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 § 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.
Claim 13 is rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as failing to set forth the subject matter which the inventor or a joint inventor, or for applications subject to pre-AIA 35 U.S.C. 112, the applicant regards as the invention.
Claim 13 is rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor (or for applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention. The claimed limitation that the coating layer is “integrally formed”, is unclear as it can not be definitively determined what degree of formation integration constitutes being integrally formed as opposed to not integrally formed and additionally the specification does not define the term “integrally formed”.
Claim Interpretation
In the absence of definition of Claim 13’s requirement of the coating layer to be “integrally formed” in the specification, it is interpreted to mean that the coating is formed continuously or by inline manufacturing.
Claim Rejections - 35 USC § 102
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 (i.e., changing from AIA to pre-AIA ) 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.
The following is a quotation of the appropriate paragraphs of 35 U.S.C. 102 that form the basis for the rejections under this section made in this Office action:
A person shall be entitled to a patent unless –
(a)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention.
Claim(s) 1-3 and 9-13 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by 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).
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 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 “chemical regenerated polyester including electrostatic pinning additive” 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 13, Fitch teaches inline coating on a PET base layer, meeting the claimed requirement (col 2, line 10).
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) 8, 14 and 15 is/are rejected under 35 U.S.C. 103 as being unpatentable over Fitch et al. US 6,737,170 B2 (present on IDS) as applied to claims 1-3 and 9-13 above.
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 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 claim 1-3 and 9-13 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 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.
Claim 7 is 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.
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.
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 and 9-13 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.
Double Patenting
The nonstatutory double patenting rejection is based on a judicially created doctrine grounded in public policy (a policy reflected in the statute) so as to prevent the unjustified or improper timewise extension of the “right to exclude” granted by a patent and to prevent possible harassment by multiple assignees. A nonstatutory double patenting rejection is appropriate where the conflicting claims are not identical, but at least one examined application claim is not patentably distinct from the reference claim(s) because the examined application claim is either anticipated by, or would have been obvious over, the reference claim(s). See, e.g., In re Berg, 140 F.3d 1428, 46 USPQ2d 1226 (Fed. Cir. 1998); In re Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993); In re Longi, 759 F.2d 887, 225 USPQ 645 (Fed. Cir. 1985); In re Van Ornum, 686 F.2d 937, 214 USPQ 761 (CCPA 1982); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Thorington, 418 F.2d 528, 163 USPQ 644 (CCPA 1969).
A timely filed terminal disclaimer in compliance with 37 CFR 1.321(c) or 1.321(d) may be used to overcome an actual or provisional rejection based on nonstatutory double patenting provided the reference application or patent either is shown to be commonly owned with the examined application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. See MPEP § 717.02 for applications subject to examination under the first inventor to file provisions of the AIA as explained in MPEP § 2159. See MPEP § 2146 et seq. for applications not subject to examination under the first inventor to file provisions of the AIA . A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
The filing of a terminal disclaimer by itself is not a complete reply to a nonstatutory double patenting (NSDP) rejection. A complete reply requires that the terminal disclaimer be accompanied by a reply requesting reconsideration of the prior Office action. Even where the NSDP rejection is provisional the reply must be complete. See MPEP § 804, subsection I.B.1. For a reply to a non-final Office action, see 37 CFR 1.111(a). For a reply to final Office action, see 37 CFR 1.113(c). A request for reconsideration while not provided for in 37 CFR 1.113(c) may be filed after final for consideration. See MPEP §§ 706.07(e) and 714.13.
The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The actual filing date of the application in which the form is filed determines what form (e.g., PTO/SB/25, PTO/SB/26, PTO/AIA /25, or PTO/AIA /26) should be used. A web-based eTerminal Disclaimer may be filled out completely online using web-screens. An eTerminal Disclaimer that meets all requirements is auto-processed and approved immediately upon submission. For more information about eTerminal Disclaimers, refer to www.uspto.gov/patents/apply/applying-online/eterminal-disclaimer.
Claims 1-18 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-12 of copending Application No. 19/201,025 (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other because they differ in overlap between material make-ups, amounts and processing operations in a manner which would have been obvious to one having ordinary skill in the art with the expectation of success in the absence of a showing of new or unexpected results.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Surbhi M Du whose telephone number is (571)272-9960. The examiner can normally be reached M-F 9:00 am to 5:00pm.
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/S.M.D./
Examiner
Art Unit 1765
/JOHN M COONEY/Primary Examiner, Art Unit 1765