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 previous 102 rejection has been overcome by 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 103 rejections have been maintained, but the position has been modified due to the amendment.
Claim Rejections - 35 USC § 103
Claim(s) 15-16, 18, and 21 is (are) rejected under 35 U.S.C. 103 as being unpatentable over Peer et al. (WO2019089535, US 20200270395 as English equivalent) in view of Marlow et al. (US 20050163986) listed on IDS and ISR.
As to claim 15, Peer discloses a shrinkable film (abs., claims) comprising a polyester, wherein the polyester (30) comprising 70-100 mol% of terephthalic acid, 22-83 mol% of ethylene glycol, 2-20 mol% of diethylene glycol, 15-28 mol% of 1,4-cylcohexanedimethanol, and 0-30 mol% of a modifying C2-16 glycol (74). The mol% of terephthalic acid, ethylene glycol, and diethylene glycol overlap with claimed ranges of claim 10. It has been found that where claimed ranges overlap ranges disclosed by the prior art, a prima facie case of obviousness exists - see MPEP 2144.05.
As to claim 16, Peer discloses a shrinkable film (abs., claims) comprising a polyester, wherein the polyester (claim 7) comprising 70-100 mol% of terephthalic acid, 60 mol% or greater of ethylene glycol, 0-15 mol% of diethylene glycol, 0-40 mol% of 1,4-cylcohexanedimethanol, and 0-40 mol% of neopentyl glycol. The mol% of terephthalic acid, ethylene glycol, and diethylene glycol overlap with claimed ranges. It has been found that where claimed ranges overlap ranges disclosed by the prior art, a prima facie case of obviousness exists - see MPEP 2144.05. Peer (67) further discloses 1,4-cylcohexanedimethanol and 2,2,4,4-tetramethyl-1,3-cyclobutaneiol are functionally equivalent glycol to produce the shrinkable polyester film.
Peer is silent on the claimed 2-methyl-1,3-propanediol and 2,2,4,4-tetramethyl-1,3-cyclobutaneiol.
In the same area of endeavor or producing polyester films comprising similar comonomers, Marlow further (15, 19-20) discloses adding 10-35 mol% of 2-methyl-1,3-propanediol of the total diols would increase amorphous degree and exhibit high shrinkage in the film. Marlow further (38, Ex.1 vs. comp. Ex.C2) discloses using 2-methyl-1,3-propanediol instead of neopentyl glycol yields a much higher shrinkage. Marlow (abs., claims) discloses a polyester film for producing shrink labels (abs) comprising a polyester (Ex.1) comprising terephthalic acid (TPA), ethylene glycol (EG) and 2-methyl-1,3-propanediol (MPD) at a molar ratio of TPA//EG/MPD=100//72.7/27.3.
Therefore, as to claims 15, 18, and 21, it would have been obvious to one of ordinary skill in the art to have modified the aforementioned polyester disclosed by Peer and replaced the modifying C2-16 glycol with 10-35 mol% (overlap with claimed ranges of claims 1, 7 , and 10) of 2-methyl-1,3-propanediol in view of Marlow, because the resultant polyester film would meet the claimed structure and yield increased amorphous degree and high shrinkage. It has been found that where claimed ranges overlap ranges disclosed by the prior art, a prima facie case of obviousness exists - see MPEP 2144.05.
Therefore, as to claims 16, 18, and 21, it would have been obvious to one of ordinary skill in the art to have modified the aforementioned polyester disclosed by Peer and replaced the modifying neopentyl glycol with 10-35 mol% (overlap with claimed ranges of claim 10) of 2-methyl-1,3-propanediol in view of Marlow. Moreover, it would have been obvious to one of ordinary skill in the art to have replaced 1,4-cylcohexanedimethanol with 2,2,4,4-tetramethyl-1,3-cyclobutaneiol (0-40 mol%, overlap with claimed ranges of 4-11 mol% of claim 11) because of their equivalent functionality as primary glycol to produce the shrinkable polyester films. This adaptation would have obviously yielded instantly claimed polyester. The resultant polyester film would meet the claimed structure and yield increased amorphous degree and higher shrinkage. It has been found that where claimed ranges overlap ranges disclosed by the prior art, a prima facie case of obviousness exists - see MPEP 2144.05.
As to claims 18 and 21, the references are silent on the claimed properties (shrinkage, etc.). Accordingly, the examiner recognizes that not all of the claimed effects or physical properties are positively stated by the references. However, the references teach a composition containing the claimed components in the claimed amounts prepared by substantially similar components. Therefore, one of ordinary skill would have a reasonable expectation that the claimed effects and physical properties, i.e. shrinkage, etc, would necessarily flow from a composition containing all of the claimed components in the claimed amounts prepared by a substantially similar process. Where the claimed and prior art products are identical or substantially identical in structure or composition, or are produced by identical or substantially identical processes, a prima facie case of either anticipation or obviousness has been established. See In re Best, 562 F.2d 1252, 1255, 195 USPQ 430, 433 (CCPA 1977); In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990); see also MPEP § 2112.01(I)-(II). If it is the applicant’s position that this would not be the case: (1) applicant must provide evidence to support the applicant’s position, and (2) it would be the examiner’s position that the application contains inadequate disclosure on how to obtain the claimed effects or properties with only the claimed components in the claimed amounts by the disclosed or claimed process.
Claim(s) 15, 17-18, and 21 is (are) rejected under 35 U.S.C. 103(a) as being unpatentable over Peer et al. (WO2019089535, US 20200270395 as English equivalent) in view of Marlow et al. (US 20050163986, listed on IDS and ISR) in view of Shih et al. (US 20140162042).
