the polyimide films that have
`
`proton conductivity substituents, where the diamines satisfy the divalent “A” structure of
`
`the present claims and have sulfonic groups directly bonded to non-conjugated alkyl
`
`and alkoxy groups. Kuromatsu explicitly discusses that the substituent having proton
`
`conductivity preferably includes sulfonic groups and phosphonate groups from the
`
`standpoint of easy proton dissociation allowing for high proton conductivity (Kuromatsu,
`
`[0024]-[0026], [0029]-[0030], [Chemical formulae 10, 11]). Kuromatsu remains silent
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`

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`Page 11
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`regarding specific embodiments of diamines having phosphonate groups, however, it
`
`would have been obvious to one of ordinary skill in the art at the time of the invention to
`
`substitute the sulfonic groups in the specific embodiments of [Chemical formula 10] or
`
`[Chemical formula 11] with comparable phosphonate groups since Kuromatsu clearly
`
`establishes that sulfonic groups and phosphonates are the preferred proton conductivity
`
`substituents over the listed alternatives (see MPEP 2144.06) to arrive at the claimed
`
`structures of claims 15 and 16 of the present invention. Furthermore, it is well-known in
`
`the art to synthesize such phosphonate substituent containing diamine structures as
`
`evidenced by Yasuda et al. (Yasuda, Pgs 3996-4002, Schemes 1, 2, 3).
`
`17.
`
`Since Matsumori and Kuromatsu both teach polyimide films formed with
`
`pyromellitic acid anhydride and diamine precursor components for use in films for
`
`optical applications, it would have been obvious to one of ordinary skill in the art at the
`
`time of the invention to substitute or additionally include the divalent phosphonated
`
`diamines of Kuromatsu (that satisfy groups “A” and “D” of chemical formula (1) of the
`
`claims) into the polyimide of Matsumori to yield an orientation film with high proton
`
`conductivity, reduced double refraction factor, and improved transmissivity as taught by
`
`Kuromatsu (Kuromatsu, [0025], [0049]).
`
`18.
`
`Regarding Claim 8, modified Matsumori further teaches the polyimide is formed
`
`from a polyamide acid that undergoes a ring closing reaction (imidization reaction)
`
`(Kuromatsu, [0042]).
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`

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`Application/Control Number: 12/938,515
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`19.
`
`Regarding Claim 9, modified Matsumori further teaches the alignment film is give
`
`liquid crystal alignment capability through a photoalignment process (Matsumori, [0020]-
`
`[0023D.
`
`20.
`
`Regarding Claim 10, modified Matsumori further teaches the alignment film is
`
`give liquid crystal alignment capability through a rubbing process (Matsumori, [0011]-
`
`[0013], [0032], [0046]).
`
`21.
`
`Regarding Claim 11, modified Matsumori further teaches the liquid crystal display
`
`device where the boundary in contact between the liquid crystal layer and the alignment
`
`layer is estimated at about 20 to 40 nm. The configuration as stated above provides a
`
`liquid crystal display with superior settlement of the black level (Matsumori, [0014]-
`
`[0019]). 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 modified
`
`Matsumori (20 to 40 nm) substantially overlaps with the claimed range (range of up to
`
`20 nm), 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 liquid crystal display device with
`
`boundary range between the liquid crystal layer and alignment layer within the instantly
`
`claimed range from the range disclosed in the prior art reference, particularly 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, | and II).
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`

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`22.
`
`Claim 4 is rejected under pre-AIA 35 U.S.C. 103(a) as being unpatentable
`
`over Matsumori et al. (US 2005/0088598 A1), in view of Kuromatsu et al. (JP 2002-
`
`121281 A, herein English Machine translation utilized for all citations), as
`
`evidenced by Tsutsui et al. (US 2006/0142538 A1), and as evidenced by Yasuda et
`
`al. (Synthesis and Properties of Polyimides Bearing Acid Groups on Long
`
`Pendant Aliphatic Chains, Journal of Polymer Science: Part A: Polymer
`
`Chemistry, Vol 44, Pgs 3995-4005) as applied to claim 1 above, and in further view
`
`of Matsumori et al. (US 2009/0053430 A1, herein Matsumori ’430).
`
`23.
`
`Regarding Claim 4, modified Matsumori teaches the liquid crystal display as
`
`discussed for claim 1 above. Modified Matsumori further teaches that the alignment
`
`layer is formed of material capable of controlling the orientation of liquid crystal particles
`
`(Matsumori, [0027]).
`
`24.
`
`Modified Matsumori remains silent regarding an alignment layer formed of a
`
`mixture of the aforementioned polyimide and a different polymer.
`
`25. Matsumori ‘430, however, teaches a substantially similar liquid crystal display
`
`(Matsumori ‘430, Abstract, [0035]-[0039], [0049]-[0050], Fig. 20). Matsumori ‘430
`
`further teaches the orientation film is formed of a mixture of the polyimide and
`
`polyamide acid ester (Matsumori ‘430, [00231-[0024], [0033]—[0036]).
`
`26.
`
`Since modified Matsumori and Matsumori ‘430 both teach substantially similar
`
`liquid crystal displays comprising orientation layers comprising polyimides, it would have
`
`been obvious to one of ordinary skill in the art at the time of the invention to have added
`
`an additional polyamide acid ester polymer to the orientation layer composition to yield
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`

