`
`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
`
`04/08/2014
`
`ANTONELLLTERRY,STOUT&KRAUS,LLP
`1300 NORTH SEVENTEENTH STREET
`SUITE 1 800
`ARLINGTON, VA 22209-3873
`
`STRAH,ELID
`
`1782
`
`MAIL DATE
`
`04/08/2014
`
`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)
`
`

`

`
`Application No.
`Applicant(s)
`12/938,515
`IMANISHI ET AL.
`
`Office Action Summary
`Examiner
`Art Unit
`AIA (First Inventorto File)
`
`
`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 g MONTHS FROM THE MAILING DATE OF
`THIS COMMUNICATION.
`Extensions of time may be available under the provisions of 37 CFR 1.136(a).
`after SIX (6) 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)IXI Responsive to communication(s) filed on 4 February 2014.
`[I A declaration(s)/affidavit(s) under 37 CFR 1.130(b) was/were filed on
`
`2b)lX| This action is non-final.
`2a)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)IXI C|aim(s) 12 4-12 and 14-19 is/are pending in the application.
`5a) Of the above claim(s)
`is/are withdrawn from consideration.
`6 III Claim s) _ is/are allowed.
`
`1 2 4- 12 and 14- 19 is/are rejected.
`
`is/are objected to.
`
`
`
`are subject to restriction and/or election requirement.
`* If any claims have been determined allowable, you may be eligible to benefit from the Patent Prosecution Highway program at a
`
`participating intellectual property office for the corresponding application. For more information, please see
`htt
`://www.usoto. ov/ atents/init eventsh. iindex.‘
`
`
`
`
`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 03 November 2010 is/are: a)lZl accepted or b)|:l objected to by the Examiner.
`Applicant may not request that any objection to the drawing(s) be held in abeyance. See 37 CFR 1.85(a).
`
`Replacement drawing sheet(s) including the correction is required if the drawing(s) is objected to. See 37 CFR 1.121 (d).
`
`Priority under 35 U.S.C. § 119
`12)IZI Acknowledgment is made of a claim for foreign priority under 35 U.S.C. §119(a)-(d) or (f).
`Certified copies:
`
`b)I:I Some” c)I:I None of the:
`a)le All
`1.IZI Certified copies of the priority documents have been received.
`2.|:| Certified copies of the priority documents have been received in Application No.
`3.I:I 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)
`
`
`
`3) D Interview Summary (PT0_413)
`1) E Notice of References Cited (PTO-892)
`Paper No(s)/Mai| Date.
`.
`.
`—
`4) I:I Other'
`2) D Information Disclosure Statement(s) (PTO/SB/08a and/or PTO/SB/08b)
`
`Paper No(s)/Mai| Date .
`U.S. Patent and Trademark Office
`PTOL-326 (Rev. 11-13)
`
`Office Action Summary
`
`Part of Paper No./Mai| Date 20140331
`
`

`

`Application/Control Number: 12/938,515
`
`Art Unit: 1782
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`Page 2
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`DETAILED ACTION
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`Status of Claims
`
`1.
`
`2.
`
`3.
`
`4.
`
`Claims 1, 2, 4-12, and 14-19 are pending in the current application.
`
`Claims 1, 2, and 8 are amended in the current application.
`
`Claims 3 and 13 are cancelled in the current application.
`
`Claim 19 is newly added in the current application.
`
`Response to Arguments
`
`5.
`
`Applicant’s arguments filed September 23, 2013 have been fully considered.
`
`Applicant’s arguments, see Remarks Pgs 12-14, filed February 4, 2014, with respect to
`
`the rejection(s) of claim(s) 1, 2, 4-12, and 14-18 under 35 USC 103(a) specifically
`
`pertaining to the Yasuda reference have been fully considered and are persuasive.
`
`Therefore, the rejections have been withdrawn. However, upon further consideration, a
`
`new ground(s) of rejection is made in view of Matsumori in view of newly applied prior
`
`art reference Kanbe et al. (JP 2916786 B2).
`
`6.
`
`Applicant requests withdrawal of the claim objection set forth in the previous
`
`office action dated October 4, 2013 over claim 8.
`
`a.
`
`The claim objection set forth in the previous office action dated October 4,
`
`2013 over claim 8 has been withdrawn due to claim amendments.
`
`

