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 .
Claims 1-4, 6, 9-13, are pending and being examined.
Response to Amendment
The previous rejection of Claim(s) 1-8 under 35 U.S.C. 102(a)(1) as being anticipated by JP 2019-178194 A to Ishimaru et al. (hereinafter Ishimaru) is/are withdrawn in light of the Applicant’s amendments.
The previous rejection of Claim(s) 1-8 under 35 U.S.C. 102(a)(1) as being anticipated by US 2011/0008607 A1 to Haruta et al. (hereinafter Haruta) is/are withdrawn in light of the Applicant’s amendments.
The previous rejection of Claim(s) 1-4, 6-8, under 35 U.S.C. 102(a)(1) as being anticipated by US 2011/0224369 A1 to Kim et al. (hereinafter Kim) is/are withdrawn in light of the Applicant’s amendments.
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.
Claims 9, 12 and 13, 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.
Claims 9, 12, and 13, recite wherein the diol compound component comprises “1,4-hexanedimethanol.” However, the Applicant’s specification and examples appear to show that the diol compound is “1,4-cyclohexanedimethanol.” Thus, “1,4-hexanedimethanol,” is considered new matter because the Applicant does not have support in the specification for it.
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 § 102
The text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action.
Claim(s) 1-4, 6, 9-13 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by JP 2012-036272 A to Ikeda et al. (hereinafter Ikeda).
Regarding claims 1-4, 6, 9-13, Ikeda teaches a polyester film, wherein the polyester is composed of 100 mol% of terephthalic acid (TPA) for the dicarboxylic acid component, 65 mol% of ethylene glycol (EG), 32 mol% of 1,4-cyclohexanedimethanol (CHDM), and 3 mol% of diethylene glycol (DEG), for the diol component, (Table 1, para 37), which meets 100% of the claimed amorphous polyester as cited by PETG2 of the Applicant’s example. The above polyester is melted and extruded to form an unstretched polyester film which is then stretched 1.05 times in the machine direction (MD) and stretched 5.2 times in the transverse direction (TD) to form a 45 micron thick polyester film (para 40, Example 2), which meets the claimed 105% stretch ratio in the MD direction of claim 1 and the 520% of claim 6. In Table 2,
PNG
media_image1.png
606
1028
media_image1.png
Greyscale
, Example 2 shows a maximum shrinkage stress in the main shrinkage direction (TD) at 75 deg C of 6.6 MPa, and a thermal shrinkage in the TD direction under the conditions of 10 sec in hot water at 80 deg C of 41% (See para 33, 34, and Table 2, para 46), which meets the claimed A1 thermal shrinkage ratio in the TD direct in hot water at 80 deg C for 10 seconds of claim 4.
Regarding the properties of the A2 thermal shrinkage ratio in the TD direct in hot water at 90 deg C for 10 seconds, haze value of 5% or less, the B maximum shrinkage stress in the TD direction at a shrinkage temperature of 90 deg C, and B/A2, one skilled in the art would have a reasonable expectation for the polyester film of Ikeda to have the claimed properties of the claimed invention because Ikeda teaches a substantially identical polyester film to the claimed invention such as a polyester of terephthalic acid, ethylene glycol, 1,4-cyclohexanedimethanol and diethylene glycol (polyester A above), that is similar to the PETG2 used in the Applicant’s specification, which is further extruded and rolled to obtain an unstretched polyester film with a thickness of 235 microns (para 40) and stretched to a MD stretch ratio of 1.05 times and a TD direction of 5.2 times to a thickness of 45 microns, (para 40), which is substantially similar to the 105% MD stretch and 480% TD stretch which is within the MD and TD stretch of Applicant’s claims, and the Applicant cites in their specification that the above properties are dependent upon the stretch ratio in the MD direction and TD direction (para 31 and 33 of US publication) and the A1 properties are directly related to the A2 ratio, (para 106-109 of US publication) and this is further evident by Ikeda teaching the same A1 properties above as well as the MD and TD stretch within the claimed ratios. See MPEP 2112.01. (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. In re Best, 562 F.2d 1252, 1255, 195 USPQ 430, 433 (CCPA 1977)).
Response to Arguments
Applicant’s arguments with respect to claim(s) 1-4, 6, 9-13, have been considered but are moot because the new ground of rejection does not rely on any reference applied in the prior rejection of record for any teaching or matter specifically challenged in the argument.
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 HA S NGUYEN whose telephone number is (571)270-7395. The examiner can normally be reached Mon-Fri, Flex schedule 7:30am-4:00pm.
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, Randy Gulakowski can be reached at (571)272-1302. 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.
/HA S NGUYEN/Primary Examiner, Art Unit 1766
Prosecution Insights