DETAILED ACTION
Claim Status
Claim(s) 1-5, 8-12, 14-20 is/are pending.
Claim(s) 1-5, 8-12, 14-20 is/are rejected.
Claim(s) 6-7, 13 is/are cancelled by Applicant.
Notice of Pre-AIA or AIA Status
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis for the rejection will not be considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status.
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 conflicting claims are not identical, but at least one examined application claim is not patentably distinct from the reference claim(s) because the examined application claim is either anticipated by, or would have been obvious over, the reference claim(s). See, e.g., In re Berg, 140 F.3d 1428, 46 USPQ2d 1226 (Fed. Cir. 1998); In re Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993); In re Longi, 759 F.2d 887, 225 USPQ 645 (Fed. Cir. 1985); In re Van Ornum, 686 F.2d 937, 214 USPQ 761 (CCPA 1982); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); 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 nonstatutory double patenting provided the reference application or patent either is shown to be commonly owned with the examined application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. See MPEP § 717.02 for applications subject to examination under the first inventor to file provisions of the AIA as explained in MPEP § 2159. See MPEP §§ 706.02(l)(1) - 706.02(l)(3) for applications not subject to examination under the first inventor to file provisions of the AIA . A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The filing date of the application in which the form is filed determines what form (e.g., PTO/SB/25, PTO/SB/26, PTO/AIA /25, or PTO/AIA /26) 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 www.uspto.gov/patents/process/file/efs/guidance/eTD-info-I.jsp.
Claim(s) 1-5, 8-12, 14-20 is/are rejected on the ground of nonstatutory double patenting as being unpatentable over:
claims 1-21 of U.S. Patent No. 9,512,299 (LAUFER ET AL),
in view of MURSCHALL ET AL (US 2002/0065346),
and in view of:
• EP 3287493 A1 (MORICK-EP ‘493), relying on NEUWALD ET AL (US 2018/0057684) as English language translation;
or
• BLOOM (US 2007/0299184), and in view of HEXION - EPON RESIN 1001F - TECHNICAL DATA SHEET.
U.S. Patent No. 9,512,299 claims aromatic polycarbodiimides conforming to present application claims 2-3, 8, 15-17 which are useful in polyester resins (e.g., PET, etc.). However, the U.S. Patent does not claim multilayer polyester films.
MURSCHALL ET AL ‘346 discloses multilayer polyester films with three layers (e.g., having A/B/C or A/B/A structure), wherein one, some, or all layers can contain carbodiimide-based hydrolysis stabilizers, wherein an illustrative film structure comprises:
• a first outer layer A which does not contain a carbodiimide hydrolysis stabilizer (corresponding to recited “polyester layer (II)”), and which optionally contains other conventional additives;
• a core or base layer B which contains a carbodiimide hydrolysis stabilizer (e.g., an aromatic polymeric carbodiimide; etc.) in typical amounts of 0.1-5 wt% (corresponding to recited “polyester layer (I)”), and which optionally contains other conventional additives, the base layer typically comprises 40-90% of the total film thickness;
• a second outer layer A (or a first outer layer C) which does not contain a carbodiimide hydrolysis stabilizer (corresponding to recited “polyester layer (III)”), and which optionally contains other conventional additives;
The polyester film has a general overall thickness of 1-500 microns (preferably 5-350 microns or 100-300 microns), wherein the outer layer(s) generally have a thickness of more than 0.1 microns (preferably 0.2-5 microns). The polyesters forming the layers A, B, and C are thermoplastic resins (e.g., polyethylene terephthalate (PET); polyethylene naphthalate (PEN); polybutylene terephthalate (PBT); etc.). The multilayer polyester films can be made using a known coextrusion process (e.g., by extruding outer layers A (and/or C) on both sides of base layer B to form the desired coextruded A/B/A or A/B/C film structure; etc.). The films are useful in various applications (e.g., electronic or electrical applications, etc.). (entire document, e.g., paragraph 0002, 0019-0021, 0030-0032, 0038-0040, 0043, 0067-0068, 0072, 0074, 0079; 0112, 0130, 0135-0137; etc.) However, the reference does not specifically discuss the use of epoxides in outer layers.
