`
`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
`
`10/04/2013
`
`ANTONELLLTERRY,STOUT&KRAUS,LLP
`1300 NORTH SEVENTEENTH STREET
`SUITE 1 800
`ARLINGTON, VA 22209-3873
`
`STRAH,ELID
`
`1782
`
`MAIL DATE
`
`10/04/2013
`
`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 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 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)IZI Responsive to communication(s) filed on 23 September 2013.
`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
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`; 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.
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`Disposition of Claims
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`5)IZI 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)|:I Claim(s)
`is/are allowed.
`
`7)|Z| Claim(s) 124- 12 and 14- 18is/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
`htt Z/I’\WII‘IN.USDIO. ovI’ atentS/init events/
`
`
`
`h/index.‘s or send an inquiry to PPI-iieedback{®usgtc.00v.
`
`Application Papers
`
`10)I:l The specification is objected to by the Examiner.
`11)|Xl The drawing(s) filed on 03 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:
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`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
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`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) D Interview Summary (PTO-413)
`
`Paper N°(5)/Ma" Date' —
`PTO/SB/08
`t
`t
`St
`I
`D'
`t'
`r
`2 I] I
`)
`4) I:I Other:
`a emen (s) (
`Isc osure
`n orma Ion
`)
`Paper No(s)/Mai| Date
`U.S. Patent and Trademark Office
`PTOL—326 (Rev. 08-13)
`
`Part of Paper No./Mai| Date 20130925
`
`Office Action Summary
`
`

`

`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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`Continued Examination Under 37 CFR 1. 1 14
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`1.
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`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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`September 23, 2013 has been entered.
`
`Status of Claims
`
`Claims 1, 2, 4-12, and 14-18 are pending in the current application.
`
`Claims 1 and 2 are amended in the current application.
`
`Claims 3 and 13 are cancelled in the current application.
`
`Response to Arguments
`
`Applicant’s arguments filed September 23, 2013 have been fully considered.
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`The Applicant requests withdrawal of the 35 U.S.C. 112 2nd paragraph rejections
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`2.
`
`3.
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`4.
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`5.
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`6.
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`over claims 15-18 set forth in the previous office action.
`
`a.
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`The 35 U.S.C. 112 2nd paragraph rejections from the previous office
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`action have been withdrawn due to claim amendments that were entered in the
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`After-Final submission filed on August 21, 2013.
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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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`The Applicant requests that the provisional obviousness-type double patenting
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`rejection set forth in the previous office action be held in abeyance since the copending
`
`applications have not yet been patented.
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`b.
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`The obviousness-type double patenting rejection over application
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`13/029323 is withdrawn due to claim amendments.
`
`c.
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`The obviousness-type double patenting rejection over 13/253998 is
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`maintained with changes made to reflect claim amendments.
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`8.
`
`Applicant’s arguments filed on August 21, 2013 (After-Final Remarks) have been
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`considered again with filing of the claim amendments filed on September 23, 2013
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`(RCE).
`
`d.
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`The arguments filed on August 21, 2013 (After-Final Remarks) are moot in
`
`view of the new grounds of rejection established below.
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`9.
`
`Applicant argues that the prior art reference Yasuda only discloses polyimides for
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`fuel cells, and does not relate to liquid crystal devices.
`
`e.
`
`Examiner does not find this argument persuasive for the following
`
`reasons. Although Yasuda discuss that the polyimides membranes (i.e. films)
`
`are suitable for use in fuel cells, Yasuda does not prohibit or teach away from the
`
`polyimide film use in other applications. Yasuda discusses and identifies the
`
`advantages and properties of the sulfo- and phosphor- polyimides films, where
`
`such advantages and properties would be recognized by a person of ordinary
`
`skill in the art as also advantageous for polyimide films such as those used as
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`alignment films in liquid crystal displays as discussed in the rejections 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 4
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`Yasuda identifies that such polyimides have high mechanical strength that allows
`
`for easy synthesis, and that such polyimide films show improved oxidative and
`
`hydrolytic stability, and high thermal stability. Yasuda further identifies that the
`
`aliphatic groups on the side chains (i.e. -SOsH directly bonded to the non-
`
`conjugated alkylene group) affect the solubility of the polyimides, and a polyimide
`
`with the shortest side-chain (i.e. sulfo-methylene group) was adequately soluble
`
`to form a solution cast film, where polyimides with longer side-chains became
`
`insoluble. The polyimides with the shorter side-chains after solution casting on a
`
`substrate yielded ductile and flexible membranes (i.e. ductile and flexible films)
`
`(Yasuda, Pg 4001). Therefore, it would have been obvious to one or ordinary
`
`skill in the art at the time of the invention to substitute or additionally include the
`
`divalent sulfo-/phospho acid group aliphatic side chain diamines of Yasuda
`
`satisfying group “A” with “D” component of chemical formula (1) of claims 1 and 2
`
`of the present invention into a polyimide for use as an orientation layer to yield a
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`ductile and flexible layer having improved oxidative and hydrolytic stability, high
`
`thermal stability, adequate solubility for film casting, and that has high
`
`mechanical strength that allows for easy synthesis as taught by Yasuda.
`
`10.
`
`Applicant argues that the prior art reference Yasuda does not disclose the
`
`chemical structure “X” satisfying “X-1” or “X-2” of claims 1 and 2 of the present
`
`invenflon.
`
`f.
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`The Examiner does not find this argument persuasive for the following
`
`reasons. One cannot show nonobviousness by attacking references individually
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`

