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Claim(s) 4-5, 12, 18-19, 25, 37-38 is/are withdrawn from consideration.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.
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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 07/01/2026 has been entered.
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Claim(s) 37-38 is/are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected invention, there being no allowable generic or linking claim.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Claim(s) 4-5, 12, 18-19, 25 is/are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to nonelected species, there being no allowable generic or linking claim.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(d):
(d) REFERENCE IN DEPENDENT FORMS.—Subject to subsection (e), a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
The following is a quotation of pre-AIA 35 U.S.C. 112, fourth paragraph:
Subject to the following paragraph [i.e., the fifth paragraph of pre-AIA 35 U.S.C. 112], a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
Claim(s) 3 is/are rejected under 35 U.S.C. 112(d) or pre-AIA 35 U.S.C. 112, 4th paragraph, as being of improper dependent form for failing to further limit the subject matter of the claim upon which it depends, or for failing to include all the limitations of the claim upon which it depends.
Claim 3 fails to further limit the content of NPG in the diol component (in view of the election of species made without traverse in the reply filed on 06/09/2025)
Applicant may cancel the claim(s), amend the claim(s) to place the claim(s) in proper dependent form, rewrite the claim(s) in independent form, or present a sufficient showing that the dependent claim(s) complies with the statutory requirements.
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, wherein the MPO functions as a supplemental shrink-adjusting or shrink-enhancing agent in the copolyester 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 excessive amounts of shrink-modifying highly branched diol 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 and also allows for the use of reduced amounts of highly branched modifying diols. 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 utilize MPO in amounts of 10-35 mol% (based on the diol component) as a supplemental modifying diol as suggested in MARLOW ET AL ‘986 which replaces 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 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 less than 10 mol% (for the first copolyester) and/or less than 15 mol% (for the second copolyester) and NPG contents of less than 15 mol% (for the first copolyester) and/or less than 40 mol% (for the second copolyester); and (ii) MARLOW ET AL ‘986 suggests the incorporation of MPO in PET-based copolyesters in amount of 10-35 mol% (e.g., but not limited to, 20-30 mol%, etc.) (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 (as a supplemental shrink-modifying agent, in accordance with MARLOW ET AL ‘986) would exhibit MPO:DEG molar ratios which at least partially overlap the recited MPO:DEG ratio of 5:1 to 1:1 and optionally at least partially overlap the recited MPO:NPG ratios of 1:5 to 5:1 (claim 9) and/or optionally at least partially overlap the recited DEG:NPG ratio of 1:30 to 2:1 (claim 10). Additionally and/or alternatively, one of ordinary skill in the art would have selected the MPO:DEG ratio and optionally the MPO:NPG ratio and/or optionally the DEG:NPG ratio 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 07/01/2026 have been fully considered but they are not persuasive.
(A) Applicant argues that the Specification provides evidence of criticality and/or unexpected results which commensurate in scope with the present claims for the recited MPO:DEG ratio. Applicant further argues that “the Specification clearly demonstrates that the presence of all of EG, MPO, DEG, and NPG and/or CHDM in the claimed ratio is critical for achieving suitable shrink force, shrink onset temperature and durability.”
However, while the specification provides some evidence of unexpected results and/or criticality with respect to a copolyester derived from EG, MPO, DEG, and NPG, wherein said copolyester contains a specific ratio of MPO and DEG, the showings provided by the specification are not commensurate in scope with the present claims -- for example, but not limited to:
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• the type of copolyester -- in particular, the inventive Examples 1-2 relied upon by Applicant only utilize a very limited range of MPO-containing copolyesters derived from:
• an acid component containing 100 mol% terephthalic acid (TA);
• an diol component containing:
• 62-66 mol% EG;
• 17-18 mol% MPO;
• 10 mol% DEG;
• 0-10 mol% NPG;
• 0-7 mol% CHDM
• wherein the MPO:DEG ratio is 17:10 to 18:10 (1.7:1 to 1.8:1).
