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
Applicant’s election with traverse of Group II, Claims 13-18 is acknowledged. All groups are distinct inventions and present a serious burden to the U.S. Patent and Trademark Office based on a proper lack of unity analysis. The traversal is on the ground that the restriction is only proper if the claims are independent or distinct and there would be a serious burden placed on the Examiner if restriction is not required. This is not found persuasive because the issue as to the meaning and intent regarding “independent and distinct” as used in 35 U.S.C 121 and 37 CFR 1.41, which is for national applications, but it is not used for PCT national stage (371) applications. For PCT national stage applications, restriction is based upon unity of invention; restriction of a national stage application does not take into account whether or not the inventions are independent or distinct, and does not take into account burden on the examiner.
This restriction is made FINAL. The restriction and election of species as stated in the previous office action are repeated here as such.
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) 13 is(are) rejected under 35 U.S.C. 102(a)(1) as being anticipated by Zhang et al. (KR1020170011081) listed on IDS and ISR.
As to claim 13, Zhang (Ex.2, table 1, abs., claims) discloses a polyester film, wherein the polyester comprises terephthalic acid (TPA), isophthalic acid (IPA), ethylene glycol (EG) and 2-methyl-1,3-propanediol (MPD) at a molar ratio of TPA/IPA//EG/MPD=95/5//70/30. The molar ratio meets the claimed ones of claim 1. The film is shrinkable at 170 °C.
Claim(s) 13-14 and 18 is(are) rejected under 35 U.S.C. 102(a)(1) as being anticipated by Komatsu et al. (JP2003155401) listed on IDS and ISR.
As to claim 13 and 18, Komatsu (table 3, abs., claims) discloses a polyester film for producing shrink labels (1) comprising a polyester (Ex.C) comprising terephthalic acid (TPA), adipic acid (AC), ethylene glycol (EG) and 2-methyl-1,3-propanediol (MPD) at a molar ratio of TPA/AC//EG/MPD=88/12//78/22. The polyester has a Tg of 55 °C, meeting the claimed range of <70 °C of claim 18. The molar ratio meets the claimed ones of claims 1 and 7.
The polyester would inherently be shrinkable and exhibit the claimed properties of TD shrinkage at three temperatures (60, 65, and 95 °C), shrink rate, shrink force, and break strain percentage of claim 18, because in view of the substantially identical composition (in this case, the disclosed polymer structure and molar ratio), it appears that the adduct would have inherently possessed the claimed properties. See MPEP § 2112.
Claim(s) 13-14 and 18 is(are) rejected under 35 U.S.C. 102(a)(1) as being anticipated by Marlow et al. (US 20050163986) listed on IDS and ISR.
As to claims 13-14 and 18, 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. The molar ratio meets the claimed ones of claims 1 and 7.
The claimed properties of claim 18 are met by the inherency rationale of above ¶2.
Claim Rejections - 35 USC § 103
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 of this title, 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.
Claim(s) 13-16 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 of claim 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. 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 of claims 1, 7, 10 and 11 and 2,2,4,4-tetramethyl-1,3-cyclobutaneiol are of claim 11.
Disclosure of Marlow is adequately set forth in ¶3 and is incorporated herein by reference.
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.
Therefore, as to claims 13-15 (in particular claim 15), 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 13-14 and 16 (in particular claim 16), 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.
Claim(s) 13-15 and 17 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 ¶4 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 of claim 12.
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 13-15 and (in particular claim 17), 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.
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