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 .
Claim Rejections - 35 USC § 103
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.
The factual inquiries for establishing a background for determining obviousness under 35 U.S.C. 103 are summarized as follows:
1. Determining the scope and contents of the prior art.
2. Ascertaining the differences between the prior art and the claims at issue.
3. Resolving the level of ordinary skill in the pertinent art.
4. Considering objective evidence present in the application indicating obviousness or nonobviousness.
Claim(s) 1-3, 8-12 and 14-15 are rejected under 35 U.S.C. 103 as being unpatentable over Fitch et al. US 6,737,170 B2 (present on IDS).
Fitch teaches a coated film with exceptional embossing characteristics (Title).
Regarding claims 1-2, Fitch discloses, a directly embossable, coated polyethyleneterephthalate (PET) film.
Fitch teaches creation of a PET composition mono-layer by melting and extrusion (col 4, lines 25-28), which meets applicant’s base layer. Fitch adds that an unoriented PET film is stretched to generate uniaxially oriented PET film, with stretching to this orientation corresponding to the stretching of the base layer in a machine direction as claimed. Fitch further discloses applying a coating to the uniaxially oriented PET film, drying the coating (which is typically conducted under heat to expedite solvent evaporation) and the resultant coated film is further stretched in the transverse direction, to obtain the surface layer coated PET which is embossable (reference claims 1 and 17, abstract). Fitch discloses the use of a tenter oven (col 1, line 53) where the coated PET film undergoes simultaneous stretching and heating to remove the coating solvent and generate the final coated PET film.
It is noted that there is a finite list of immediately recognizable options available to one of ordinary skill in the art, to control drying, annealing and stretching to create the final dimensions of the coated PET, which include a) first drying of coating under heated environment and further transverse stretching of the coated PET and b) simultaneous drying and transverse stretching of the coated PET under tenter conditions, as discussed above. With the presence of a finite number of options which are immediately recognizable to a person having ordinary skill in the art, and the options do not produce new or unexpected results, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to try any of the immediately recognizable and finite options of heating, drying and stretching of the coated PET, including option b) with reasonable expectation of success (see MPEP 2143 I. E.).
The claimed polyester composition which consist of physically and chemically recycled polyester (which can be PET), is met by Fitch’s PET disclosure as both the physically and chemically recycled polyester would have identical chemical makeup as the virgin polyester of Fitch and they cannot be distinguished from each other.
Applicant is reminded that "[E]ven though product-by-process claims are limited by and defined by the process, determination of patentability is based on the product itself. The patentability of a product does not depend on its method of production.
Regarding claim 3, since the recycling operation is not being claimed, the claimed polyester composition with the required amounts of physically and chemically recycled polyester, are met by Fitch’s PET.
Regarding claim 8, Fitch teaches the coating thickness of about 0.1 µm to 0.4 µm, which meets the claimed surface coating layer. Fitch discloses the thickness of base PET film to range from 4.5 µm to 60 µm. Thus, the total thickness of the overall polyester film for embossing ranges from 4.6 µm to 60.4 µm, which overlaps the claimed requirement (reference claims 19 and 26). 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, 191USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990).
Regarding claims 9-10, Fitch teaches creation of polyester polyethylene terephthalate by melt condensation polymerization of ethylene glycol and terephthalic acid which would proceed through oligomer formation (col 3, lines 50-55). The resultant polyester is identical in chemical makeup to the required chemically regenerated resin, and owing to this closeness in the make-up of the polyester materials of the instant concern it is held that burden is upon applicants to demonstrate any difference attributable to difference in the manner referred to by the claims by these material are made.
Regarding claim 11, Fitch discloses (col 3, line 57) incorporation of magnesium acetate corresponding to an electrostatic pinning additive. Since Fitch’s polyester would include the magnesium acetate additive and the patentability of the product “polyester composition of claim 1” does not depend on its method of production, the claimed requirement is met by Fitch’s disclosure.
Regarding claim 12, as discussed when addressing claim 1, the claimed product of physically regenerated polyester resin is met by Fitch’s PET disclosure. The patentability of a product does not depend on its method of production.
Regarding claim 14, Fitch teaches (reference claim 23) the stretching ratio for the base PET layer to be 3.4 to about 5.4, which is close to the required range. A prima facie case of obviousness exists where the claimed ranges or amounts do not overlap with the prior art but are merely close. Titanium Metals Corp. of America v. Banner, 778 F.2d 775, 783, 227 USPQ 773, 779 (Fed. Cir. 1985) (Court held as proper a rejection of a claim directed to an alloy of "having 0.8% nickel, 0.3% molybdenum, up to 0.1% iron, balance titanium" as obvious over a reference disclosing alloys of 0.75% nickel, 0.25% molybdenum, balance titanium and 0.94% nickel, 0.31% molybdenum, balance titanium. "The proportions are so close that prima facie one skilled in the art would have expected them to have the same properties.").
Regarding claim 15, Fitch teaches (reference claim 24) the stretching ratio for the coated PET film in the transverse direction to be 3.3 to about 4.6, overlapping the claimed requirement. 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, 191USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990).
Claims 4-6 are rejected under 35 U.S.C. 103 as being unpatentable over Fitch US 6,737,170 B2 as applied to claims 1-3, 8-12 and 14-15 above, and in view of Shieh et al. US 2008/0249226.