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`Application/Control Number: 12l938,515
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`Art Unit: 1782
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`Page 5
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`where the rejections are based on combinations of references. See In re Keller,
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`642 F.2d 413, 208 USPQ 871 (CCPA 1981); In re Merck& 00., 800 F.2d 1091,
`
`231 USPQ 375 (Fed. Cir. 1986). Note that while Yasuda does not disclose a_H
`
`the features of the present claimed invention (structure “X” being “X-1” or “X-2”),
`
`Yasuda is used as 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 Keller 624
`
`F.2d 413, 208 USPQ 871, 881 (CCPA 1981). Rather this reference teaches a
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`certain concept, and in combination with the primary reference, discloses the
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`presently claimed invention. The new grounds of rejection established below
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`only relies upon Yasuda for the diamine component of the polyimide material.
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`The primary reference Matsumori (US 2005/0088598 A1) teaches polyimides
`
`comprising "X" groups that satisfy the present invention.
`
`11.
`
`Applicant argues that Essafi does not relate to liquid crystal devices and does not
`
`teach “X” groups that satisfy “X-1 ” or “X-2” of the present invention.
`
`d.
`
`This argument is moot in view of the new grounds of rejection established
`
`below.
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`Claim Objections
`
`12.
`
`Claim 8 is objected to because of the following informalities: Claim 8 uses
`
`improper English. The phrase "contains a polyimide formed a polyamide acid ester as a
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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 6
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`precursor", should be recited as "contains a polyimide formed from a polyamide acid
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`ester as a precursor”. Appropriate correction is required.
`
`Claim Rejections - 35 USC § 1 12
`
`13.
`
`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.
`
`14.
`
`Claims 1, 2, 4-12, and 14-18 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.
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`15.
`
`The phrases "anionic organic acid except organic acids in the narrow sense" and
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`“acid ester group of an anionic organic acid except organic acids in the narrow sense” in
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`claims 1 and 2 are phrases that render the claims indefinite. The aforementioned
`
`phrases are not defined by the claim. The specification does provide that such phrases
`
`are intended to include organic acids and organic acid esters that d_o n_ot include
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`carboxylic acids; examples include formic acid, acetic acid, etc. Example organic acids
`
`and organic acid esters that are included are phosphoric acids, sulfonic acids, etc. (see
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`[O134j-[O135], of published version of present spec). However, the term "etc" provided
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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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`in each of the aforementioned example lists renders the lists indefinite. Based upon the
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`claims and the present specification, one of ordinary skill in the art would not be
`
`reasonably apprised of the scope of the term “etc”.
`
`It is unclear what additional organic
`
`acids/acid esters should or should not be part of "anionic organic acid except organic
`
`acids in the narrow sense" and “acid ester group of an anionic organic acid except
`
`organic acids in the narrow sense”, because of the term “etc”. For the purposes of
`
`examination the phrases "anionic organic acid except organic acids in the narrow
`
`sense" and “acid ester group of an anionic organic acid except organic acids in the
`
`narrow sense” are considered to not include any carboxylic acids, and only include
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`organic acids with a group of phosphoric acid or sulfonic acid.
`
`16.
`
`Claims 4-12 and 14-18 are also rejected under 35 U.S.C. 112(b) or 35 U.S.C.
`
`112 (pre-AIA), second paragraph, because these claims depend upon claims 1 and 2
`
`rejected above.
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`Double Patenting
`
`17.
`
`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
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`and to prevent possible harassment by multiple assignees. A nonstatutory
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`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
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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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`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).
`
`A timely filed terminal disclaimer in compliance with 37 CFR 1.321 (c) or 1.321(d)
`
`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
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`37 CFR 3.73(b).
`
`18.
`
`Claim 1, 7-9, and 15-18 are provisionally rejected on the ground of
`
`nonstatutory obviousness-type double patenting as being unpatentable over
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`claims 1-2 and 9-10 of copending Application No. 13/253998 in view of Yasuda et
`
`al. (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), and in further view of Gibbons et al. (US
`
`6491988)
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`