However, the present claims utilize the open term “including” with respect to the composition of the MPO-containing copolyester which is, in the absence of explicit language to the contrary, is deemed equivalent to the open term “comprising”, which allows for the presence of any amount(s) and type(s) of additional repeating units as long as:
• (ii)(1) EG is present in amounts as high as 90 mol% or as low as 45 mol% (independent claims 1, 14, 28) or in amounts as high as 80 mol% or as low as 55 mol% (various dependent claim);
• (ii)(2) MPO is present in amounts as high as 30 mol% or as low as 5 mol% (independent claims 1, 14, 28) or in amounts as high as 25 mol% or as low as 10 mol% (various dependent claims);
• (ii)(3) DEG is present in amounts as high as 15 mol% or as low as 1 mol% (independent claims 1, 14, 28) or in amounts as high as 13 mol% or as low as 5 mol% (various dependent claim);
• (ii)(4) NPG is present in amounts as high as 30 mol% or as low as 1 mol% (independent claims 1, 14, 28; various dependent claim);
•as long as:
• the required MPO:DEG ratio is satisfied (independent claims 1, 14, 28);
• optionally the required MPO / NPG ratio is satisfied (claim 9);
• optionally the required DEG / NPG ratio is satisfied (claim 10);
Given the Applicant’s assertions of the critical nature of the MPO:DEG ratio with respect to shrink tension and shrink onset, Applicant has not provided sufficient evidence that that the unexpected improvements in shrink tension and shrink onset relied upon by Applicant would be present with different copolyesters with non-trivial differences in composition (e.g., different amounts of TA, EG, MPO, DEG, NPG; the presence of other comonomers, etc.).
For example, at least the present independent claims 1, 14, 28 encompass a wide variety of MPO-containing copolyesters, but which can deviate substantially from the copolyesters used in inventive Examples 1-2 -- e.g., but not limited to:
• a copolyester derived from:
• an acid component containing 100 mol% terephthalic acid (TA);
• a diol component containing:
• 90 mol% EG;
• 5 mol% MPO;
• 2.5 mol% DEG;
• 2.5 mol% NPG;
• MPO:DEG ratio of 2:1;
• a copolyester derived from:
• an acid component containing 100 mol% terephthalic acid (TA);
• a diol component containing:
• 45 mol% EG;
• 20 mol% MPO;
• 5 mol% DEG;
• 30 mol% NPG,
• MPO:DEG ratio of 4:1;
• a copolyester derived from:
• an acid component containing 100 mol% terephthalic acid (TA);
• a diol component containing:
• 60 mol% EG;
• 5 mol% MPO;
• 5 mol% DEG;
• 30 mol% NPG,
• MPO:DEG ratio of 1:1;
• a copolyester derived from:
• an acid component containing 100 mol% terephthalic acid (TA);
• a diol component containing:
• 89 mol% EG;
• 5 mol% MPO;
• 5 mol% DEG;
• 1 mol% NPG,
• MPO:DEG ratio of 1:1;
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• composition of the heat-shrinkable film as a whole -- in particular, the inventive Examples 1-2 in the specification relied upon by Applicant utilize films wherein the recited MPO-containing copolyester constitutes the effective entirety (i.e., about 100 wt%).
However, the present claims utilize the open term “comprising” with respect to the composition of the heat-shrinkable film, which allows for the presence of any amount(s) and type(s) of additional components (e.g., other polyesters; other non-polyester polymers, organic additives, inorganic additives, etc.) as long as: (i) the recited MPO-containing copolyester is present in the heat-shrinkable film in any non-zero amount (independent claims 1, 14, 28.
For example, the present claims allow for heat-shrinkable films in which the required MPO-containing copolyester constitute only part (e.g., 90 wt% or 80 wt% or 70 wt% or 60 wt% or 50 wt% or 20 wt% or 10 wt% or 1 wt%, etc.) of the heat-shrinkable film composition as a whole.
Since the Examiner has reason to believe that the recited heat-shrinkable film requires: (i) a minimum amount of the recited MPO-containing copolyester; in order to materially affect the shrink tension and shrink onset; Applicant has not provided persuasive evidence that that the unexpected improvements in shrink tension and shrink onset relied upon by Applicant would be present wherein: (i) the recited MPO-containing copolyesters constitute less than the effective entirety of the heat-shrinkable film (independent claims 1, 28).
Furthermore, since inventive Examples 3-5 in the specification do not utilize a MPO-containing copolyester containing NPG, Examples 3-5 do not provide objective evidence that the unexpected improvements in shrink tension and shrink onset relied upon by Applicant would be present wherein: (i) the recited MPO-containing, NPG-containing copolyesters of claims 1, 28 constitute less than the effective entirety of a heat-shrinkable film.