MORICK-EP ‘493 discloses that it is well known in the art to incorporate aromatic epoxide oligomers with a formula (II)
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(corresponding to recited “Formula (III)”) (e.g., a poly(bisphenol-A-co-epichlorohydrin) copolymer -- CAS No. 25068-38-6 -- with a molecular weight of about 600-1800) as hydrolysis stabilizers in thermoplastic polyester-based resin composition in typical amounts of 2-15 parts for 105-115 parts polyester resin, in order to minimize molecular weight loss due to hydrolysis. (NEUWALD ET AL, paragraph, 0048-0052, 0093, 0110-0114, etc.) (see corresponding portions of MORICK-EP ‘493)
BLOOM ‘184 discloses that it is well known in the art to incorporate epoxide-type chain extenders (e.g., a reaction product of epichlorohydrin and bisphenol-A containing at least two epoxy groups -- for example: EPON 1001 (weight per epoxide (i.e., epoxy equivalent weight or EEW) of 525-550); EPON 1002 (EEW of 600-700); etc.) in order to reduce molecular weight loss of thermoplastic condensation polymers (e.g., polyesters such as polyethylene terephthalate (PET, etc.) during melt processing (e.g., for extruded films, etc.), wherein the epoxide-type chain extenders are utilized in typical amounts of about 0.1-10 wt%. (paragraph 0002-0005, 0013-0015, 0048, 0054-0055, 0060, etc.)
HEXION - EPON RESIN 1001F - TECHNICAL DATA SHEET provides evidence that EPON 1001F is a reaction product of epichlorohydrin and bisphenol-A (CAS No. 25068-38-6) with a weight per epoxide (i.e., epoxy equivalent weight or EEW) of 525-550 and a chemical structure:
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(corresponding to recited “Formula (III)”). (entire document)
Regarding claims 1-5, 8-12, 14-20, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to utilize effective amounts of the aromatic polycarbodiimides (e.g., aromatic polycarbodiimides conforming to present application claims 2-3, 8, 15-17) claimed in U.S. Patent No. 9,512,299 as the carbodiimide hydrolysis stabilizer in the core or base layer B of MURSCHALL ET AL ‘346 in order to produce multilayer polyester films with superior hydrolysis stability for photovoltaic applications.
Further regarding claims 1, 4-5, 9-12, 18, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to incorporate effective amounts of known epoxy-functional chain extenders (e.g., oligomeric reaction products of epichlorohydrin and bisphenol-A as suggested in MORICK-EP ‘493 or BLOOM ‘184) in one or more layer(s) (e.g., the outer layer(s) A and/or C; etc.) of the multilayer films of MURSCHALL ET AL ‘346 as a hydrolysis stabilizer and/or to reduce loss of molecular weight during high temperature processing and/or melt processing (especially in the presence of moisture or water-containing fillers, etc.).
Regarding claim 14, one of ordinary skill in the art would have utilized the multilayer polyester film of MURSCHALL ET AL ‘346 comprising a core or base layer B containing the aromatic polycarbodiimides claimed in U.S. Patent No. 9,512,299 as components in known electrical applications such as photovoltaic applications (e.g., solar cells, etc.).
Claim Rejections - 35 USC § 103 (AIA )
The following is a quotation of 35 U.S.C. 103 which forms the basis for all obviousness rejections set forth in this Office action:
A patent for a claimed invention may not be obtained, notwithstanding that the claimed invention is not identically disclosed as set forth in section 102, if the differences between the claimed invention and the prior art are such that the claimed invention as a whole would have been obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art to which the claimed invention pertains. Patentability shall not be negated by the manner in which the invention was made.
This application currently names joint inventors. In considering patentability of the claims the examiner presumes that the subject matter of the various claims was commonly owned as of the effective filing date of the claimed invention(s) absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and effective filing dates of each claim that was not commonly owned as of the effective filing date of the later invention in order for the examiner to consider the applicability of 35 U.S.C. 102(b)(2)(C) for any potential 35 U.S.C. 102(a)(2) prior art against the later invention.