Disclosure of Peer and Marlow is adequately set forth in ¶1 and is incorporated herein by reference.
As to claim 17, Peer discloses a shrinkable film (abs., claims) comprising a polyester, wherein the polyester (claim 7) comprising 70-100 mol% of terephthalic acid, 60 mol% or greater of ethylene glycol, 0-15 mol% of diethylene glycol, 0-40 mol% of 1,4-cylcohexanedimethanol, and 0-40 mol% of neopentyl glycol. The mol% of terephthalic acid, ethylene glycol, and diethylene glycol overlap with claimed ranges of claims 1,7, and 10-11. It has been found that where claimed ranges overlap ranges disclosed by the prior art, a prima facie case of obviousness exists - see MPEP 2144.05.
They are silent on the claimed triethylene glycol.
In the same area of endeavor or producing polyester shrinkable (13, abs., claims) films comprising similar comonomers, Shih (23) further discloses 1,4-cylcohexanedimethanol and triethylene glycol are functionally equivalent diol to produce the shrinkable polyester film.
Therefore, as to claims 15, 17-18, and 21, it would have been obvious to one of ordinary skill in the art to have modified the aforementioned polyester disclosed by Peer and replaced the modifying neopentyl glycol with 10-35 mol% (overlap with claimed ranges of claim 10) of 2-methyl-1,3-propanediol in view of Marlow. Moreover, it would have been obvious to one of ordinary skill in the art to have replaced 1,4-cylcohexanedimethanol with triethylene glycol (0-40 mol%, overlap with claimed ranges of 1-3 mol% of claim 12) in view of Shih because of their equivalent functionality as primary diols to produce shrinkable polyester films. This adaptation would have obviously yielded instantly claimed polyester. The resultant polyester film would meet the claimed structure and yield increased amorphous degree and higher shrinkage. It has been found that where claimed ranges overlap ranges disclosed by the prior art, a prima facie case of obviousness exists - see MPEP 2144.05.
The claimed properties of claims 18 and 21 are met by the same rationale of ¶1.
Response to Arguments
The argument for allowance of amended claims has been fully considered but not persuasive.
Applicant’s argument (13:1) pertaining to the claimed properties in amendment has been rendered moot. See above new ground rejections.
The applicant attacked the equivalency rationale (13:2-3). The examiner disagrees and asserts evidence has been shown in Peer and Shih. Peer (67) further discloses 1,4-cylcohexanedimethanol and 2,2,4,4-tetramethyl-1,3-cyclobutaneiol are functionally equivalent glycol to produce the shrinkable polyester film. Shih (23) further discloses 1,4-cylcohexanedimethanol and triethylene glycol are functionally equivalent diol to produce the shrinkable polyester film. The examiner acknowledges the structural difference among those functionally equivalent glycols/diols, but the applicant provides no evidence to showing replacing with those functionally equivalent glycols/diols (2,2,4,4-tetramethyl-1,3-cyclobutaneiol and triethylene glycol) would not yield the claimed properties. Instant Ex. 5-7, 8-11, and 12-15 shows no such evidence regarding 2,2,4,4-tetramethyl-1,3-cyclobutaneiol and triethylene glycol.
Applicant's argument (13:4) of unexpected results is unpersuasive and insufficient. Evidence of unexpected results must be factually supported by an appropriate affidavit of declaration. See MPEP § 716.01(c). Unexpected results must, in actuality, be unexpected. Unexpected results must be compared with the closest art, in this particular case, Peer. Unexpected results must be commensurate in scope with the claims. The applicant must show unexpected results over the entire claimed range to support unexpected results for the entire range and generic structures. Therefore, Applicant should compare several compositions containing claimed components of A, B, and C in amounts at several data points over the claimed range to several compositions containing the same claimed components of A, B, and C in amounts at several data points outside of the claimed range, including data points close to and far from the claimed range.
The applicant further argued (14:1) the previous 103 rejections by citing case laws, particular KSR. It is notified the examiner did not evoke any KSR related argument by using the factual inquiries set forth in Graham v. John Deere Co., 383 U.S. 1, 148 USPQ 459 (1966).
Applicant’s attack (14:2) on the primary reference, Peer, for not providing suggestion or motivation appears erroneous. Marlow and Shih, as secondary references, provided teaching, suggestion, and motivation for the 103 rejections. See above rejections.
The examiner disagrees with applicant’s attack on Shih (14:3) for not providing suggestion or motivation. The equivalency rationale has been applied by the teaching/suggestion of Shih.
The applicant argued (14:4) that the references haven’t shown a reasonable expectation of success. This rationale is not only erroneous and unsupported but illogical. The attorney should aware that reasonable expectation of success is rarely, if ever, actually expounded by the references, but merely proposed in light of the facts of the case, in this case being that the 2 or 3 references are of the same field of endeavor and deal with the same/similar resinous systems. Hence, one skilled in the art would in fact have a reasonable expectation of success of simply controlling the molar/weight ratio of two ore more of the reactants in a system. Such a process is considered widely routine and with an expected result. Rarely does this simple manipulation leads to or is the foundation of novelty. Applicants' have failed to suggest/argue WHY/HOW there is no reasonable expectation of success. The proposal is unsupported merely argumentative since they have failed to state when such a change is done what the end results of combining those references would be.
Therefore, the previous restriction and 103 rejections have been maintained, but the position has been modified due to the amendment. See above rejections.
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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