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While Applicant is not required to provide evidence of unexpected results and/or criticality for every possible embodiment encompassed by the present claims, any showings of criticality and/or unexpected results provided by the specification or Applicant should be reasonably representative of the full scope of the claimed invention and/or provide sufficient evidence that can be reasonably extended by one of ordinary skill in the art over the scope of the present claims.
MPEP 716.02(d) Unexpected Results Commensurate in Scope With Claimed Invention [R-08.2012]
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Whether the unexpected results are the result of unexpectedly improved results or a property not taught by the prior art, the "objective evidence of nonobviousness must be commensurate in scope with the claims which the evidence is offered to support." In other words, the showing of unexpected results must be reviewed to see if the results occur over the entire claimed range. In re Clemens, 622 F.2d 1029, 1036, 206 USPQ 289, 296 (CCPA 1980) (Claims were directed to a process for removing corrosion at "elevated temperatures" using a certain ion exchange resin (with the exception of claim 8 which recited a temperature in excess of 100C). Appellant demonstrated unexpected results via comparative tests with the prior art ion exchange resin at 110C and 130C. The court affirmed the rejection of claims 1-7 and 9-10 because the term "elevated temperatures" encompassed temperatures as low as 60C where the prior art ion exchange resin was known to perform well. The rejection of claim 8, directed to a temperature in excess of 100C, was reversed.). See also In re Peterson, 315 F.3d 1325, 1329-31, 65 USPQ2d 1379, 1382-85 (Fed. Cir. 2003) (data showing improved alloy strength with the addition of 2% rhenium did not evidence unexpected results for the entire claimed range of about 1-3% rhenium); In re Grasselli, 713 F.2d 731, 741, 218 USPQ 769, 777 (Fed. Cir. 1983) (Claims were directed to certain catalysts containing an alkali metal. Evidence presented to rebut an obviousness rejection compared catalysts containing sodium with the prior art. The court held this evidence insufficient to rebut the prima facie case because experiments limited to sodium were not commensurate in scope with the claims.).
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I. NONOBVIOUSNESS OF A GENUS OR CLAIMED RANGE MAY BE SUPPORTED BY DATA SHOWING UNEXPECTED RESULTS OF A SPECIES OR NARROWER RANGE UNDER CERTAIN CIRCUMSTANCES
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The nonobviousness of a broader claimed range can be supported by evidence based on unexpected results from testing a narrower range if one of ordinary skill in the art would be able to determine a trend in the exemplified data which would allow the artisan to reasonably extend the probative value thereof. In re Kollman, 595 F.2d 48, 201 USPQ 193 (CCPA 1979) (Claims directed to mixtures of an herbicide known as "FENAC" with a diphenyl ether herbicide in certain relative proportions were rejected as prima facie obvious. Applicant presented evidence alleging unexpected results testing three species of diphenyl ether herbicides over limited relative proportion ranges. The court held that the limited number of species exemplified did not provide an adequate basis for concluding that similar results would be obtained for the other diphenyl ether herbicides within the scope of the generic claims. Claims 6-8 recited a FENAC:diphenyl ether ratio of 1:1 to 4:1 for the three specific ethers tested. For two of the claimed ethers, unexpected results were demonstrated over a ratio of 16:1 to 2:1, and the effectiveness increased as the ratio approached the untested region of the claimed range. The court held these tests were commensurate in scope with the claims and supported the nonobviousness thereof. However, for a third ether, data was only provided over the range of 1:1 to 2:1 where the effectiveness decreased to the "expected level" as it approached the untested region. This evidence was not sufficient to overcome the obviousness rejection.); In re Lindner, 457 F.2d 506, 509, 173 USPQ 356, 359 (CCPA 1972) (Evidence of nonobviousness consisted of comparing a single composition within the broad scope of the claims with the prior art. The court did not find the evidence sufficient to rebut the prima facie case of obviousness because there was "no adequate basis for reasonably concluding that the great number and variety of compositions included in the claims would behave in the same manner as the tested composition.").
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II. DEMONSTRATING CRITICALITY OF A CLAIMED RANGE
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To establish unexpected results over a claimed range, applicants should compare a sufficient number of tests both inside and outside the claimed range to show the criticality of the claimed range. In re Hill, 284 F.2d 955, 128 USPQ 197 (CCPA 1960).
