DETAILED ACTION
Claim Status
Claim(s) 1-2, 4-12 is/are pending.
Claim(s) 1-2, 4-12 is/are rejected.
Claim(s) 3 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.
Claim Rejections - 35 USC § 112
The following is a quotation of the first paragraph of 35 U.S.C. 112(a):
(a) IN GENERAL.—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 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.
Claim(s) 1-2, 4-12 is/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: (A) a limited range of film composition; and (B) a limited range of polyester resin composition; does not reasonably provide enablement for the entire recited compositional ranges of (A) film compositions as a whole and (B) polyester resin composition. The specification does not enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make the invention commensurate in scope with these claims.
The propriety of a rejection based upon the scope of a claim relative to the scope of the enablement concerns (1) how broad the claim is with respect to the disclosure and (2) whether one skilled in the art could make and use the entire scope of the claimed invention without undue experimentation. See MPEP 2164.08. The disclosure as originally filed does not enable one of ordinary skill in the art to which it pertains, or with which it is most nearly connected, to make the claimed film exhibiting:
(a) the recited moisture absorption rate properties under the recited test conditions; and
(b) thermal shrinkage ratio (s2/s1) after being subjected to 150 °C for 30 minutes (claim 1):
and optionally with the additional recited properties (claim 2):
(c) moisture permeability;
(d) resistance to repeated folding;
over the entire scope of the present claims.
MPEP 2164.01(a) Undue Experimentation Factors [R-08.2012]
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There are many factors to be considered when determining whether there is sufficient evidence to support a determination that a disclosure does not satisfy the enablement requirement and whether any necessary experimentation is "undue." These factors include, but are not limited to:
(A) The breadth of the claims;
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(B) The nature of the invention;
(C) The state of the prior art;
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(D) The level of one of ordinary skill;
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(E) The level of predictability in the art;
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(F) The amount of direction provided by the inventor;
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(G) The existence of working examples; and
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(H) The quantity of experimentation needed to make or use the invention based on the
content of the disclosure.
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In re Wands, 858 F.2d 731, 737, 8 USPQ2d 1400, 1404 (Fed. Cir. 1988) (reversing the PTO’s determination that claims directed to methods for detection of hepatitis B surface antigens did not satisfy the enablement requirement). In Wands, the court noted that there was no disagreement as to the facts, but merely a disagreement as to the interpretation of the data and the conclusion to be made from the facts. In re Wands, 858 F.2d at 736-40, 8 USPQ2d at 1403-07. The Court held that the specification was enabling with respect to the claims at issue and found that "there was considerable direction and guidance" in the specification; there was "a high level of skill in the art at the time the application was filed;" and "all of the methods needed to practice the invention were well known." 858 F.2d at 740, 8 USPQ2d at 1406. After considering all the factors related to the enablement issue, the court concluded that "it would not require undue experimentation to obtain antibodies needed to practice the claimed invention." Id., 8 USPQ2d at 1407.
In particular, with respect to Wand factor (A), the claims are relatively broad -- for example, but not limited to:
• The majority of the claims contains no limitations on the composition of the film as a whole;
• The majority of the claims do not contain any limitations on the amount of 1,4-cyclohexanedimethanol (CHDM) in the polyester resin;
• The majority of the claims do not contain any limitations on the amount of terephthalic acid (TPA) in the polyester resin;
• The majority of the claims do not contain any limitations on the amount of isophthalic acid (IPA) in the polyester resin;
• The claims do not contain any restrictions on the type(s) and amount(s) of other components (e.g., other polymeric components such as other polyester resins or non-polyester resins; non-polymeric components such as various organic or inorganic compounds, such as fillers, pigments, and/or other additives; etc.) which can be present in the film as a whole.
With respect to Wand factor (B), Applicant states that prior art films are difficult to produce dimensionally stable polyester films with very low moisture absorption when exposed to high temperature and high humidity, especially for electronic and circuit board applications.
With respect to Wand factors (C)-(E), the prior art does not specifically disclose or teach the production of poly(1,4-cyclohexylene dimethylene terephthalate-isophthalate (PCT-I) copolyester films which exhibit the recited combination of above properties (a)-(b) (claim 1), and optionally above additional properties (c)-(d) (claim 2), particularly in view of Applicant’s arguments that the crystallinity of the film is critical for obtaining the recited moisture absorption rate under the recited test conditions.
