DETAILED ACTION
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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 January 28, 2026 has been entered.
Election/Restrictions
Claims 1-16 and 18-20 have been withdrawn from further consideration pursuant to 37 CFR 1.142(b), as being drawn to a nonelected invention, there being no allowable generic or linking claim. Applicant timely traversed the restriction requirement in the reply filed on 13 September 2024.
Claim Rejections - 35 USC § 112
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 17 is 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 applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention.
Claim 17 has been amended to require that the claimed film “created less than 1% clumping of PET flake”. This limitation is drafted in the past tense, and it is unclear if this refers to a previous function/use of the claimed film, a physical property that must have been satisfied at some previous point in time, or a present limitation positively required by the claimed film. There also does not appear to be proper antecedent basis for “PET flake” in this limitation. It is unclear if “PET flake” is an additional component required by claim 17, or if this refers to a set of testing conditions associated with the past clumping characteristics.
Claim 17 also requires that the claimed film “is recyclable in PET recycle stream”. There does not appear to be proper antecedent basis for “PET recycle stream”. It is unclear if the claim positively requires the presence of a PET recycle stream, or if this limitation intends to require that the claimed film is capable of being recycled in a PET recycle stream.
The phrases indicated above are unclear and have more than one reasonable interpretation. The full metes and bounds of claim 17 therefore cannot be determined. For the purpose of examination on the merits, the phrase “wherein the film created less than 1% clumping of PET flake and is recyclable in PET recycle stream” will be interpreted as physical properties/characteristics of the claimed film that will necessarily be present so long as the compositional requirements of the claim are met.
Claim Rejections - 35 USC § 103
The text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action.
Claim 17 is rejected under 35 U.S.C. 103 as being unpatentable over Fujimori et al. (US 2003/0144459; cited in previous Office action).
Regarding Claim 17, Fujimori teaches a polyester resin produced by condensing a dicarboxylic acid comprising an aromatic dicarboxylic acid as a main component and a diol component comprising ethylene glycol as a main component in the presence of at least an antimony compound and a phosphorus compound (Abstract), as well as films formed therefrom (p. 8, [0090]). The polyester has an intrinsic viscosity of 0.65 to 0.90 dL/g (p. 9, [0101]).
The aromatic dicarboxylic acid is preferably present in amounts of at least 90 mol% (p. 4, [0045]), with terephthalic acid being particularly preferred (p. 4, [0041]). Additional dicarboxylic acids including aliphatic acids may be present (p. 4, [0042]) in amounts of up to 10 mol% based on the preferred minimum amount of aromatic dicarboxylic acid.
This reads on the claimed component (a) comprising (i) 90-100 mol% terephthalic acid and (ii) 0-10 mol% of an aliphatic dicarboxylic acid.
The diol preferably includes at least 50 mol% ethylene glycol and up to 5 mol% diethylene glycol (p. 4, [0045]). A diol component other than ethylene glycol may be present. Examples of suitable additional diols include neopentyl glycol and 1,4-cyclohexanedimethanol (p. 4, [0043]). The preferred ranges of ethylene glycol and diethylene glycol indicate that additional diols including neopentyl glycol and 1,4-cyclohexanedimethanol will be present in a combined total amount of 0-45 mol%.
This reads on the claimed component (b) comprising 50 mol% or more of ethylene glycol; (i) 0-45 mol% neopentyl glycol; (ii) 0-45 mol% 1,4-cyclohexanedimethanol; and (iii) 0-5 mol% diethylene glycol.
As indicated above, at least an antimony compound and a phosphorus compound are present during production of the polyester. Antimony atoms are preferably present in amounts of 10-250 ppm (p. 4, [0050]); and phosphorus atoms are preferably present in amounts of 0.1-20 ppm (p. 4, [0051]). An additional metal such as titanium may also be present to suppress elution of antimony (p. 5, [0053]). Titanium may be present in amounts of 0.25-10 ppm (p. 5, [0059]).
