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
Response to Amendment
The amendment supported by the original disclosure.
The text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action.
The previous restriction and 102 rejection have been maintained, but the position has been modified due to the amendment.
Claim Rejections - 35 USC § 102
Claim(s) 1-4 and 6-10 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:
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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].
Regarding the new process limitation of claim 1, claim(s) 1-4 and 6-10 is(are) product-by-process claims that are limited by and defined by the product. Determination of patentability is based on the product itself, not on its method of production. If the product in the product-by-process claim is the same as or obvious from a product of the prior art, the claim is unpatentable even though the prior product was made by a different process. In re Thorpe, 777 F. 2d 695, 698,277 USPQ 964,966 (Fed. Cir. 1985). See MPEP § 2113. In this case, no material difference has been identified between the claimed and disclosed polyester film.
Shin is silent on the claimed properties of ΔL % and SR% of claim 1, shrinkage rates (%) of claims 2-3, maximum expansion rate of claim 4, 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.
Response to Arguments
The argument for allowance of amended claims has been fully considered but not persuasive.
Regarding applicant’s argument (6:3-4) on the new process limitation, the 102 rejection has been modified and the product-by-process rationale has been applied.
Applicant’s attack (7:3-4-8:) on the inherency rationale applied for the rejection appears merely argumentative, because no data has been presented to defeat the rationale. Since the PTO does not have proper means to conduct experiments, the burden of proof is now shifted to applicants to show otherwise. A case indicating that the burden of proof can be shifted to the applicant to show that the subject matter of the prior art does not possess the characteristic relied on whether the rejection is based on inherency under 35 U.S.C. 102 or obviousness under 35 U.S.C. 103. See MPEP § 2184. In re Fitzgerald, 619 F.2d 67, 205 USPQ 594 (CCPA 1980).Therefore, the previous restriction and 102 rejections have been maintained, but the position has been modified due to the amendment. Shin’s films (138) are stretched 5 times, outside the claimed process range but within the range of instant pgpub [0042, 0092, 60-90 °C, 3-5 times, transverse direction]. The 102 rejection has been modified and the product-by-process rationale has been applied.
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 extension fee 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 date of this final action.
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.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Randy Gulakowski can be reached on 571.572.1302. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/SHANE FANG/Primary Examiner, Art Unit 1766
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