(C) Applicant argues that “Peters does not teach or suggest the use of 2-methyl-1,3-propanediol (MPO) as taught in the present claims. Further, Peters does not provide any teaching or suggestion of the relative ratio of the glycol components as taught in the 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) as a shrink-enhancing agent in heat-shrinkable films which avoid or reduces the disadvantage associated with highly branched modifying diols; 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). Applicant has not provided evidence of unexpected results and/or criticality commensurate in scope with the present claims from the recited copolyesters with the recited MPO:DEG ratio (as discussed in detail above).
(D) Applicant argues that “Marlow is silent on the ratio of MPO:DEG as taught in the present claims... There is no disclosure in Marlow about polyesters having a mixture of diols, specifically ethylene glycol, diethylene glycol and MPO, other than a passing mention... There is no disclosure of any polyester comprising a mixture of EG, DEG and MPO,...” In response to applicant's arguments against the references individually, one cannot show nonobviousness by attacking references individually where the rejections are based on combinations of references. See In re Keller, 642 F.2d 413, 208 USPQ 871 (CCPA 1981); In re Merck & Co., 800 F.2d 1091, 231 USPQ 375 (Fed. Cir. 1986).
(E) Applicant argues that “none of the examples show a polyester that has more than two diols or a polyester comprising DEG (see Table 1 in Marlow). It follows that there is no teaching or suggestion of ratio of MPO and DEG for a skilled person to arrive at the exact ratios as presently claimed.” However, the teachings of a reference is not limited solely to the experimental Examples in the reference, but encompass the reference as whole.
MPEP 2123 Rejection Over Prior Art’s Broad Disclosure Instead of Preferred Embodiments [R-07.2022]
I. PATENTS ARE RELEVANT AS PRIOR ART FOR ALL THEY CONTAIN
"The use of patents as references is not limited to what the patentees describe as their own inventions or to the problems with which they are concerned. They are part of the literature of the art, relevant for all they contain." In re Heck, 699 F.2d 1331, 1332-33, 216 USPQ 1038, 1039 (Fed. Cir. 1983) (quoting In re Lemelson, 397 F.2d 1006, 1009, 158 USPQ 275, 277 (CCPA 1968)).
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). See also Upsher-Smith Labs. v. Pamlab, LLC, 412 F.3d 1319, 1323, 75 USPQ2d 1213, 1215 (Fed. Cir. 2005) (reference disclosing optional inclusion of a particular component teaches compositions that both do and do not contain that component); Celeritas Technologies Ltd. v. Rockwell International Corp., 150 F.3d 1354, 1361, 47 USPQ2d 1516, 1522-23 (Fed. Cir. 1998) (The court held that the prior art anticipated the claims even though it taught away from the claimed invention. "The fact that a modem with a single carrier data signal is shown to be less than optimal does not vitiate the fact that it is disclosed.").
See also MPEP § 2131.05 and § 2145, subsection X.D., which discuss prior art that teaches away from the claimed invention in the context of anticipation and obviousness, respectively.
II. NONPREFERRED AND ALTERNATIVE EMBODIMENTS CONSTITUTE PRIOR ART
Disclosed examples and preferred embodiments do not constitute a teaching away from a broader disclosure or nonpreferred embodiments. In re Susi, 440 F.2d 442, 169 USPQ 423 (CCPA 1971). "A known or obvious composition does not become patentable simply because it has been described as somewhat inferior to some other product for the same use." In re Gurley, 27 F.3d 551, 554, 31 USPQ2d 1130, 1132 (Fed. Cir. 1994) (The invention was directed to an epoxy impregnated fiber-reinforced printed circuit material. The applied prior art reference taught a printed circuit material similar to that of the claims but impregnated with polyester-imide resin instead of epoxy. The reference, however, disclosed that epoxy was known for this use, but that epoxy impregnated circuit boards have "relatively acceptable dimensional stability" and "some degree of flexibility," but are inferior to circuit boards impregnated with polyester-imide resins. The court upheld the rejection concluding that applicant’s argument that the reference teaches away from using epoxy was insufficient to overcome the rejection since "Gurley asserted no discovery beyond what was known in the art." Id. at 554, 31 USPQ2d at 1132.). Furthermore, "[t]he prior art’s mere disclosure of more than one alternative does not constitute a teaching away from any of these alternatives because such disclosure does not criticize, discredit, or otherwise discourage the solution claimed…." In re Fulton, 391 F.3d 1195, 1201, 73 USPQ2d 1141, 1146 (Fed. Cir. 2004).
