Prosecution Insights
Last updated: April 19, 2026
Application No. 18/284,668

POLYESTER RESIN

Non-Final OA §102§103§112
Filed
Sep 28, 2023
Examiner
KARST, DAVID THOMAS
Art Unit
1767
Tech Center
1700 — Chemical & Materials Engineering
Assignee
Fujifilm Corporation
OA Round
1 (Non-Final)
64%
Grant Probability
Moderate
1-2
OA Rounds
3y 0m
To Grant
74%
With Interview

Examiner Intelligence

Grants 64% of resolved cases
64%
Career Allow Rate
629 granted / 977 resolved
-0.6% vs TC avg
Moderate +10% lift
Without
With
+10.1%
Interview Lift
resolved cases with interview
Typical timeline
3y 0m
Avg Prosecution
58 currently pending
Career history
1035
Total Applications
across all art units

Statute-Specific Performance

§101
0.7%
-39.3% vs TC avg
§103
49.3%
+9.3% vs TC avg
§102
13.0%
-27.0% vs TC avg
§112
24.6%
-15.4% vs TC avg
Black line = Tech Center average estimate • Based on career data from 977 resolved cases

Office Action

§102 §103 §112
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. Priority Applicant’s claim for the benefit of a prior-filed application under 35 U.S.C. 119(e) or under 35 U.S .C. 120, 121, 365(c), or 386(c) is acknowledged. Receipt is acknowledged of certified copies of papers required by 37 CFR 1.55. 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 appl icant regards as his invention. Claim s 5 , 7 , and 9 -20 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 5 recites the limitation “The polyester resin according to claim 4, wherein the polyester resin has a film shape having a thickness of from 20 to 100 µm, and has an in-plane retardation of from 4,000 to 20,000 nm” in lines 1-3, which is indefinite because it is unclear how it further limits the composition and/or structure of “The polyester resin according to claim 4” because a polyester resin cannot have “a film shape” and cannot have “an in-plane retardation”. A film comprising a polyester resin can have a film shape and can have an in-plane retardation. Based on the specification of the instant application [0066, 0074] , for further examination of the claims, this limitation is interpreted as “A film comprising the polyester resin according to claim 4, wherein the film has a thickness of from 20 to 100 µm, and has an in-plane retardation of from 4,000 to 20,000 nm”. Claim 7 recites the limitation “The polyester resin according to claim 6, wherein the polyester resin has a film shape having a thickness of from 20 to 100 µm, and has an in-plane retardation of from 4,000 to 20,000 nm” in lines 1-3, which is indefinite because it is unclear how it further limits the composition and/or structure of “The polyester resin according to claim 6” because a polyester resin cannot have “a film shape” and cannot have “an in-plane retardation”. A film comprising a polyester resin can have a film shape and can have an in-plane retardation. Based on the specification of the instant application [0066, 0074], for further examination of the claims, this limitation is interpreted as “A film comprising the polyester resin according to claim 6, wherein the film has a thickness of from 20 to 100 µm, and has an in-plane retardation of from 4,000 to 20,000 nm”. Claim 9 recites the limitation “The polyester resin according to claim 8, wherein the polyester resin has a film shape having a thickness of from 20 to 130 µm, and has an in-plane retardation of from 4,000 to 15,000 nm” in lines 1-3, which is indefinite because it is unclear how it further limits the composition and/or structure of “The polyester resin according to claim 8” because a polyester resin cannot have “a film shape” and cannot have “an in-plane retardation”. A film comprising a polyester resin can have a film shape and can have an in-plane retardation. Based on the specification of the instant application [0066, 0074], for further examination of the claims, this limitation is interpreted as “A film comprising the polyester resin according to claim 8, wherein the film has a thickness of from 20 to 130 µm, and has an in-plane retardation of from 4,000 to 15,000 nm”. Claim 10 recites the limitation “The polyester resin according to claim 5, wherein a change in film turbidity after being heated at 150°C for 100 hours is 1.5% or less” in lines 1-3, which is indefinite because it is unclear how it further limits the composition and/or structure of “The polyester resin according to claim 5” because a polyester resin cannot have “a change in film turbidity”. A film comprising a polyester resin can have a change in film turbidity . Based on the specification of the instant application [0100], for further examination of the claims, this limitation is interpreted as “The film according to claim 5, wherein a change in film turbidity after being heated at 150°C for 100 hours is 1.5% or less”. Claim 11 recites the limitation “The polyester resin according to claim 5, wherein a thermal shrinkage rate, in both a machine stretching direction and a crosswise stretching direction of film stretching, when heated at 150°C for 30 minutes is 2% or less with respect to a length being heated” in lines 1-4, which is indefinite because it is unclear how it further limits the composition and/or structure of “The polyester resin according to claim 5” because a polyester resin cannot have a machine stretching direction and a crosswise stretching direction of film stretching. A film comprising a polyester can have a machine stretching direction and a crosswise stretching direction of film stretching. Based on the specification of the instant application [0103], for further examination of the claims, this limitation is interpreted as “The film according to claim 5, wherein a thermal shrinkage rate, in both a machine stretching direction and a crosswise stretching direction of film stretching, when heated at 150°C for 30 minutes is 2% or less with respect to a length being heated”. Claim 12 recites the limitation “The polyester resin according to claim 5, wherein a minor endothermic