`

`Application/Control Number: 12/938,515
`
`Art Unit: 1782
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`Page 9
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`19.
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`Regarding Claims 1, 7, and 15-18, 13/253998 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; and an
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`alignment film (i.e. orientation film) disposed on one of the substrates. The alignment
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`film comprises a polyimide where the polyimide is formed from a diamine containing a
`
`sulfonic acid group or a phosphoric acid group (13/253998, Claims 1 and 2).
`
`20.
`
`13/253998 remains silent regarding a polyimide with an anionic organic acid or
`
`an acid ester group, excluding organic acids in the narrow sense.
`
`21.
`
`Yasuda, however, teaches polyimides having long pendant sulfo- and phospho-
`
`aliphatic chains. Yasuda identifies that films comprising such polyimides show
`
`improved oxidative and hydrolytic stability, and high thermal stability. Yasuda discloses
`
`a specific example of sulfonated polyimide that comprise diamines that satisfy chemical
`
`formula (1) “A” with “D” component of claims 1 and 2 of the present invention, where the
`
`diamines comprise divalent organic groups (i.e. structure comprising phenyl rings and
`
`diamino groups, group “A”) having an organic anionic acid structure except in the
`
`narrow sense (i.e. -SOsH or -PO(OH)2, “D” components) being directly chemical bonded
`
`to a non-conjugated organic alkylene group having one carbon atom as required by
`
`claims 15-18 of the present invention (Yasuda, Abstract, Pgs 3995, 4000-4002,
`
`Schemes 2 and 3). Yasuda further identifies that the aliphatic groups on the side chains
`
`(i.e. -SOsH directly bonded to the non-conjugated alkylene group) affect the solubility of
`
`

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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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`the polyimides, and a polyimide with the shortest side-chain (i.e. sulfo-methylene group)
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`was adequately soluble to form a solution cast film, where polyimides with longer side-
`
`chains became insoluble. The polyimides with the shorter side-chains after solution
`
`casting on a substrate yielded ductile and flexible membranes (i.e. ductile and flexible
`
`films) (Yasuda, Pg 4001).
`
`
`
`Yasuda Divalent Sulfonated Diamine
`
`22.
`
`Since 13/253998 and Yasuda both teach polyimide films formed by solution
`
`casting, it would have been obvious to one or ordinary skill in the art at the time of the
`
`invention to substitute or additionally include the divalent sulfo-/phospho acid group
`
`aliphatic side chain diamines of Yasuda satisfying group “A” with “D” component of
`
`chemical formula (1) of claims 1 and 2 of the present invention into the polyimide of
`
`13/253998 to yield a ductile and flexible orientation film having improved oxidative and
`
`hydrolytic stability, high thermal stability, adequate solubility for film casting, and that
`
`has high mechanical strength that allows for easy synthesis as taught by Yasuda
`
`(Yasuda, Pg 3995).
`
`23.
`
`Modified 13/253998 also remains silent regarding a polyimide represented by
`
`chemical formula (1) of claim 1 of the present invention having an “X” group satisfying
`
`“X-1 ” or “X-2”.
`
`