In the present instance, MARLOW ET AL ‘986 clearly allows for the presence of other diols (e.g., but not limited to, “Suitable glycols include ethylene glycol, diethylene glycol, polyethylene glycol, and polyols such as butanediol and the like. Mixtures of two or more of the foregoing are also suitable” (emphasis added) (MARLOW ET AL ‘986, paragraph 0022) Therefore, contrary to Applicant’s assertion, MARLOW ET AL ‘986 reasonably implies that MPO can be utilized on copolyesters derived from EG and two or more other diols. Applicant has not provided evidence of unexpected results and/or criticality commensurate in scope with the present claims from the recited copolyesters with the recited MPO:DEG ratio (as discussed in detail above).
(F) Applicant argues that “a skilled artisan would find no motivation to combine the disclosure of Marlow with Peters and would not be able to arrive at the polyester of the instant claims by referring to Peters and/or Marlow at least because neither of these references provide any teaching or suggestion of the relative ratio of MPO:DEG as taught in the present claims.” Applicant further argues that “there is no teaching or suggestion of ratio of MPO and DEG for a skilled person to arrive at the exact ratios as presently claimed. Therefore, a skilled artisan
would find no motivation to combine the disclosure of Marlow with Peters and would
not be able to arrive at the polyester of the instant claims by referring to Peters and/or
Marlow at least because neither of these references provide any teaching or suggestion
of the relative ratio of MPO:DEG as taught in the present claims.”
However, in response to applicant's argument regarding the alleged complete lack of motivation to combine, the fact that the inventor has recognized another advantage which would flow naturally from following the suggestion of the prior art cannot be the basis for patentability when the differences would otherwise be obvious. See Ex parte Obiaya, 227 USPQ 58, 60 (Bd. Pat. App. & Inter. 1985). MARLOW ET AL ‘986 discloses multiple advantages for incorporate MPO into copolyesters used to produce polyester films in general, and particularly in heat-shrinkable polyester films -- i.e., the incorporating of MPO is advantageous in heat-shrinkable films because MPO acts as a shrink-adjusting or shrink-enhancing agent which allows for convenient adjustment of shrink film properties (e.g., degree of shrinkage, degree of crystallinity, etc.) without the negative effects which can be associated with excessive or substantial amounts of shrink-modifying highly branched diol 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.
MPEP 2144 Supporting a Rejection Under 35 U.S.C. 103 [R-01.2024]
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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.").
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IV. RATIONALE DIFFERENT FROM APPLICANT’S IS PERMISSIBLE
The reason or motivation to modify the reference may often suggest what the inventor has done, but for a different purpose or to solve a different problem. It is not necessary that the prior art suggest the combination to achieve the same advantage or result discovered by applicant. See, e.g., In re Kahn, 441 F.3d 977, 987, 78 USPQ2d 1329, 1336 (Fed. Cir. 2006) (motivation question arises in the context of the general problem confronting the inventor rather than the specific problem solved by the invention); Cross Med. Prods., Inc. v. Medtronic Sofamor Danek, Inc., 424 F.3d 1293, 1323, 76 USPQ2d 1662, 1685 (Fed. Cir. 2005) ("One of ordinary skill in the art need not see the identical problem addressed in a prior art reference to be motivated to apply its teachings."); In re Lintner, 458 F.2d 1013, 173 USPQ 560 (CCPA 1972) (discussed below); In re Dillon, 919 F.2d 688, 16 USPQ2d 1897 (Fed. Cir. 1990), cert. denied, 500 U.S. 904 (1991) (discussed below).
In In re Lintner, the claimed invention was a laundry composition consisting essentially of a dispersant, cationic fabric softener, sugar, sequestering phosphate, and brightener in specified proportions. The claims were rejected over the combination of a primary reference which taught all the claim limitations except for the presence of sugar, and secondary references which taught the addition of sugar as a filler or weighting agent in compositions containing cationic fabric softeners. Appellant argued that in the claimed invention, the sugar is responsible for the compatibility of the cationic softener with the other detergent components. The court sustained the rejection, stating "The fact that appellant uses sugar for a different purpose does not alter the conclusion that its use in a prior art composition would be [sic, would have been] prima facie obvious from the purpose disclosed in the references." 173 USPQ at 562.