With respect to Wand factors (F)-(G), the disclosure as originally filed only discloses very limited ranges of: (A) film compositions as a whole; and (B) polyester resin composition; which result in films which exhibit the recited combination of above properties (a)-(b) (claim 1), and optionally the above additional properties (c)-(d) (claim 2).
With respect to Wand factor (H), the working Examples in the Specification provide evidence that the (A) film compositions as a whole and (B) polyester resin composition materially (and possibly unpredictably) affect the (a) moisture absorption rate. Therefore, it is the Examiner’s position that undue experimentation would be required to produce films which exhibit the recited combination of above properties (a)-(b) (claim 1), and optionally the above additional properties (c)-(d) (claim 2) -- for example, but not limited to:
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• the composition of the film as a whole -- The disclosure as originally filed only discloses producing films which exhibit the recited combination of above properties (a)-(b) (claim 1), and optionally the above additional properties (c)-(d) (claim 2) using films which only contain a single poly(1,4-cyclohexylene dimethylene terephthalate-isophthalate (PCT-I) copolyester resin derived from a diol component containing only 1,4-cyclohexane dimethanol (CHDM) and a dicarboxylic acid component containing only 95-85 mol% terephthalic acid (TPA) and 5-15 mol% isophthalic acid (IPA), wherein the single PCT-I copolyester resin (PCT-I) constitute the effective entirety of the film as a whole.
However, the present claims use the open term “comprises” with respect to the composition of the film as a whole, which allows for nearly any amount(s) of any material(s) (polymeric; non-polymeric organic; inorganic; etc.) as long as any non-zero amount of the recited polyester is present in the film.
The Examiner has reason to believe that: (i) a minimum amount of the recited polyester resin; needs to be present in the film as a whole in order to produce films which exhibit the recited above properties (a)-(b) (claim 1), and optionally the above additional properties (c)-(d) (claim 2).
Furthermore, the Examiner has reason to believe the above properties (a)-(b) (claim 1), and optionally the above additional properties (c)-(d) (claim 2) would be materially affected by presence of non-trivial amounts of other components (e.g., other polymers; other non-polymeric compounds or additives; etc.), particularly in view of: (i) Applicant arguments that the crystallinity of the film is critical for obtaining the recited (a) moisture absorption rate; and (ii) the crystallinity of the film is critical for obtaining the recited (a) moisture absorption rate, and the crystallinity of a polyester film is materially affected by the composition of said film.
Applicant has not provided adequate guidance to one of ordinary skill in the art as to how to produce films which exhibit the recited above properties (a)-(b) (claim 1), and optionally the above additional properties (c)-(d) (claim 2), without undue experimentation using film compositions which are different from those utilized in the working Examples in the Specification -- for example:
• using film compositions containing different amounts (e.g., 5 wt% or 10 wt% or 50 wt% or 80 wt% or 90 wt%) of the recited polyester resin;
• using film compositions containing non-trivial amounts of other components (e.g., 95 wt% or 90 wt% of 50 wt% or 20 wt% or 10 wt%, etc.) of other components (e.g., other polymeric components such as other polyester resins or non-polyester resins; non-polymeric components such as various organic or inorganic compounds, such as fillers, pigments, and/or other additives; etc.) which can be present in the film as a whole;
etc.
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• the composition of the polyester resin -- The disclosure as originally filed only discloses producing films which exhibit the recited combination of above properties (a)-(b) (claim 1), and optionally the above additional properties (c)-(d) (claim 2) using films which only contain a single poly(1,4-cyclohexylene dimethylene terephthalate-isophthalate (PCT-I) copolyester resin derived from a diol component containing only 1,4-cyclohexane dimethanol (CHDM) and a dicarboxylic acid component containing only 95-85 mol% terephthalic acid (TPA) and 5-15 mol% isophthalic acid (IPA).
However, the present claims use the open term “comprises” with respect to the diol component, which allows for nearly any amount(s) of any other diol (e.g., ethylene glycol, 1,4-butanediol, neopentyl glycol, aromatic diols, polyethylene glycol, etc.) as long as the diol component contains any non-zero amount of CHDM.