`

`Application/Control Number: 12/938,515
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`Art Unit: 1782
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`Page 3
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`7.
`
`Applicant requests withdrawal of the 35 U.S.C. 112 2nd paragraph rejections over
`
`claims 1, 2, 4-12, and 14-18 set forth in the previous office action dated October 4,
`
`2013.
`
`b.
`
`The 35 U.S.C. 112 2nd paragraph rejections from the previous office action
`
`have been withdrawn due to claim amendments.
`
`8.
`
`Applicant argues that neither 13/253998 (with regard to the non-statutory
`
`obviousness-type double patenting rejection) or Matsumori (with regard to the 35 USC
`
`103(a) rejections) disclose the presently claimed invention.
`
`c.
`
`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). 13/253998 and Matsumori are not relied upon alone
`
`to anticipate the present invention, but rather, they are utilized in conjunction with
`
`Kanbe (JP 2916786 B2), Matsumori et al. (US 2009/0053430 A1 ), Yoo et al. (WO
`
`2010/080010 A2), Teranishi et al. (US 2003/0032690 A1 ), Hedrick et al. (NPL
`
`Nanoporous Polyimides), Gibbons (US 6491988), Adachi et al. (US
`
`2004/0113550 A1 ), Keil et al. (US 5128440), and evidenced by Tsutsui et al. (US
`
`2006/0142538 A1) in the rejections below to establish a prima facie case of
`
`obviousness over the present invention.
`
`9.
`
`Applicant argues that the Yasuda references is not analogous to the present
`
`invention nor Matsumori, and is therefore not combinable.
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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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`d.
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`All arguments regarding Yasuda are moot in view of the new grounds of
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`rejection established below. Yasuda is no longer relied upon for any of the
`
`rejections set forth in this office action.
`
`10.
`
`Applicant argues that the reference noted by the Examiner (Kuromatsu, JP
`
`2002121281 A, not previously made of record) during the interview on January 28, 2014
`
`(Interview Summary dated February 3, 2014) relates to polymer films for electrical
`
`insulation materials, and that this reference is not analogous to the present invention
`
`nor Matsumori, and is therefore not combinable.
`
`e.
`
`This argument is moot in view of the new grounds of rejection established
`
`below. Kuromatsu is not relied upon for any of the rejections set forth in this
`
`office action.
`
`Claim Objections
`
`11.
`
`Claim 2 is objected to because of the following informalities: Claim 2
`
`inconsistently recites plural and singular limitations for the common electrode(s) and
`
`pixel electrode(s) elements. The phrase "wherein the group of electrodes include
`
`common electrodfi and pixel electrodfi, an interlayer is formed on the common
`
`electrode or the pixel electrode, and
`
`recites the aforementioned inconsistency.
`
`Appropriate correction is required. Examiner suggests that the phrase be amended to
`
`recite "wherein the group of electrodes include a common electrodes and a pixel
`
`electrodes, an interlayer is formed on the common electrode or the pixel electrode, and
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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 5
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`12.
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`Examiner notes that Claim 14 depends upon claim 2 and also recites the
`
`common electrode and pixel electrode elements. Therefore, claim 14 should be
`
`reviewed and/or amended accordingly to ensure consistency with any amendments
`
`made to claim 2.
`
`Claim Rejections - 35 USC § 1 12
`
`The following is a quotation of the first paragraph of 35 U.S.C. 112(a):
`
`IN GEN ERAL.—The specification shall contain a written
`(a)
`description of the invention, and of the manner and process of making and
`using it, in such full, clear, concise, and exact terms as to enable any
`person skilled in the art to which it pertains, or with which it is most nearly
`connected, to make and use the same, and shall set forth the best mode
`contemplated by the inventor or joint inventor of carrying out the invention.
`
`The following is a quotation of the first paragraph of pre-AIA 35 U.S.C. 112:
`
`The specification shall contain a written description of the invention,
`and of the manner and process of making and using it, in such full, clear,
`concise, and exact terms as to enable any person skilled in the art to
`which it pertains, or with which it is most nearly connected, to make and
`use the same, and shall set forth the best mode contemplated by the
`inventor of carrying out his invention.
`
`13.
`
`Claims 1, 2, 4-6, 8-12, and 14-18 are rejected under 35 U.S.C. 112(a) or
`
`35 U.S.C. 112 (pre-AIA), first paragraph, because the specification, while being
`
`enabling for anionic organic acids and esters thereof that have smaller pKa (acid
`
`dissociation constant) values than carboxylic acids/carboxylic acid esters, the
`
`specification does not reasonably provide enablement for any other non-carboxylic
`
`acids/non-carboxylic acid esters that have equal to or larger pKa values relative to
`
`carboxylic acids/carboxylic acid esters (Present Spec, Pgs 29-31). The specification
`
`