In In re Dillon, applicant claimed a composition comprising a hydrocarbon fuel and a sufficient amount of a tetra-orthoester of a specified formula to reduce the particulate emissions from the combustion of the fuel. The claims were rejected as obvious over a reference which taught hydrocarbon fuel compositions containing tri-orthoesters for dewatering fuels, in combination with a reference teaching the equivalence of tri-orthoesters and tetra-orthoesters as water scavengers in hydraulic (nonhydrocarbon) fluids. The Board affirmed the rejection finding "there was a ‘reasonable expectation’ that the tri- and tetra-orthoester fuel compositions would have similar properties based on ‘close structural and chemical similarity’ between the tri- and tetra-orthoesters and the fact that both the prior art and Dillon use these compounds ‘as fuel additives’." 919 F.2d at 692, 16 USPQ2d at 1900. The court held "it is not necessary in order to establish a prima facie case of obviousness . . . that there be a suggestion or expectation from the prior art that the claimed [invention] will have the same or a similar utility as one newly discovered by applicant," and concluded that here a prima facie case was established because "[t]he art provided the motivation to make the claimed compositions in the expectation that they would have similar properties." 919 F.2d at 693, 16 USPQ2d at 1901 (emphasis in original).
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).
Therefore, contrary to Applicant’s assertions, the combination of MARLOW ET AL ‘986 and PETERS ET AL ‘446 establish a proper prima facie case of obviousness for modifying the copolyesters of PETERS ET AL ‘446 with beneficial amounts (e.g., 5-50 mol%) of MPO, resulting in MPO-modified copolyesters with MPO:DEG ratios which at least partially read on the claimed range of 5:1 to 1:1 which are useful in the production of heat-shrinkable films.
MPEP 2144.05 Obviousness of Similar and Overlapping Ranges, Amounts, and Proportions [R-01.2024]
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I. OVERLAPPING, APPROACHING, AND SIMILAR RANGES, AMOUNTS, AND PROPORTIONS
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) (The prior art taught carbon monoxide concentrations of "about 1-5%" while the claim was limited to "more than 5%." The court held that "about 1-5%" allowed for concentrations slightly above 5% thus the ranges overlapped.); In re Geisler, 116 F.3d 1465, 1469-71, 43 USPQ2d 1362, 1365-66 (Fed. Cir. 1997) (Claim reciting thickness of a protective layer as falling within a range of "50 to 100 Angstroms" considered prima facie obvious in view of prior art reference teaching that "for suitable protection, the thickness of the protective layer should be not less than about 10 nm [i.e., 100 Angstroms]." The court stated that "by stating that ‘suitable protection’ is provided if the protective layer is ‘about’ 100 Angstroms thick, [the prior art reference] directly teaches the use of a thickness within [applicant’s] claimed range."). See also In re Bergen, 120 F.2d 329, 332, 49 USPQ 749, 751-52 (CCPA 1941) (The court found that the overlapping endpoint of the prior art and claimed range was sufficient to support an obviousness rejection, particularly when there was no showing of criticality of the claimed range).
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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). The patent claim at issue was directed to a weight plate having 3 elongated openings that served as handles for transporting the weight plate. Multiple prior art patents each disclosed weight plates having 1, 2 or 4 elongated openings. 392 F.3d at 1319, 73 USPQ2d at 1226. The court stated that the claimed weight plate having 3 elongated openings fell within the "range" of the prior art and was thus presumed obvious. 392 F.3d at 1322, 73 USPQ2d at 1228. The court further stated that the "range" disclosed in multiple prior art patents is "a distinction without a difference" from previous range cases which involved a range disclosed in a single patent since the "prior art suggested that a larger number of elongated grips in the weight plates was beneficial… thus plainly suggesting that one skilled in the art look to the range appearing in the prior art." Id.
Applicant has not provided evidence of unexpected results and/or criticality commensurate in scope with the present claims from the recited copolyesters with the recited MPO:DEG ratio (as discussed in detail above).
