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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 10/30/2025 has been entered.
Priority
Receipt is acknowledged of certified copies of papers required by 37 CFR 1.55.
Status of Claims
The examiner acknowledges the amendments made to claims 1, 2, and 5. Claims 1-8 are pending.
Double Patenting
The applicant has amended the range of claim 1 for the intrinsic viscosity to have a lower bound of 0.71 dl/g. As the reference application specifies that this value must be less than 0.70, the double patenting rejection for claims 1, 2, and 5-8 is withdrawn.
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.
Claims 1-8 are rejected under 35 U.S.C. 103 as being unpatentable over Haruta (US 20180208375) in view of Kageyama (US 20070106055) as evidenced by Kita (JP 5299655 ).
Regarding Claims 1-3 and 5,
Haruta teaches a copolymerized polyester wherein the primary or only diacid component is derived from terephthalic acid (Paragraph 51) in which ethylene glycol is the major diol component (Paragraph 51). Haruta also teaches the use of diethylene glycol in amounts of more than 6% and preferably less than 26% by mole relative to the total diol content (Paragraph 54), which contains the range of the instant claims. Haruta states that 6% by mole is required to reduce shrinkage stress while amounts greater than 30% induces defects in the film, affording the ordinarily skilled artisan motivation to remain within these bounds. It would therefore have been obvious prior to the effective filing date of the instant application to have selected the overlapping portion of the ranges because the selection of overlapping portions of ranges has been held to be a prima facie case of obviousness. See MPEP 2144.05.I.
Haruta also notes that the polyester preferably contains 20 to 30% by mole of an amorphous component (Paragraph 55) which includes neopentyl glycol (Paragraph 53) and specifically notes the use of neopentyl glycol when the main components are terephthalic acid and ethylene glycol (Paragraph 51). The preferred range for the usage of the amorphous component is contained within the range of the instant claims (18 to 32%). Haruta also teaches examples in which the intrinsic viscosity is 0.72 dl/g (Paragraph 184), meeting the requirements of the instant claims.
While Haruta teaches the material as required by the instant claims, Haruta does not teach a polymerization catalyst that would result in the presence of the phosphorus containing compounds described. Kageyama teaches a polyester polymerization catalyst that uses an aluminum compound and a phosphorus compound (Paragraph 38) in which the phosphorus compound can be Irganox 1222 (Paragraph 120) which contains the structure of residue A and of claim 3. Kageyama does not teach the ratio of residue A to the total of residues B and C, however the residues B and C are thermal degradants of Irganox 1222 as noted by Kita (Paragraph 19) which was included in the prior office action. Because residues B and C are a result of thermal degradation, it would therefore be important to maintain temperatures below where thermal degradation begins. The applicant’s specification indicates a preference for temperatures below 280 °C for this purpose. As Kageyama teaches temperatures at or below 272 °C in the final stage (Paragraph 286), it would logically follow that the rate of thermal degradation would be limited and therefore, the ratio of the instant claims would be met. Kageyama notes that using phosphorus compounds as part of a catalyst system improves the thermal stability of the polyester polymer (Paragraph 76), affording the ordinarily skilled artisan the motivation to substitute the polymerization reaction of Kageyama for that of Haruta for the purpose of obtaining a polyester film with better thermal stability. Additionally, as Kageyama utilizes terephthalic acid (Paragraph 199), glycols such as ethylene glycol, diethylene glycol, and neopentyl glycol (Paragraph 201) and generates polyesters that may be used for thermally shrinkable films (Paragraph 196), it would have been obvious to have used the polymerization process of Kageyama to manufacture the polymer of Haruta with a reasonable expectation of success.
With regard to the amount of aluminum in the resin, Kageyama teaches that it is preferred that this value be between 10 and 60 ppm (Paragraph 189), which overlaps with the range of the instant claim. Kageyama notes that values below 3 ppm have lowered catalytic activity, while amounts greater than 200 ppm generate insoluble particles (Paragraph 189). It would have been obvious prior to the effective filing date of the instant application to have selected the overlapping portion of the ranges because selection of overlapping portions of ranges has been held to be a prima facie case of obviousness. See MPEP 2144.05.I.