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`Application/Control Number: 12/938,515
`
`Art Unit: 1782
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`Page 11
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`24.
`
`Gibbons, however, teaches 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 groups (that includes pyromellitic dianhydride, “X-1
`
`and 1,2,3,4-
`
`cyclobutanetetracarboxylic dianhydride, “X-2”) and “A” and “Y” groups (i.e. “A” group of
`
`the present invention) represented by a multi-valent organic group. Gibbons further
`
`teaches the organic group (i.e. chemical structure “D” of the present invention) is in
`
`direct contact to a non-conjugated (i.e. unconjugated) organic group (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.
`
`25.
`
`Since modified 13/253998 and Gibbons both teach polyimide films for use in
`
`liquid crystal display devices, it would have been obvious to one or ordinary skill in the
`
`art at the time of the invention to form the polyimide of 13/253998 with pyromellitic
`
`dianhydride or 1,2,3,4-cyclobutanetetracarboxylic dianhydride 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.
`
`26.
`
`Regarding Claim 8, 13/253998 claims the polyimide was formed from a
`
`polyamide acid ester precursor (13/253998, Claims 1 and 10).
`
`

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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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`27.
`
`Regarding Claim 9, 13/253998 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
`
`28.
`
`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:
`
`(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.
`
`29.
`
`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.
`
`30.
`
`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
`
`

`

`Application/Control Number: 12/938,515
`
`Art Unit: 1782
`
`Page 13
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`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 (g)
`
`prior art under 35 U.S.C. 103(a).
`
`31.
`
`Claims 1, 2, 7, 9-11, and 15-18 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 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
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`A: Polymer Chemistry, 2006, Vol 44, Pgs 3995-4005).
`
`32.
`
`Regarding Claims 1, 2, 7, and 15-18, Matsumori teaches a liquid crystal display
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`that includes a pair of substrates where one substrate is transparent, a liquid crystal
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`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
`
`elements connected to the electrodes, and an alignment layer (is. orientation film)
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`formed on each of the surfaces of the substrates. An organic insulating film (is.
`
`interlayer) is formed between the alignment layer and the electrodes, where the
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`electrodes include common electrodes and source electrodes (is. 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 Yasuda (Yasuda, Pgs
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`4000-4002, Schemes 1, 2, and 3). The polyimide alignment film is formed by coating
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`(i.e. casting) the polyimide solution on a substrate and then bake to remove solvent
`
`(Matsumori, [0075]). The polyimide is formed with pyromellitic acid dianhydride and
`
`1,2,3,4-cyclobutane tetra carbonic acid dianhydride; these two anhydrides satisfy the
`
`tetravalent organic “X-1” and “X-2” group of the present invention. (Matsumori, [0098]-
`
`[0099], [O159]—[O160], formulae [1]-[4]).
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`
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`Matsumori Dianhydrides
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`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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`Matsumori Divalent Diamines
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`33.
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`Matsumori remains silent regarding divalent organic groups (“A”) that also
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`comprise a chemical structure “D” of an anionic organic acid/acid ester except organic
`
`acids/acid esters in the narrow sense.
`
`34.
`
`Yasuda, however, teaches polyimides having long pendant sulfo- and phospho-
`
`aliphatic chains. Yasuda identifies that films comprising such polyimides show
`
`improved oxidative and hydrolytic stability, and high thermal stability. Yasuda discloses
`
`a specific example of sulfonated polyimide that comprise diamines that satisfy chemical
`
`formula (1) “A” with “D” component of claims 1 and 2 of the present invention, where the
`
`diamines comprise divalent organic groups (i.e. structure comprising phenyl rings and
`
`diamino groups, group “A”) having an organic anionic acid structure except in the
`
`narrow sense (i.e. -SOsH or -PO(OH)2, “D” components) being directly chemical bonded
`
`to a non-conjugated organic alkylene group having one carbon atom as required by
`
`claims 15-18 of the present invention (Yasuda, Abstract, Pgs 3995, 4000-4002,
`
`Schemes 2 and 3). Yasuda further identifies that the aliphatic groups on the side chains
`
`(i.e. -SOsH directly bonded to the non-conjugated alkylene group) affect the solubility of
`
`the polyimides, and a polyimide with the shortest side-chain (i.e. sulfo-methylene group)
`
`was adequately soluble to form a solution cast film, where polyimides with longer side-
`
`chains became insoluble. The polyimides with the shorter side-chains after solution
`
`casting on a substrate yielded ductile and flexible membranes (i.e. ductile and flexible
`
`films) (Yasuda, Pg 4001).
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`

