DETAILED ACTION
Notice of Pre-AIA or AIA Status
Claim(s) 1-8 is/are pending.
Claim(s) 1-8 is/are rejected.
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 .
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 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.
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 §§ 706.02(l)(1) - 706.02(l)(3) 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 USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The 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/process/file/efs/guidance/eTD-info-I.jsp.
Claim(s) 1-8 is/are rejected on the ground of nonstatutory double patenting as being unpatentable over:
• claims 1-4 of U.S. Patent No. 9,296,867 (HARUTA ET AL); or
• claims 1-17 of U.S. Patent No. 9,352,508 (HARUTA ET AL); or
• claims 1-6 of U.S. Patent No. 10,189,962 (HARUTA ET AL); or
• claims 1-12 of U.S. Patent No. 10,287,433 (HARUTA ET AL); or
• claims 1-4 of U.S. Patent No. 12,116,480 (HARUTA ET AL); or
• claims 1-8 of U.S. Patent No. 12,258,457 (HARUTA ET AL);
in view of HARUTA ET AL (US 2012/0043248),
and in view of KLEIN ET AL (US 2017/0151746).
The above U.S. Patents each claim a heat-shrinkable polyester film with heat-shrinkage properties which substantially overlap the recited properties (1)-(2) as recited in present application claim 1. However, the above U.S. Patents do not specifically claim films with recited properties (3)-(5).
HARUTA ET AL ‘248 discloses heat-shrinkable polyester films with heat-shrinkage properties which substantially overlap the recited properties (1)-(2) as recited in present application claim 1, wherein the heat-shrinkable polyester film can contain particles (e.g., with average particle sizes of 0.05-3 microns, etc.) to improve the working and handling properties of the heat-shrinkable polyester film. The reference further discloses that the polyester for the heat-shrinkable films comprise: (i) at least 50 mol% ethylene terephthalate units; (ii) 13-30 mol% of a sum of one or more kind(s) of comonomer(s) which form a non-crystalline (corresponding to the recited “amorphous components” of claim 8) component. The reference further discloses that it is well known in the art to form heat-shrinkable polyester films with a typical thickness of 10-70 microns and a haze of 2-13% useful as a heat-shrinkable label (e.g., a label for wrapping around a container or packed product, followed by shrinking, etc.), wherein the film can be provided with a coating layer. (entire document, e.g., paragraph 0001, 0008-0012, 0017, 0033-0041, 0043-0046, 0131-0132, etc.)
KLEIN ET AL ‘746 discloses that it is well known in the art to utilize particles to provide an outer surface of polyester films with:
(i) a Sa value (arithmetic average of the absolute ordinate, as measured in accordance with ISO 25178-2) (corresponding to the recited “arithmetical mean height Sa” or the recited requirement “(4)”) of at least 25-60 nm (0.025-0.060 microns);
(ii) a Sp value (maximum peak height, as measured in accordance with ISO 25178-2) (corresponding to the recited “maximum peak height Sp” or the recited requirement “(3)”) of 500-1500 nm (0.5-1.5 microns);
in order to provide the polyester films with an excellent combination of slipperiness, winding characteristics (e.g., avoiding creases, corrugations, or other distortion effects, etc.) and transparency (e.g., haze of 7% or less, etc.) while avoiding excessive roughness. The reference further discloses that the transparency and haze of the film can be “achieved via selection of the particles (in particular the particle size) and via particle content... and also via suitable polymers and the production process”, wherein the preferred particle size is 0.7-1.5 microns and the preferred particle content is 0.1-0.7 wt%. (paragraph 0011-0013, 0016-0018, 0023, 0027, 0029, 0040-0041, 0043; etc.)
Regarding claims 1-8, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to incorporate effective amounts of particles as suggested in HARUTA ET AL ‘248 and KLEIN ET AL ‘746 in the heat-shrinkable polyester films claimed in the above U.S. Patents sufficient to provide said polyester films with Sa and Sp values which produce polyester films with excellent winding characteristics in combination with low haze (as suggested in KLEIN ET AL ‘746).
Further regarding claim 1, since: (i) HARUTA ET AL ‘248 suggest the incorporation of particles to provide heat-shrinkable polyester films with good film-handling properties; (ii) KLEIN ET AL ‘746 discloses adjusting the surface properties of polyester films to have Sa values of 0.025-0.060 microns and Sp values of 0.5-1.5 microns (which substantially overlap the claimed Sa range of 0.030-0.200 microns and the claimed Sp range of 0.8-3 microns) to improve the winding characteristics (e.g., reduction in creases, corrugations, or other distortion effects during winding into a roll, etc.) of a polyester film; the Examiner has reason to believe that at least a substantial portion of the heat-shrinkable polyester films of HARUTA ET AL ‘248 or HARUTA ET AL ‘607 modified with particles to have Sp (3) and Sa (4) values consistent with KLEIN ET AL ‘746 would have degassing time values which at least partially read on the degassing time values (5) recited in claim 1, therefore the Examiner has basis for shifting the burden of proof to applicant as in In re Fitzgerald et al., 205 USPQ 594.
