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 .
Status of Claims
The examiner acknowledges the amendments to claims 1-3 and 6 and the addition of claims 9-12. Claims 1-12 are pending.
Priority
Receipt is acknowledged of certified copies of papers required by 37 CFR 1.55.
Claim Rejections - 35 USC § 112
Applicant has amended claim 1. As a result, the 112(b) rejection has been withdrawn.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 1-12 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.
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 and the defect rate, 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 nonstatutory double patenting rejection is based on a judicially created doctrine grounded in public policy (a policy reflected in the statute) so as to prevent the unjustified or improper timewise extension of the “right to exclude” granted by a patent and to prevent possible harassment by multiple assignees. A nonstatutory double patenting rejection is appropriate where the conflicting claims are not identical, but at least one examined application claim is not patentably distinct from the reference claim(s) because the examined application claim is either anticipated by, or would have been obvious over, the reference claim(s). See, e.g., In re Berg, 140 F.3d 1428, 46 USPQ2d 1226 (Fed. Cir. 1998); In re Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993); In re Longi, 759 F.2d 887, 225 USPQ 645 (Fed. Cir. 1985); In re Van Ornum, 686 F.2d 937, 214 USPQ 761 (CCPA 1982); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Thorington, 418 F.2d 528, 163 USPQ 644 (CCPA 1969).
A timely filed terminal disclaimer in compliance with 37 CFR 1.321(c) or 1.321(d) may be used to overcome an actual or provisional rejection based on nonstatutory double patenting provided the reference application or patent either is shown to be commonly owned with the examined application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. See MPEP § 717.02 for applications subject to examination under the first inventor to file provisions of the AIA as explained in MPEP § 2159. See MPEP § 2146 et seq. for applications not subject to examination under the first inventor to file provisions of the AIA . A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
The filing of a terminal disclaimer by itself is not a complete reply to a nonstatutory double patenting (NSDP) rejection. A complete reply requires that the terminal disclaimer be accompanied by a reply requesting reconsideration of the prior Office action. Even where the NSDP rejection is provisional the reply must be complete. See MPEP § 804, subsection I.B.1. For a reply to a non-final Office action, see 37 CFR 1.111(a). For a reply to final Office action, see 37 CFR 1.113(c). A request for reconsideration while not provided for in 37 CFR 1.113(c) may be filed after final for consideration. See MPEP §§ 706.07(e) and 714.13.
The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The actual filing date of the application in which the form is filed determines what form (e.g., PTO/SB/25, PTO/SB/26, PTO/AIA /25, or PTO/AIA /26) should be used. A web-based eTerminal Disclaimer may be filled out completely online using web-screens. An eTerminal Disclaimer that meets all requirements is auto-processed and approved immediately upon submission. For more information about eTerminal Disclaimers, refer to www.uspto.gov/patents/apply/applying-online/eterminal-disclaimer.
Claims 1-12 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1, 2, 7, and 18 of U.S. Patent No. 10,421,231. Although the claims at issue are not identical, they are not patentably distinct from each other because of the following reasons. U.S. Patent 10,421,231 teaches a composition comprised mainly of terephthalate, ethylene glycol, and diethylene glycol. The incorporation amounts of the components is broadly similar to those of the instant application, with both the instant application and the existing patent requiring that terephthalate comprise the majority of diacid component and the amount of diethylene glycol sharing overlapping ranges. Additionally, U.S. 10,421,231 specifies materials with overlapping ranges of intrinsic viscosity and shrinkability along with allowable amounts of other components. Finally, while the instant application requires specific ranges of melt viscosity and defect rate, the materials of U.S. 10,421,231 would meet these requirements, as the amounts of specific components as well as the processing of the composition is largely similar and is used as a heat-shrinkable label on a package.
Response to Arguments
Applicant's arguments filed 12/8/2025 have been fully considered but they are not persuasive for the following reasons.
On pages 7-10, the applicant argues that Inoue teaches a heat-shrinkable film where the main shrinkage direction is longitudinal as opposed to the width direction, thus rendering the instant application to be differentiated. The examiner disagrees. While the applicant notes that Inoue prefers to utilize the composition with a main shrinkage direction being longitudinal, Inoue notes that such polyester films are commonly utilized in applications where the width direction is the main shrinkage direction (Paragraph 3) and further notes that shrinkage is high in the direction in which the material is undrawn or drawn to a lesser degree (Paragraphs 54 and 56). Inoue also notes that drawing in both directions can be conducted (Paragraph 55) and that biaxial drawing is preferable (Paragraph 51). The ordinarily skilled artisan would no doubt recognize that if drawing of the material in both directions is preferable, that simply switching the direction in which higher drawing is conducted would change which direction would be the main shrinkage direction. Further, the ordinarily skilled artisan would also be aware of the fact that the material prior to this drawing would have no preferred shrinkage direction based upon the teachings of Inoue. The teachings of a reference must be taken in total, and while Inoue prefers the main shrinkage direction to be longitudinal, Inoue does not teach away from having a main shrinkage direction being the width, as Inoue notes that this is a widely utilized method (Paragraph 3).
On page 10, the applicant makes a similar argument in regard to the double patenting rejection, which is found to be unpersuasive for the same reasons as listed above.
Conclusion
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). 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.
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.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Heidi Kelley can be reached at 571-270-1831. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/A.J.B./Examiner, Art Unit 1765
/JOHN M COONEY/Primary Examiner, Art Unit 1765