DETAILED ACTION
This office action follows a reply filed on December 8, 2025. Claims 1 and 31 have been amended. Claims 1, 5-6, 10-11, 14, 16-18, 20-22, 25-29 and 31-33 are currently pending and under examination.
The texts of those sections of Title 35 U.S. Code are not included in this section and can be found in a prior Office action.
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
Claim Rejections - 35 USC § 103
Claims 1, 5-7, 10-11, 17, 21, 22, and 25-27 are rejected under 35 U.S.C. 103 as obvious over Peiffer (US 6,884,517), as evidenced by Wieloch (US 2021/0054189), and further in view of Peiffer* (US 2009/0061138).
Peiffer exemplifies preparing a extruding a composition comprising 87 wt% PET, 8 wt% COC, Topas 6015 having a Tg of 160°C, and 5 wt% of a masterbatch comprising 50% barium sulfate and 2000 ppm optical brightener (Example 3), where the extrusion is followed by a stepwise longitudinal and transverse orientation at 80-135°C and a stretching ratio of about 4 to produce a high-whiteness, opaque, single layer film (col. 14-15). The method allows for crystals to be biaxially oriented, and the Tg of the COC is higher than the temperature of orientation. Barium sulfate is a white pigment and known in the art as a light scattering material.
While the amount of COC is greater than 7 wt%, Peiffer teaches the amount of COC can be as low as 2 wt% or 6 wt% and as much as 40 wt%, where the high opacity and high whiteness desired by Peiffer can still be met.
These ranges overlap with the claimed ranges of 7 wt% or less in claim 1, and less than 5 wt% in claim 10, and it has been held that overlapping ranges are sufficient to establish prima facie obviousness. See MPEP 2144.05.
Therefore, it would have been obvious to one of ordinary skill in the art at the time the invention was made to have selected from the overlapping portion of the range taught by the reference because overlapping ranges have been held to establish prima facie obviousness.
Peiffer does not measure the gonioappearance of the article, as claimed. Wieloch teaches that blending PET and COC having a relatively high Tg of 133°C does not produce a pearlescent appearance under orientation conditions of 95-120°C, versus a PET/COC blend where the Tg is low (p. 2, [0021]).
Wieloch actually shows that when the COC has a Tg of greater than the processing parameters (Topas 6013S-04, Tg=130°C), the DECMC is less than 10 (Table 1), where the COC content is 4 wt%. Wieloch also shows that the inclusion of 4 wt% titanium dioxide also provides a DECMC is less than 10.
One of ordinary skill in the art would expect a composition comprising 4 wt% of a high Tg COC and 4 wt% light scattering pigment to similarly possess a DECMC is less than 10.
Modifying Example 3 of Peiffer to a composition comprising 91 wt% PET, 4 wt% COC, Topas 6015 having a Tg of 160°C, and 5 wt% of a masterbatch comprising 50% barium sulfate and 2000 ppm optical brightener is prima facie obvious, as Peiffer clearly suggests such a modification by teaching that the COC can be present in an amount as low as 2 wt%.
Based on the teachings of Wieloch, one of ordinary skill would expect this modified composition/film to possess the claimed gonioappearance, as Wieloch teaches that orienting a similar film with a COC having a Tg>processing parameters provides a film with a gonioappearance or DECMC is less than 10 and that with a light scattering pigment, such as titanium dioxide, which is also a functional equivalent of barium sulfate, also provides an oriented film with a DECMC is less than 10.
Alternatively, the instant specification discloses that a low gonioappearance, or non-pearlescent appearance, can be obtained by melt blending and stretching the claimed composition, disclosing that the incompatible polymers have low surface energy and high Vicat Softening Point, particularly greater than the orientation temperature of the polymer blend (p. 10, ll. 15-23), also disclosing the following:
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TOCAS 6015 has a Vicat Softening Point of 313°F or 156°C, which is greater than the orientation temperature.