Finally, in regard to the ratio of phosphorus to aluminum in the polyester resin, Kageyama teaches in Examples D-7 and D-8 (Table 4) polyesters in which there is 21 ppm of aluminum and 60 ppm phosphorus, which when converted into a molar ratio results in a value of 2.5, meeting the requirement of the instant claim. Further, Kageyama teaches that the acceptable range for this value is between 1 and 5 (Paragraph 135), which encompasses the range of the instant claims and falls at the center of this disclosed range. It would additionally have been obvious prior to the effective filing date of the instant application to have selected the overlapping portion of the ranges because the selection of overlapping portions of ranges has been held to be a prima facie case of obviousness. See MPEP 2144.05.I.
Regarding Claim 4,
Kageyama teaches that the reaction temperature in the final step is generally 230-270 °C (Paragraph 162), overlapping with the range of the instant claim. It would have been obvious prior to the effective filing date of the instant application to have selected the overlapping portion of the ranges because selection of overlapping portions of ranges has been held to be a prima facie case of obviousness. See MPEP 2144.05.I.
Regarding Claim 6,
Haruta teaches the use of antistatic agents (Paragraph 57) as well as wax (Paragraph 57) and a variety of lubricant additives such as silica, titanium dioxide, silica and organic resins (Paragraph 58) that serve the same function as antiblocking agents.
Regarding Claims 7 and 8,
Haruta teaches that the composition is useful as a heat-shrinkable film that may be used to cover at least part of the outer periphery of an object to be packaged (Paragraph 152).
Response to Arguments
Applicant's arguments filed 10/30/2025 have been fully considered but they are not persuasive for the following reasons.
On page 7, the applicant states that Haruta in view of Kageyama does not teach phosphorus:aluminum residual molar ratios in the range of 2.2-2.5. As noted above in the rejection, Kageyama does indeed teach this ratio in more than one example. Further, Kageyama teaches that the desired molar ratio is between 1 and 5 (Paragraph 135). This disclosed range would put the applicant’s stated range in the middle of the range disclosed by Kageyama. While the applicant states that it would not have been obvious to have selected the narrower range, the examiner disagrees because the applicant’s range falls at the center of the range disclosed by Kageyama. The ordinarily skilled artisan would have been motivated to have started in the center of this range to afford the widest processing window. On page 8, the applicant states that temperature range taught by Kageyama was broad and that the ordinarily skilled artisan would have no motivation to have selected temperatures to prevent degradation of the phosphorus-containing compound. However, the examiner notes that in examples D-7 and D-8 of Table 4, and indeed, all the examples in Table 4 are conducted with the final reaction temperature of 272 °C, which would meet the requirements as laid out in the instant application. The presence of multiple examples would serve as ample motivation to the ordinarily skilled artisan to follow a similar temperature profile.
Finally, on pages 8 and 9 the applicant states that there would be no motivation to combine Haruta with Kageyama due to the differences in intrinsic viscosity. However, the examiner notes that Kageyama is directed towards a polyester polymerization catalyst system that results in improved levels of insoluble particles (Paragraph 1) and is merely using polyethylene terephthalate as the exemplary example and indeed points to a variety of dicarboxylic acids (Paragraph 198) and diols (Paragraph 201) that may be used, which based upon the varied nature of their composition it would logically follow that polymers with differing compositions would have different intrinsic viscosities. Thus while the intrinsic viscosity of the PET polymer used as the exemplary example in Kageyama does not meet the applicant’s requirement, this does not have any bearing on polymers that include a different mix of monomers. As such, Kageyama is teaching a general method for solving the problem of haze and insoluble particles in the resulting polymer films rather than the formation of any specific polymer. The ordinarily skilled artisan would recognize this fact and be motivated to apply these lessons to the polymer composition as taught by Haruta to improve the levels of insoluble particles and the attendant deleterious effects on the polymer.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to ADAM J BERRO whose telephone number is (703)756-1283. The examiner can normally be reached M-F 8:30-5.
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/A.J.B./Examiner, Art Unit 1765
/JOHN M COONEY/Primary Examiner, Art Unit 1765