Regarding claim 2, one of ordinary skill in the art would have formed heat-shrinkable polyester films claimed in the above U.S. Patents in conventional heat-shrinkable film thicknesses as suggested in HARUTA ET AL ‘248 in order to produce useful heat-shrinkable label materials.
Regarding claim 3, one of ordinary skill in the art would have produced heat-shrinkable polyester films claimed in the above U.S. Patents using the techniques disclosed in KLEIN ET AL ‘746 (i.e., “via selection of the particles (in particular the particle size) and via particle content... and also via suitable polymers and the production process”) to produce heat-shrinkable films with low transparency (as represented by haze values of 11% or less, etc.) in order to produce heat-shrinkable labels suitable for providing with specific decorative and/or aesthetic effects (e.g., providing visibility of underlying label layers or of labelled containers, etc.).
Regarding claim 4, one of ordinary skill in the art would have applied known functional coatings on at least one surface of heat-shrinkable polyester films claimed in the above U.S. Patents in order to produce coated films with multiple layers (corresponding to the recited “heat-shrinkable polyester film comprising at least two or more laminated layers”) with enhanced performance properties (e.g., adhesion, printability, etc.).
If Applicant chooses to argue that the degassing time recited in claim 1 is not an inherent feature of a polyester film surface having Sp (3) and Sa (4) values consistent with claim 1 and requires additional specific elements or modifications, such arguments may raise significant issues under 35 U.S.C. 112(a) with respect to scope of enablement, and Applicant’s arguments and/or assertions may be used as admissions or supporting evidence with respect to rejections under 35 U.S.C. 112(a) with respect to scope of enablement.
Claim Rejections - 35 USC § 103 (AIA )
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.
This application currently names joint inventors. In considering patentability of the claims the examiner presumes that the subject matter of the various claims was commonly owned as of the effective filing date of the claimed invention(s) absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and effective filing dates of each claim that was not commonly owned as of the effective filing date of the later invention in order for the examiner to consider the applicability of 35 U.S.C. 102(b)(2)(C) for any potential 35 U.S.C. 102(a)(2) prior art against the later invention.
Claim(s) 1-8 is/are rejected under 35 U.S.C. 103 as being unpatentable over:
• HARUTA ET AL (US 2012/0043248), or
• HARUTA ET AL (US 2018/0043607),
in view of KLEIN ET AL (US 2017/0151746).
HARUTA ET AL ‘248 discloses heat-shrinkable polyester films with heat-shrinkage properties which substantially overlap the recited properties (1)-(2) as recited in present application claim 1, wherein the heat-shrinkable polyester film can contain particles (e.g., with average particle sizes of 0.05-3 microns, etc.) to improve the working and handling properties of the heat-shrinkable polyester film. The reference further discloses that the polyester for the heat-shrinkable films comprise: (i) at least 50 mol% ethylene terephthalate units; (ii) 13-30 mol% of a sum of one or more kind(s) of comonomer(s) which form a non-crystalline (corresponding to the recited “amorphous components” of claim 8) component. The reference further discloses that it is well known in the art to form heat-shrinkable polyester films with a typical thickness of 10-70 microns and a haze of 2-13% useful as a heat-shrinkable label (e.g., a label for wrapping around a container or packed product, followed by shrinking, etc.), wherein the film can be provided with a coating layer. (entire document, e.g., paragraph 0001, 0008-0012, 0017, 0033-0041, 0043-0046, 0131-0132, etc.)
HARUTA ET AL ‘607 discloses heat-shrinkable polyester films with heat-shrinkage properties which substantially overlap the recited properties (1)-(2) in present application claim 1, wherein the heat-shrinkable polyester film can contain particles (e.g., with average particle sizes of 0.05-3 microns, etc.) to improve the working and handling properties of the heat-shrinkable polyester film. The reference further discloses that the polyester for the heat-shrinkable films comprise: (i) at least 50 mol% ethylene terephthalate units; (ii) 13-30 mol% of a sum of one or more kind(s) of comonomer(s) which form a non-crystalline (corresponding to the recited “amorphous components” of claim 8) component. The reference further discloses that it is well known in the art to form heat-shrinkable polyester films with a typical thickness of 6-27 microns useful as a heat-shrinkable label (e.g., a label for wrapping around a container or packed product, followed by shrinking, etc.), wherein the film can be a multilayer polyester film with two or more laminated layers. (entire document, e.g., paragraph 0001-0002, 0012, 0019, 0022-0023, 0027, 0030, 0032-0033, 0043-0045, 0060-0063, etc.)
However, the references do not specifically discuss films with recited properties (3)-(5).
