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 .
Response to Arguments
Applicant’s arguments with respect to claim 1-9 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.
Claim Rejections - 35 USC § 103
The text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action.
Claims 1-9 are rejected under 35 U.S.C. 103 as being unpatentable over Grah US 20060275564.
Regarding claims 1-3, 5, and 7-8 Grah teaches a heat shrink film comprising a polyester (Paragraph [0008]). It would have been obvious to one of ordinary skill in the art at the time of filing to select polyester as the polymer in the heat shrink film because it is prima facie obvious to select a known material based on its suitability for its intended use. See MPEP 2144.07. Grah is also silent on the heat shrink film comprising a polyester comprising a plasticizer this reads on the claimed “does not contain a polyester plasticizer.”
Grah teaches the polyester comprises a dicarboxylic acid component which includes isophthalic acid and terephthalic acid. (Paragraph [0040]).
It would have been obvious to one of ordinary skill in the art at the time of filing to select isophthalic acid and terephthalic acid as the diacid components in the polyester because it is prima facie obvious to select a known material based on its suitability for its intended use. See MPEP 2144.07.
Grah teaches if the polyester comprises terephthalic acid then the terephthalic acid component is at least 70% of the diacid component (Paragraph [0043]). This reads on the claimed isophthalic acid and terephthalic acid where the terephthalic acid comprises at least 80% of the dicarboxylic acid. Grah also teaches the polyhydric alcohol component of the polyester comprises ethylene glycol and 1,4-cyclohexanedimethanol. It would have been obvious to one of ordinary skill in the art at the time of filing to select ethylene glycol and 1,4-cyclohexanedimethanol as the diacid components in the polyester because it is prima facie obvious to select a known material based on its suitability for its intended use. See MPEP 2144.07.
However, Grah is silent with respect to suitable amounts when using a combination of equivalent polyesters. Nevertheless, the obviousness analysis may “take account of the inferences and creative steps that a person of ordinary skill in the art would employ.” KSR Int'l Co. v. Teleflex Inc., 550 U.S. 398, 421 (2007). For example, the analysis may “include recourse to logic, judgment, and common sense available to the person of ordinary skill that do not necessarily require explication in any reference or expert opinion.” Perfect Web Techs., Inc. v. InfoUSA, Inc., 587 F.3d 1324, 1329 (Fed. Cir. 2009). The Patent Trial and Appeal Board has held that mixing equivalent components in a 1:1 ratio represented no more than application of the “logic, judgment, and common sense available to the person of ordinary skill” in the art. Ex parte Swanzy, Appeal 2017-004875 at 8-9.
In this case, Grah recognizes ethylene glycol and 1,4-cyclohexanedimethanol as equivalents. It would have would have been prima facie obvious, using no more than ordinary creativity, logic, judgment, and common sense, to combine PBS and PBSA in equal amounts (i.e. in a 1:1 ratio) based on the fact that both are disclosed in parallel as being equally suitable for use in this capacity. Therefore, it would have been obvious for the composition to comprise 50% ethylene glycol and 50% 1,4-cyclohexanedimethanol as the polyhydric alcohol component. This falls within the claimed range of 20-50% 1,4-cyclohexanedimethanol and 50-80% ethylene glycol. Grah also teaches the haze value of the composition is at most 3% (Paragraph [0106]). This reads on the claimed haze value of 5% or less. Grah also teaches the polyester is amorphous (Paragraph [0045]). This reads on the claimed non-crystalline polyester comprising 90-100% of the polyester resin. Grah also teaches the polyester resin has a heat shrink in the machine and transverse direction of at least 40% at 185 and 200 F or (85 and 93C) (Paragraph [0111]). This reads on the claimed at least 40% at 90C in the main direction and at least 4% in the transverse direction.
Grah is silent on the heat shrink at any temperature below 85C. Grah is also silent on the E1 and E2 values.
Even though Grah does not expressly teach E1 or E2, or the heat shrink at any temperature below 85C products of substantially identical chemical compositions cannot have mutually exclusive properties. Where the claimed and prior art products are identical or substantially identical in structure or composition, a prima facie case of obviousness has been established. See MPEP 2112.01. Grah’s film as described above will therefore necessarily possess the claimed E1, E2, and A1.
Regarding claim 4, Grah is silent on the heat shrink at any temperature below 85C. While Grah does not expressly teach the heat shrink at any temperature below 85C products of substantially identical chemical compositions cannot have mutually exclusive properties. Where the claimed and prior art products are identical or substantially identical in structure or composition, a prima facie case of obviousness has been established. See MPEP 2112.01. Grah’s film as described above will therefore necessarily possess the claimed B1.
Regarding claim 6, Grah is silent on the nominal tensile strain at break in the TD direction. While Grah does not expressly teach the nominal tensile strain at break in the TD direction products of substantially identical chemical compositions cannot have mutually exclusive properties. Where the claimed and prior art products are identical or substantially identical in structure or composition, a prima facie case of obviousness has been established. See MPEP 2112.01. Grah’s film as described above will therefore necessarily possess the claimed C1.
