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 .
DETAILED ACTION
Response to Amendment
1. This action is in response to the amendment filed May 22, 2025.
Claims 1, 4, 6-10 were amended, rendering claims 1-12 pending, with claims 10-12 withdrawn as a non-elected invention.
Claim Rejections – 35 USC § 103(a)
2. The following is a quotation of 35 U.S.C. 103(a) which forms the basis for all obviousness rejections set forth in this Office action:
(a) A patent may not be obtained though the invention is not identically disclosed or described as set forth in section 102 of this title, if the differences between the subject matter sought to be patented and the prior art are such that the subject matter as a whole would have been obvious at the time the invention was made to a person having ordinary skill in the art to which said subject matter pertains. Patentability shall not be negatived by the manner in which the invention was made.
3. Claims 1-9 are rejected under 35 U.S.C. 103(a) as being unpatentable over
Yang (CN 106279946 A).
Yang discloses an ETFE film having a thickness of less than 0.20mm (200um) (paragraph 2). 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 re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990), as in claims 1-3. In claim 1, the phrase, “processed from an ETFE film…and preferably <1%” introduces a process limitation to the product claim.
For purposes of examination, product-by-process claims are not limited to the manipulation of the recited steps, only the structure implied by the steps. See MPEP 2113. In the present case, the recited steps imply a structure having a ETFE film. The reference suggests such a product because Yang discloses an ETFE film having a thickness of less than 0.20mm (200um) (paragraph 2).
Concerning claim 4, Yang discloses an ETFE film having a thickness of less than 0.20mm (200um) (paragraph 2). 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 re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990), as in claims 1-3. In claim 4, the phrase, “processed from an ETFE film…mechanically stretched by 165-400%” introduces a process limitation to the product claim. For purposes of examination, product-by-process claims are not limited to the manipulation of the recited steps, only the structure implied by the steps. See MPEP 2113. In the present case, the recited steps imply a structure having a ETFE film. The reference suggests such a product because Yang discloses an ETFE film having a thickness of less than 0.20mm (200um) (paragraph 2).
Concerning claim 5, the phrase, “stretching temperature…preferably from 130°C to 160°C” %” introduces a process limitation to the product claim. For purposes of examination, product-by-process claims are not limited to the manipulation of the recited steps, only the structure implied by the steps. See MPEP 2113. In the present case, the recited steps imply a structure having a ETFE film. The reference suggests such a product because Yang discloses an ETFE film having a thickness of less than 0.20mm (200um) (paragraph 2).
Concerning claim 6, the phrase, “ETFE is pre-heated” introduces a process limitation to the product claim. For purposes of examination, product-by-process claims are not limited to the manipulation of the recited steps, only the structure implied by the steps. See MPEP 2113. In the present case, the recited steps imply a structure having a ETFE film. The reference suggests such a product because Yang discloses an ETFE film having a thickness of less than 0.20mm (200um) (paragraph 2).
Concerning claim 7, the phrase, “stretched film is annealed at a temperature between 120°C and 200°C” introduces a process limitation to the product claim. For purposes of examination, product-by-process claims are not limited to the manipulation of the recited steps, only the structure implied by the steps. See MPEP 2113. In the present case, the recited steps imply a structure having a ETFE film. The reference suggests such a product because Yang discloses an ETFE film having a thickness of less than 0.20mm (200um) (paragraph 2).
Concerning claim 8, the phrase, “stretching is done…imparting biaxial orientation” introduces a process limitation to the product claim. For purposes of examination, product-by-process claims are not limited to the manipulation of the recited steps, only the structure implied by the steps. See MPEP 2113. In the present case, the recited steps imply a structure having a ETFE film. The reference suggests such a product because Yang discloses an ETFE film having a thickness of less than 0.20mm (200um) (paragraph 2).
Concerning claim 9, the phrase, “stretching done…imparting uniaxial orientation” introduces a process limitation to the product claim. For purposes of examination, product-by-process claims are not limited to the manipulation of the recited steps, only the structure implied by the steps. See MPEP 2113. In the present case, the recited steps imply a structure having a ETFE film. The reference suggests such a product because Yang discloses an ETFE film having a thickness of less than 0.20mm (200um) (paragraph 2).
Claim Rejections – 35 USC § 103(a)
4. Claims 1-9 are rejected under 35 U.S.C. 103(a) as being unpatentable over
Teijin (JPH 10-212362 A).
