DETAILED ACTION
Notice of Pre-AIA or AIA Status
Claim(s) 1-10, 12-23, 25-30, 32, 37-38 is/are pending.
Claim(s) 1-3, 6-10, 13-17, 20-23, 26-30, 32 is/are rejected.
Claim(s) 4-5, 12, 18-19, 25, 37-38 is/are withdrawn from consideration.
Claim(s) 11, 24, 31, 33-36 is/are cancelled by Applicant.
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 .
In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis for the rejection will not be considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status.
Response to Election/Restrictions
Applicant’s election without traverse of Group I (claims 1-30, 32) in the reply filed on 06/09/2025 is acknowledged.
Applicant’s election without traverse of Species A (diol component comprises NPG and not CHDM) in the reply filed on 06/09/2025 is acknowledged.
Claim(s) 37-38 is/are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected invention, there being no allowable generic or linking claim. Election was made without traverse in the reply filed on 06/09/2025.
Claim(s) 4-5, 12, 18-19, 25 is/are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to nonelected species, there being no allowable generic or linking claim. Election was made without traverse in the reply filed on 06/09/2025.
Claim Rejections - 35 USC § 112
The following is a quotation of 35 U.S.C. 112(b):
(b) CONCLUSION.—The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the inventor or a joint inventor regards as the invention.
The following is a quotation of 35 U.S.C. 112 (pre-AIA ), second paragraph:
The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.
The rejections under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, in the previous Office Action mailed 09/16/2025 have been withdrawn in view of the Claim Amendments filed 10/15/2025.
Claim Rejections - 35 USC § 103 (AIA )
The following is a quotation of 35 U.S.C. 103 which forms the basis for all obviousness rejections set forth in this Office action:
A patent for a claimed invention may not be obtained, notwithstanding that the claimed invention is not identically disclosed as set forth in section 102, if the differences between the claimed invention and the prior art are such that the claimed invention as a whole would have been obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art to which the claimed invention pertains. Patentability shall not be negated by the manner in which the invention was made.
This application currently names joint inventors. In considering patentability of the claims the examiner presumes that the subject matter of the various claims was commonly owned as of the effective filing date of the claimed invention(s) absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and effective filing dates of each claim that was not commonly owned as of the effective filing date of the later invention in order for the examiner to consider the applicability of 35 U.S.C. 102(b)(2)(C) for any potential 35 U.S.C. 102(a)(2) prior art against the later invention.
Claim(s) 1-3, 6-10, 13-17, 20-23, 26-30, 32 is/are rejected under 35 U.S.C. 103 as being unpatentable over:
• PETERS ET AL (US 2021/0395446),
in view of MARLOW ET AL (US 2005/0163986).
PETERS ET AL ‘446 discloses heat-shrinkable films comprising a blend of polyethylene terephthalate (PET)-based copolyesters, wherein said copolyester blend comprises:
(1) 5-80 wt% of a first crystallizable copolyester (corresponding to the “copolyester” of claim 1; corresponding to the recited “first polymer” of claim 14; alternatively corresponding to the recited “second polymer” of claim 14; corresponding to the recited “film” of claim 28) comprises:
(a) a dicarboxylic acid component comprising:
(i) about 70 to about 100 mole % of terephthalic acid (TA) residues;
(ii) about 0 to about 30 mole % of aromatic and/or aliphatic dicarboxylic acid residues having up to 20 carbon atoms;
(b) a diol component comprising:
• about 75 mole % or greater of ethylene glycol (EG) residues and
• about 25 mole % or less of other glycols comprising one or more of:
(i) about 0 to less than about 25 mole % (based on the total mole % of the diol component) of neopentyl glycol (NPG) residues, wherein NPG can be present in a non-zero amount;
(ii) about 0 to less than about 25 mole % (based on the total mole % of the diol component) of 1,4-cyclohexanedimethanol (CHDM) residues, wherein CHDM is not required;
(iii) about 0 to less than about 10 mole % (based on the total mole % of the diol component) (e.g., but not limited to: 1-9 mol%; etc.) of total diethylene glycol (DEG) residues, wherein DEG can be present in a non-zero amount, in the final polyester composition;
• up to 20 mol% of modifying diols (i.e., other than EG, DEG, NPG, CHDM) (e.g., but not limited to: other propanediols, 1,4-butanediol, 1,5-pentanediols, etc.);