Regarding claims 9, Grah teaches a heat shrink film comprising a polyester (Paragraph [0008]). It would have been obvious to one of ordinary skill in the art at the time of filing to select polyester as the polymer in the heat shrink film because it is prima facie obvious to select a known material based on its suitability for its intended use. See MPEP 2144.07.
Grah teaches the polyester comprises a dicarboxylic acid component which includes isophthalic acid and terephthalic acid. (Paragraph [0040]).
It would have been obvious to one of ordinary skill in the art at the time of filing to select isophthalic acid and terephthalic acid as the diacid components in the polyester because it is prima facie obvious to select a known material based on its suitability for its intended use. See MPEP 2144.07.
Grah teaches if the polyester comprises terephthalic acid then the terephthalic acid component is at least 70% of the diacid component (Paragraph [0043]). This reads on the claimed isophthalic acid and terephthalic acid where the terephthalic acid comprises at least 80% of the dicarboxylic acid.
Grah also teaches the polyhydric alcohol component of the polyester comprises ethylene glycol and 1,4-cyclohexanedimethanol. It would have been obvious to one of ordinary skill in the art at the time of filing to select ethylene glycol and 1,4-cyclohexanedimethanol as the diacid components in the polyester because it is prima facie obvious to select a known material based on its suitability for its intended use. See MPEP 2144.07.
However, Grah is silent with respect to suitable amounts when using a combination of equivalent polyesters.
Nevertheless, the obviousness analysis may “take account of the inferences and creative steps that a person of ordinary skill in the art would employ.” KSR Int'l Co. v. Teleflex Inc., 550 U.S. 398, 421 (2007). For example, the analysis may “include recourse to logic, judgment, and common sense available to the person of ordinary skill that do not necessarily require explication in any reference or expert opinion.” Perfect Web Techs., Inc. v. InfoUSA, Inc., 587 F.3d 1324, 1329 (Fed. Cir. 2009). The Patent Trial and Appeal Board has held that mixing equivalent components in a 1:1 ratio represented no more than application of the “logic, judgment, and common sense available to the person of ordinary skill” in the art. Ex parte Swanzy, Appeal 2017-004875 at 8-9.
In this case, Grah recognizes ethylene glycol and 1,4-cyclohexanedimethanol as equivalents. It would have would have been prima facie obvious, using no more than ordinary creativity, logic, judgment, and common sense, to combine PBS and PBSA in equal amounts (i.e. in a 1:1 ratio) based on the fact that both are disclosed in parallel as being equally suitable for use in this capacity. Therefore, it would have been obvious for the composition to comprise 50% ethylene glycol and 50% 1,4-cyclohexanedimethanol as the polyhydric alcohol component. This falls within the claimed range of 20-50% 1,4-cyclohexanedimethanol and 50-80% ethylene glycol.
Grah also teaches the haze value of the composition is at most 3% (Paragraph [0106]). This reads on the claimed haze value of 5% or less.
In Grah, crystalline and amorphous polyesters are recited in parallel as equally suited alternatives (Paragraph [0045]). It is prima facie obvious to combine two compositions each of which is taught by the prior art to be useful for the same purpose, in order to form a third composition to be used for the very same purpose. Therefore, it would have been obvious to one of ordinary skill in the art prior to the effective filing date of the claimed invention to use both crystalline and amorphous polyesters in the polymer film of Grah. Grah also teaches the polyester can be polyethylene terephthalate (Paragraph [0043]). It would have been obvious to select PET as the crystalline polyester because it is prima facie obvious to select a known material based on its suitability for its intended use. See MPEP 2144.07.
Grah also teaches the polyester resin has a heat shrink in the machine and transverse direction of at least 40% at 185 and 200 F or (85 and 93C) (Paragraph [0111]). This reads on the claimed at least 40% at 90C in the main direction and at least 4% in the transverse direction.
Grah is silent on the heat shrink at any temperature below 85C. Grah is also silent on the E1 and E2 values.
Even though Grah does not expressly teach E1 or E2, or the heat shrink at any temperature below 85C products of substantially identical chemical compositions cannot have mutually exclusive properties. Where the claimed and prior art products are identical or substantially identical in structure or composition, a prima facie case of obviousness has been established. See MPEP 2112.01. Grah’s film as described above will therefore necessarily possess the claimed E1, E2, and A1.
Allowable Subject Matter
Claim 10 is objected to as being dependent upon a rejected base claim, but would be allowable if rewritten in independent form including all of the limitations of the base claim and any intervening claims.
Regarding claim 10, Grah does not teach that the composition comprises 90% or more of a non-crystalline resin and a crystalline resin.
Conclusion
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/LILY K SLOAN/ Examiner, Art Unit 1762
/MARK KOPEC/ Primary Examiner, Art Unit 1762
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