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 .
DETAILED ACTION
All the references cited in the International Search Report have been considered. The most pertinent of these references have been applied below.
Election/Restrictions
The applicant has elected Group I (claims 1-10) without traverse.
This restriction is made FINAL. See previous action for the reasons of applying restriction.
Claim Rejections - 35 USC § 102
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.
(a)(2) the claimed invention was described in a patent issued under section 151, or in an application for patent published or deemed published under section 122(b), in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention.
Claim(s) 1-10 is(are) rejected under 35 U.S.C. 102(a)(2)/(a)(1) as being anticipated by Shin et al. (US 20210054140, eff. F/D 4/30/18, WO2019212241 (P/D: 11/07/19, Assignee SKC)) listed on ISR.
As to claims 1 and 7-9, Shin (claims, abs., examples, 82-87,) discloses a stretched polyester film for producing labels (38-41) comprising terephthalic acid (TPA)//ethylene glycol (EG)/ neopentyl glycol(NPG)/ diethylene glycol (DEG). The polyesters (Table 3, 134-145) of Ex.3-2, 3-3, and 3-4 meet the claimed comonomers and mol% of the comonomers of instant claims 1 and 7-8:
PNG
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294
988
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Greyscale
The films have a thickness of 40 microns, identical to that of the polyester film in instant pgpub [0104] and examples. The films (137) are produced via melt-extrusion at 280 °C, which meets the melt-extrusion condition of instant pgpub [0089, 260-300 °C]. The unstretched films (137) are rolled at a speed of 54m/min, which meets the preheating condition of instant pgpub [0089-90, 50-90 m/min. The films (138) are preheated at 100-110 °C for 0.1 min., which meets the preheating condition of instant pgpub [0091, 90-120 °C, 0.05-0.5 min.]. The films (138) are stretched 5 times at 76-77 °C in transverse direction, which meets the stretching condition of instant pgpub [0042, 0092, 60-90 °C, 3-5 times, transverse direction]. The films (138) are annealed (heat setting) at 85 °C, which meets the heat set condition of instant claim 9 and pgpub [0093].
Shin is silent on the claimed properties of ΔL % of claim 1, shrinkage rates (%) of claims 2-3, maximum expansion rate of claim 4, SR% of claim 5, and peel strength of claim 6 in the claimed formulae. However, the reference teaches a polyester that meets the claimed structures (mol% and comonomers) and a process of making films (extrusion, rolling speed, preheat, stretching, and annealing) comprising thereof indistinguishable from the process recited in instant claims and specifications (see above rejections). In light of this, it appears Shin’s films (Ex. 3-2, 3-3, and 3-4) would inherently exhibit the aforementioned properties. See MPEP § 2112.
As to claim 10, Shin is silent on the intended use of "for use as a heat-shrinkage label or packaging material”. Case law holds that a recitation of the intended use of the claimed invention must result in a structural difference between the claimed invention and the prior art in order to patentably distinguish the claimed invention from the prior art. If the prior art structure is capable of performing the intended use, then it meets the claim. See MPEP 2111.02, In re Casey, 152 USPQ 235 (CCPA 1967) and In re Otto, 136 USPQ 458,459 (CCPA 1963). In this particular case, no compositional and property difference between the claimed and disclosed polyester labels, and the disclosed polyester labels would inherently be capable of performed the claimed intended use.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to SHANE FANG whose telephone number is (571)270-7378. The examiner can normally be reached on Mon-Thurs. 8am-6pm. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Randy Gulakowski can be reached on 571.572.1302. Information regarding the status of an application may be obtained from the Patent Application Information Retrieval (PAIR) system. Status information for published applications may be obtained from either Private PAIR or Public PAIR. Status information for unpublished applications is available through Private PAIR only. For more information about the PAIR system, see http://pair-direct.uspto.gov. Should you have questions on access to the Private PAIR system, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative or access to the automated information system, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/SHANE FANG/Primary Examiner, Art Unit 1766
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