peak temperature is 150°C or higher” in lines 1-2, which is indefinite because it is unclear how it further limits the composition and/or structure of “The polyester resin according to claim 5” because the specification of the instant application recites that the minor endothermic peak temperature ( Tmeta ) refers to the minor endothermic peak before the melting point peak in a differential scanning calorimetry chart obtained by heating the polyester film from its solid state from 30°C to 300°C at a temperature rise rate of 2°C/minute using a differential scanning calorimeter according to JIS K7122JIS K7122 (1987) [0079], which means that “a minor endothermic peak temperature” is a property of a film comprising a polyester resin and not a property of a polyester resin. For further examination of the claims, this limitation is interpreted as “The film according to claim 5, wherein a minor endothermic peak temperature is 150°C or higher”. Claim 13 recites the limitation “The polyester resin according to claim 5, wherein, when the film-shaped polyester resin is heated at 150°C for 100 hours, the number of oligomers is 400 or less per 1 mm 2 of the film surface” in lines 1-3, which is indefinite because it is unclear how it further limits the composition and/or structure of “The polyester resin according to claim 5” because a polyester resin cannot be “film-shaped”. A film comprising a polyester resin can be film-shaped. Based on the specification of the instant application [0102], for further examination of the claims, this limitation is interpreted as “The film according to claim 5, wherein, when the film is heated at 150°C for 100 hours, the number of oligomers is 400 or less per 1 mm 2 of the film surface”. Claim 14 recites the limitation “The polyester resin according to claim 7, wherein a change in film turbidity after being heated at 150°C for 100 hours is 1.5% or less” in lines 1-2, which is indefinite because it is unclear how it further limits the composition and/or structure of “The polyester resin according to claim 7” because a polyester resin cannot have “a change in film turbidity”. A film comprising a polyester resin can have a change in film turbidity. Based on the specification of the instant application [0100], for further examination of the claims, this limitation is interpreted as “The film according to claim 7, wherein a change in film turbidity after being heated at 150°C for 100 hours is 1.5% or less”. Claim 15 recites the limitation “The polyester resin according to claim 7, wherein a thermal shrinkage rate, in both a machine stretching direction and a crosswise stretching direction of film stretching, when heated at 150°C for 30 minutes is 2% or less with respect to a length being heated” in lines 1-4, which is indefinite because it is unclear how it further limits the composition and/or structure of “The polyester resin according to claim 7” because a polyester resin cannot have a machine stretching direction and a crosswise stretching direction of film stretching. A film comprising a polyester can have a machine stretching direction and a crosswise stretching direction of film stretching. Based on the specification of the instant application [0103], for further examination of the claims, this limitation is interpreted as “The film according to claim 7, wherein a thermal shrinkage rate, in both a machine stretching direction and a crosswise stretching direction of film stretching, when heated at 150°C for 30 minutes is 2% or less with respect to a length being heated”. Claim 16 recites the limitation “The polyester resin according to claim 7, wherein a minor endothermic peak temperature is 150°C or higher” in lines 1-2, which is indefinite because it is unclear how it further limits the composition and/or structure of “The polyester resin according to claim 7” because the specification of the instant application recites that the minor endothermic peak temperature ( Tmeta ) refers to the minor endothermic peak before the melting point peak in a differential scanning calorimetry chart obtained by heating the polyester film from its solid state from 30°C to 300°C at a temperature rise rate of 2°C/minute using a differential scanning calorimeter according to JIS K7122JIS K7122 (1987) [0079], which means that “a minor endothermic peak temperature” is a property of a film comprising a polyester resin and not a property of a polyester resin. For further examination of the claims, this limitation is interpreted as “The film according to claim 7, wherein a minor endothermic peak temperature is 150°C or higher”. Claim 17 recites the limitation “The polyester resin according to claim 7, wherein, when the film-shaped polyester resin is heated at 150°C for 100 hours, the number of oligomers is 400 or less per 1 mm 2 of the film surface” in lines 1-3, which is indefinite because it is unclear how it further limits the composition and/or structure of “The polyester resin according to claim 7” because a polyester resin cannot be “film-shaped”. A film comprising a polyester resin can be film-shaped. Based on the specification of the instant application [0102], for further examination of the claims, this limitation is interpreted as “The film according to claim 7, wherein, when the film is heated at 150°C for 100 hours, the number of oligomers is 400 or less per 1 mm 2 of the film surface”. Claim 18 recites the limitation “The polyester resin according to claim 9, wherein a change in film turbidity after being heated at 150°C for 100 hours is 1.5% or less” in lines 1-3, which is indefinite because it is unclear how it further limits the composition and/or structure of “The polyester resin according to claim 9” because a polyester resin cannot have “a change in film turbidity”. A film comprising a polyester resin can have a change in film turbidity. Based on the specification of the instant application [0100], for further examination of the claims, this limitation is