Peiffer uses the preferred polyester and preferred COC having the claimed Tg with an overlapping range of the claimed amounts. Therefore, one of ordinary skill in the art would expect the article of Peiffer to possess the claimed gonioappearance.
Please consider the following:
MPEP 2112 A REJECTION UNDER 35 U.S.C. 102 AND 103 CAN BE MADE WHEN THE PRIOR ART PRODUCT SEEMS TO BE IDENTICAL EXCEPT THAT THE PRIOR ART IS SILENT AS TO AN INHERENT CHARACTERISTIC
Where applicant claims a composition in terms of a function, property or characteristic and the composition of the prior art is the same as that of the claim but the function is not explicitly disclosed by the reference, the examiner may make a rejection under both 35 U.S.C. 102 and 103. "There is nothing inconsistent in concurrent rejections for obviousness under 35 U.S.C. 103 and for anticipation under 35 U.S.C. 102." In re Best, 562 F.2d 1252, 1255 n.4, 195 USPQ 430, 433 n.4 (CCPA 1977). This same rationale should also apply to product, apparatus, and process claims claimed in terms of function, property or characteristic. Therefore, a 35 U.S.C. 102 and 103 rejection is appropriate for these types of claims as well as for composition claims.
Peiffer is prima facie obvious over instant claims 1, 6, 7, 11, 16-18 and 22.
As to claim 5, Peiffer discloses the film as white. White is represented as (100,0,0) in the CIELab scale; therefore, the film inherently possesses or would be expected to possess an a* value and b* value of 0.
As to claim 14, titanium dioxide is listed as a functional equivalent to barium sulfate as a white pigment (col. 8, ll. 15-17), and is also known in the art as a light scattering pigment.
As to claims 18 and 20, Peiffer teaches that soluble blue dyes may also be added in addition to the optical brightener (col. 9, l. 66 to col. 10, l. 4).
As to claim 21, Example 3 has an opacity of 85%, suggesting a light transmission of 15% or less.
Claims 25-26 require the inclusion of a light scattering pigment, where Peiffer exemplifies the inclusion of 2.5 wt% barium sulfate, where claim 25 requires the presence of less than 4 wt% of titanium dioxide or zinc sulfide, or less than 1 wt% titanium dioxide and less than 3 wt% zinc sulfide in claim 26. These limitations require the inclusion of a light scattering pigment, such as barium sulfate, but allow for the absence or 0 wt% (due to the less than language) of titanium dioxide or zinc sulfide.
As to claim 27, where zinc sulfide is the light scattering pigment, Peiffer exemplifies the inclusion of 2.5 wt% barium sulfate as a white pigment in Example 3, further teaching other preferred white pigments to include titanium dioxide; however, Peiffer does not teach or suggest the inclusion of zinc sulfide, as claimed.
Peiffer* teaches a biaxially oriented polyester film comprising a white pigment in order to achieve a desired whiteness of the film, teaching the white pigments to include titanium dioxide, barium sulfate, and zinc sulfide ([0088]). Choosing zinc sulfide in place of barium sulfate in the film of Peiffer is prima facie obvious, as Peiffer* teaches these as functionally equivalent white pigments in the art of biaxially oriented polyester films.
Peiffer in view of Peiffer* is prima facie obvious over instant claim 27.
Allowable Subject Matter
Claims 31-33 and 28-29 are allowed.
Response to Arguments
Applicant's arguments filed December 8, 2025 have been fully considered but they are not persuasive.
Applicants argue that the examiner does not point to any “missing descriptive matter” in Peiffer ‘517 as being supplied as Wieloch.
Peiffer ‘517 teaches the claimed composition which can be oriented into an opaque film with an overlapping amount of high Tg COC. Peiffer ‘517 does not teach the claimed gonioappearance.
Peiffer does not measure the gonioappearance of the article, as claimed. Wieloch teaches that blending PET and COC having a relatively high Tg of 133°C does not produce a pearlescent appearance under orientation conditions of 95-120°C, versus a PET/COC blend where the Tg is low (p. 2, [0021]).