wherein the total mole % of the dicarboxylic acid component is 100 mole %, and wherein the total mole % of the diol component is 100 mole %;
(2) 20-95% of at least one amorphous polyester (alternatively corresponding to the “copolyester” of claim 1; corresponding to the recited “second polymer” of claim 14; alternatively corresponding to the recited “first polymer” of claim 14; alternatively corresponding to the recited “copolyester” of claim 28) which comprises:
(a) a dicarboxylic acid component comprising:
(i) about 70 to about 100 mole % of terephthalic acid (TA) residues;
(ii) about 0 to about 30 mole % of aromatic and/or aliphatic dicarboxylic acid residues having up to 20 carbon atoms;
(b) a diol component comprising:
• about 60 mole % or greater of ethylene glycol (EG) residues and
• about 40 mole % or less of other glycols comprising one or more of:
(i) about 0 to less than about 40 mole % (based on the total mole % of the diol component) of neopentyl glycol (NPG) residues, wherein NPG can be present in a non-zero amount;
(ii) about 0 to less than about 40 mole % (based on the total mole % of the diol component) of 1,4-cyclohexanedimethanol (CHDM) residues, wherein CHDM is not required;
(iii) about 0 to less than about 15 mole % (based on the total mole % of the diol component) (e.g., but not limited to: 5-15 mol%; etc.) of total diethylene glycol (DEG) residues, wherein DEG can be present in a non-zero amount, in the final polyester composition;
• up to 20 mol% of modifying diols (i.e., other than EG, DEG, NPG, CHDM) (e.g., but not limited to: other propanediols, 1,4-butanediol, 1,5-pentanediols, etc.);
wherein the total mole % of the dicarboxylic acid component is 100 mole %, and wherein the total mole % of the diol component is 100 mole %; and wherein (1) and (2) are different;
• optionally other polymeric components (e.g., terephthalate-based (co)polyesters different from copolyesters (1) and (2) above; etc.
The heat shrinkable film can have: (i) a shrinkage onset temperature of less than 60 ºC (e.g., as low as 55 ºC); and (ii) a shrink force (corresponding to the recited “shrink tension”) as low as 4 MPa (as low as 4 N/mm2). The copolyester blend can be formed into a single layer heat-shrinkable film or formed into a layer in a multilayer heat-sealable film using coextrusion (entire document, paragraph 0002, 0009-0019, 0024-0031, 0202, 0205-0209, 0217, 0226, 0232-0233, 0252, 0256, 0265-0266, 0268, etc.) However, the reference does not specifically mention copolyesters partially derived from 2-methyl-1,3-propanediol (MPO).
MARLOW ET AL ‘986 discloses that it is well known in the art to replace a portion of the ethylene glycol (EG) content with 2-methyl-1,3-propanediol (MPO) in polyethylene terephthalate (PET)-based copolyesters (e.g., derived from terephthalic acid and ethylene glycol and other glycols) for heat-shrinkable films as a shrink-adjusting or shrink-enhancing agent in order to allow for convenient adjustment of shrink film properties (e.g., degree of shrinkage, degree of crystallinity, etc.) without the negative effects associated with other shrink-modifying comonomers (e.g., excessive reductions in glass transition temperature (Tg) which result in processing problems; over-sensitivity of shrinkage properties to comonomer content; etc.) -- in addition to providing enhanced heat-seal properties and/or good impact resistance and/or superior film processibility and/or reduced material costs, etc. -- in the heat-shrinkable film, wherein MPO is present in the PET-based copolyesters in preferred amounts of 5-50 mol% (e.g., but not limited to: 10-35 mol%; 20-30 mol%; etc.) of the diol component, wherein MPO can be utilized as a shrink additive monomer in lower effective amounts compared to other, more expensive monomers. The reference further discloses that the MPO-modified PET-based copolyesters can be blended with other polyester resins for easy adjustment of MPO content and various film properties. (paragraph 0002, 0014-0016, 0018-0022, 0024, 0026-0027, 0029, etc.)
Regarding claims 1-3, 6-10, 13-17, 20-23, 26-30, 32, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to replace a portion of the EG content in the first and/or second copolyester in the PET-based copolyester blends of PETERS ET AL ‘446 with MPO in amounts of 5-50 mol% (based on the diol component) as suggested in MARLOW ET AL ‘986 in order to modify and tailor the shrink properties (e.g., degree of shrinkage, degree of crystallinity, etc.) of the heat-shrinkable films for specific applications, in addition to improving heat-seal properties and/or improving impact resistance and/or providing superior film processibility and/or reducing material costs.