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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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`does not enable any person skilled in the art to which it pertains, or with which it is most
`
`nearly connected, to make and/or use the invention commensurate in scope with these
`
`claims. The breadth of claims 1 and 2 encompasses all non-carboxylic acids/non-
`
`carboxylic acid esters to satisfy chemical structure group D without any further
`
`restrictions or limitations; this leaves an extremely vast selection of anionic organic
`
`acids and acid esters to choose from. Furthermore, the present specification explicitly
`
`discusses that present invention must have sufficient ionic conductivity to remove
`
`residual charges from the orientation film (Present Spec, Pgs 21 -29), where such ionic
`
`conductivity can only be attained by anionic organic acids that have smaller pKa (acid
`
`dissociation constant) values than carboxylic acids/carboxylic acid esters (Present
`
`Spec, Pgs 30-31).
`
`It is well-known in the art that there are a vast number of anionic
`
`organic acid/acid esters that satisfy the limitations of the present claims, however, fail to
`
`have pKa values smaller than those of carboxylic acids or esters thereof. For example
`
`Ascorbic acid is a non-carboxylic anionic organic acid with pKa of ~4.1, compared with
`
`Formic acid (the simplest carboxylic acid) that has pKa of ~3.57. Therefore, the claimed
`
`scope of the present invention is not enabled with respect to the teachings set forth in
`
`the present specification and the knowledge known within the prior art. Additionally, the
`
`present specification only specifically and explicitly discloses a limited number of
`
`suggestions and examples that only include phosphoric acid groups, sulfonic acid
`
`groups, and their esters (Present Spec, Pgs 29-31, 43, 46). The present specification
`
`does not provide sufficient guidance for one of ordinary skill in the art with reasonable
`
`predictability to arbitrarily select any anionic organic acid or acid ester (other than
`
`

