DETAILED ACTION
Claims 1-5, 7, and 9-14 are pending. Of these, claims 13-14 are withdrawn as directed to a nonelected invention. Therefore, claims 1-5, 7, and 9-12 are under consideration on the merits.
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 .
Continued Examination Under 37 CFR 1.114
A request for continued examination under 37 CFR 1.114, including the fee set forth in 37 CFR 1.17(e), was filed in this application after final rejection. Since this application is eligible for continued examination under 37 CFR 1.114, and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114. Applicant's submission filed on 1/22/2026 has been entered.
Status of the Rejections
The 103 rejection is revised in view of the amendment.
Claim Rejections - 35 USC § 103
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.
The factual inquiries for establishing a background for determining obviousness under 35 U.S.C. 103 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.
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.
Claims 1-5, 7, and 10-12 are rejected under 35 U.S.C. 103 as unpatentable over Stewart et al. (US Pat. Pub. 2019/0105881) in view of Davis et al. (US Pat. No. 4,349,469).
As to claims 1-5, 7, and 10-12, Stewart discloses a multilayer sheet comprising at least three layers, including outers layers A and C and a middle layer B (“core layer”), wherein the outer layers may be the same or different and may comprise a co-polyester comprising a dicarboxylic acid component comprising 70-100 mole % terephthalic acid residues and a diol component (“glycol component”) comprising 5-50 mole % of 2,2,4,4-tetramethyl-1,3-cyclobutanediol residues and 50-95 mole % of 1,4-cyclohexandedimethanol residues, and 0-95% ethylene glycol (paragraph 79), the foregoing amounts overlapping the ranges of claims 1-3. Stewart teaches that the core layer may comprise a polyester elastomeric material (paragraphs 7 and 33), which is different than the co-polyester of the outer layers. Stewart discloses a specific embodiment wherein the outer layers comprise Titan (a copolyester having an inherent viscosity within the ranges recited by claims 1-3)(Table 1 at page 7). Regarding the limitation of claim 1 (a)(ii) that the dicarboxylic acid component comprises “0 to 30 mole % of aromatic and/or aliphatic dicarboxylic acid residues having up to 20 carbon atoms,” since Stewart discloses that 70-100 mole % of the dicarboxylic acid component comprises terephthalic acid residues (paragraph 79) as discussed above, the skilled artisan would recognize that it follows that the amount of other aromatic and/or aliphatic dicarboxylic acid residues having up to 20 carbon atoms must be within the 0 to 30 mole % recited by the claim in order to sum to 100. Therefore, this limitation is met by the Stewart composition. The sheet has a total thickness of about 250-2000 microns (paragraph 59), which encompasses the ranges of claims 1 and 7. Stewart further discloses that the core layer has a thickness of 300-500 (paragraph 21) microns which results in the thickness of the core layer with respect to the total thickness being slightly outside of the range of claim 1 requiring that the core layer thickness is from 20-35% of the total thickness of the multilayer sheet and the 25-35% range recited by claim 7. For example, a core layer thickness of 300 microns and a total sheet thickness of 800 microns would be within the ranges taught by Stewart and recited by the claims, but results in a core layer thickness that is 37.5% of the total thickness of the multilayer sheet. Steward teaches embodiments wherein the sheet has a tear force within the “at least 50 N” range of claim 1 (see Examples 1-4 having tear forces of 156, 165, 187, and 170 N),
As to claims 1-5, 7, and 10-12, Stewart does not further expressly disclose that the polyester of the core layer comprises residues of trans-1,4-cyclohexane dicarboxylate, 1,4-cyclohexanedimethanol, and 5-10 wt% poly(tetramethylene ether) glycol as recited by claims 1 and 4-5, nor that the overall multilayer sheet possesses the force retention and flexural modulus recited by claims 1 and 9-12 and the polyesterether possesses the inherent viscosity and glass transition temperature recited by claim 1. Nor does Stewart teach that the thickness of the core layer relative to the total thickness of the sheet is within the ranges of claims 1 and 7 as discussed above.
Davis discloses elastomeric copolyesters having an inherent viscosity of from about 0.8 to about 1.5 as measured at 25 degrees Celsius using 0.50 gm copolymer per 100 ml. of a solvent consisting of 60 wt% phenol and 40 wt% tetrachloroethane and comprising a dicarboxylic acid component comprising trans-1,4-cyclohexane dicarboxylate, and a glycol component comprising 1,4-cyclohexanedimethanol and 15-30 wt% poly(tetramethylene ether) glycol (column 7, 1st and 2nd paragraphs and claim 1 of Davis). Davis teaches that these copolyesters are suitable for use as clear, flexible films (“sheets”)(column 1, 1st paragraph).
