DETAILED ACTION
Applicant’s response filed on 06/29/2026 has been fully considered. Claims 1-3, 5-8, 10, 13, 14, 17, 18, and 21-28 are pending. Claims 1, 2, 5-8, 10, 13, 14, 17, and 18 are amended. Claims 4, 9, 11, 12, 15, 16, 19, and 20 are canceled. Claims 21-28 are new.
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 § 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.
Claims 1-3, 10, 13, and 26 are rejected under 35 U.S.C. 103 as being unpatentable over 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 claims 1 and 2, 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) consists of 20 mol% of 1,4-butanediol component and 80 mol% of 1,4-cyclohexanedimethanol component with respect to the total amount of the component (B). Murakami that the crystalline polyester resin has a number-average molecular weight of 13900 ([0097], TABLE 1, Example 6, A-6), which reads on the polyester resin has a degree of polymerization of 40. The degree of polymerization is based on the calculation 13900 g/mol / (216.192 g/mol * 1 + 90.122 g/mol * 0.20 + 144.21 g/mol * 0.80) = 39.7615. Murakami teaches that a copolymerizing rate of the 1,4-butanediol component is 40 molar % or less when a total of the polyhydric alcohol components is taken as 100 molar % [0009], and that a copolymerizing rate of a 1,4-cyclohexanedimethanol component is 60 molar % or more when the total of the polyhydric alcohol components in the crystalline polyester resin (A) is taken as 100 molar % [0010], which reads on the component (B) consists of from greater than 0 to 40 mol% of butanediol component and from 60 to less than 100 mol% of 1,4-cyclohexanedimethanol component with respect to the total amount of the component (B). Murakami teaches that a number-average molecular weight of the crystalline polyester resin is 5,000 or more and 50,000 or less [0031], which optionally reads on wherein the polyester resin has a degree of polymerization of from 14 to 143. The degree of polymerization is based on the calculations 5000 g/mol / (216.192 g/mol * 1 + 90.122 g/mol * 0.35 + 144.21 g/mol * 0.65) = 13.77021 and 50000 g/mol / (216.192 g/mol * 1 + 90.122 g/mol * 0.40 + 144.21 g/mol * 0.60) = 147.5942.
Murakami does not teach a specific embodiment wherein the component (B) consists of from 35 to 75 mol% of 1,4-butanediol component and from 25 to 65 mol% of 1,4-cyclohexanedimethanol component 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 copolymerizing rate of Murakami’s 1,4-butanediol in Murakami’s crystalline polyester resin to be from 35 to 40 molar % when a total of Murakami’s polyhydric alcohol components is taken as 100 molar % and to optimize the copolymerizing rate of Murakami’s 1,4-cyclohexanedimethanol in Murakami’s crystalline polyester resin to be from 60 to 65 molar % when a total of Murakami’s polyhydric alcohol components is taken as 100 molar %. The proposed modification would read on the component (B) consists of from 35 to 40 mol% of 1,4-butanediol component and from 60 to 65 mol% of 1,4-cyclohexanedimethanol component with respect to the total amount of the component (B) 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 fluidity, flame-retardant property, crystallinity, mechanical strength, and moldability of Murakami’s crystalline polyester resin, and for minimizing the solidifying rate, melt viscosity, tackiness, and takt time of Murakami’s crystalline polyester resin because 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), that a copolymerizing rate of the 1,4-butanediol component is 40 molar % or less when a total of the polyhydric alcohol components is taken as 100 molar % [0009], that when it is too much, the crystallinity may become strong whereby a solidifying rate may become quick and the fluidity may become bad [0022], that moreover, in such a use which requires the flame-retardant property, there is a tendency that the flame-retardant property lowers since a combustible gas is generated upon burning [0022], that a copolymerizing rate of a 1,4-cyclohexanedimethanol component is 60 molar % or more when the total of the polyhydric alcohol components in the crystalline polyester resin (A) is taken as 100 molar % [0010], that when it is too small, the melt viscosity of the crystalline polyester resin may become high and accordingly the fluidity may become low [0023], that when it is too much, the crystallinity may not be sufficiently expressed, whereby the tackiness may be generated or the mechanical strength may lower [0023], and that moreover, the poor molding may be induced and accordingly the takt time may become long [0023].