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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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`carboxylic acid/carboxylic acid esters) and arrive at the present invention; the present
`
`specification only provides specific and explicit instruction to select anionic organic acid
`
`or acid ester (other than carboxylic acid/carboxylic acid esters) having pKa values that
`
`are smaller relative to carboxylic acid/carboxylic acid ester pKa values. One of ordinary
`
`skill in the art would not be able to make an embodiment of the presently claimed
`
`invention with a reasonable expectation for success that is fully operable, functional,
`
`and that achieves the residual charge removing characteristics set forth by the present
`
`specification without undue experimentation; for example any embodiment utilizing
`
`Ascorbic acid would not achieve the required conductivity as suggested by the present
`
`specification. The claims must be amended to be commensurate in scope with the
`
`teachings set forth in the specification regarding the anionic organic acids and esters
`
`thereof of chemical structure D to overcome this rejection. For the purposes of
`
`examination “an anionic organic acid except carboxylic acids, or an acid ester group of
`
`an anionic organic acid except carboxylic acids” is interpreted to only include anionic
`
`organic acids and acid ester groups of an anionic organic acid (excluding all carboxylic
`
`acids and all carboxylic acid esters) that have pKa values that are smaller than the pKa
`
`value of Formic acid (pKa = ~3.57), such as phosphoric acid groups, sulfonic acid
`
`groups, and their esters.
`
`14.
`
`Claims 4-6, 8-12, and 14-18 are also rejected under 35 U.S.C. 112(a) or
`
`35 U.S.C. 112 (pre-AIA), first paragraph, because these claims depend upon claims 1
`
`and 2 discussed above.
`
`

`

`Application/Control Number: 12/938,515
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`Art Unit: 1782
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`Page 8
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`15.
`
`Claims 7 and 19 properly narrow the scope of the limitations regarding the
`
`anionic organic acids and esters thereof of chemical structure D; however, claims 7 and
`
`19 are objected to for depending upon rejected claims 1 and 2 as discussed above.
`
`16.
`
`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.
`
`17.
`
`Claims 11 and 12 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.
`
`18.
`
`Claim 11 recites the limitations " he region of the orientation film given the liguid
`
`crystal alignment capability". There is insufficient antecedent basis for these
`
`limitations in the claim. For the purposes of examination the aforementioned limitations
`
`are interpreted as "a region of the orientation film given a liquid crystal alignment
`
`capability".
`
`19.
`
`Claim 11 recites the limitation "from the surface of the orientation film". There is
`
`insufficient antecedent basis for this limitation in the claim. For the purposes of
`
`examination the aforementioned limitation is interpreted as "from a surface of the
`
`orientation film".
`
`

`

`Application/Control Number: 12/938,515
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`Art Unit: 1782
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`Page 9
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`20.
`
`Claim 12 recites the limitation "after the film is given the liguid crystal
`
`alignment capability". There is insufficient antecedent basis for this limitation in the
`
`claim. For the purposes of examination the aforementioned limitation is interpreted as
`
`"after the film is given a liquid crystal alignment capability".
`
`21.
`
`Regarding Claim 12, the phrase "wherein the compounds constituting the
`
`orientation film are..." is a phrase which renders the claim indefinite. The phrase
`
`"wherein the compounds constituting the orientation film are..." is not defined by the
`
`claim and one of ordinary skill in the art would not be reasonably apprised of the scope,
`
`structure, and or composition of the invention. The phrase "wherein the compounds
`
`constituting the orientation film are..." does not explicitly and clearly identify to what
`
`elements are included in the plurality of compounds that constitute the orientation film;
`
`claims 1 and 12 merely recite that the orientation film includes a polyimide, no other
`
`compounds are positively recited. For the purposes of examination the aforementioned
`
`phrase is interpreted as "wherein the polyimide constituting the orientation film 5...".
`
`Double Patenting
`
`The nonstatutory double patenting rejection is based on a judicially created
`
`doctrine grounded in public policy (a policy reflected in the statute) so as to prevent the
`
`unjustified or improper timewise extension of the “right to exclude” granted by a patent
`
`and to prevent possible harassment by multiple assignees. A nonstatutory double
`
`patenting rejection is appropriate where the claims at issue are not identical, but at least
`
`one examined application claim is not patentably distinct from the reference claim(s)
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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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`because the examined application claim is either anticipated by, or would have been
`
`obvious over, the reference claim(s). See, e.g., In re Berg, 140 F.3d 1428, 46 USPQ2d
`
`1226 (Fed. Cir. 1998); In re Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir.
`
`1993); In re Longi, 759 F.2d 887, 225 USPQ 645 (Fed. Cir. 1985); In re Van Ornum,
`
`686 F.2d 937, 214 USPQ 761 (CCPA 1982); In re Vogel, 422 F.2d 438, 164 USPQ 619
`
`(CCPA 1970); and In re Thorington, 418 F.2d 528, 163 USPQ 644 (CCPA 1969).
`
`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 reference 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. A terminal
`
`disclaimer must be signed in compliance with 37 CFR 1.321 (b).
`
`The USPTO internet Web site contains terminal disclaimer forms which may be
`
`used. Please visit http://www.uspto.gov/forms/. The filing date of the application will
`
`determine what form should be used. A web-based eTerminal Disclaimer may be filled
`
`out completely online using web-screens. An eTerminal Disclaimer that meets all
`
`requirements is auto-processed and approved immediately upon submission. For more
`
`information about eTerminal Disclaimers, refer to
`
`http://www.uspto.gov/patents/process/file/efs/guidance/eTD-info-l.jsp.
`
`22.
`
`Claim 1, 7-9, and 15 are provisionally rejected on the ground of
`
`nonstatutory obviousness-type double patenting as being unpatentable over
`
`claims 1, 2, 9, and 10 of copending Application No. 13/253998 in view Kanbe et al.
`
`

