DETAILED ACTION
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 07/01/2026 has been entered.
Applicants' arguments have been fully considered. Rejections and/or objections not reiterated from previous office actions are hereby withdrawn due to Applicant's amendments and/or arguments. The following rejections and/or objections are either reiterated or newly applied.
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.
Claims 1-6, 8, and 10-11 are rejected under 35 U.S.C. 103 as being unpatentable over US 2011/0081512 A1 to Noda in view of US20180186927A1 to Shirahama et al. in view of US 20070224402 A1 to Yoshida et al. and further in view of US 2025/0346709 to Uchiyama.
Re claims 1-6 and 8, Noda teaches a packaging [1] of Example 1 a polyester resin, polycarboxylic acid and polyhydric alcohol as claimed save the content of [40] diethylene glycol of [50] being 60 mol% or more.
Shirahama teaches a similar polyester (see Abstract) having overlapping ranges of copolymerization of [39-59] 10% by mol or less (overlapping appicant’s 5 mol% or more 40 mol% or less).
In the case where the claimed ranges “overlap or lie inside ranges disclosed by the prior art” a prima facie case of obviousness exists. In reWertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In reWoodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990). See MPEP 2144.05.
It would have been obvious to one of ordinary skill in the art at the time of the effective filing date of the invention to have added the diethylene glycol range selected from the overlapping portion of the ranges of mol% and thickness taught by the reference because overlapping ranges have been held to establish prima facie obviousness. MPEP 2144.05.
Further, the acid value is not taught.
Analogous Yoshida teaches [0030, 0034] Upon production of the polyester resin, by reacting the polycarboxylic acid component with the polyhydric alcohol component under such a condition that COOH groups are present in an excess amount relative to OH groups, it is possible to obtain a polyester having the above-mentioned molecular weight, glass transition temperature and acid value. For example, a polyester having a weight-average molecular weight of 8000, an acid value of 16 mgKOH/g is produced equivalent to 285.18 eq/t (
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16 mg/g=16,000,000 mg/t=16,000 g KOH/t resin ; given
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KOH molar mass (approximately 56.11 g/mol, eq/t= 16,000g/t/56.11 g/eq; 285.18 eq/t) and overlaps applicant’s 50 to 320 et/t benefiting in printing [33-34]. The same rationale applies above to substitute the resin of Yoshida in Noda. See MPEP 2144.05.
That the polyester is an aqueous dispersion, laminate, adhesive, and packaging food material is directed to intended use. The glass transition is a property of the exact same material and construction while not explicitly referenced. Further re claim 2, see [17]. Re claim 3, see [42]. Re claim 4, see [83-85] adhesive/film or foil. Re claim 5, the layer has a thickness of 9 microns [78] (overlapping applicant’s range of 1 to 10 microns).
Re claim 1, Noda teaches in [40] many other options over than 1,4-butanediol for using other alcohol components.
Therefore, it would have been obvious to one of ordinary skill in the art at the time of the effective filing date of the invention to exclude 1,4-butanediol and still achieve an advantageous effect, for Noda teaches, there is no impairment.
Further re claim 8, While there is no disclosure in Noda that the material is a lid member as presently claimed, applicants attention is drawn to MPEP 2111.02 which states that “if the body of a claim fully and intrinsically sets forth all the limitations of the claimed invention, and the preamble merely states, for example, the purpose or intended use of the invention, rather than any distinct definition of any of the claimed invention’s limitations, then the preamble is not considered a limitation and is of no significance to claim construction”. Further, MPEP 2111.02 states that statements in the preamble reciting the purpose or intended use of the claimed invention must be evaluated to determine whether the purpose or intended use results in a structural difference between the claimed invention and the prior art. Only if such structural difference exists, does the recitation serve to limit the claim. If the prior art structure is capable of performing the intended use, then it meets the claim.
It is the examiner’s position that the preamble does not state any distinct definition of any of the claimed invention’s limitations and further that the purpose or intended use, i.e. lid member, recited in the present claims does not result in a structural difference between the presently claimed invention and the prior art composition and further that the prior art structure which is a composition identical to that set forth in the present claims is capable of performing the recited purpose or intended use, i.e. lid member, as it is already a packaging material, mere placement over a member such an open cup would serve as a “lid” member as it covers the opening.
Re claim 10, Noda doesn’t teach the composition claimed.
Tanaka teaches the claimed composition [61-62] wherein improvement in adhesiveness is the benefit.
Thus, it would have been obvious to one of ordinary skill in the art at the time of the effective filing date of the Noda reference to include the composition of Tanaka for adhesive improvement.
Further re claim 1, Noda doesn’t teach the composition as claimed.
Uchiyama teaches the overlapping range % of touching 50 mol% per 100% polyhydric alcohol as claimed. See Abstract.
In the case where the claimed ranges “overlap or lie inside ranges disclosed by the prior art” a prima facie case of obviousness exists. In reWertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In reWoodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990). See MPEP 2144.05.
It would have been obvious to one of ordinary skill in the art at the time of the effective filing date of the invention to have added the diethylene glycol range selected from the overlapping portion of the ranges of mol% and thickness taught by the reference because overlapping ranges have been held to establish prima facie obviousness. MPEP 2144.05.
Re claims 1 and 11, the combination is the same thus the properties are inherent.
Claim 7 is rejected under 35 U.S.C. 103 as being unpatentable over US 2011/0081512 A1 to Noda in view of US20180186927A1 to Shirahama et al. in view of US 20070224402 A1 to Yoshida et al. in view of US 2025/0346709 to Uchiyama and further in view of US 20060040076 to Franzyshen et al.
Noda is relied upon above.
Re claim 7, Noda doesn’t teach a blister pack, while in the preamble and there is no structure in the body of the claim, it doesn’t constitute a limitation save the structure. The examiner interprets a “blister pack” as providing a structural difference to some degree.
Thus, Franzyshen teaches [3-4] polyester blister packs for individual dosage. See also Figs. 1-3 and associated text.
It would have been obvious to one having ordinary skill in the art to have modified the polyester package of Noda to form a blister pack of Franzyshen for molding into an individual dosage package.
Claim 9 is rejected under 35 U.S.C. 103 as being unpatentable over US 2011/0081512 A1 to Noda in view of US20180186927A1 to Shirahama et al. in view of US 20070224402 A1 to Yoshida et al. in view of US 2025/0346709 to Uchiyama and further in view of JP2017171338 A (Kazuyoshi et al.).
Noda is relied upon above.
Re claim 9, see [26, 83-84], Noda.
Kazuyoshi teaches a lid of polyester where a lid adheres to a cup opening (pg. 2, under description of embodiments heading). See also Abstract, Fig. 1 and patented claim 1.
It would have been obvious to have modified the food packaging material polyester of Noda to form a lid as taught in JP in order to add or shape the material into a lid to the packaging of Noda for further functionality.
Response to Applicant’s Arguments
Applicant’s arguments are convincing for applicant has cancelled claim 12 and moved it into claim 1. See rejection above. Applicant’s arguments are moot. Nothing in Noda prevents a different polyester composition with the required mol % composition and applicant’s have not submitted evidence to show the combination cannot work. See the new reference to this point.
Regarding supplementary rejections, because Applicant did not point out disagreements with the examiner’s contentions, particularly, Applicant did not discuss the references applied against the claims, explaining how the claims avoid the references or distinguish from each of them, the Examiner maintains the rejections for reasons set forth prior.
Conclusion
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TAMRA L. DICUS
Primary Examiner
Art Unit 1787
/TAMRA L. DICUS/Primary Examiner, Art Unit 1787
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