As to claims 1-5, 7, and 10-12, it would have been prima facie obvious to one of ordinary skill in the art at the effective filing date of the present invention to modify the multilayer sheet of Stewart by selecting as the polyester in the core layer a polyester comprising trans-1,4-cyclohexane dicarboxylate, 1,4-cyclohexanedimethanol, and poly(tetramethylene ether) glycol in amounts within the recited ranges of the claims, because Stewart does not specify the specific groups that comprise the polyester in the middle layer and David teaches that a polyester comprising the foregoing ingredients is suitable for forming a flexible sheet, such that the skilled artisan reasonably would have expected that it could serve as part of the core layer in the Steward multilayer sheet. Such a modification is merely the substitution or one known element for another according to known methods to yield predictable results, which is prima facie obvious. MPEP 2143. Additionally, discovering optimum or working ranges involves only routine skill in the art in cases where the general conditions of a claim are disclosed in the prior art. In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955).
Regarding the limitation of claim 1 that the poly(tetramethylene ether) glycol residues are present in the amount of 5 to 10 mol%, it would have been prima facie obvious to use an amount of 10 mol% because there is no evidence of record of any unexpected criticality as a result of the claimed range and because 10% is sufficiently close to the 15% taught by Davis that the skilled artisan reasonably would have expected that the use of 10% would have resulted in a polyesterether having similar properties. A prima facie case of obviousness exists where the claimed ranges or amounts do not overlap with the prior art but are merely close. Titanium Metals Corp. of America v. Banner, 778 F.2d 775, 783, 227 USPQ 773, 779 (Fed. Cir. 1985)(Court held as proper a rejection of a claim directed to an alloy of "having 0.8% nickel, 0.3% molybdenum, up to 0.1% iron, balance titanium" as obvious over a reference disclosing alloys of 0.75% nickel, 0.25% molybdenum, balance titanium and 0.94% nickel, 0.31% molybdenum, balance titanium. "The proportions are so close that prima facie one skilled in the art would have expected them to have the same properties."); In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955) (Claimed process which was performed at a temperature between 40°C and 80°C and an acid concentration between 25% and 70% was held to be prima facie obvious over a reference process which differed from the claims only in that the reference process was performed at a temperature of 100°C and an acid concentration of 10%); In re Scherl, 156 F.2d 72, 74-75, 70 USPQ 204, 205-206 (CCPA 1946) (prior art showed an angle in a groove of up to 90° and an applicant claimed an angle of no less than 120°); In re Dreyfus, 73 F.2d 931, 934, 24 USPQ 52, 55 (CCPA 1934)(the prior art, which taught about 0.7:1 of alkali to water, renders unpatentable a claim that increased the proportion to at least 1:1 because there was no showing that the claimed proportions were critical); In re Lilienfeld, 67 F.2d 920, 924, 20 USPQ 53, 57 (CCPA 1933)(the prior art teaching an alkali cellulose containing minimal amounts of water, found by the Examiner to be in the 5-8% range, the claims sought to be patented were to an alkali cellulose with varying higher ranges of water (e.g., "not substantially less than 13%," "not substantially below 17%," and "between about 13[%] and 20%").
Regarding the limitation of claims 1 and 7 reading on a thickness of the core layer relative to the total thickness of the sheet of 35%, it would have been prima facie obvious to select such a thickness in light of the disclosure of Stewart which reads on a on a thickness of the core layer relative to the total thickness of the sheet of 37.5%, which is so close to 35% that the skilled artisan reasonably would have expected that the use of such a core layer thickness in the Stewart sheet would result in a sheet having substantially the same properties. A prima facie case of obviousness exists where the claimed ranges or amounts do not overlap with the prior art but are merely close. Titanium Metals Corp. of America v. Banner, 778 F.2d 775, 783, 227 USPQ 773, 779 (Fed. Cir. 1985).