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`Application/Control Number: 12/938,515
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`Art Unit: 1782
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`Page 11
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`(JP 2916786 B2, herein English Machine translation provided by http://
`
`dossier1.ipdl.inpit.go.jp/ AIPN/ odse_top_dn.ipdl?N0000=7400 is used for all
`
`citations), and in further view of Gibbons et al. (US 6491988).
`
`23.
`
`Regarding Claims 1, 7, and 15, 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 alignment film (i.e.
`
`orientation film) disposed on one of the substrates. The alignment 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).
`
`24.
`
`13/253998 remains silent regarding a polyimide with an anionic organic acid or
`
`an acid ester group, excluding carboxylic acids and acid esters.
`
`25.
`
`Kanbe, however, teaches polyimides formed from polyamide acids for use in
`
`liquid crystal orientation films, where the polyimides are formed with acid dianhydrides
`
`such as pyromellitic anhydrides (satisfies formaula (X-1) of claims 1 and 2 of the
`
`present invention) and diamines having sulfonate ester sidechains comprising non-
`
`conjugated organic groups directly bonded thereto. Kanbe discloses two specific
`
`diamines that completely satisfy the A and D structures as recited by present claims 1
`
`and 15 of the present invention as shown below (Kanbe, Pgs 2-4, formulae (I) and (II),
`
`compound nos. 5 and 6).
`
`

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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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`5‘
`
`080 3 “(CH2 }
`
`IICUB
`
`if;
`
`if ‘WH;
`
`5*
`
`till:
`
`E;
`
`N @8103 (EH. 2) 11CH3
`
`Kanbe Sulfonated Diamines - Compound Nos. 5 and 6
`
`26.
`
`Since 13/253998 and Kanbe both teach polyimide films formed from a diamine
`
`and acid anhydride for use as an orientation film in liquid crystal displays, 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 sulfonated diamines of Kanbe 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 an orientation film with high pretilt angle and
`
`when utilized in a liquid crystal display yields excellent contrast and excellent visual
`
`angle characteristics as taught by Kanbe (Kanbe, Pgs 3, 6).
`
`27.
`
`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”.
`
`28.
`
`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-
`
`

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`Application/Control Number: 12/938,515
`
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`Page 13
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`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.
`
`29.
`
`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
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`dianhydride or 1,2,3,4-cyclobutanetetracarboxylic dian hydride to yield a liquid crystal
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`display device having an orientation film with excellent thermal properties, improved
`
`electrical properties, and high sensitivity to polarized light as taught by Gibbons.
`
`30.
`
`Regarding Claim 8, 13/253998 claims the polyimide was formed from a
`
`polyamide acid ester precursor (13/253998, Claims 1 and 10).
`
`31.
`
`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).
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`This is a provisional obviousness-type double patenting rejection.
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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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`Claim Rejections - 35 USC § 103
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`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.
`
`32.
`
`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.
`
`33.
`
`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).
`
`

