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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 5/15/2026 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 to claims 1, 3, and 6. Claims 1-12 are pending.
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 1-12 are rejected under 35 U.S.C. 103 as being unpatentable over Inoue (US 20180229422, US patent document reference #1 from IDS dated 7/25/2023).
Regarding Claims 1 and 2,
Inoue teaches a heat-shrinkable polyester film which is mainly comprised of ethylene terephthalate units which may contain up to 5% by mole of an amorphous monomer (Paragraphs 11 and 27) and from 7 to 30% by mole diethylene glycol (Paragraph 14) with the molar percentages listed as being derived from 100% by mole of the polyester. The range for amorphous monomer incorporation is identical to those of the instant claims and the range of diethylene glycol incorporation is encompassed within the range of the instant claims. Additionally, Inoue teaches that the amorphous monomers include neopentyl glycol, 1,4-cyclohexanedimethanol, isophthalic acid as well as other options listed in the instant claim (Paragraph 30). Inoue also teaches in Example 1 (Paragraph 79) that the film has a glass transition temperature of 72 °C, meeting the requirement of the instant claim and additionally teaches that the intrinsic viscosity is preferably between 0.45 and 0.8 (Paragraph 28), which overlaps with the range of the instant claims. Inoue states that the intrinsic viscosity should be above 0.45 to reduce crystallization and that it should be below 0.8 for processing reasons (Paragraph 28), affording the ordinarily skilled artisan with motivation to work within the stated range. It would have been obvious prior to the effective filing date of the instant application to have selected the overlapping portion of the range because selection of overlapping portions of ranges has been held to be a prima facie case of obviousness. See MPEP 2144.05.I.
With regard to the melt viscosity, Inoue is silent. However, polyester C (Table 1) is comprised of 40% ethylene glycol, 60% diethylene glycol, and terephthalate, which is identical in composition to raw material H of the instant application, which is listed in the specification as having a melt viscosity of 110 Pa*s. As the materials are identical, it logically follows that the material properties would also be identical. See MPEP 2112.01.II. Therefore, the material of Inoue meets the requirements of the instant claims.
Regarding the main-shrinking direction, as the claim is directed to a heat-shrinkable polyester film, the direction in which the shrinkage occurs would not functionally change the composition of the material nor would the direction be dictated by the composition and therefore is not further limiting. Additionally, as the composition as taught by Inoue is heat-shrinkable with high shrinkage in the main direction and low shrinkage in the orthogonal direction (Paragraph 1), the composition taught by Inoue would be capable of having the width direction as the main shrinking direction.
Finally, regarding the requirement of defects of 1 mm or larger being present in an amount of 1.1 per 100 m2 or less, Inoue is silent. However, the composition taught by Inoue as described above is comprised of the same monomers in substantially similar amounts and are processed under broadly similar conditions to those of the instant application, as Inoue teaches that the extrusion of the composition prior to stretching should occur at temperatures between 200 and 300 °C (Paragraph 49), which contains the range stated by the applicant’s specification. As such, it would logically follow that the composition would possess the same properties as those of the instant application. "Products of identical chemical composition can not have mutually exclusive properties." In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990). See MPEP 2112.01.II.
Regarding Claims 3 and 6,
Inoue teaches that the heat-shrinkable composition has a heat shrinkage rate in the main direction of 15 to 50% when exposed to hot water at 90 °C for 10 seconds (Paragraph 11) but is preferably above 30%, though Inoue also notes that there is no particular problem if the shrinkage rate is above 50% (Paragraph 40). Inoue also teaches that a shrinkage rate below 15% causes wrinkling in label applications (Paragraph 40), providing the ordinarily skilled artisan motivation to stay above this limit. While the water temperature is below that used in the instant claims, it would logically follow that increasing the temperature will result in a corresponding increase in the shrinkage rate. The above range overlaps with the range of the instant claims and would have been obvious prior to the effective filing date of the instant application because selection of overlapping portions of ranges has been held to be a prima facie case of obviousness. See MPEP 2144.05.I.
Inoue also teaches that the shrinkage in the orthogonal direction is preferably between 0 and 12% in 90 °C water for 10 seconds (Paragraph 40), stating that wrinkling issues occur when below the range and that above this range causes a decrease in shrinking time (Paragraph 40). As with the main direction, while this temperature is below that of the instant claims, the rate would be similar at the slightly higher 98 °C temperature. Inoue teaches that the intrinsic viscosity is preferably between 0.45 and 0.8 (Paragraph 28), which overlaps with the range of the instant claims. Inoue states that the intrinsic viscosity should be above 0.45 to reduce crystallization and that it should be below 0.8 for processing reasons (Paragraph 28), affording the ordinarily skilled artisan with motivation to work within the stated range. It would have been obvious prior to the effective filing date of the instant application to have selected the overlapping portion of the range because selection of overlapping portions of ranges has been held to be a prima facie case of obviousness. See MPEP 2144.05.I.