interpreted as “The film according to claim 9, wherein a change in film turbidity after being heated at 150°C for 100 hours is 1.5% or less”. Claim 19 recites the limitation “The polyester resin according to claim 9, wherein a thermal shrinkage rate, in both a machine stretching direction and a crosswise stretching direction of film stretching, when heated at 150°C for 30 minutes is 2% or less with respect to a length being heated” in lines 1-4, which is indefinite because it is unclear how it further limits the composition and/or structure of “The polyester resin according to claim 9” because a polyester resin cannot have a machine stretching direction and a crosswise stretching direction of film stretching. A film comprising a polyester can have a machine stretching direction and a crosswise stretching direction of film stretching. Based on the specification of the instant application [0103], for further examination of the claims, this limitation is interpreted as “The film according to claim 9, wherein a thermal shrinkage rate, in both a machine stretching direction and a crosswise stretching direction of film stretching, when heated at 150°C for 30 minutes is 2% or less with respect to a length being heated”. Claim 20 recites the limitation “The polyester resin according to claim 9, wherein a minor endothermic peak temperature is 150°C or higher” in lines 1-2, which is indefinite because it is unclear how it further limits the composition and/or structure of “The polyester resin according to claim 9” because the specification of the instant application recites that the minor endothermic peak temperature ( Tmeta ) refers to the minor endothermic peak before the melting point peak in a differential scanning calorimetry chart obtained by heating the polyester film from its solid state from 30°C to 300°C at a temperature rise rate of 2°C/minute using a differential scanning calorimeter according to JIS K7122JIS K7122 (1987) [0079], which means that “a minor endothermic peak temperature” is a property of a film comprising a polyester resin and not a property of a polyester resin. For further examination of the claims, this limitation is interpreted as “The film according to claim 9, wherein a minor endothermic peak temperature is 150°C or higher”. Claim Rejections - 35 USC § 102 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 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. Claim s 1 and 3 are rejected under 35 U.S.C. 102 (a)(1) as being anticipated by Yust et al. (US 2009/0273836 A1, cited in IDS) . Regarding claim 1, Yust teaches a copolyester of NDC, EG, and CHDM ([0106], TABLE 1, Ex. # 5, 6, 7, 8), wherein the NDC is naphthalene dicarboxylic acid, the EG is ethylene glycol, and the CHDM is cyclohexane dimethanol [0103] , wherein the naphthalene dicarboxylic acid is 2,6-naphthalene dicarboxylic acid [0037], which reads on a polyester resin comprising a polymer of an acid component (A) and an alcohol component (B), wherein the component (A) comprises 100 mol% of a 2,6-naphthalenedicarboxylic acid component with respect to a total amount of the component (A), the component (B) comprises two types selected from 1,4-cyclohexanedimethanol, and ethylene glycol, and a total amount of the at least two types of components is 100 mol% with respect to a total amount of the component (B) as claimed. Regarding claim 3, t he Office recognizes that all of the claimed physical properties are not positively taught by Yust , namely that the polyester resin has an intrinsic birefringence of 0.15 or greater . However, Yust teaches all of the claimed ingredients, amounts, process steps, and process conditions of the polyester resin according to claim 1 as explained above . Furthermore, the specification of the instant application recites that the birefringence value at an infinite stretch ratio is referred to as "intrinsic birefringence" [0042] , that t he polyester resin of the present disclosure has a high intrinsic birefringence [0013, 0109, 0110], and that if the content of the 2,6-naphthalenedicarboxylic acid component is less than 80 mol%, intrinsic birefringence may deteriorate [0034] . Also, Yust teaches that the copolyester is PEN-CHDM2.5, PEN-CHDM5, PEN-CHDM10, or PEN-CHDM15 ([0106], TABLE 1, Ex. # 5, 6, 7, 8), that coextruded films were made [0107] comprising the copolyester [0108], that the out-of-plane birefringence of biaxially stretched copolyesters was 0.189, 0.236, 0.225, or 0.201 ([0109], TABLE 5, Ex. 16, 17, 18, 19), that constrained uniaxially stretched film birefringence of the copolyesters was 0.220, 0.227, 0.225, or 0.252 for in-plane birefringence and 0.179, 0.192, 0.172, or 0.171 for out-of-plane birefringence ([0109], TABLE 6, Example ID 26, 27, 28, 29), and that unconstrained uniaxially stretched film birefringence of the copolyesters was 0.2943, 0.3237, 0.3244, or 0.3204 for in-plane birefringence and 0.1657, 0.1666, 0.1638, or 0.1644 for out-of-plane birefringence ([0109], TABLE 7, Example ID 37, 38, 39, 40). Therefore, the claimed physical properties would naturally arise from the polyester of Yust . When the structure recited in the reference is substantially identical to that of the claims, claimed properties or functions are presumed to be inherent (MPEP 2112.01(I)). Products of identical chemical composition can not have mutually exclusive properties (MPEP 2112.01(II)). If the prior art teaches the identical chemical structure, the properties applicant discloses and/or claims are necessarily present (MPEP 2112.01(II)). 