(G) Applicant argues that “Peters clearly guides a skilled person to arrive at an amorphous polyester or crystalline polyester comprising residues of terephthalic acid, neopentyl glycol (NPG) or 1,4-cyclohexanedimethanol (CHDM), ethylene glycol (EG), and diethylene glycol (DEG), in certain compositional ranges. Therefore, there is no motivation in Peters to add another "amorphous monomer" to the polyester to achieve the properties described in Peters, as the monomers described within Peters are demonstrated to provide both crystalline and amorphous polyesters.” However, contrary to Applicant’s assertions, PETERS ET AL ‘446 clearly suggests that other modifying diols -- wherein “modifying diols are defined as diols which are not ethylene glycol, diethylene glycol, neopentyl glycol, or 1,4-cyclohexanedimethanol” (emphasis added) (PETERS ET AL ‘446, paragraph 0207) -- wherein “Examples of modifying diols include, but are not limited to, 1,2-propanediol, 1,3-propanediol,... and mixtures thereof (emphasis added) (PETERS ET AL ‘446, paragraph 0208). Therefore, PETERS ET AL ‘446 at least reasonably suggests the use of at least one or even multiple additional modifying diol(s) which are not EG, DEG, NPG, or CHDM in the reference’s disclosed copolyesters.
(H) Applicant argues that “Marlow does not provide any teaching, suggestion or motivation for preparing a polyester by combining MPO with other highly branched diols, for example NPG, and CHDM, as taught by the present claims” because “More highly branched diols can result in such lower Tg. Such polyesters may be hard to polymerize, resulting in a sticky, unusable or less effective product of polymerization. Such polyesters can also be vulnerable to unintended shrinkage during high temperatures encountered during storage or transportation, thus rendering such films untenable for many end uses and customers. Low amounts of such diols may be used to minimize these problems and maintain a higher Tg. However, in such cases the levels that are viable may be insufficient to produce desired shrink properties.” Applicant further argues that “Therefore, Marlow discloses that "highly branched" diols result in low Tg polyesters that are vulnerable to unintended shrinkage and may be hard to polymerize, resulting in a sticky, unusable or less effective product of polymerization... Therefore, Marlow teaches away from using such branched diols when designing polyesters with desirable shrink properties, as discussed above.” and that “Marlow teaches away from using such branched diols when designing polyesters with desirable shrink properties, as discussed above” and that “Marlow does not provide any teaching, suggestion or motivation for preparing a polyester by combining MPO with other highly branched diols, for example NPG, and CHDM, as taught by the present claims.”
However, Applicant mischaracterizes the teachings of MARLOW ET AL ‘986. MARLOW ET AL ‘986 does not advocate nor require the complete elimination of “highly branched” diols. Instead MARLOW ET AL ‘986 merely indicates that copolyesters containing significant amounts (e.g., 20 mol% or more) of “highly branched” diols (e.g., sufficient to avoid excessively low Tg values) can produce films with comparatively poor shrinkage characteristics. The primary focus of MARLOW ET AL ‘986 is the utilization of MPO as an additional shrink-modifying agent in copolyesters which allows the production of heat-shrinkable films which exhibit both good processability (e.g., with higher Tg values) combined with excellent shrinkage characteristics, without the need to rely on “highly branched” diols as the only shrink-modifying agent in the copolyester. Therefore, contrary to Applicant’s assertions, MARLOW ET AL ‘986 does not teach away from the use of MPO in copolyesters containing any amount of “highly branched” -- particularly when the copolyesters of PETERS ET AL ‘442 can contain relatively small amounts (e.g., as low as 1 mol%) of “highly branched” NPG -- but rather that MPO can be utilized as an supplemental shrink-modifying agent (in addition to other modifying diols) as an additional optimization parameter with respect to performance properties (e.g., shrinkage, processibility, etc.) of a heat-shrinkable film. Applicant has not presented persuasive evidence to the contrary. The Examiner further notes that CHDM is not characterized in the art as a “highly branched” diol (as compared to NPG, which is widely characterized in the art as a “highly branched” diol).
(I) Applicant argues that “Marlow discloses at para [0017], "[a]t target concentrations of
approximately 35 mol % 2-methyl-1,3-propanediol, the 2-methyl-1,3-propanediol-modified polyester is essentially non-crystallizable, and fully amorphous. "” and therefore, since “the Specification indicates that the polyesters of the present disclosure have at least some crystallinity, in contrast to the fully amorphous polyesters of Marlow”, “A skilled person would not have a reasonable expectation of success of preparing a polyesters with at least some crystallinity upon inclusion of MPO because Marlow clearly states that inclusion of MPO causes the polyesters to be essentially non-crystallizable, and fully amorphous.”