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`
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`Yasuda Divalent Sulfonated Diamine
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`35.
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`Since Matsumori and Yasuda both teach polyimide films formed by solution
`
`casting, it would have been obvious to one or ordinary skill in the art at the time of the
`
`invention to substitute or additionally include the divalent sulfo-/phospho acid group
`
`aliphatic side chain diamines of Yasuda satisfying group “A” with “D” component of
`
`chemical formula (1) of claims 1 and 2 of the present invention into the polyimide of
`
`Matsumori to yield a ductile and flexible orientation film having improved oxidative and
`
`hydrolytic stability, high thermal stability, adequate solubility for film casting, and that
`
`has high mechanical strength that allows for easy synthesis as taught by Yasuda
`
`(Yasuda, Pg 3995).
`
`36.
`
`Regarding Claim 9, modified Matsumori further teaches the alignment film is
`
`give liquid crystal alignment capability through a photoalignment process (Matsumori,
`
`[OO20]—[OO23]).
`
`37.
`
`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]).
`
`38.
`
`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
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`provides a liquid crystal display with superior settlement of the black level (Matsumori,
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`[0014]-[0019]). Modified Matsumori does not teach the exact same range as recited in
`
`the instant claims (range of up to 20 nm). 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 modified Matsumori (20 to 40 nm) 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 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, l
`
`and II).
`
`39.
`
`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 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, 2006, 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).
`
`40.
`
`Regarding Claim 4, modified Matsumori teaches the liquid crystal display as
`
`discussed for claim 1 above. Modified Matsumori further teaches that the alignment
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`layer is formed of material capable of controlling the orientation of liquid crystal particles
`
`(Matsumori, [0027]).
`
`41.
`
`Modified Matsumori remains silent regarding an alignment layer formed of a
`
`mixture of the aforementioned polyimide and a different polymer.
`
`42.
`
`Matsumori ‘430, however, teaches a substantially similar liquid crystal display
`
`(Matsumori ‘430, Abstract, [0035]-[0039], [OO49]-[0050], Fig. 20). Matsumori ‘430
`
`further teaches the orientation film is formed of a mixture of the polyimide and
`
`polyamide acid ester (Matsumori ‘430, [OO23]—[OO24], [0033]-[0036]).
`
`43.
`
`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
`
`a layer that improves stability of liquid crystal orientation and effectively suppresses
`
`image persistence as taught by Matsumori ‘430 (Matsumori ‘430, [0023]—[OO24], [0033]-
`
`[0036D.
`
`44.
`
`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 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, 2006, 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).
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`45.
`
`Regarding Claim 5, modified Matsumori teaches the liquid crystal display
`
`device as discussed for claim 1 above.
`
`46.
`
`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.
`
`47.
`
`Yoo, however, teaches an alignment layer (i.e. an orientation film) having a
`
`compositional gradient of a photoreactive polymer having a functional substit