Claim(s) 1, 4-5, 9-12, 14 is/are rejected under 35 U.S.C. 103 as being unpatentable over:
MURSCHALL ET AL (US 2002/0065346),
in view of:
• EP 3287493 A1 (MORICK-EP ‘493), relying on NEUWALD ET AL (US 2018/0057684) as English language translation;
or
• BLOOM (US 2007/0299184), and in view of HEXION - EPON RESIN 1001F - TECHNICAL DATA SHEET.
MURSCHALL ET AL ‘346 discloses multilayer polyester films with three layers (e.g., having A/B/C or A/B/A structure), wherein one, some, or all layers can contain carbodiimide-based hydrolysis stabilizers, wherein an illustrative film structure comprises:
• a first outer layer A which does not contain a carbodiimide hydrolysis stabilizer (corresponding to recited “polyester layer (II)”), and which optionally contains other conventional additives;
• a core or base layer B which contains a carbodiimide hydrolysis stabilizer (e.g., an aromatic polymeric carbodiimide; etc.) in typical amounts of 0.1-5 wt% (corresponding to recited “polyester layer (I)”), and which optionally contains other conventional additives, the base layer typically comprises 40-90% of the total film thickness;
• a second outer layer A (or a first outer layer C) which does not contain a carbodiimide hydrolysis stabilizer (corresponding to recited “polyester layer (III)”), and which optionally contains other conventional additives;
The polyester film has a general overall thickness of 1-500 microns (preferably 5-350 microns or 100-300 microns), wherein the outer layer(s) generally have a thickness of more than 0.1 microns (preferably 0.2-5 microns). The polyesters forming the layers A, B, and C are thermoplastic resins (e.g., polyethylene terephthalate (PET); polyethylene naphthalate (PEN); polybutylene terephthalate (PBT); etc.). The multilayer polyester films can be made using a known coextrusion process (e.g., by extruding outer layers A (and/or C) on both sides of base layer B to form the desired coextruded A/B/A or A/B/C film structure; etc.). The films are useful in various applications (e.g., electronic or electrical applications, etc.). (entire document, e.g., paragraph 0002, 0019-0021, 0030-0032, 0038-0040, 0043, 0067-0068, 0072, 0074, 0079; 0112, 0130, 0135-0137; etc.) However, the reference does not specifically disclose the use of epoxides in outer layers.
MORICK-EP ‘493 discloses that it is well known in the art to incorporate aromatic epoxide oligomers with a formula (II)
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(corresponding to recited “Formula (III)”) (e.g., a poly(bisphenol-A-co-epichlorohydrin) copolymer -- CAS No. 25068-38-6 -- with a molecular weight of about 600-1800 g/mol) as hydrolysis stabilizers in thermoplastic polyester-based resin composition in typical amounts of 2-15 parts for 105-115 parts polyester resin, in order to minimize molecular weight loss due to hydrolysis. (NEUWALD ET AL, paragraph, 0048-0052, 0093, 0110-0114, etc.) (see corresponding portions of MORICK-EP ‘493)
BLOOM ‘184 discloses that it is well known in the art to incorporate epoxide-type chain extenders (e.g., a reaction product of epichlorohydrin and bisphenol-A which contains at least two epoxy groups -- for example: EPON 1001 (weight per epoxide (i.e., epoxy equivalent weight or EEW) of 525-550); EPON 1002 (EEW of 600-700); etc.) in order to reduce molecular weight loss of thermoplastic condensation polymers (e.g., polyesters such as polyethylene terephthalate (PET, etc.) during melt processing (e.g., for extruded films, etc.), wherein the epoxide-type chain extenders are utilized in typical amounts of about 0.1-10 wt%. (paragraph 0002-0005, 0013-0015, 0048, 0054-0055, 0060, etc.)