Teijin discloses an ETFE film (a film containing a fluororesin such as a copolymer comprising ethylene units and tetrafluoroethylene (ETFE film); abstract; paragraph [0006)) that has a final thickness of at least 150 µm or more (the thickness of the product film is set to 20-200 µm; paragraph [0011]) that has been processed from an ETFE film having an initial thickness of 400 m or more (the stretching ratio is 1.1 to 10 times in the case of uniaxial stretching in the horizontal direction, the stretching factor can be determined by using the equation stretch factor is equal to initial thickness divided by thickness after stretching using the highest final thickness; 200 um and the highest magnification, the initial thickness would be 2,000 um or less (initial thickness of 400 um or more); paragraph [0012}) and which has been stretched to create an area stretch factor “Ax” of at least 1.65 (the stretching ratio (area stretch factor; Ax) is 1.1 to 10 times (at least 1.65) in the case of uniaxial stretching in the horizontal direction; paragraph [0012]) and a haze value of Iess than 2% and preferably < 1 % (as shown in table 1, where the circles represent haze less than or equal to 2%; page 7, top half: table 1), as in claims 1-3. 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 re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990).
In claim 1, the phrase, “processed from an ETFE film…and preferably <1%” introduces a process limitation to the product claim. For purposes of examination, product-by-process claims are not limited to the manipulation of the recited steps, only the structure implied by the steps. See MPEP 2113. In the present case, the recited steps imply a structure having a ETFE film. The reference suggests such a product because Teijin discloses an ETFE film (a film containing a fluororesin such as a copolymer comprising ethylene units and tetrafluoroethylene (ETFE film); abstract; paragraph [0006)) that has a final thickness of at least 150 µm or more (the thickness of the product film is set to 20-200 µm; paragraph [0011]).
Concerning claim 4, Teijin discloses an ETFE film (a film containing a fluororesin such as a copolymer comprising ethylene units and tetrafluoroethylene (ETFE film); abstract; paragraph [0006)) that has a final thickness of at least 150 µm or more (the thickness of the product film is set to 20-200 µm; paragraph [0011]).
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 re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990), as in claims 1-3. In claim 4, the phrase, “processed from an ETFE film…mechanically stretched by 165-400%” introduces a process limitation to the product claim. For purposes of examination, product-by-process claims are not limited to the manipulation of the recited steps, only the structure implied by the steps. See MPEP 2113. In the present case, the recited steps imply a structure having a ETFE film. The reference suggests such a product because Teijin discloses an ETFE film (a film containing a fluororesin such as a copolymer comprising ethylene units and tetrafluoroethylene (ETFE film); abstract; paragraph [0006)) that has a final thickness of at least 150 µm or more (the thickness of the product film is set to 20-200 µm; paragraph [0011]).
Concerning claim 5, the phrase, “stretching temperature…preferably from 130°C to 160°C” %” introduces a process limitation to the product claim. For purposes of examination, product-by-process claims are not limited to the manipulation of the recited steps, only the structure implied by the steps. See MPEP 2113. In the present case, the recited steps imply a structure having a ETFE film. The reference suggests such a product because Teijin discloses an ETFE film (a film containing a fluororesin such as a copolymer comprising ethylene units and tetrafluoroethylene (ETFE film); abstract; paragraph [0006)) that has a final thickness of at least 150 µm or more (the thickness of the product film is set to 20-200 µm; paragraph [0011]).
Concerning claim 6, the phrase, “ETFE is pre-heated” introduces a process limitation to the product claim. For purposes of examination, product-by-process claims are not limited to the manipulation of the recited steps, only the structure implied by the steps. See MPEP 2113. In the present case, the recited steps imply a structure having a ETFE film. The reference suggests such a product because Teijin discloses an ETFE film (a film containing a fluororesin such as a copolymer comprising ethylene units and tetrafluoroethylene (ETFE film); abstract; paragraph [0006)) that has a final thickness of at least 150 µm or more (the thickness of the product film is set to 20-200 µm; paragraph [0011]).
Concerning claim 7, the phrase, “stretched film is annealed at a temperature between 120°C and 200°C” introduces a process limitation to the product claim. For purposes of examination, product-by-process claims are not limited to the manipulation of the recited steps, only the structure implied by the steps. See MPEP 2113. In the present case, the recited steps imply a structure having a ETFE film. The reference suggests such a product because Teijin discloses an ETFE film (a film containing a fluororesin such as a copolymer comprising ethylene units and tetrafluoroethylene (ETFE film); abstract; paragraph [0006)) that has a final thickness of at least 150 µm or more (the thickness of the product film is set to 20-200 µm; paragraph [0011]).