KLEIN ET AL ‘746 discloses that it is well known in the art to utilize particles to provide an outer surface of polyester films with:
(i) a Sa value (arithmetic average of the absolute ordinate, as measured in accordance with ISO 25178-2) (corresponding to the recited “arithmetical mean height Sa” or the recited requirement “(4)”) of at least 25-60 nm (0.025-0.060 microns);
(ii) a Sp value (maximum peak height, as measured in accordance with ISO 25178-2) (corresponding to the recited “maximum peak height Sp” or the recited requirement “(3)”) of 500-1500 nm (0.5-1.5 microns);
in order to provide the polyester films with an excellent combination of slipperiness, winding characteristics (e.g., avoiding creases, corrugations, or other distortion effects, etc.) and transparency (e.g., haze of 7% or less, etc.) while avoiding excessive roughness. The reference further discloses that the transparency and haze of the film can be “achieved via selection of the particles (in particular the particle size) and via particle content... and also via suitable polymers and the production process”, wherein the preferred particle size is 0.7-1.5 microns and the preferred particle content is 0.1-0.7 wt%. (paragraph 0011-0013, 0016-0018, 0023, 0027, 0029, 0040-0041, 0043; etc.)
Regarding claims 1-8, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to incorporate effective amounts of particles as suggested in HARUTA ET AL ‘248 and KLEIN ET AL ‘746 in the heat-shrinkable polyester films of HARUTA ET AL ‘248 or HARUTA ET AL ‘607 sufficient to provide said polyester films with Sa and Sp values which produce polyester films with excellent winding characteristics in combination with low haze (as suggested in KLEIN ET AL ‘746).
Further regarding claim 1, since: (i) HARUTA ET AL ‘248 or HARUTA ET AL ‘607 disclose the incorporation of particles to provide heat-shrinkable polyester films with good film-handling properties; (ii) KLEIN ET AL ‘746 discloses adjusting the surface properties of polyester films to have Sa values of 0.025-0.060 microns and Sp values of 0.5-1.5 microns (which substantially overlap the claimed Sa range of 0.030-0.200 microns and the claimed Sp range of 0.8-3 microns) to improve the winding characteristics (e.g., reduction in creases, corrugations, or other distortion effects during winding into a roll, etc.) of a polyester film; the Examiner has reason to believe that at least a substantial portion of the heat-shrinkable polyester films of HARUTA ET AL ‘248 or HARUTA ET AL ‘607 modified with particles to have Sp (3) and Sa (4) values consistent with KLEIN ET AL ‘746 would have degassing time values which at least partially read on the degassing time values (5) recited in claim 1, therefore the Examiner has basis for shifting the burden of proof to applicant as in In re Fitzgerald et al., 205 USPQ 594.
Regarding claim 3, one of ordinary skill in the art would have produced heat-shrinkable polyester films in accordance with HARUTA ET AL ‘248 or HARUTA ET AL ‘607 using the techniques disclosed in KLEIN ET AL ‘746 (i.e., “via selection of the particles (in particular the particle size) and via particle content... and also via suitable polymers and the production process”) to produce heat-shrinkable films with low haze (e.g., 11% or less, etc.) in order to produce heat-shrinkable labels suitable for providing with specific decorative and/or aesthetic effects (e.g., providing visibility of underlying label layers or of labelled containers, etc.).
Regarding claim 4, one of ordinary skill in the art would have applied known functional coatings on at least one surface of heat-shrinkable polyester films in accordance with HARUTA ET AL ‘248 in order to produce coated films with multiple layers (corresponding to the recited “heat-shrinkable polyester film comprising at least two or more laminated layers”) with enhanced performance properties (e.g., adhesion, printability, etc.).
If Applicant chooses to argue that the degassing time recited in claim 1 is not an inherent feature of a polyester film surface having Sp (3) and Sa (4) values consistent with claim 1 and requires additional specific elements or modifications, such arguments may raise significant issues under 35 U.S.C. 112(a) with respect to scope of enablement, and Applicant’s arguments and/or assertions may be used as admissions or supporting evidence with respect to rejections under 35 U.S.C. 112(a) with respect to scope of enablement.
Response to Arguments
Applicant’s arguments filed 08/21/2025 have been fully considered and are persuasive.
MANABE ET AL ‘804 and MANABE-WO ‘998 do not qualify as prior art under 35 U.S.C. 102(a)(2) in view of the 35 U.S.C. 102(b)(2)(C) statement filed 08/21/2025.
Applicant’s arguments filed 02/12/2026 (in particular, with respect to the differences between Ra and Sa, and between Rt and Sp) have been fully considered and are persuasive.
Therefore, the rejection has been withdrawn. However, upon further consideration, new ground(s) of rejection are made in the present Office Action based on newly cited prior art..
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Vivian Chen (Vivian.chen@uspto.gov) whose telephone number is (571) 272-1506. The examiner can normally be reached on Monday through Thursday from 8:30 AM to 6 PM. The examiner can also be reached on alternate Fridays.
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May 30, 2026
/VIVIAN CHEN/Primary Examiner, Art Unit 1787
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