HEXION - EPON RESIN 1001F - TECHNICAL DATA SHEET provides evidence that EPON 1001F is a reaction product of epichlorohydrin and bisphenol-A (CAS No. 25068-38-6) with a weight per epoxide (i.e., epoxy equivalent weight or EEW) of 525-550 and a chemical structure:
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(corresponding to recited “Formula (III)”). (entire document)
Regarding claims 1, 4-5, 9-12, 14, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to incorporate effective amounts of known epoxy-functional chain extenders (e.g., oligomeric reaction products of epichlorohydrin and bisphenol-A as suggested in MORICK-EP ‘493 or BLOOM ‘184) in one or more layer(s) (e.g., the outer layer(s) A and/or C; etc.) of the multilayer films of MURSCHALL ET AL ‘346 as a hydrolysis stabilizer and/or to reduce loss of molecular weight during high temperature processing and/or melt processing (especially in the presence of moisture or water-containing fillers, etc.).
Regarding claim 14, one of ordinary skill in the art would have utilized the multilayer polyester film of MURSCHALL ET AL ‘346 comprising a core or base layer B containing an aromatic polymeric carbodiimide as components in known photovoltaic module applications (e.g., solar cells, etc.).
Claim(s) 2-3, 8, 15-20 is/are rejected under 35 U.S.C. 103 as being unpatentable over:
MURSCHALL ET AL (US 2002/0065346), in view of: •EP 3287493 A1 (MORICK-EP ‘493), relying on NEUWALD ET AL (US 2018/0057684) as English language translation; or •BLOOM (US 2007/0299184), and in view of HEXION - EPON RESIN 1001F - TECHNICAL DATA SHEET;
as applied to claims 1, 4-5, 9-12, 14 above,
and further in view of:
• LAUFER ET AL (US 2016/0096951); or
• LAUFER ET AL (US 9,512,299); or
• EP 3260487 (LAUFER-EP ‘487), relying on LAUFER (US 2019/0135999) as English translation.
LAUFER ET AL’951 and LAUFER ET AL ‘299 disclose that it is well known in the art to incorporate aromatic polycarbodiimides with urea and/or urethane terminal groups conforming to present application claims 2-3, 15-17 in typical amounts of 0.1-5 wt% in polyester resins (e.g., PET, PBT, etc.) in order to economically produce polyester materials with excellent hydrolysis stability. (LAUFER ET AL ‘951, paragraph 0001-0002, 0005-0014, 0017-0018, 0049, etc.) (see corresponding portions of LAUFER ET AL ‘299)
LAUFER-EP ‘487 disclose that it is well known in the art to incorporate aromatic polycarbodiimides with urea and/or urethane terminal groups conforming to present application claims 2-3, 15-17 in typical amounts of 0.1-5 wt% in polyester resins (e.g., PET, PBT, etc.) in order to economically produce polyester films with excellent hydrolysis stability for solar cell applications. (LAUFER ‘999, paragraph 0001-0003, 0007-0016, 0023, 0038-0045, etc.) (see corresponding portions of LAUFER-EP ‘487)
Regarding claims 2-3, 8, 15-19, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to incorporate effective amounts of known aromatic polycarbodiimides with urea and/or urethane terminal groups conforming to present application claims 2-3, 15-17 (as disclosed in LAUFER ET AL’951 or LAUFER ET AL ‘299 or LAUFER-EP ‘487) as the carbodiimide hydrolysis stabilizer in the core or base layer B of MURSCHALL ET AL ‘346 in order to produce multilayer polyester films with superior hydrolysis stability for photovoltaic applications.
Regarding claim 18, since: (i) the molecular weight of an epoxy compound can be calculated by the following:
molecular weight = epoxy equivalent weight (weight per epoxide) (EEW)
number of epoxide groups
and (ii) BLOOM ‘184 discloses epoxide-type chain extenders which are a reaction product of epichlorohydrin and bisphenol-A and which contain two epoxy groups (e.g., EPON 1001 with EEW of 525-550; EPON 1002 with EEW of 600-700; etc.); and (iii) MORICK-EP ‘493 discloses epoxide-type hydrolysis stabilizers conforming to recited Formula (III) with a preferred molecular weight of 600-1800 g/mol; the Examiner has reason to believe that the epoxide-type hydrolysis stabilizers of MORICK-EP ‘493 and the epoxide-type chain extenders (e.g., reaction products of epichlorohydrin and bisphenol-A) of BLOOM ‘184 have number average molecular weights as recited in claim 18, therefore the Examiner has basis for shifting the burden of proof to applicant as in In re Fitzgerald et al., 205 USPQ 594. For example, EPON 1001 has a molecular weight of about 1050-1100 g/mol (e.g., 525 g/mol x 2 epoxide groups = 1050 g/mol), and EPON 1002 has a molecular weight of 1200-1400 g/mol.
