DETAILED ACTION
The applicant’s amendment filed on May 1, 2026 was received. Claims 1-7 were amended.
The text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office 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 .
Claim Rejections - 35 USC § 103
Claims 1-7 are rejected under 35 U.S.C. 103 as being unpatentable over Machida et al. (hereinafter “Machida”) (CN 101678604 A, cited by Applicant; see English machine translation already of record).
Regarding claim 1, Machida teaches a biaxially oriented polyphenylene sulfide film having an elongation at break of the film in both the length and width directions that is 90% or more, and wherein the elongation at break of the film in at least one of the length and width directions is 110% or more (see paragraphs 24 and 48). The elongation at break in both the length and width directions of the film may be 110% or more (see paragraph 49).
Machida further teaches that 0.3% by weight of calcium carbonate powder with an average particle size of 1.2 µm (0.05 µm to 5 µm) may be added as inorganic particles to the polyphenylene sulfide film (see paragraphs 46 and 129). This is equivalent to 3000 ppm by weight (500 ppm to 20000 ppm).
A thickness of the biaxially oriented polyphenylene sulfide film may be 1 µm or more and 500 µm or less (see paragraph 80). It is noted that in the case where the claimed ranges “overlap or lie inside ranges disclosed by prior art” a prima facie case of obviousness exists. See 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 re Geisler, 116 F.3d 1465, 1469-71, 43 USPQ2d 1362, 1365-66 (Fed. Cir. 1997) (see MPEP § 2144.05).
Machida teaches that the biaxially oriented polyphenylene sulfide film may be prepared by the following process:
vacuum drying particles of polyphenylene sulfide at 180°C for more than 3 hours;
feeding the dried particles into an extruder, wherein the molten section of the extruder is heated to a temperature of 300-350°C;
discharging the extruded molten polymer in sheet form using a nozzle of a T-die;
pressing the sheet onto a cooling drum with a surface temperature of 20-70°C for cooling and curing, resulting in an unstretched film that is essentially unoriented (see paragraph 85);
subjecting the unstretched film to a successive biaxial stretching method, wherein the unstretched film is heated using a set of heating rollers and stretched to a ratio of 3.1 to 3.4 times in the MD direction and 3.1 to 3.6 times in the TD direction (see paragraphs 87-89); and
heat-setting the stretched film while under tension (see paragraph 90).
Machida teaches that a thermal shrinkage rate of the biaxially oriented polyphenylene sulfide film is 0% or more to less than 10% in both the length and width directions after heating at 260°C for 10 minutes. Although Machida does not explicitly teach a heat shrinkage rate at 180°C for 30 minutes, one of ordinary skill in the art would expect the biaxially oriented polyphenylene sulfide film of Machida to exhibit the claimed heat shrinkage rate at 180°C for 30 minutes because the biaxially oriented polyphenylene sulfide film of Machida is substantially identical in composition to the claimed polyphenylene sulfide film and is prepared using a substantially identical process to that described in the instant specification (see paragraphs 25-29 of the instant specification). It has been held by the courts that where the claimed and prior art products are identical or substantially identical in structure or composition, or are produced by identical or substantially identical processes, a prima facie case of either anticipation or obviousness has been established. See In re Best, 562 F.2d 1252, 1255, 195 USPQ 430, 433 (CCPA 1977) (see MPEP § 2112.01).
Regarding claim 2, although Machida is silent as to a center surface average roughness of the biaxially oriented polyphenylene sulfide film, one of ordinary skill in the art would expect the biaxially oriented polyphenylene sulfide film of Machida to exhibit the claimed center surface average roughness because the biaxially oriented polyphenylene sulfide film of Machida is substantially identical in composition to the claimed polyphenylene sulfide film and is prepared using a substantially identical process to that described in the instant specification (see paragraphs 25-29 of the instant specification). It has been held by the courts that where the claimed and prior art products are identical or substantially identical in structure or composition, or are produced by identical or substantially identical processes, a prima facie case of either anticipation or obviousness has been established. See In re Best, 562 F.2d 1252, 1255, 195 USPQ 430, 433 (CCPA 1977) (see MPEP § 2112.01).
Regarding claims 3 and 4, although Machida is silent as to a density and Young’s modulus of the biaxially stretched polyphenylene sulfide film, one of ordinary skill in the art would expect the biaxially oriented polyphenylene sulfide film of Machida to exhibit the claimed density and Young’s modulus because the biaxially oriented polyphenylene sulfide film of Machida is substantially identical in composition to the claimed polyphenylene sulfide film and is prepared using a substantially identical process to that described in the instant specification (see paragraphs 25-29 of the instant specification). It has been held by the courts that where the claimed and prior art products are identical or substantially identical in structure or composition, or are produced by identical or substantially identical processes, a prima facie case of either anticipation or obviousness has been established. See In re Best, 562 F.2d 1252, 1255, 195 USPQ 430, 433 (CCPA 1977) (see MPEP § 2112.01).
Regarding claim 5, Machida teaches the temperature of a small endothermic peak that is lower than the melting point of the biaxially oriented polyphenylene sulfide film and closest to the peak at the melting point may be 260°C or higher (see paragraph 57).
Regarding claims 6 and 7, Machida teaches that the biaxially oriented polyphenylene sulfide film may be utilized as a lithium-ion battery material (see paragraph 83).
Response to Arguments
Applicant's arguments filed May 1, 2026 have been fully considered but they are not persuasive.
Applicant’s principal arguments are as follows:
While provides a broad generic disclosure of a film thickness of 1 µm or more and 500 µm or less, Machida et al. does not provide an enabling disclosure of a biaxially oriented polyphenylene sulfide film having a thickness of 0.2 µm or more and 20 µm or less. The thinnest biaxially oriented polyphenylene sulfide film exemplified in Machida et al. has a thickness of 25 µm.
In response to Applicant’s arguments, please consider the following comments:
A) A reference may be relied upon for all that it would have reasonably suggested to one having ordinary skill in the art, including nonpreferred embodiments. Merck & Co. v.Biocraft Labs., Inc. 874 F.2d 804, 10 USPQ2d 1843 (Fed. Cir. 1989), cert. denied, 493 U.S. 975 (1989). In this case, Machida explicitly teaches a film thickness of the biaxially oriented polyphenylene sulfide film that is 1 µm or more and 500 µm or less. Machida is in no way limited by the 25 µm of Machida’s Example 1, but it is nevertheless not clear why Applicant believes that a process suitable to produce the 25 µm thick film of Machida’s Example 1 would be not suitable to produce a film having a thickness that is only 5 µm less.
Conclusion
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.
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/STEPHAN J ESSEX/Primary Examiner, Art Unit 1727
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