The present claims use the open term “comprises” with respect to the aromatic dicarboxylic acid component, which allows for nearly any amount(s) of any other aromatic dicarboxylic acid (e.g., phthalic acid, naphthalene dicarboxylic acid, etc.) as long as the aromatic component contains any non-zero amount of TPA and IPA.
Additionally, the present claims do not preclude the presence of other monomers (e.g., aliphatic dicarboxylic acids; cycloaliphatic dicarboxylic acids, etc.) used to form the polyester resin.
While: dependent claim 6 limits the amount of IPA in the aromatic dicarboxylic acid component; dependent claim 11 limits the amount of CHDM in the diol component; dependent claim 12 limits the amount of TPA; these dependent claims do not limit the amounts or types of other monomers in the diol component and/or aromatic dicarboxylic acid component forming the polyester resins.
The Examiner has reason to believe the above properties (a)-(b) (claim 1), and optionally the above additional properties (c)-(d) (claim 2) would be materially affected by the composition of the polyester resin used in the film, particularly in view of the Comparative Examples 1-2 in the Specification and furthermore in view of: (i) Applicant arguments that the crystallinity of the film is critical for obtaining the recited (a) moisture absorption rate; and (ii) the crystallinity of a polyester resin is materially affected by the composition of said polyester resin.
Applicant has not provided adequate guidance to one of ordinary skill in the art as to how to produce films which exhibit the recited above properties (a)-(b) (claim 1), and optionally the above additional properties (c)-(d) (claim 2), without undue experimentation using polyester resins which are different from those utilized in the working Examples in the Specification -- for example:
• a polyester resin derived from:
• a diol component containing 50 mol% CHDM and 50 mol% ethylene glycol (EG);
• an aromatic dicarboxylic acid component containing 50 mol% TPA and 50 mol% IPA;
• a polyester resin derived from:
• a diol component containing 10 mol% CHDM and 85 mol% ethylene glycol (EG) and 5 mol% neopentyl glycol (NPG);
• an aromatic dicarboxylic acid component containing 75 mol% TPA and 25 mol% IPA;
• a polyester resin derived from:
• a diol component containing 80 mol% CHDM and 20 mol% 1,4-butanediol;
• an aromatic dicarboxylic acid component containing 90 mol% TPA and 10 mol% IPA;
• an aliphatic dicarboxylic acid component containing adipic acid or sebacic acid and/or decanedicarboxylic acid;
etc.
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• the stretch ratios “d2” and “d1” and the ratio “d2/d1” -- The disclosure as originally filed only discloses producing films which exhibit the recited combination of above properties (a)-(b) (claim 1), and optionally the above additional properties (c)-(d) (claim 2) using films which only contain a single poly(1,4-cyclohexylene dimethylene terephthalate-isophthalate (PCT-I) copolyester resin derived from a diol component containing only 1,4-cyclohexane dimethanol (CHDM) and a dicarboxylic acid component containing only 95-85 mol% terephthalic acid (TPA) and 5-15 mol% isophthalic acid (IPA), wherein:
• the stretch ratio d2 (longitudinal direction) is 2.9-3.0;
• the stretch ratio d1 (transverse direction) is 3.7-3.75;
• the ratio d2/d1 is 0.78-0.80.
The Examiner has reason to believe that the film needs to have: (i) a minimum longitudinal direction stretch ratio (d2); and (ii) a minimum transverse direction stretch ratio (d1); in order to produce films which exhibit the recited above properties (a)-(b) (claim 1), and optionally the above additional properties (c)-(d) (claim 2), in view of: (i) Applicant arguments that the crystallinity of the film is critical for obtaining the recited (a) moisture absorption rate; and (ii) the crystallinity of a polyester resin is materially affected by the degree of orientation of said polyester resin.
Applicant has asserted that the ratio d2/d1 is necessary to produce films which exhibit the recited above properties (a)-(b) (claim 1), and optionally the above additional properties (c)-(d) (claim 2), in view of: (i) Applicant arguments that the crystallinity of the film is critical for obtaining the recited (a) moisture absorption rate; and (ii) the crystallinity of a polyester resin is materially affected by the degree of orientation of said polyester resin.