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. When the PTO shows a sound basis for believing that the products of the applicant and the prior art are the same, the applicant has the burden of showing that they are not (MPEP 2112.01(I)). Therefore, the prima facie case can be rebutted by evidence showing that the prior art products do not necessarily possess the characteristics of the claimed product (MPEP 2112.01(I)) . Claim s 1 and 3 are rejected under 35 U.S.C. 102 (a)(1) as being anticipated by Heo et al. (KR 10-2010-0024304, cited in IDS, machine translation in English used for citation, made of record on 12/21/2023) . Regarding claim 1, Heo teaches a copolyester of monomers that are 20 mol parts of 1 ,4 -butanediol , 170 mol parts of ethylene glycol, and 100 mol parts of naphthalenedicarboxylic acid ( p. 4, l. 156- p. 5, l. 172 ) , which reads on a polyester resin comprising a polymer of an acid component (A) and an alcohol component (B), wherein the component (A) comprises 100 mol.% of a 2,6-naphthalenedicarboxylic acid component with respect to a total amount of the component (A), the component (B) comprises two types selected from 1,4-butanediol and ethylene glycol, and a total amount of the two types of components is 100 mol% with respect to a total amount of the component (B) as claimed. Regarding claim 3, t he Office recognizes that all of the claimed physical properties are not positively taught by Heo , namely that the polyester resin has an intrinsic birefringence of 0.15 or greater . However, Heo teaches all of the claimed ingredients, amounts, process steps, and process conditions of the polyester resin according to claim 1 as explained above . Furthermore, the specification of the instant application recites that the birefringence value at an infinite stretch ratio is referred to as "intrinsic birefringence" [0042], that t he polyester resin of the present disclosure has a high intrinsic birefringence [0013, 0109, 0110], and that if the content of the 2,6-naphthalenedicarboxylic acid component is less than 80 mol%, intrinsic birefringence may deteriorate [0034] . Also, Heo teaches that a film comprising the polyester (p. 2, l. 76) is a highly birefringent film (o, 3 , l. 81 ) . Therefore, the claimed physical properties would naturally arise from the polyester resin of Heo . When the structure recited in the reference is substantially identical to that of the claims, claimed properties or functions are presumed to be inherent (MPEP 2112.01(I)). Products of identical chemical composition can not have mutually exclusive properties (MPEP 2112.01(II)). If the prior art teaches the identical chemical structure, the properties applicant discloses and/or claims are necessarily present (MPEP 2112.01(II)). 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. When the PTO shows a sound basis for believing that the products of the applicant and the prior art are the same, the applicant has the burden of showing that they are not (MPEP 2112.01(I)). Therefore, the prima facie case can be rebutted by evidence showing that the prior art products do not necessarily possess the characteristics of the claimed product (MPEP 2112.01(I)) . Claim 1 is rejected under 35 U.S.C. 102 (a)(1) as being anticipated by Murakami et al. (WO 2018/061730 A1, cited in IDS, made of record on 12/21/2023, US 2020/0325272 A1 is cited in IDS, is English language equivalent, and is used for citation) . Regarding claim 1, Murakami teaches a crystalline polyester resin [0097] that has the composition of 100 molar % 2,6-naphthalenedicarboxylic acid, 20 molar % of 1,4 -butanediol, and 80 molar % of 1,4-cyclohexanedimethanol ( [0097], TABLE 1, Example 6, A-6 ) , which reads on a polyester resin comprising a polymer of an acid component (A) and an alcohol component (B), wherein the component (A) comprises 100 mol% of a 2,6-naphthalenedicarboxylic acid component with respect to a total amount of the component (A), the component (B) comprises two types selected from 1,4-butanediol, and 1,4-cyclohexanedimethanol, and a total amount of the two types of components is 100 mol% with respect to a total amount of the component (B) as claimed. 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. Claim s 1, 3, 6-9, and 14-20 are rejected under 35 U.S.C. 103 as being unpatentable over Manabe et al. (JP 2017-067819 A, machine translation in English used for citation) as applied to claim 1 . Regarding claim 1, Manabe teaches an optical polyester film having a polyester A layer composed of a dicarboxylic components and diol components, wherein when the total amount of the dicarboxylic components and the diol components in the polyester A layer is taken as 100 mol%, the total of the largest amount of the dicarboxylic components and the largest amount of the diol components is more than 85 mol% and less than 98 mol%, wherein the largest amount of the dicarboxylic components is 2,6-naphthalenedicarboxylic acid, and the largest amount of the diol component is ethylene glycol [0005], wherein examples of diol components other than ethylene glycol in the polyester A layer include 1,4-butanediol and 1,4-cyclohexanedimethanol [0008], wherein the polyester film contains a dicarboxylic acid component and/or a diol component in a specific amount of 2 mol% or more and 15 mol% or less in addition to a component having the largest amount of the dicarboxylic acid component and a component having the largest amount of the diol component [0008], which reads on a polyester resin comprising a polymer of an acid component (A) and an alcohol component (B), wherein the component (A) comprises more than 70 mol% of a 2,6-naphthalenedicaboxylic acid component with respect to a total amount of the component (A), the component (B) comprise two types selected from the group consisting of 1,4-butanediol, 1,4-cyclohexanedimethanol, and ethylene glycol, and a total amount of the at least two types of components is 100 mol% with respect to a total amount of the component (B) as claimed. The mol% of a 2,6-naphthalenedicaboxylic acid component is based on the calculations (50 - 15) / 50 * 100% = 70% and (50 - 0) / 50 * 100% = 100%. Manabe does not teach with sufficient specificity that the component (A) comprises 80 mol% or more of a 2,6-naphthalenedicarboxylic acid component with respect to a total amount of the component (A). Before the effective filing date of the claimed