Wieloch actually shows that when the COC has a Tg of greater than the processing parameters (Topas 6013S-04, Tg=130°C), the DECMC is less than 10 (Table 1), where the COC content is 4 wt%. Wieloch also shows that the inclusion of 4 wt% titanium dioxide also provides a DECMC is less than 10.
One of ordinary skill in the art would expect a composition comprising 4 wt% of a high Tg COC and 4 wt% light scattering pigment to similarly possess a DECMC is less than 10.
Therefore, Wieloch does teach the missing descriptive matter in Peiffer ‘517.
Applicants argue that Peiffer ‘517 teaches away from the preparation of non-pearlescent articles, pointing to the desire for high gloss films.
At no point does Peiffer ‘517 even mention pearlescence or gonioappearance, hence the necessity to look to other prior art teachings. Even further, while Peiffer ‘517 may have a strong desire for high gloss films of 115-130GU, this is not a requirement of the compositions of Peiffer ‘517, but rather a preferred embodiment. Peiffer ‘517 actually that the compositions provide a gloss of at least 10.
Most importantly, gloss is not the same as the claimed non-pearlescent gonioappearance. Applicants measure these properties as follows:
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Even further, Sample 30’ is not pearlescent and has a 60° gloss of 79 GU, whereas Comp 7’ has a pearlescent appearance and higher 60° gloss of 92.
Therefore, the argument regarding gloss is not convincing.
Applicants argue unexpected results.
When looking to showings of results in order to overcome a rejection, the following must be considered:
Results must be Unexpected:
Unexpected properties must be more significant than expected properties to rebut a prima facie case of obviousness. In re Nolan 193 USPQ 641 CCPA 1977.
Obviousness does not require absolute predictability. In re Miegel USPQ 716.
Since unexpected results are by definition unpredictable, evidence presented in comparative showings must be clear and convincing. In re Lohr 137 USPQ 548.
In determining patentability, the weight of the actual evidence of unobviousness presented must be balanced against the weight of obviousness of record. In re Chupp, 2 USPQ 2d 1437; In re March 175 USPQ; In re Battle, 24 USPQ 2d 1040.
Claims Must be Commensurate with Showings:
Evidence of superiority must pertain to the full extent of the subject matter being claimed. In re Ackerman, 170 USPQ 340; In re Chupp, 2 USPQ 2d 1437; In re Murch 175 USPQ 89: Ex Parte A, 17 USPQ 2d 1719; accordingly, it has been held that to overcome a reasonable case of prima facie obviousness a given claim must be commensurate in scope with any showing of unexpected results. In re Greenfield, 197 USPQ 227. Further, a limited showing of criticality is insufficient to support a broadly claimed range. In re Lemin, 161 USPQ 288.
Result Must Compare to Closest Prior Art:
Where a definite comparative standard may be used, the comparison must relate to the prior art embodiment relied upon and not other prior art - Blanchard v. Ooms, 68 USPQ 314 - and must be with a disclosure identical (not similar) with that of said embodiment: In re Tatincloux, 108 USPQ 125.
Applicants point to Tables 10 and 11 for evidence of unexpected results. While the examiner agrees that the showing may be unexpected, this showing is not commensurate in scope with the claimed invention, as the claimed invention allows for any light scattering pigment, whereas applicants have only shown the effects of titanium dioxide and zinc sulfide in combination with 3, 5 or 9 wt% COC, where the instant claims allow for 7 wt% or less of the COC, where the criticality of the claimed range of COC has not been shown. These examples are also limited to comprising 90 wt% of PET, where the claimed invention allows for any polyester.
Applicants have also not compared the closest prior art, which is Example 4 of Peiffer.
Conclusion
THIS ACTION IS MADE FINAL. 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 BRIEANN R JOHNSTON whose telephone number is (571)270-7344. The examiner can normally be reached Monday-Friday, 8:00 AM - 4:00 PM EST.
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/Brieann R Johnston/Primary Examiner, Art Unit 1766