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 .
Claim Rejections - 35 USC § 103
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 (i.e., changing from AIA to pre-AIA ) 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.
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.
Claims 1, 3, 4 and 6 are rejected under 35 U.S.C. 103 as being unpatentable over KR 10-2016-0034078 A with a machine translation (submitted on 24 February 2025) (hereinafter “Kwak”), in view of United States Patent Application Publication No. US 2022/0085307 (hereinafter “Nishio”), and further in view of United States Patent Application Publication No. US 2018/0166701 (hereinafter “Kim”).Regarding claim 1 Kwak teaches a polyester-based laminated film that is transparent, excellent in heat resistance and light resistance (paragraph [0009]). Kwak teaches the polyester-based resin has a diol component and a dicarboxylic component having 1,4-cyclohexanedimethanol (diol comprising cyclohexanedimethanol or a derivative thereof), where the polyester-based resin is obtained by polymerizing the diol component and the dicarboxylic component (comprising a copolymerized polyester-based resin in which a diol and a dicarboxylic acid are copolymerized) (paragraphs [0010] and [0019]). Kwak teaches the dicarboxylic acid comprises from 80 mol% to less than 100 mol% of terephthalic acid, which overlaps the claimed range, and 10 mol% or less of isophthalic acid, which overlaps the claimed range (paragraphs [0022], [0024], and [0026]). Kwak teaches the polyester-based resin is formed by: melt extrusion to prepare an unstretched sheet; the unstretched sheet undergoing biaxial stretching in longitudinal and transverse directions (stretching in a first direction and stretching in a second direction perpendicular to the first direction); heat setting at a temperature of 200°C – 260°C; and during the heat setting the film is relaxed in the longitudinal and/or transverse direction(s) (paragraphs [0030], [0053] – [0062]). Kwak does not teach the biaxial stretching requires stretching the sheet 2-5 times in the first direction at 70°C to 100°C, and stretching the sheet 2-5 times in the second direction. Nishio teaches a transparent polyester film (abstract and paragraph [0033]). Nishio teaches the polyester resin includes a diol component and a dicarboxylic component having 1,4-cyclohexanedimethanol (paragraphs [0033] – [0034]). Nishio teaches the film is produced by melt-extrusion, followed by heating and biaxial stretching (paragraphs [0051] – [0060]). Nishio teaches the biaxial stretching includes a draw ratio of 1.2 to 2.0-fold at a temperature of 75-120°C in a longitudinal (first) direction and a draw ratio of 4.0 to 6.0-fold in an orthogonal (second) direction at 75-110°C (Id). Nishio teaches performing the heating and biaxial stretching is performed to adjust the refractive index while maintaining an even thickness (paragraph [0059]). Therefore, it would have been obvious to incorporate the drawing ratios of the biaxial stretching from Nishio into the biaxial stretching taught by Kwak to provide the capability of adjusting the refractive index while maintaining a relatively even thickness. Regarding a moisture absorption rate and/or tensile strength of the polyester-based film, although the prior art does not explicitly disclose: (i) a moisture absorption rate according to Equation 1, as recited in the claim, is 0.25% or less; and (ii) the polyester-based film has a ratio of tensile strength in a first direction in the plane of the film to tensile strength in a second direction perpendicular to the first direction of 0.8 to 1:1, the claimed properties are deemed to naturally flow from the structure in the prior art since: (1) Kwak teaches a polyester-based film with an identical and/or substantially identical structure and/or chemical composition as the claimed invention; and/or (2) the combination of Kwak and Nishio teaches a polyester-based film which was produced by an identical and/or substantially identical process as the disclosed invention (see paragraphs [0075] – [0090], etc. from the Pre-Grant Publication of the instant application (US 2024/0067784)). See MPEP §2112.01. Kwak does not explicitly teach the polyester-based laminated film is for a sub-gasket of a fuel cell. Kim teaches a device for bonding fuel cell parts (abstract). Kim teaches to protect each electrode layer and electrolyte membrane and securing the assembly property of a fuel cell, a sub-gasket of a polyester polymer material (polyester-based film) is used (paragraph [0044]). Therefore, it would have been obvious to a person having ordinary skill in the art at the time of the invention to use the polyester-based resin of Kwak as the material in the sub-gasket of Kim to make the polyester-based resin of Kwak useful in a sub-gasket application for a fuel cell.Regarding claim 3 In addition, Kwak teaches the diol component contains 80 mol% or more of 1,4-cyclohexanedimethanol (diol comprising cyclohexanedimethanol or a derivative thereof) (paragraph [0010]), which falls within the claimed range.Regarding claims 4 and 6 Regarding a modulus, tensile strength, and/or elongation rate of the polyester-based film, although the prior art does not explicitly disclose: (i) the polyester-based film has a modulus in a first direction in the plane of the film of 400 kgf/mm2 or less and a modulus in a second direction perpendicular to the first direction of 550 kgf/mm2 or less (claim 4); and (ii) the polyester-based film is subjected to the PCT (pressure cooker test; 121°C, 1.4 atm, RH 100%) for 72 hours, the elongation retention rate is 70% or more (claim 6), the claimed properties are deemed to naturally flow from the structure in the prior art since: (1) Kwak teaches a polyester-based film with an identical and/or substantially identical structure and/or chemical composition as the claimed invention; and/or (2) the combination of Kwak and Nishio teaches a polyester-based film which was produced by an identical and/or substantially identical process as the disclosed invention. See MPEP §2112.01.