invention, one of ordinary skill in the art would have found it obvious to optimize the amount of Manabe’s 2,6-naphthalenedicarboxylic acid in Manabe’s dicarboxylic components in Manabe’s polyester A layer in Manabe’s optical polyester film to be from 80 mol% to 100 mol%. The proposed modification would read on wherein the component (A) comprises 80 mol% or more of a 2,6-naphthalenedicarboxylic acid component with respect to a total amount of the component (A) as claimed. One of ordinary skill in the art would have been motivated to do so because it would have been beneficial for optimizing interference color suppression and mechanical properties of Manabe’s polyester A layer in Manabe’s optical polyester film because Manabe teaches that the optical polyester film has a polyester A layer composed of a dicarboxylic components and diol components, that when the total amount of the dicarboxylic components and the diol components in the polyester A layer is taken as 100 mol%, the total of the largest amount of the dicarboxylic components and the largest amount of the diol components is more than 85 mol% and less than 98 mol%, that the largest amount of the dicarboxylic components is 2,6-naphthalenedicarboxylic acid [0005], that the polyester film contains a dicarboxylic acid component and/or a diol component in a specific amount of 2 mol% or more and 15 mol% or less in addition to a component having the largest amount of the dicarboxylic acid component and a component having the largest amount of the diol component [0008], that th e resulting polyester film can suppress interference colors when a display is visually observed in a case where the polyester film is mounted on a display device and has excellent mechanical properties [0008], that from the viewpoint of achieving both interference color suppression and mechanical properties, in the polyester A layer, when the total amount of the dicarboxylic acid component and the diol component is 100 mol%, the total amount of the component having the largest amount among the dicarboxylic acid components and the component having the largest amount among the diol components is more preferably more than 90 mol% and les s than 97 mol%, and more preferably more than 92 mol% and less than 96 mol% [0008], that from the viewpoints of interference color suppression and mechanical properties, it is preferably that the polyester A layer is composed of dicarboxylic components and diols components, and the largest amount of the dicarboxylic components is 2,6-naphthalenedicarboxylic acid, and the largest amount of the diol components is ethylene glycol [0008], and that this is beneficial for further enhanced interference color suppression effect and mechanical properties [0008] . Regarding claim 3, t he Office recognizes that all of the claimed physical properties are not positively taught by Manabe, namely that the polyester resin has an intrinsic birefringence of 0.15 or greater . However, Manabe renders obvious all of the claimed ingredients, amounts, process steps, and process conditions of the polyester resin according to claim 1 as explained above . Furthermore, the specification of the instant application recites that the birefringence value at an infinite stretch ratio is referred to as "intrinsic birefringence" [0042], that t he polyester resin of the present disclosure has a high intrinsic birefringence [0013, 0109, 0110], and that if the content of the 2,6-naphthalenedicarboxylic acid component is less than 80 mol%, intrinsic birefringence may deteriorate [0034] . Also, Manabe teaches that the in-plane retardation refers to a product of birefringence and thickness [0008], that the in-plane retardation of the polyester film is 3000 nm or more and 30000 nm or less [0005, 0008], that the in-plane retardation can be adjusted to 3000 nm or more and 30000 nm or less by birefringence control by a stretching method at the time of film formation, a stretching ratio, and temperature adjustment of stretching and heat treatment, and by thickness setting [0008], and that it is possible to suppress the progress of plane orientation while increasing the in-plane birefringence at the time of stretching [0008]. Therefore, the claimed physical properties would naturally arise from the polyester resin that is rendered obvious by Manabe. When the structure recited in the reference is substantially identical to that of the claims, claimed properties or functions are presumed to be inherent (MPEP 2112.01(I)). Products of identical chemical composition can not have mutually exclusive properties (MPEP 2112.01(II)). If the prior art teaches the identical chemical structure, the properties applicant discloses and/or claims are necessarily present (MPEP 2112.01(II)). 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. When the PTO shows a sound basis for believing that the products of the applicant and the prior art are the same, the applicant has the burden of showing that they are not (MPEP 2112.01(I)). Therefore, the prima facie case can be rebutted by evidence showing that the prior art products do not necessarily possess the characteristics of the claimed product (MPEP 2112.01(I)) . Regarding claim 6, Manabe teaches that the total of the largest amount of the dicarboxylic components and the largest amount of the diol components is more than 85 mol% and less than 98 mol%, that the largest amount of the dicarboxylic components is 2,6-naphthalenedicarboxylic acid, that the largest amount of the diol component is ethylene glycol [0005], that examples of diol components other than ethylene glycol in the polyester A layer include 1,4- butanediol [0008], and that the polyester film contains a dicarboxylic acid component and/or a diol component in a specific amount of 2 mol% or more and 15 mol% or less in addition to a component having the largest amount of the dicarboxylic acid component and a component having the largest amount of the diol component [0008], which