`

`Application/Control Number: 12/938,515
`
`Art Unit: 1782
`
`Page 15
`
`34.
`
`Claims 1, 2, 7-11, 15, 16, and 19 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
`
`Kanbe et al. (JP 2916786 B2, herein English Machine translation provided by
`
`http:// dossier1.ipdl.inpit.go.jp/ AIPN/ odse_top_dn.ipdl?N0000=7400 is used for
`
`all citations) and as evidenced by Tsutsui et al. (US 2006/0142538 A1).
`
`35.
`
`Regarding Claims 1, 2, 7, 15, 16, and 19, 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 elements connected to the electrodes, and an alignment layer (is. orientation
`
`film) 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
`
`electrodes include common electrodes and source electrodes (is. pixel electrodes)
`
`(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 (is. 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
`
`

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`Application/Control Number: 12/938,515
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`Art Unit: 1782
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`Page 16
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`anhydrides satisfy the tetravalent organic “X-1 ” and “X-2” group of the present invention.
`
`(Matsumori, [OO98]—[0099], [O159]—[O160], 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.
`
`
`
`Matsumori Divalent Diamines
`
`36. Matsumori remains silent regarding divalent organic groups (“A”) that also
`
`comprise a chemical structure “D” of an anionic organic acid/acid ester except
`
`carboxylic acids/acid esters.
`
`37.
`
`Kanbe, however, teaches polyimides formed from polyamide acids for use in
`
`liquid crystal orientation films, where the polyimides are formed with acid dianhydrides
`
`

`

`Application/Control Number: 12/938,515
`
`Art Unit: 1782
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`Page 17
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`such as pyromellitic anhydrides (satisfies formaula (X-1) of claims 1 and 2 of the
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`present invention) and diamines having sulfonate ester sidechains comprising non-
`
`conjugated organic groups directly bonded thereto. Kanbe discloses two specific
`
`diamines that completely satisfy the A and D structures as recited by present claims 1,
`
`2, 15, and 16 of the present invention as shown below (Kanbe, Pgs 2-4, formulae (l)
`
`and (II), compound nos. 5 and 6).
`
`5'
`
`080 3 “(8“: :5 11C“;
`
`n,
`
`N @—~rr,
`
`ftfi‘WNfl.
`
`h"?
`
`iii
`
`i3
`
`3.
`
`till:
`
`it;
`
`ill @SO; (CH 2} ”CU;
`
`Kanbe Sulfonated Diamines - Compound Nos. 5 and 6
`
`38.
`
`Since Matsumori and Kanbe both teach polyimide films formed with pyromellitic
`
`acid anhydrides and diamines for use in liquid crystal orientation films, 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 sulfonated diamines of Kanbe satisfying group “A” with
`
`“D” component of chemical formula (1) of claims 1 and 2 of the present invention (see
`
`MPEP 2144.06) into the polyimide of Matsumori to yield an orientation film with high
`
`pretilt angle and when utilized in a liquid crystal display yields excellent contrast and
`
`excellent visual angle characteristics as taught by Kanbe (Kanbe, Pgs 3, 6).
`
`

`

`Application/Control Number: 12/938,515
`
`Art Unit: 1782
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`Page 18
`
`39.
`
`Regarding Claim 8, modified Matsumori further teaches the polyimide is formed
`
`from a polyamide acid that undergoes a ring closing reaction (Kanbe, Pgs 3, 5).
`
`40.
`
`Regarding Claim 9, modified Matsumori further teaches the alignment film is give
`
`liquid crystal alignment capability through a photoalignment process (Matsumori, [0020]-
`
`[0023D.
`
`41.
`
`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] and Kanbe, Pg 5).
`
`42.
`
`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]-
`
`[OO19]). 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