Regarding the shrinkage ratio at 70 °C, Inoue is silent. Because the composition of Inoue and the composition of the instant application have extensive overlap as well as extensive overlap in processing conditions, it would necessarily follow that the composition of Inoue would have similar properties to those of the instant application. "Products of identical chemical composition can not have mutually exclusive properties." In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990). See MPEP 2112.01.II.
Regarding Claims 4-5 and 7-8,
Inoue teaches that the composition may be used as a label to cover at least part of the outer periphery of an object (Paragraph 19).
Regarding Claims 9-12,
Inoue teaches that the composition is useful as a heat-shrinkable label that covers at least part of the outer periphery of an object, including bottles and plastic containers, and is obtained by covering the object followed by heat treatment (Paragraph 61), meeting the requirements of the instant claims.
Double Patenting
The applicant has amended claim 1 to include a requirement of the number of defects per unit area and the size of these defects which is not present in the reference patent. As a result, the rejection for double patenting has been withdrawn.
Response to Arguments
Applicant's arguments filed 5/15/2026 have been fully considered but they are not persuasive for the following reasons.
On pages 6 and 7, the applicant argues that the content of diethylene glycol between 5 and 40% by mole when combined with the requirements of glass transition temperature and intrinsic viscosity and extruded at temperatures between 235 and 265 °C result in the surprising result of a film free of defects, contrary to the prior art teachings that the inclusion of diethylene glycol often results in such defects. The applicant further points to a comparison between example 1 and the comparative examples 1 and 2. The examiner points to the fact that the limitation on the extrusion temperature does not appear as a limitation in the claims and is therefore not taken into account in the rejection. However, the examiner further points out that the cited examples from the applicant’s specification, particularly the comparison between example 1 and comparative example 2 do not clearly demonstrate that extrusion temperature to drive the lack of defects. Comparative example 2, while meeting the composition requirements related to diethylene glycol content, does not meet the intrinsic viscosity requirement, as this example possess an intrinsic viscosity according to table 2 of 0.9 dl/g, which falls beyond the maximum value allowed by claim 1 of 0.85 dl/g. Because of this, the comparison to example 1 is not direct, as both the extrusion temperature and intrinsic viscosity have changed. Because of this, one of ordinary skill in the art would not be able to ascertain whether the poor result arises from the increased extrusion temperature, the intrinsic viscosity requirement not being met, or some combination of both factors. Further, it appears that the applicant intends for this example to provide a comparison to the compositions of Inoue, which the examiner also points out is not representative of the compositions of Inoue. Inoue teaches that the intrinsic viscosity is preferably between 0.45 and 0.8 (Paragraph 28) and also points towards increased filtration pressure as the reason to limit the viscosity of the polymer (Paragraph 28). This would effectively teach away from an intrinsic viscosity of 0.9 of comparative example 2 and would render this particular example not representative of the teachings of Inoue. Comparative example 1 appears to demonstrate the importance of the amount of diethylene glycol. Because the amount of diethylene glycol is below that required by claim 1 and further lower than the allowed amounts taught by Inoue, this example does not appear to be relevant.
On page 8, the applicant argues that Inoue exemplifies an extrusion temperature of 280 °C. The examiner notes that the teachings of the prior art are not simply limited to the exemplified examples and that the reference must be taken as a whole for what it teaches. As mentioned above, Inoue teaches extrusion temperature between 200 and 300 °C, which include the applicant’s preferred temperature range. Further, as noted above, the extrusion temperature is not a limitation of the current claims.
On page 9, the applicant argues that Inoue does not speak towards defects nor does Inoue teach or fairly suggest how to avoid such defects. The examiner agrees that Inoue is silent on the amount and size of defects in the polymer films. However, the examiner does not agree that based upon the presented examples that the applicant has demonstrated unexpected results commensurate in scope with the claims. As noted previously, the extrusion temperature is not a limitation of the current claims. Secondly, as noted above, comparative example 2 that the applicant points to in order to demonstrate the criticality of the extrusion temperature fails to provide a direct comparison as the intrinsic viscosity of the polymer does not meet the requirement laid out in claim 1 nor the levels taught by Inoue. Further, Inoue teaches compositions in which the incorporated amount of diethylene glycol to be between 7 and 30% by mole, which is contained within the range for this component of the instant claims and further Inoue teaches an intrinsic viscosity range (0.45 to 0.8) which has extensive overlap with the range required by claim 1 (0.6 to 0.85). Combined with the teaching by Inoue of the extrusion temperature which contains the range argued by the applicant, the ordinarily skilled artisan would have expected to have achieved similar results to those demonstrated by the applicant in absence of evidence to the contrary.
In summation, the applicant argues that Inoue does not teach or fairly suggest the results as observed by the applicant. However, as noted in the above arguments, the currently disclosed examples do not provide a direct comparison demonstrating the importance to the defect rate as it relates to the extrusion temperature nor has the applicant provided sufficient evidence to demonstrate that the compositions of Inoue would not meet the defect requirement. As a result, the rejection is maintained.
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
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