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`Application/Control Number: 12/938,515
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`Art Unit: 1782
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`Page 14
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`a layer that improves stability of liquid crystal orientation and effectively suppresses
`
`image persistence as taught by Matsumori ‘430 (Matsumori ‘430, [0023]-[0024], [0033]-
`
`[0036D.
`
`27.
`
`Claim 5 is rejected under pre-AIA 35 U.S.C. 103(a) as being unpatentable
`
`over Matsumori et al. (US 2005/0088598 A1), in view of Kuromatsu et al. (JP 2002-
`
`121281 A, herein English Machine translation utilized for all citations), as
`
`evidenced by Tsutsui et al. (US 2006/0142538 A1), and as evidenced by Yasuda et
`
`al. (Synthesis and Properties of Polyimides Bearing Acid Groups on Long
`
`Pendant Aliphatic Chains, Journal of Polymer Science: Part A: Polymer
`
`Chemistry, Vol 44, Pgs 3995-4005) as applied to claim 1 above, and in further view
`
`of Yoo et al. (WO 2010/080010 A2, herein US 2011/0213048 A1 used as English
`
`language equivalent).
`
`28.
`
`Regarding Claim 5, modified Matsumori teaches the liquid crystal display device
`
`as discussed for claim 1 above.
`
`29.
`
`Modified Matsumori remains silent regarding an orientation film that has a
`
`concentration of the "D" chemical structure distributed to be a lower concentration on
`
`the substrate side toward the liquid crystal side in the thickness direction.
`
`30.
`
`Yoo, however, teaches an alignment layer (is. an orientation film) having a
`
`compositional gradient of a photoreactive polymer having a functional substituent group.
`
`The photoreactive polymer having a functional substituent group (is. the alignment
`
`layer material) is present in larger quantities nearer to the liquid crystal side and smaller
`
`quantities toward the substrate side. The compositional gradient improves the
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`

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`Application/Control Number: 12/938,515
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`Art Unit: 1782
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`capabilities to better orient liquid crystals, improves the orientation rate, and improves
`
`adhesion properties (Yoo, Abstract, [0036]).
`
`31.
`
`Since modified Matsumori and Yoo both teach orientation films for aligning liquid
`
`crystals, it would have been obvious to one of ordinary skill in the art at the time of the
`
`invention to form the orientation film of modified Matsumori with polyimide (having
`
`chemical structure “D”) in a compositional gradient to optimize film properties just as
`
`Yoo teaches forming an alignment layer of a photoreactive polymer with a functional
`
`chemical structure in a compositional gradient to improve liquid crystal orientation
`
`capabilities, improve orientation rate, and improve adhesion properties (see MPEP
`
`2143, c, D, & G).
`
`32.
`
`Additionally, Claim 5 is rejected under pre-AIA 35 U.S.C. 103(a) as being
`
`unpatentable over Matsumori et al. (US 2005/0088598 A1) in view of Kuromatsu et
`
`al. (JP 2002-121281 A, herein English Machine translation utilized for all citations),
`
`as evidenced by Tsutsui et al. (US 2006/0142538 A1), and as evidenced by Yasuda
`
`et al. (Synthesis and Properties of Polyimides Bearing Acid Groups on Long
`
`Pendant Aliphatic Chains, Journal of Polymer Science: Part A: Polymer
`
`Chemistry, Vol 44, Pgs 3995-4005) as applied to claim 1 above, and in further view
`
`of Teranishi et al. (US 2003/0032690 A1).
`
`33.
`
`Regarding Claim 5, modified Matsumori teaches the liquid crystal display device
`
`as discussed for claim 1.
`
`