reads on wherein the component (B) consists of from more than 70 to less than 100 mol% of ethylene glycol and from more than 0 to less than 30 mol% of 1,4- butanediol with respect to the total amount of the component (B). The mol% of ethylene glycol is based on the calculations (50 - 15) / 50 * 100% = 70% and (50 - 0) / 50 * 100% = 100%. The mol% of 1,4- butanediol is based on the calculations 0 / 50 * 100% = 0% and 15 / 50 * 100% = 30%. Manabe does not teach with sufficient specificity that the component (B) consists of from 5 to 80 mol% of ethylene glycol and from 20 to 95 mol% of butanediol with respect to the total amount of the component (B). Before the effective filing date of the claimed invention, one of ordinary skill in the art would have found it obvious to optimize the amount of Manabe’s 1,4-butanediol in Manabe’s diol components in Manabe’s polyester A layer in Manabe’s optical polyester film to be from 20 to less than 30 mol%. The proposed modification would read on wherein the component (B) consists of from more than 70 to 80 mol% of ethylene glycol and from 20 to less than 30 mol% of butanediol with respect to the total amount of the component (B) as claimed. The mol% of ethylene glycol is based on the calculations 100% - 30% = 70% and 100% - 20% = 80%. One of ordinary skill in the art would have been motivated to do so because it would have been beneficial for optimizing interference color suppression and mechanical properties of Manabe’s polyester A layer in Manabe’s optical polyester film because Manabe teaches that the optical polyester film has a polyester A layer composed of a dicarboxylic components and diol components, that when the total amount of the dicarboxylic components and the diol components in the polyester A layer is taken as 100 mol%, the total of the largest amount of the dicarboxylic components and the largest amount of the diol components is more than 85 mol% and less than 98 mol%, that the largest amount of the dicarboxylic components is 2,6-naphthalenedicarboxylic acid [0005], that examples of diol components other than ethylene glycol in the polyester A layer include 1,4-butanediol [0008], that the polyester film contains a dicarboxylic acid component and/or a diol component in a specific amount of 2 mol% or more and 15 mol% or less in addition to a component having the largest amount of the dicarboxylic acid component and a component having the largest amount of the diol component [0008], that the resulting polyester film can suppress interference colors when a display is visually observed in a case where the polyester film is mounted on a display device and has excellent mechanical properties [0008], that from the viewpoint of achieving both interference color suppression and mechanical properties, in the polyester A layer, when the total amount of the dicarboxylic acid component and the diol component is 100 mol%, the total amount of the component having the largest amount among the dicarboxylic acid components and the component having the largest amount among the diol components is more preferably more than 90 mol% and less than 97 mol%, and more preferably more than 92 mol% and less than 96 mol% [0008], that from the viewpoints of interference color suppression and mechanical properties, it is preferably that the polyester A layer is composed of dicarboxylic components and diols components, and the largest amount of the dicarboxylic components is 2,6-naphthalenedicarboxylic acid, and the largest amount of the diol components is ethylene glycol [0008], and that this is beneficial for further enhanced interference color suppression effect and mechanical properties [0008]. Regarding claim 7, Manabe teaches that the optical polyester film has a polyester A layer, wherein the in-plane retardation is 3000 nm or more and 30000 nm or less [0005], where in examples, the polyester film has a film thickness of 90 µm [0031, 0032], 85 µm, or 100 µm [0032], which reads on wherein the polyester resin has a film shape having a thickness of optionally 85, 90, or 100 µm, and has an in-plane retardation of from 3,000 to 30,000 nm. Manabe does not teach a specific embodiment wherein the polyester resin has a film shape having a thickness of from 20 to 120 µm and does not teach with sufficient specificity that the polyester resin has an in-plane retardation of form 4,000 to 22,000 nm. Before the effective filing date of the claimed invention, one of ordinary skill in the art would have found it obvious to optimize the in-plane retardation of Manabe’s optical polyester film to be from 4000 nm to 22000 nm, and to optimize the film thickness of Manabe’s polyester A layer of Manabe’s optical polyester film to be 85, 90, or 100 µm. The proposed modification would read on wherein the polyester resin has a film shape having a thickness of 85, 90, or 100 µm, and has an in-plane retardation of form 4,000 to 22,000 nm as claimed. One of ordinary skill in the art would have been motivated to do so because it would have been beneficial for optimizing the suppression of interference colors for Manabe’s optical polyester film, for optimizing the handling properties of Manabe’s optical polyester film as an industrial material, for optimizing suppressing the fringe pattern for Manabe’s optical polyester film, and for making Manabe’s optical polyester film not considerably large because Manabe teaches that the optical polyester film has a polyester A layer, that the in-plane retardation is 3000 nm or more and 30000 nm or less [0005], that by setting the in-plane retardation to be equal to or greater than 3000 nm and equal to or less than 30000 nm, it is possible to achieve both the suppression of interference colors and the handling properties in a case of being mounted on a display apparatus [0008], that when the in-plane retardation is less than 3000 nm, the effect of suppressing the fringe pattern is insufficient, and when the in-plane retardation is intended to