Further regarding claims 1, 14, 28, since: (i) PETERS ET AL ‘446 discloses PET-based copolyesters with DEG contents of 10 mol% or less (for the first copolyester) and/or 15 mol% or less (for the second copolyester); and (ii) MARLOW ET AL ‘986 suggests the incorporation of MPO in PET-based copolyesters in amount of 5-50 mol% (e.g., but not limited to, 10-35 mol% or 20-30 mol%) (based on the diol component); the first and/or second PET-based copolyesters of PETERS ET AL ‘446 wherein the EG content is partially replaced with MPO (in accordance with MARLOW ET AL ‘986) would exhibit MPO to DEG molar ratios which at least partially overlap the recited MPO:DEG ratio of 5:1 to 1:1. Additionally and/or alternatively, one of ordinary skill in the art would have selected the ratio of MPO to DEG in the first and/or second copolyester in the PET-based copolyester blends of PETERS ET AL ‘446 in order to obtain specific shrinkage properties for specific applications. A range can be disclosed in multiple prior art references instead of in a single prior art reference depending on the specific facts of the case. Iron Grip Barbell Co., Inc. v. USA Sports, Inc., 392 F.3d 1317, 1322, 73 USPQ2d 1225, 1228 (Fed. Cir. 2004). See MPEP 2144.05 (I).
Response to Arguments
Applicant's arguments filed 10/15/2025 have been fully considered but they are not persuasive.
(A) Applicant argues that “Peters does not provide any teaching or suggestion of the relative ratio of the glycol components as taught in the amended claims 1, 14 and 28. Marlow does not remedy this deficiency.” However, PETERS ET AL ‘446 discloses PET-based copolyesters with DEG contents of up to 10 mol% (for the first copolyester) and/or up to 15 mol% (for the second copolyester); while MARLOW ET AL ‘986 suggests the incorporation of MPO in PET-based copolyesters in amount of 5-50 mol% (e.g., but not limited to, 10-35 mol% or 20-30 mol%) (based on the diol component); therefore, the combination of teachings of PETERS ET AL ‘446 and MARLOW ET AL ‘446 (i.e., the first and/or second PET-based copolyesters of PETERS ET AL ‘446 wherein the EG content is partially replaced with MPO consistent with the suggestions of MARLOW ET AL ‘986) would exhibit MPO to DEG molar ratios which at least partially overlap the recited MPO:DEG ratio of 5:1 to 1:1. For example:
• a copolyester produced using a MPO content of 5 mol% (as suggested by MARLOW ET AL ‘986) and a DEG content of 1 mol% (in accordance with PETERS ET AL ‘446) would have a MPO:DEG ratio of 5:1;
• a copolyester produced using a MPO content of 9 mol% (as suggested by MARLOW ET AL ‘986) and a DEG content of 9 mol% (in accordance with PETERS ET AL ‘446) would have a MPO:DEG ratio of 1:1;
• a copolyester produced using a MPO content of 15 mol% (as suggested by MARLOW ET AL ‘986) and a DEG content of 5 mol% (in accordance with PETERS ET AL ‘446) would have a MPO:DEG ratio of 3:1; etc.); etc.
Furthermore, a range can be disclosed in multiple prior art references instead of in a single prior art reference depending on the specific facts of the case. Iron Grip Barbell Co., Inc. v. USA Sports, Inc., 392 F.3d 1317, 1322, 73 USPQ2d 1225, 1228 (Fed. Cir. 2004). See MPEP 2144.05 (I).
(B) Applicant argues that “the Office's rejection is devoid of an articulation of some reason with some rational underpinning to support the legal conclusion of obviousness.” In response to applicant’s argument that there is no teaching, suggestion, or motivation to combine the references, the examiner recognizes that obviousness may be established by combining or modifying the teachings of the prior art to produce the claimed invention where there is some teaching, suggestion, or motivation to do so found either in the references themselves or in the knowledge generally available to one of ordinary skill in the art. See In re Fine, 837 F.2d 1071, 5 USPQ2d 1596 (Fed. Cir. 1988), In re Jones, 958 F.2d 347, 21 USPQ2d 1941 (Fed. Cir. 1992), and KSR International Co. v. Teleflex, Inc., 550 U.S. 398, 82 USPQ2d 1385 (2007).
MPEP 2144 Supporting a Rejection Under 35 U.S.C. 103 [R-01.2024]
* * *
I. RATIONALE MAY BE IN A REFERENCE, OR REASONED FROM COMMON KNOWLEDGE IN THE ART, SCIENTIFIC PRINCIPLES, ART-RECOGNIZED EQUIVALENTS, OR LEGAL PRECEDENT
The rationale to modify or combine the prior art does not have to be expressly stated in the prior art; the rationale may be expressly or impliedly contained in the prior art or it may be reasoned from knowledge generally available to one of ordinary skill in the art, established scientific principles, or legal precedent established by prior case law. In re Fine, 837 F.2d 1071, 5 USPQ2d 1596 (Fed. Cir. 1988); In re Jones, 958 F.2d 347, 21 USPQ2d 1941 (Fed. Cir. 1992); see also In re Kotzab, 217 F.3d 1365, 1370, 55 USPQ2d 1313, 1317 (Fed. Cir. 2000) (setting forth test for implicit teachings); In re Eli Lilly & Co., 902 F.2d 943, 14 USPQ2d 1741 (Fed. Cir. 1990) (discussion of reliance on legal precedent); In re Nilssen, 851 F.2d 1401, 1403, 7 USPQ2d 1500, 1502 (Fed. Cir. 1988) (references do not have to explicitly suggest combining teachings); Ex parte Clapp, 227 USPQ 972 (Bd. Pat. App. & Inter. 1985) (examiner must present convincing line of reasoning supporting rejection); and Ex parte Levengood, 28 USPQ2d 1300 (Bd. Pat. App. & Inter. 1993) (reliance on logic and sound scientific reasoning).
