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 .
Specification
The Specification is objected to because there is no antecedent basis present for the claimed concept in claim 18 of annealing an oriented sheet during orientation. Rather, there is only express support for an annealing operation that precedes the stretching operation.
Claim Rejections - 35 USC § 112
The following is a quotation of 35 U.S.C. 112(b):
(b) CONCLUSION.—The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the inventor or a joint inventor regards as the invention.
The following is a quotation of 35 U.S.C. 112 (pre-AIA ), second paragraph:
The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.
Claims 18, 22-23, and 26-35 are rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor (or for applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention.
Claim 18 states that an annealing step carried out on the monoaxially/biaxially oriented sheet occurs “during orientation…” The concept of annealing being carried out on an already-oriented sheet conflicts with the limitation indicating that said annealing is performed “during orientation”. Moreover, insofar as this subject matter is excluded from the Specification, there is no means of gaining clarity on this matter.
As an aside, the Examiner had previously indicated that claim 18 was not rendered unpatentable by Merrill because, although it mentioned a heating step, or more precisely a heat setting step, there was no indication that the conditions were those under which annealing would occur. The Examiner now understands, however, that heat setting merely refers to a form of constrained high temperature annealing in the context of film manufacture. See the first sentence under the heading
1. INTRODUCTION in the attached document entitled “Physical and Microstructural Effects of Heat Setting in Polyester Films” authored by Greener et al. and published in Polymer Engineering and Science (12/01/1999). In fact, it is speculated here that “annealing… during orientation” is perhaps an attempt to refer to this same concept where constraining and orienting are supposed to articulate the same aspect (constraining possibly referring to the maintaining of a tension lesser in magnitude than that employed during the orienting step).
Merrill continues to be regarded as not forming a basis for the rejection of claim 18 and claims dependent therefrom primarily because the precise meaning of the aforementioned phrase on which the 112(b) rejection is predicated has not yet been settled. Applicant is advised of the strong possibility of its reinstatement however depending on their response to this rejection in light of Examiner’s current understanding that heating setting and annealing are practically synonymous.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to MARC S ZIMMER whose telephone number is (571)272-1096. The examiner can normally be reached M-F 8:30-5:00.
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October 9, 2026
/MARC S ZIMMER/Primary Patent Examiner, Art Unit 1765