However, contrary to Applicant’s assertions, MARLOW ET AL ‘986 clearly allows for crystallinity in the MPO-modified copolyesters -- e.g., “It is another object of the present invention to provide a shrink film that crystallizes slowly.” (emphasis added) (MARLOW ET AL ‘986, paragraph 0012). MARLOW ET AL ‘986 further states that “The degree of shrinkage and the degree of crystallinity in the resulting film can be varied and controlled by varying the relative amounts of 2-methyl-1,3-propanediol in the resin and film.” (emphasis added) (MARLOW ET AL ‘986, paragraph 0013). Additionally, MARLOW ET AL ‘986 further makes reference to “semi-crystalline lower 2-methyl-1,3-propanediol content films or where 2-methyl-1,3-propanediol is added as a property modifier.” (emphasis added) semi-crystalline lower 2-methyl-1,3-propanediol content films or where 2-methyl-1,3-propanediol is added as a property modifier.” (MARLOW ET AL ‘986, paragraph 0036) Therefore, Applicant’s arguments that MARLOW ET AL ‘986 cannot be combined with PETERS ET AL ‘442 because “Marlow clearly states that inclusion of MPO causes the polyesters to be essentially non-crystallizable, and fully amorphous.” is unpersuasive, particularly since the statements regarding “fully amorphous” copolyesters was specifically in reference to copolyesters with relatively high (e.g., 35 mol%) MPO contents.
(J) Applicant argues that “there is no teaching, suggestion or motivation in Marlow for a skilled person to combine the disclosure of Marlow with that of Peters and to have a reasonable expectation of success to arrive at the polyesters of the present claims at least because (i) neither Peters nor Marlow provide any teaching or suggestion of the ratio of MPO:DEG; (ii) Marlow teaches away from using branched diols when high shrinkage % is desirable; (iii) Nothing in Marlow suggests combining MPO with any diol other than ethylene glycol, let alone branched diols such as NPG or CHDM as taught in the present claims.”
Regarding Applicant’s point (i), the combination of MARLOW ET AL ‘986 and PETERS ET AL ‘446 establish a prima facie case of obviousness for modifying the copolyesters of PETERS ET AL ‘446 with beneficial amounts (e.g., 5-50 mol%) of MPO, resulting in MPO-modified copolyesters with MPO:DEG ratios which at least partially read on the claimed range of 5:1 to 1:1 which are useful in the production of heat-shrinkable films (as discussed in detail above).
Regarding Applicant’s point (ii), MARLOW ET AL ‘986 does not advocate nor require the complete elimination of “highly branched” diols (as discussed in detail above).
Regarding Applicant’s point (iii), MARLOW ET AL ‘986 clearly allows or at least reasonably suggests the use of MPO as a modifying diol in copolyesters derived from other diols in addition to ethylene glycol (as discussed in detail above).
Regarding Applicant’s arguments regarding the alleged lack of a “reasonable expectation of success to arrive at the polyesters of the present claims”, the success in “reasonable expectation of success” is not required to be the reasonable expectation of successfully obtaining an identical benefit or advantage attributed to Applicant’s claimed invention. Rather, the correct analysis is whether there is a reasonable expectation of success of obtaining a benefit or advantage suggested by the prior art. (see MPEP 2144(II) and MPEP 2144(IV), cited above).
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 and supplemental shrink-modifying agent) 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.
In view of the above, contrary to Applicant’s assertions, there is a “reasonable expectation of success” in producing at least one predictable beneficial outcome suggested by MARLOW ET AL ‘986 when incorporating MPO in amounts of 5-50 mol% as an supplemental modifying diol in the EG / DEG / NPG copolyesters of PETERS ET AL ‘446, even if the at least one predictable beneficial outcome is not completely identical or the same as the advantage(s) or benefit(s) attributed to Applicant’s invention. Applicant has not provided persuasive evidence to the contrary, particularly when Applicant has not provided evidence of unexpected results and/or criticality commensurate in scope with the present claims from the recited copolyesters with the recited MPO:DEG ratio (as discussed in detail above).
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
TAKAHASHI ET AL (US 12,570,814) discloses heat-shrinkable polyester films.
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July 11, 2026
/Vivian Chen/
Primary Examiner, Art Unit 1787
Prosecution Insights