be larger than 30000 nm, the film thickness becomes considerably large, and the handling property as an industrial material is deteriorated [0008], and that in examples, the polyester film has a film thickness of 90 µm [0031, 0032], 85 µm, or 100 µm [0032]. Regarding claim 8, Manabe teaches that the total of the largest amount of the dicarboxylic components and the largest amount of the diol components is more than 85 mol% and less than 98 mol%, that the largest amount of the dicarboxylic components is 2,6-naphthalenedicarboxylic acid, that the largest amount of the diol component is ethylene glycol [0005], that examples of diol components other than ethylene glycol in the polyester A layer include 1,4-cyclohexanedimethanol [0008], and that the polyester film contains a dicarboxylic acid component and/or a diol component in a specific amount of 2 mol% or more and 15 mol% or less in addition to a component having the largest amount of the dicarboxylic acid component and a component having the largest amount of the diol component [0008], which reads on wherein the component (B) consists of from more than 70 to less than 100 mol% of ethylene glycol and from more than 0 to less than 30 mol% of 1,4-cyclohexanedimethanol with respect to the total amount of the component (B). The mol% of ethylene glycol is based on the calculations (50 - 15) / 50 * 100% = 70% and (50 - 0) / 50 * 100% = 100%. The mol% of 1,4-cyclohexanedimethanol is based on the calculations 0 / 50 * 100% = 0% and 15 / 50 * 100% = 30%. Manabe does not teach with sufficient specificity that the component (B) consists of from 82 to 95 mol% of ethylene glycol and from 5 to 18 mol% of 1,4-cyclohexanedimethanol with respect to the total amount of the component (B). Before the effective filing date of the claimed invention, one of ordinary skill in the art would have found it obvious to optimize the amount of Manabe’s 1,4-cyclohexanedimethanol in Manabe’s diol components in Manabe’s polyester A layer in Manabe’s optical polyester film to be from 5 to 18 mol%. The proposed modification would read on wherein the component (B) consists of from 82 to 95 mol% of ethylene glycol and from 5 to 18 mol% of 1,4-cyclohexanedimethanol with respect to the total amount of the component (B) as claimed. The mol% of ethylene glycol is based on the calculations 100% - 18% = 82% and 100% - 95% = 5%. One of ordinary skill in the art would have been motivated to do so because it would have been beneficial for optimizing interference color suppression and mechanical properties of Manabe’s polyester A layer in Manabe’s optical polyester film because Manabe teaches that the optical polyester film has a polyester A layer composed of a dicarboxylic components and diol components, that when the total amount of the dicarboxylic components and the diol components in the polyester A layer is taken as 100 mol%, the total of the largest amount of the dicarboxylic components and the largest amount of the diol components is more than 85 mol% and less than 98 mol%, that the largest amount of the dicarboxylic components is 2,6-naphthalenedicarboxylic acid [0005], that examples of diol components other than ethylene glycol in the polyester A layer include 1,4-cyclohexanedimethanol [0008], that the polyester film contains a dicarboxylic acid component and/or a diol component in a specific amount of 2 mol% or more and 15 mol% or less in addition to a component having the largest amount of the dicarboxylic acid component and a component having the largest amount of the diol component [0008], that the resulting polyester film can suppress interference colors when a display is visually observed in a case where the polyester film is mounted on a display device and has excellent mechanical properties [0008], that from the viewpoint of achieving both interference color suppression and mechanical properties, in the polyester A layer, when the total amount of the dicarboxylic acid component and the diol component is 100 mol%, the total amount of the component having the largest amount among the dicarboxylic acid components and the component having the largest amount among the diol components is more preferably more than 90 mol% and less than 97 mol%, and more preferably more than 92 mol% and less than 96 mol% [0008], that from the viewpoints of interference color suppression and mechanical properties, it is preferably that the polyester A layer is composed of dicarboxylic components and diols components, and the largest amount of the dicarboxylic components is 2,6-naphthalenedicarboxylic acid, and the largest amount of the diol components is ethylene glycol [0008], and that this is beneficial for further enhanced interference color suppression effect and mechanical properties [0008]. Regarding claim 9, Manabe teaches that the optical polyester film has a polyester A layer, wherein the in-plane retardation is 3000 nm or more and 30000 nm or less [0005], where in examples, the polyester film has a film thickness of 90 µm [0031, 0032], 85 µm, or 100 µm [0032], which reads on wherein the polyester resin has a film shape having a thickness of optionally 85, 90, or 100 µm, and has an in-plane retardation of from 3,000 to 30,000 nm. Manabe does not teach a specific embodiment wherein the polyester resin has a film shape having a thickness of from 20 to 130 µm and does not teach with sufficient specificity that the polyester resin has an in-plane retardation of form 4,000 to 15,000 nm. Before the effective filing date of the claimed invention, one of ordinary skill in the art would have found it obvious to optimize the in-plane retardation of Manabe’s optical polyester film to be from 4000 nm to 15000 nm, and to optimize the film thickness of Manabe’s polyester A layer of Manabe’s optical polyester film to be 85, 90, or 100 µm. The proposed modification would read on wherein the polyester resin has a film shape having a thickness of 85, 90, or 100 µm, and has an in-plane retardation