Concerning claim 8, the phrase, “stretching is done…imparting biaxial orientation” introduces a process limitation to the product claim. For purposes of examination, product-by-process claims are not limited to the manipulation of the recited steps, only the structure implied by the steps. See MPEP 2113. In the present case, the recited steps imply a structure having a ETFE film. The reference suggests such a product because Teijin discloses an ETFE film (a film containing a fluororesin such as a copolymer comprising ethylene units and tetrafluoroethylene (ETFE film); abstract; paragraph [0006)) that has a final thickness of at least 150 µm or more (the thickness of the product film is set to 20-200 µm; paragraph [0011]).
Concerning claim 9, the phrase, “stretching done…imparting uniaxial orientation” introduces a process limitation to the product claim. For purposes of examination, product-by-process claims are not limited to the manipulation of the recited steps, only the structure implied by the steps. See MPEP 2113. In the present case, the recited steps imply a structure having a ETFE film. The reference suggests such a product because Teijin discloses an ETFE film (a film containing a fluororesin such as a copolymer comprising ethylene units and tetrafluoroethylene (ETFE film); abstract; paragraph [0006)) that has a final thickness of at least 150 µm or more (the thickness of the product film is set to 20-200 µm; paragraph [0011]).
Response to Arguments
5. Applicant’s arguments of the rejection made under 35 U.S.C. 103(a) as being unpatentable over Yang (CN 106279946 A) has been considered; however, is unpersuasive. Applicant argues although Applicant may use what looks like known method steps to produce the finished film, the processed film has a unique structure. The near IR (NIR) signature of the film is indicative of a reorganization of the molecular structure, and in particular is indicative of hydrogen-bonding interactions which may be modified by the stretching process. In response to Applicant’s argument, the phrase, “processed from an ETFE film…and preferably <1%” introduces a process limitation to the product claim. For purposes of examination, product-by-process claims are not limited to the manipulation of the recited steps, only the structure implied by the steps. See MPEP 2113. In the present case, the recited steps imply a structure having a ETFE film. The reference suggests such a product because Yang discloses an ETFE film having a thickness of less than 0.20mm (200um) (paragraph 2).
Applicant’s arguments of the rejection made under 35 U.S.C. 103(a) as being unpatentable over Teijin (JPH 10-212362 A). Applicant argues, regarding Teijin,
the thickness of the initial material, pre-stretching, could range from of 220 µm to 2000 um which demonstrates that Teijin was unaware of the advantages of the initial thickness being at least 400 µm as demonstrated by Applicant for reliably and reproducibly producing ETFE films having superior haze values in the range taught by Applicant. This means that Teijin was not in possession of Applicant's invention as will be described more completely hereinbelow. In response to Applicant’s argument,
Teijin discloses an ETFE film (a film containing a fluororesin such as a copolymer comprising ethylene units and tetrafluoroethylene (ETFE film); abstract; paragraph [0006)) that has a final thickness of at least 150 µm or more (the thickness of the product film is set to 20-200 µm; paragraph [0011]) that has been processed from an ETFE film having an initial thickness of 400 m or more (the stretching ratio is 1.1 to 10 times in the case of uniaxial stretching in the horizontal direction, the stretching factor can be determined by using the equation stretch factor is equal to initial thickness divided by thickness after stretching using the highest final thickness; 200 um and the highest magnification, the initial thickness would be 2,000 um or less (initial thickness of 400 um or more); paragraph [0012}) and which has been stretched to create an area stretch factor “Ax” of at least 1.65 (the stretching ratio (area stretch factor; Ax) is 1.1 to 10 times (at least 1.65) in the case of uniaxial stretching in the horizontal direction; paragraph [0012]) and a haze value of Iess than 2% and preferably < 1 % (as shown in table 1, where the circles represent haze less than or equal to 2%; page 7, top half: table 1). Regarding claim 1, the phrase, “processed from an ETFE film…and preferably <1%” introduces a process limitation to the product claim. For purposes of examination, product-by-process claims are not limited to the manipulation of the recited steps, only the structure implied by the steps. See MPEP 2113. In the present case, the recited steps imply a structure having a ETFE film. The reference suggests such a product because Teijin discloses an ETFE film (a film containing a fluororesin such as a copolymer comprising ethylene units and tetrafluoroethylene (ETFE film); abstract; paragraph [0006)) that has a final thickness of at least 150 µm or more (the thickness of the product film is set to 20-200 µm; paragraph [0011]).
Conclusion
6. 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.
7. Any inquiry concerning this communication or earlier communications from the examiner should be directed to Lawrence Ferguson whose telephone number is 571-272-1522. The examiner can normally be reached on Monday through Friday 9:00 AM – 5:30PM.
If attempts to reach the examiner by telephone are unsuccessful, the examiner's supervisor, Maria Veronica Ewald, can be reached on 571-272-8519. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/LAWRENCE D FERGUSON/Examiner, Art Unit 1781
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