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`Application/Control Number: 12/938,515
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`Art Unit: 1782
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`34.
`
`Modified Matsumori remains silent regarding an orientation film that has a
`
`concentration of the "D" chemical structure distributed to be a lower concentration on
`
`the substrate side toward the liquid crystal side in the thickness direction.
`
`35.
`
`Teranishi, however, teaches a film layer for use in an optical element comprising
`
`a polymerizable compound, where the polymerizable compound has a concentration
`
`distribution that changes as measured vertically to the surface of the layer (is. in the
`
`thickness direction of the layer). The concentration distribution of the polymerizable
`
`compound in the thickness direction of the layer allows for better control of the selective
`
`reflection wavelength range and realization of a broad reflection wavelength range
`
`(Teranishi, [0005]—[0006]).
`
`36.
`
`Since modified Matsumori and Teranishi both teach polymeric films for use in
`
`optical elements, it would have been obvious to one of ordinary skill in the art at the time
`
`of the invention to form the orientation film of modified Matsumori with polyimide (having
`
`chemical structure “D”) having a concentration distribution in the thickness direction of
`
`the film to optimize film properties just as Teranishi teaches forming an optical element
`
`layer of a polymerizable compound having a concentration distribution in the thickness
`
`direction of the film to allow for better control of selective reflection wavelength ranges
`
`and realize broad reflection wavelength ranges (see MPEP 2143, C, D, & G).
`
`37.
`
`Claim 6 is rejected under pre-AIA 35 U.S.C. 103(a) as being unpatentable
`
`over Matsumori et al. (US 2005/0088598 A1), in view of Kuromatsu et al. (JP 2002-
`
`121281 A, herein English Machine translation utilized for all citations), as
`
`evidenced by Tsutsui et al. (US 2006/0142538 A1), and as evidenced by Yasuda et
`
`

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`Application/Control Number: 12/938,515
`
`Art Unit: 1782
`
`Page 17
`
`al. (Synthesis and Properties of Polyimides Bearing Acid Groups on Long
`
`Pendant Aliphatic Chains, Journal of Polymer Science: Part A: Polymer
`
`Chemistry, Vol 44, Pgs 3995-4005) as applied to claim 1 above, and in further view
`
`of Hedrick et al. (NPL Nanoporous Polyimides).
`
`38.
`
`Regarding Claim 6, modified Matsumori teaches the liquid crystal display as
`
`discussed above for claim 1.
`
`39.
`
`Modified Matsumori remains silent regarding an orientation film that contains
`
`pores having a mean pore size of at most 100 nm and the film has a dielectric constant
`
`of at most 2.0.
`
`40.
`
`Hedrick, however, teaches foamed polyimides used to form thin film dielectric
`
`layers with very low dielectric constants for microelectronic devices. These systems
`
`comprise pores in the nanometer range, where the average size of the pores is
`
`approximately 60 angstroms. These thin film foams have high thermal stability and low
`
`dielectric constants approaching 2.0. Hedrick also discusses how volume fraction of
`
`low dielectric material (is. air in the nano pores) directly affects the composite dielectric
`
`constant of the overall porous material (Hedrick, Pgs 1, 4-5, 28-29, Fig 1). Hedrick does
`
`not teach the exact same range as recited in the instant claims (dielectric constant of at
`
`most 2.0). 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
`
`Hedrick (dielectric constant approaching 2.0) potentially overlaps with the claimed range
`
`of dielectric constant of at most 2.0 and Hedrick identifies the correlation between
`
`volume fraction/composite dielectric constant for nanoporous materials to achieve even
`
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`Application/Control Number: 12/938,515
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`lower dielectric constant values, and therefore Hedrick establishes a prima facie case of
`
`obviousness over the claimed invention.
`
`It would have been obvious to one of ordinary
`
`skill in the art to form a nanoporous polyimide foam film with a dielectric constant within
`
`the instantly claimed range from the range and teachings disclosed in the prior art
`
`reference, particularly 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) and also “[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) (see MPEP 2144.05, land ll).
`
`41.
`
`Since modified Matsumori teaches a polyimide-based orientation film and
`
`Hedrick teaches a polyimide film with good dielectric properties for microelectronic
`
`devices, it would have been obvious to one of ordinary skill in the art at the time of the
`
`invention to form the polyimide-based orientation film of modified Matsumori as a
`
`nanoporous polyimide thin film structure to yield an orientatio