A composition containing 0.1-20 ppm phosphorus atoms and 0.25-10 ppm titanium atoms broadly suggests a P:Ti ratio of 80:1 to 1:100. Fujimori’s examples provide guidance toward a narrower portion of that range. Examples including both phosphorus and titanium illustrate the following ratios (data taken from Tables 1, 3, 4, and 5):
Example
P (ppm)
Ti (ppm)
P:Ti ratio
1-1
9
2
4.5
1-2
12
2
6
1-3
6
2
3
1-4
3
2
1.5
1-7
9
2
4.5
1-8
9
2
4.5
1-9
9
6
1.5
1-10
9
3
3
1-11
9
1
9
1-12
9
0.5
18
3-1
12
1.8
6.67
3-2
12
1.8
6.67
3-3
12
1.8
6.67
4-1
13
1
13
4-2
13
1
13
4-3
13
1
13
5-1
9
2
4.5
5-2
12
2
6
5-3
6
2
3
5-4
3
2
1.5
5-5
9
2
4.5
5-6
9
2
4.5
5-7
9
6
1.5
5-8
6
4.5
1.33
5-9
3
4.5
0.67
5-10
18
1.5
12
5-11
9
2
4.5
5-12
9
2
4.5
Average
5.82
This illustrates a P:Ti ratio ranging from 0.67-18, with an average ratio of 5.82. The range overlaps the claimed range, and the average falls within the claimed range.
It would have been obvious to one of ordinary skill in the art at the time of filing to employ the P:Ti ratio illustrated in Fujimori’s examples as a guideline when practicing embodiments described in the reference’s broader disclosure, as this range is shown to be suitable for preferred or exemplary embodiments of the same invention.
The monomer content and P:Ti ratio discussed above overlap the claimed ranges. A prima facie case of obviousness exists where the claimed ranges overlap or lie inside ranges disclosed by the prior art. See MPEP 2144.05(I).
Fujimori does not expressly teach the Tg of the polyester described above or the strain induced crystalline melting point of a film comprising the polyester. Fujimori is also silent as to the film’s ability to change dimension in response to some stimuli (i.e. “shrink” film) and the claimed clumping and recycling characteristics.
Nevertheless, Fujimori as applied above reads on a film formed from a polyester compositionally identical to that of the instant claims and possessing an identical inherent viscosity. Products of identical chemical compositions cannot have mutually exclusive properties. Where the claimed and prior art products are identical or substantially identical in structure or composition, a prima facie case of obviousness has been established. See MPEP 2112.01.
Fujimori’s film as applied above will therefore necessarily posses the claimed TG, strain induced melting point, clumping and recycling characteristics, and will be capable of functioning as a shrink film as claimed.
Response to Arguments
The Applicant argues that the inventive catalyst system yields polyesters with lower b* or yellowness values compared with polyesters made from a titanium only catalyst system; that such polyesters can be used to make films with excellent shrink film properties; and that such polyesters exhibit less than 1% clumping and thus need not be removed during recycling. According to the Applicant, one of ordinary skill in the art would not look to Fujimori because the reference fails to disclose or suggest these features.
Claim 17 does not recite b* or yellowness values, and does not quantify any value or degree associated with shrink film properties. Although the claims are interpreted in light of the specification, limitations from the specification are not read into the claims. See In re Van Geuns, 988 F.2d 1181, 26 USPQ2d 1057 (Fed. Cir. 1993).
With respect to clumping behavior during recycling, the Applicant’s arguments attribute this feature to the catalyst system used during polymerization. As discussed in the rejection above, Fujimori’s disclosure leads one of ordinary skill in the art to an identical catalyst system that is used to polymerize identical monomers. As discussed above, although not expressly recognized by the prior art, Fujimori as applied above will necessarily possess the claimed physical properties.
Additionally, the fact that the inventors has recognized another advantage which would flow naturally from following the suggestion of the prior art cannot be the basis for patentability when the differences would otherwise be obvious. See Ex parte Obiaya, 227 USPQ 58, 60 (Bd. Pat. App. & Inter. 1985).
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to ROBERT S JONES JR whose telephone number is (571)270-7733. The examiner can normally be reached 9 AM - 5 PM Pacific.
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/ROBERT S JONES JR/ Supervisory Patent Examiner, Art Unit 1762