Applicant has not provided adequate guidance to one of ordinary skill in the art as to how to produce films which exhibit the recited above properties (a)-(b) (claim 1), and optionally the above additional properties (c)-(d) (claim 2), without undue experimentation using films with d2 and d1 and d2/d1 values which are different from those utilized in the working Examples in the Specification -- for example:
• using a film with a d2 of 1.05 and d1 of 2.1 and a d2/d1 of 0.5;
• using a film with a d2 of 4.0 and d1 of 5.0 and a d2/d1 of 0.8;
etc.
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• the film directions associated with “s2” and “s1” -- The disclosure as originally filed only discloses producing films which exhibit the recited combination of above properties (a)-(b) (claim 1), and optionally the above additional properties (c)-(d) (claim 2) using films which only contain a single poly(1,4-cyclohexylene dimethylene terephthalate-isophthalate (PCT-I) copolyester resin derived from a diol component containing only 1,4-cyclohexane dimethanol (CHDM) and a dicarboxylic acid component containing only 95-85 mol% terephthalic acid (TPA) and 5-15 mol% isophthalic acid (IPA), wherein:
• s2 is the longitudinal direction;
• s1 is the transverse direction.
Applicant has not provided adequate guidance to one of ordinary skill in the art as to how to produce films which exhibit the recited above properties (a)-(b) (claim 1), and optionally the above additional properties (c)-(d) (claim 2), without undue experimentation using films wherein:
• s2 is the transverse direction;
• s1 is the longitudinal direction;
particularly in view of: (i) the required d2/d1 ratio of the film; and (ii) the evidence of the working Examples in the specification, which indicate that the shrinkage s2 in the film direction with the lower stretch ratio (i.e., d2, which is the longitudinal direction) is greater than the shrinkage s1 in the film direction with the higher stretch ratio (i.e., d1, which is the transverse direction).
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In view of the above, it is the Examiner’s position that the disclosure as originally filed does not enable one of ordinary skill in the art to make films which exhibit the recited combination of above properties (a)-(b) (claim 1), and optionally the above additional properties (c)-(d) (claim 2) over the entire scope of the present claims without undue experimentation, particularly in view of: (i) Applicant arguments that the crystallinity of the film is critical for obtaining the recited (a) moisture absorption rate; and (ii) the crystallinity of a film is materially affected by the crystallinity and degree of orientation of said film.
The Examiner’s position that it is reasonable to believe that the crystallization characteristics of PCT-I copolyester resin are materially dependent on the composition of the PCT-I resin is further supported by the reference “Manipulating the Properties of Poly(1,4-Cyclohexylene dimethylene Terephthalate) (PCT) Just by Tuning Steric Configuration of 1,4-Cyclohexanedimethanol (CHDM)”, which provides evidence that even different ratios of cis-CHDM and trans-CHDM isomers can significantly alter the thermal properties and crystallization characteristics of PCT resins.
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.
Claim(s) 1-2, 4-12 is/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.
Claim 1 is vague and indefinite because the claim fails to clearly identify what elements are being subjected to “a stretching ratio”. Applicant should use clarifying language such as “the stretching ratio (d2) of the film in the longitudinal direction” and “the stretching ratio (d1) of the film in the transverse direction” to clearly identify what element is the subject of the recited limitation.
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.
The rejections under 35 U.S.C. 103 based on PECORINI ET AL (US 2006/0134409) in the previous Office Action mailed 06/04/2025 have been withdrawn in view of the Claim Amendments and Applicant’s arguments filed 09/04/2025.
The rejections under 35 U.S.C. 103 based on KR 2019-0059216 (HWANG-KR ‘216) in the previous Office Action mailed 06/04/2025 have been withdrawn in view of the Claim Amendments and Applicant’s arguments filed 09/04/2025.
Response to Arguments
Applicant’s arguments filed 09/04/2025 have been considered but are moot because the new grounds of rejection necessitated by the Claim Amendments and Applicant’s arguments filed 09/04/2025, in particular, Applicant’s remarks regarding the critical effect of crystallinity in the film on moisture absorption rates.
Conclusion
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.
If attempts to reach the examiner by telephone are unsuccessful, the examiner's supervisor, Callie Shosho, can be reached on (571) 272-1123. The fax phone number for the organization where this application or proceeding is assigned is (571) 273-8300.
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January 10, 2026
/VIVIAN CHEN/Primary Examiner, Art Unit 1787