Regarding claims 1 and 9-12, the outer and core layers of the Stewart multilayer sheet will possess the inherent viscosity, glass transition temperature, tear force, force retention, and flexural modulus recited by these claims, because it comprises the same ingredients and the layers have the same thickness as is recited by the claims, and a product cannot be separated from its properties. The U.S. Patent Office is not equipped with analytical instruments to test prior art compositions for the countless ways that an Applicant may present previously unmeasured characteristics. When the prior art appears to contain the same ingredients that are disclosed by Applicants' own specification as suitable for use in the invention, a prima facie case of obviousness has been established, and the burden is properly shifted to Applicants to demonstrate otherwise. See MPEP 2112.01. Additionally, discovering optimum or working ranges involves only routine skill in the art in cases where the general conditions of a claim are disclosed in the prior art. In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955).
Response to Applicant’s Arguments
Applicant argues that Stewart teaches using a thicker core layer of elastomer than presently claimed.
In response, it would have been prima facie obvious to use a core layer having a thickness within the presently claimed range in light of the closeness of the claimed range to the thicknesses taught by Stewart as discussed in the revised grounds of rejection.
Applicant argues that there is no reason to modify Stewart by selecting the specific polyesterether of claim 1 based on Davis, because the examples of Davis use a higher amount of ether glycol than presently claimed.
In response, and as discussed in the revised rejection, the skilled artisan would have found it obvious to use the amount of ether glycol recited by the amended claims in light of how similar it is to the amount taught by Davis in the formation of copolyesters that are suitable for use as clear, flexible films (“sheets”)(column 1, 1st paragraph). Additionally, Applicant has provided no evidence on the record of any unexpected criticality of the claimed range.
Applicant also argues that while Steward discloses that many materials can be used for the outer and core layers, Stewart found that the leading materials were polyester outer layers and a polyurethane core layer, such that the skilled artisan would not have had a reason to modify Stewart by using polyesterether in the core.
In response, this argument is not persuasive because Stewart expressly discloses that the core layer may comprise a polyester at paragraph 7 as discussed in the rejection. Disclosed examples and preferred embodiments do not constitute a teaching away from a broader disclosure or nonpreferred embodiments. MPEP 2123. In re Susi, 440 F.2d 442, 169 USPQ 423 (CCPA 1971). "A known or obvious composition does not become patentable simply because it has been described as somewhat inferior to some other product for the same use." In re Gurley, 27 F.3d 551, 554, 31 USPQ2d 1130, 1132 (Fed. Cir. 1994) (The invention was directed to an epoxy impregnated fiber-reinforced printed circuit material. The applied prior art reference taught a printed circuit material similar to that of the claims but impregnated with polyester-imide resin instead of epoxy. The reference, however, disclosed that epoxy was known for this use, but that epoxy impregnated circuit boards have "relatively acceptable dimensional stability" and "some degree of flexibility," but are inferior to circuit boards impregnated with polyester-imide resins. The court upheld the rejection concluding that applicant's argument that the reference teaches away from using epoxy was insufficient to overcome the rejection since "Gurley asserted no discovery beyond what was known in the art." 27 F.3d at 554, 31 USPQ2d at 1132.). Furthermore, "[t]he prior art's mere disclosure of more than one alternative does not constitute a teaching away from any of these alternatives because such disclosure does not criticize, discredit, or otherwise discourage the solution claimed." In re Fulton, 391 F.3d 1195, 1201, 73 USPQ2d 1141, 1146 (Fed. Cir. 2004).
Applicant also argues that the claimed invention has improved tear resistance when specific thicknesses of the core layer are used, and cites to Examples 2-3 as showing that the use of a total thickness of 725 and 728 microns with a core layer thickness of 193 and 237 microns had an average tear force of 69 N and 74 N, which is much higher than the 14 N for the composition of Example 1 which uses a core layer of 61 microns. Applicant asserts that Stewart and Davis provide no reason to arrive at the present invention having good tear force and force retention properties while maintaining high flex modulus for the overall sheet.
In response, the skilled artisan reasonably would have expected based upon the evidence of record that increasing the thickness of the polymeric layers of a multilayer sheet would increase the average tear force, and Stewart in fact discloses embodiments having a similar thickness to Examples 2-3 and which have even higher average tear forces. Specifically, Examples 1-4 of Stewart are sheets with an overall thickness of 0.76 mm (i.e., 760 microns) and have tear forces of 156, 165, 187, and 170 N (see Table 3 on page 9). Therefore, there is no evidence of record that the claimed multilayer sheet has properties that are superior to those of the cited art, and which are of an unexpected nature.
Conclusion
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/GAREN GOTFREDSON/Examiner, Art Unit 1619
/ANNA R FALKOWITZ/ Primary Examiner, Art Unit 1600