Regarding claims 4-6, Fitch teaches (col 7, Example 6) a coating formulation which comprises resins which include styrene-acrylic emulsion, polyester dispersion and polyfunctional Aziridine, corresponding to the required hardener. Upon water evaporation the resultant coating layer would consist of 99.8 wt% main resin and 0.2 wt% of hardener. Fitch is silent on the presence of fillers in the coating layer. In order to optimize the coating composition an artisan skilled in the art would look to analogous reference Shieh who also teaches waterborne coating compositions which are coated on a polyester substrate (reference claim 11, title and abstract). Shieh recommends incorporation of overlapping amount 0.05 to 30 wt% of surface modified filler particles such as aluminum oxide where the filler size is controlled to be 5 nm to 5 µm (para [0024]). Advantageously, Shieh provides the motivation to disperse the filler particles into the coating layer to improve the antiblocking property of the coated polyester (para [0009]).
It would have been obvious to one of ordinary skilled in the art before the effective filing date of the invention to have incorporated in Fitch’s coating layer 20 wt% of surface modified filler (which is within Shieh’s recommended amount) as taught by Shieh for the same application of creating coated polyester structure with improved antiblocking property, which would result in a coating layer with 79.8 wt% (99.8 -20) main resin, 20 wt% surface modified filler and 0.2 wt% hardener.
Claims 7 and 19 are rejected under 35 U.S.C. 103 as being unpatentable over Fitch US 6,737,170 B2 in view of Shieh et al. US 2008/0249226, as applied to claim 4-6 above and further in view of Sato et al. US 6,180,209 B1.
Regarding claim 7, Fitch in view of Shieh disclose aziridine (Fitch col 7, Example 6) as the hardener, as discussed when addressing claim 4. Fitch and Shieh do not disclose the use of hardeners as required by the claimed limitation. Analogous reference Sato which teaches the oriented polyester base film which can be coated with resins such as polyester and acrylics (col 10, lines 5-6, 14-16), recognizes aziridine and melamine based crosslinking agents as equivalents (col 14, lines 25-26). It is prima facie obvious to substitute art recognized equivalence for the same purpose. See MPEP 2144.06 II.
It would have been obvious to one of ordinary skilled in the art before the effective filing date of the invention to have substituted aziridine with melamine in Fitch and Shieh’s coating layer, since they are recognized as equivalent crosslinking agents by Sato.
Regarding claim 19, as discussed when addressing claims 4 and 7, incorporation of a 20 wt% filler with respect to the coating layer and the melamine hardener is made obvious by the combination of Fitch, Shieh and Sato. Fitch teaches that the polymer resin of the coating layer can be selected to be a polyester (Fitch, claim 25). Thus, a coating layer composition consisting of a polyester, 20wt% filler and melamine is rendered obvious by the disclosure of Fitch, Shieh and Sato.
Claims 16-18 are rejected under 35 U.S.C. 103 as being unpatentable over Fitch et al. US 6,737,170 B2 as applied to claim 1-3, 8-12 and 14-15 above, and in view of Takahashi et al US 5,763,096.
Regarding claims 16-17, Fitch discusses the use of tenter oven during inline coating of PET film (col 1, line 53), and a force hot air oven (col 6, Example 4, lines 51-52). However, Fitch is not forthcoming on the temperature settings during various stretching protocols. In order to optimize the coating process an artisan skilled in the art would look to analogous reference Takahashi who also teaches forming a coated layer on a polyester base film (abstract and claim 1). Takahashi discloses stretching temperature of the base PET layer at an overlapping temperature of 80 to 120 oC (col 8, lines 51-52), and further provides the encompassing stretching temperature range of 160 to 250 oC for the base PET layer with surface coating layer (col 8, lines 65-66).
It would have been obvious to one of ordinary skilled in the art before the effective filing date of the invention to have utilized overlapping temperature windows of Takahasi in Fitch’s procedure for the same application of creating a uniaxially oriented base PET layer and the surface coated PET structure. 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, 191USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990).
Regarding claim 18, Fitch is silent on the intrinsic viscosity of the PET utilized to generate the base layer. However analogous reference Takahashi (col 3, lines 47-48) recommends the polyester viscosity of 0.50 to 0.85 dL/g which overlaps the viscosity requirements of both physically and chemically regenerated polyester resin. Takahashi adds that the disclosed viscosity range leads to a suitable polyester film (which can be biaxially stretched).
As discussed, when addressing claim 1, both the physically and chemically recycled polyester would have identical chemical makeup as the virgin polyester of Fitch and Takahashi and cannot be distinguished from each other. The combined disclosures of Fitch and Takahashi render the claimed viscosity range requirements obvious.
Response to Arguments
Applicant's arguments filed 05/06/2026 have been fully considered, please see the response below.
The terminal disclaimer filed on 05/06/2026 has been reviewed and is accepted. The terminal disclaimer has been recorded, and overcomes the double patenting rejection.
Applicant submits that Fitch teaches the step of drying a coating which is performed before the transverse stretching step rather than during the stretching process and therefore fails to teach the amended claim 1 feature of heating the surface coating paste that is in a solution state during the stretching process.
In response, as discussed in the main rejection that while Fitch teaches the creation of a coated PET which is further stretched in the transverse direction upon drying (Fitch embodiments), Fitch in his general disclosure notes the use of a tenter oven to simultaneously heat to remove the water present in the aqueous coating solution and stretch the base PET film in transverse direction, and therefore it would have been obvious for a skilled artisan to utilize a tenter oven to generate the final coated PET film. Applicant’s attention is directed to: “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)”.
Applicant is additionally reminded that the patentability of a product i.e., “polyester film for embossing” does not depend on its method of production. Applicant’s arguments against primary reference Fitch are therefore not convincing and Fitch along with secondary references Shieh, Sato and Takahashi continue to provide the support for maintaining the rejection.
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.
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/S.M.D./
Examiner
Art Unit 1765
/JOHN M COONEY/Primary Examiner, Art Unit 1765
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