Response to Arguments
Applicant's arguments filed 22 August 2025 have been fully considered but they are not persuasive. The applicant argued none of the cited references disclose or suggest every element of the claimed invention, such as the moisture absorption rate according to Equation 1 of 0.25% or less, and a ratio of the tensile strength in the in-plane first direction to that in the second direction perpendicular to the first direction is from 0.8 to 1:1. The applicant stated it is well known in the art that the processing method greatly affects the physical properties, and highlighted Exhibit A as providing support that the same polymer processed with different methods can exhibit different mechanical properties. However, the examiner respectfully notes that the applicant has failed to provide a nexus between the claimed properties and how they may be affected by a processing method which may be different than what is disclosed by the prior art references. Furthermore, this argument is not commensurate in scope with the claims because there are no processing steps required which may be used to provide evidence that the properties from the claims may not naturally flow from the prior art references currently of record. The applicant argued the process to make the claimed invention is characterized by a first relaxation in the second direction (TD) at a strain rate of 1% to 10%, followed by a second relaxation in the first direction (MD) at a strain rate of not less than 0.5% and less than 2%, which is not taught by the prior art. This argument is not commensurate in scope with the claims. There is no requirement that the claimed polyester-based film must be made by the first relaxation and second relaxation parameters highlighted by the applicant. Furthermore, upon review of the instant application, there is no requirement that the heat-set sheet must be relaxed in the manner highlighted by the applicant to form the claimed polyester-based film. That is, page 20, line 10 through page 21, line 14, the instant specification states “the heat-set sheet may be relaxed,” “[f]or example, if the heat-set sheet is relaxed in a first direction or a second direction,” “the relaxation step may be carried out as…,”etc. In other words, the applicant’s position that “the process to make the claimed invention is characterized by a first relaxation in the second direction (TD) at a strain rate of 1% to 10%, followed by a second relaxation in the first direction (MD) at a strain rate of not less than 0.5% and less than 2%” must be present in the prior art to meet the claims does not appear to be supported by any evidence, including the instant specification. The applicant argued the Examples and Comparative Examples show that the relaxation method greatly affects the moisture absorption rate and tensile strength ratio of the film. Comparative Example 1 uses the two step relaxation method; however, a relaxation rate of 2.0% in the MD was used, which is outside the range of “less than 2%.” On the other hand, the Examples use the two step relaxation method with TD and MD strain rates within the aforementioned ranges. As a result, although Comparative Example 1 satisfies the claimed moisture absorption rate, it does not satisfy the claimed tensile strength ratio. The analysis provided by the applicant is not persuasive because it is not commensurate in scope with the claims. There are no limitations present in the claims that require a first relaxation in the second direction (TD) at a strain rate of 1% to 10%, followed by a second relaxation in the first direction (MD) at a strain rate of not less than 0.5% and less than 2%” must be present. Moreover, the applicant has failed to consider additional differences between Examples 1-2 and Comparative Example 1. Table 1 in the originally filed disclosure shows that the composition of Example 1 (Preparation Example 1-1) is different than the compositions of Example 2 (Preparation Example 1-2) and Comparative Example 1 (Preparation Example 1-3). Additionally, in Table 2, the MD stretching ratio of Comparative Example 1 is different than the MD stretching ratio than Examples 1-2. The applicant has failed to consider these differences to determine if such a variation in each of the chemical composition and/or MD stretching degree may be responsible for the differences in their properties. A person having ordinary skill in the art would reasonably expect a tensile strength of an unstretched sheet which undergoes stretching in the MD direction, for example, would have a lower tensile strength in the MD direction when compared to an identical unstretched sheet which is stretched at a higher degree (such as a stretching ratio of 3.1 times vs a stretching ratio of 3.0 times). The data in Table 4 which shows that Comparative Example 1 has a tensile strength in the MD being less than that of Examples 1-2 supports this position.
Conclusion
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 nonprovisional extension fee (37 CFR 1.17(a)) 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 mailing date of this final action.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to BRIAN HANDVILLE whose telephone number is (571)272-5074. The examiner can normally be reached Monday through Thursday, from 9 am to 4 pm.
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/BRIAN HANDVILLE/Primary Examiner, Art Unit 1783