II. THE EXPECTATION OF SOME ADVANTAGE IS THE STRONGEST RATIONALE FOR COMBINING REFERENCES
The strongest rationale for combining references is a recognition, expressly or impliedly in the prior art or drawn from a convincing line of reasoning based on established scientific principles or legal precedent, that some advantage or expected beneficial result would have been produced by their combination. In re Sernaker, 702 F.2d 989, 994-95, 217 USPQ 1, 5-6 (Fed. Cir. 1983). See also Dystar Textilfarben GmbH & Co. Deutschland KG v. C.H. Patrick, 464 F.3d 1356, 1368, 80 USPQ2d 1641, 1651 (Fed. Cir. 2006) ("Indeed, we have repeatedly held that an implicit motivation to combine exists not only when a suggestion may be gleaned from the prior art as a whole, but when the ‘improvement’ is technology-independent and the combination of references results in a product or process that is more desirable, for example because it is stronger, cheaper, cleaner, faster, lighter, smaller, more durable, or more efficient. Because the desire to enhance commercial opportunities by improving a product or process is universal—and even common-sensical—we have held that there exists in these situations a motivation to combine
prior art references even absent any hint of suggestion in the references themselves.").
In the present instance, PETERS ET AL ‘446 explicitly permits the presence of modifying diols (e.g., diols other than EG, DEG, NPG, CHDM) in the disclosed copolyesters, while MARLOW ET AL ‘986 discloses that there are numerous advantages from incorporating MPO (as a partial replacement for EG) in copolyesters for heat-shrinkable films in order to facilitate convenient adjustment of shrink film properties (e.g., degree of shrinkage, degree of crystallinity, etc.), in addition to: (i) providing useful enhancements in heat-seal properties and/or impact resistance; and/or (ii) providing superior film processibility; and/or (iii) reducing material costs by minimizing or eliminating the use of more expensive comonomers.
Additionally, MARLOW ET AL ‘986 teaches (or at least strongly suggests) that it is considered to be well within the ability of one of ordinary skill in the art to select the amount of MPO incorporated in a copolyester for heat-shrinkable polyester films based on the desired or optimal shrink properties (e.g., degree of shrinkage, degree of crystallinity, etc.) for specific heat-shrink film applications, in addition to achieving advantageous improvements in heat-seal properties and/or improvements in impact resistance and/or superior film processibility and/or reductions in material costs.
The combination of familiar elements (i.e., the suggested DEG content(s) and the use of additional modifying diols in the copolyesters of PETERS ET AL ‘446; the incorporation of suggested minor amounts of MPO in copolyesters for heat-shrinkable films to achieve various benefits) according to known methods (i.e., substituting MPO for part of the EG content of copolyesters of PETERS ET AL ‘446) is likely to be obvious when it does no more than yield predictable results (e.g., the ability to conveniently adjustment of shrink film properties (e.g., degree of shrinkage, degree of crystallinity, etc.), in addition to: (i) providing useful enhancements in heat-seal properties and/or impact resistance; and/or (ii) providing superior film manufacturing and processing characteristics; and/or (iii) reducing material costs by minimizing or eliminating the use of more expensive comonomers and/or by reducing the amount of comonomer necessary to achieve specific performance properties; etc.; as discussed in MARLOW ET AL ‘986). See KSR Int'l Co. v. Teleflex, Inc., 127 S.Ct. 1727, 1739 (2007). Applicant has not provided evidence of criticality and/or unexpected results commensurate in scope with the present claims from the recited MPO:DEG ratio.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
LIM ET AL (US 2020/0062954) and CN 102206331 and KR 20040051808 disclose heat-shrinkable films comprising polyethylene terephthalate copolyesters partially derived from 2-methyl-1,3-propanediol.
SHELBY ET AL (US 6,362,306) disclose heat-shrinkable films comprising polyethylene terephthalate copolyesters.
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.
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February 18, 2026
/Vivian Chen/
Primary Examiner, Art Unit 1787