of form 4,000 to 15,000 nm as claimed. One of ordinary skill in the art would have been motivated to do so because it would have been beneficial for optimizing the suppression of interference colors for Manabe’s optical polyester film, for optimizing the handling properties of Manabe’s optical polyester film as an industrial material, for optimizing suppressing the fringe pattern for Manabe’s optical polyester film, and for making Manabe’s optical polyester film not considerably large because Manabe teaches that the optical polyester film has a polyester A layer, that the in-plane retardation is 3000 nm or more and 30000 nm or less [0005], that by setting the in-plane retardation to be equal to or greater than 3000 nm and equal to or less than 30000 nm, it is possible to achieve both the suppression of interference colors and the handling properties in a case of being mounted on a display apparatus [0008], that when the in-plane retardation is less than 3000 nm, the effect of suppressing the fringe pattern is insufficient, and when the in-plane retardation is intended to be larger than 30000 nm, the film thickness becomes considerably large, and the handling property as an industrial material is deteriorated [0008], and that in examples, the polyester film has a film thickness of 90 µm [0031, 0032], 85 µm, or 100 µm [0032]. Regarding claim s 14 and 18, t he Office recognizes that all of the claimed physical properties are not positively taught by Manabe, namely that a change in film turbidity after being heated at 150°C for 100 hours is 1.5% or less. However, Manabe renders obvious all of the claimed ingredients, amounts, process steps, and process conditions of the polyester resin according to claim s 7 and 9 as explained above. Furthermore, the specification of the instant application recites that the amount of change in haze (amount of change in turbidity) AHz is preferably 1.5% or less [0100], and that when the amount of change in haze is 1.5% or less, the polyester film's high transparency, which is required as a display member, can be retained [0100]. Also, Manabe teaches a transparent conductive film comprising the polyester film [0005]. Therefore, the claimed physical properties would naturally arise from the polyester resin that is rendered obvious by Manabe. When the structure recited in the reference is substantially identical to that of the claims, claimed properties or functions are presumed to be inherent (MPEP 2112.01(I)). Products of identical chemical composition can not have mutually exclusive properties (MPEP 2112.01(II)). If the prior art teaches the identical chemical structure, the properties applicant discloses and/or claims are necessarily present (MPEP 2112.01(II)). 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. When the PTO shows a sound basis for believing that the products of the applicant and the prior art are the same, the applicant has the burden of showing that they are not (MPEP 2112.01(I)). Therefore, the prima facie case can be rebutted by evidence showing that the prior art products do not necessarily possess the characteristics of the claimed product (MPEP 2112.01(I)) . Regarding claim s 15 and 19, t he Office recognizes that all of the claimed physical properties are not positively taught by Manabe, namely that a thermal shrinkage rate, in both a machine stretching direction and a crosswise stretching direction of film stretching, when heated at 150°C for 30 minutes is 2% or less with respect to a length before being heated. However, Manabe renders obvious all of the claimed ingredients, amounts, process steps, and process conditions of the polyester resin according to claim s 7 and 9 as explained above. Furthermore, the specification of the instant application recites that i f the content of the 1,4-cyclohexanedimethanol component exceeds 18 mol%, the crystallinity of the polyester film may deteriorate [0061], that t his makes it difficult to inhibit rainbow-like unevenness in the polyester film, and also, the thermal shrinkage rate may increase [0061], that by making the stretch ratio low, it is possible to inhibit an increase in thermal shrinkage rate [0067], that by raising the minor endothermic peak temperature, it is possible to raise the temperature range in which the thermal shrinkage rate becomes high and thereby inhibit thermal shrinkage in high temperature environments [0079], that when the polyester film of the present disclosure is subjected to a heating treatment at 150°C for 30 minutes, the thermal shrinkage rate is preferably 3% or less [0103], that the polyester resin of the present disclosure also has a high intrinsic birefringence [0110], that t hus, it is possible to increase the physical strength of the polyester film and also inhibit an increase in thermal shrinkage rate in a direction perpendicular to the stretching direction [0110], that t he polyester resin of the present disclosure can make the stretch ratio low in relation to the retardation to be achieved, and thus has little shrinkage and high dimensional stability even when the polyester film is subjected to heating processing [0112], that t he thermal fixing treatment can promote crystallization of the polyester film and reduce the thermal shrinkage rate [0129], and that t he relaxation step can make the film's local thermal shrinkage rate uniform [0130]. Therefore, the claimed physical properties would naturally arise from the polyester resin that is rendered obvious by Manabe. When the structure recited in the reference is substantially identical to that of
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Prosecution Timeline

Sep 28, 2023
Application Filed
Mar 25, 2026
Non-Final Rejection — §102, §103, §112 (current)

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1-2
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74%
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3y 0m
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