Regarding claim 20, one of ordinary skill in the art would have utilized the multilayer polyester film of MURSCHALL ET AL ‘346 comprising a core or base layer B containing an aromatic polymeric carbodiimide as components in known photovoltaic module applications (e.g., solar cells, etc.).
Claim(s) 14 is/are rejected under 35 U.S.C. 103 as being unpatentable over:
MURSCHALL ET AL (US 2002/0065346), in view of: •EP 3287493 A1 (MORICK-EP ‘493), relying on NEUWALD ET AL (US 2018/0057684) as English language translation; or •BLOOM (US 2007/0299184), and in view of HEXION - EPON RESIN 1001F - TECHNICAL DATA SHEET;
as applied to claims 1, 4-5, 9-12, 14 above,
and further in view of LACRAMPE (US 2017/0012151).
LACRAMPE ‘151 discloses that it is well known in the art to utilize multilayer polyester films containing additives as components for photovoltaic devices (e.g., solar cells, etc.). (paragraph 0001, 0018-0026, 0147, 0150, etc.)
Regarding claim 14, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to utilize the multilayer polyester film of MURSCHALL ET AL ‘346 comprising a core or base layer B containing an aromatic polymeric carbodiimide as components in known photovoltaic module applications (e.g., solar cells, etc.), as suggested in LACRAMPE ‘151.
Claim(s) 20 is/are rejected under 35 U.S.C. 103 as being unpatentable over:
MURSCHALL ET AL (US 2002/0065346), in view of: •EP 3287493 A1 (MORICK-EP ‘493), relying on NEUWALD ET AL (US 2018/0057684) as English language translation; or •BLOOM (US 2007/0299184), and in view of HEXION - EPON RESIN 1001F - TECHNICAL DATA SHEET;
as applied to claims 1, 4-5, 9-12, 14 above,
and further in view of: •LAUFER ET AL (US 2016/0096951); or •LAUFER ET AL (US 9,512,299); or •EP 3260487 (LAUFER-EP ‘487), relying on LAUFER (US 2019/0135999) as English translation;
as applied to claims 2-3, 8, 15-19 above,
and further in view of LACRAMPE (US 2017/0012151).
LACRAMPE ‘151 discloses that it is well known in the art to utilize multilayer polyester films containing additives as components for photovoltaic devices (e.g., solar cells, etc.). (paragraph 0001, 0018-0026, 0147, 0150, etc.)
Regarding claim 20, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to utilize the multilayer polyester film of MURSCHALL ET AL ‘346 comprising a core or base layer B containing an aromatic polymeric carbodiimide as components in known photovoltaic module applications (e.g., solar cells, etc.), as suggested in LACRAMPE ‘151.
Response to Arguments
Applicant's arguments filed 08/14/2025 have been considered but are moot in view of the new grounds of rejection necessitated by the Claim Amendments filed 08/14/2025.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
HAYLOCK ET AL (US 4,551,507) and BIENMUELLER ET AL (US 2017/0260372) and VANDERKOOI, JR (US 4,753,975) and JP 2009-167269 disclose epoxide-type additives for polyester resins.
CANO SIERRA ET AL (US 2011/0318586) disclose films containing carbodiimides.
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any nonprovisional extension fee (37 CFR 1.17(a)) pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the mailing date of this final action.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Vivian Chen (Vivian.chen@uspto.gov) whose telephone number is (571) 272-1506. The examiner can normally be reached on Monday through Thursday from 8:30 AM to 6 PM. The examiner can also be reached on alternate Fridays.
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November 5, 2025
/VIVIAN CHEN/Primary Examiner, Art Unit 1787