Murakami does not teach a specific embodiment wherein the polyester resin has a degree of polymerization of from 100 to 5000, and that the polyester resin has a degree of polymerization of from 100 to 3000. Before the effective filing date of the claimed invention, one of ordinary skill in the art would have found it obvious to optimize the number-average molecular weight of Murakami’s crystalline polyester resin to be from 34,959 to 50,000. The proposed modification would read on the polyester resin has a degree of polymerization of from 100 to 148 as claimed. The degree of polymerization is based on the calculations 34,148 g/mol / (216.192 g/mol * 1 + 90.122 g/mol * 0.35 + 144.21 g/mol * 0.65) = 100, 34,148 g/mol / (216.192 g/mol * 1 + 90.122 g/mol * 0.40 + 144.21 g/mol * 0.60) = 101, 50,000 g/mol / (216.192 g/mol * 1 + 90.122 g/mol * 0.35 + 144.21 g/mol * 0.65) = 146, and 50,000 g/mol / (216.192 g/mol * 1 + 90.122 g/mol * 0.40 + 144.21 g/mol * 0.60) = 148. One of ordinary skill in the art would have been motivated to do so because it would have been beneficial for optimizing the mechanical strength of Murakami’s crystalline polyester resin and for minimizing the melt viscosity of Murakami’s crystalline polyester resin because Murakami that the crystalline polyester resin has a number-average molecular weight of 13900 ([0097], TABLE 1, Example 6, A-6), that a number-average molecular weight of the crystalline polyester resin is 5,000 or more and 50,000 or less [0031], that when it is too small, the mechanical strength may not be maintained [0031], and that when it is too large, the melt viscosity may become high [0031].
Regarding claim 3, the Office recognizes that all of the claimed physical properties are not positively taught by Murakami, namely that the polyester resin has an intrinsic birefringence of 0.15 or greater. However, Murakami 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 the 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]. Therefore, the claimed physical properties would naturally arise from the polyester resin that is rendered obvious by Murakami. 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 10, Murakami teaches a flat plate that is 100 mmx100 mmx10 mm consisting of the crystalline polyester resin [0080], which reads on a film comprising the polyester resin according to claim 1 as claimed. The Office recognizes that all of the claimed physical properties are not positively taught by Murakami, namely that the film has a film turbidity change of 1.5% or less after being heated at 150°C for 100 hours, a thermal shrinkage rate of the film, 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, and a minor endothermic peak temperature of the film is 150°C or higher. However, Murakami renders obvious all of the claimed ingredients, amounts, process steps, and process conditions of the film 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], 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], that if the content of the 1,4-cyclohexanedimethanol component exceeds 18 mol%, the crystallinity of the polyester film may deteriorate [0061], that this 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 thus, 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 the 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 the thermal fixing treatment can promote crystallization of the polyester film and reduce the thermal shrinkage rate [0129], that the relaxation step can make the film's local thermal shrinkage rate uniform [0130], that it is preferred that the polyester film of the present disclosure has a minor endothermic peak temperature of 150°C or higher [0079], and 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]. Therefore, the claimed physical properties would naturally arise from the film that is rendered obvious by Murakami. 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 13, Murakami teaches a flat plate that is 100 mmx100 mmx10 mm consisting of the crystalline polyester resin [0080], which reads on a film comprising the polyester resin according to claim 1 as claimed. The Office recognizes that all of the claimed physical properties are not positively taught by Murakami, namely that the film, when heated at 150°C for 100 hours, the number of oligomers is 400 or less per 1 mm2 of a surface of the film. However, Murakami renders obvious all of the claimed ingredients, amounts, process steps, and process conditions of the film as explained above. Furthermore, the specification of the instant application recites that the polyester resin of the present disclosure is inhibited from producing oligomers even in high temperature environments [0013], and that the polyester resin of the present disclosure can inhibit oligomers from creating protrusions [0113]. Therefore, the claimed physical properties would naturally arise from the film that is rendered obvious by Murakami. 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 26, Murakami teaches a flat plate that is 100 mmx100 mmx10 mm consisting of the crystalline polyester resin [0080], which reads on a film comprising the polyester resin according to claim 1 as claimed. The Office recognizes that all of the claimed physical properties are not positively taught by Murakami, namely that the film has a ratio (Re/Rth) of a retardation in a thickness direction (Rth) to an in-plane retardation (Re) of 0.8 or more. However, Murakami renders obvious all of the claimed ingredients, amounts, process steps, and process conditions of the film as explained above. Furthermore, the specification of the instant application recites that with the polyester resin of the present disclosure, it is possible to obtain a polyester film having high retardation [0013], that the polyester resin of the present disclosure is capable of offering a polyester film having sufficient retardation [0015], that in the polyester film of the present disclosure, the ratio (Re/Rth) between the in-plane retardation (Re) and the thickness-direction retardation (Rth) is preferably 0.8 or greater, more preferably 0.9 or greater, even more preferably 0.95 or greater [0078], that the polyester resin of the present disclosure has a high intrinsic birefringence [0109], that thus, the polyester film of the present disclosure can achieve high retardation [0109], and that thus, the produced film can have high retardation [0114]. Therefore, the claimed physical properties would naturally arise from the film that is rendered obvious by Murakami. 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)).
Allowable Subject Matter
Claim 5 is objected to as being dependent upon a rejected base claim, but would be allowable if rewritten in independent form including all of the limitations of the base claim and any intervening claims.
Claims 6-8, 14, 17, 18, 21-25, 27, and 28 are allowed.
The following is a statement of reasons for the indication of allowable subject matter:
Regarding claim 5, 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) renders obvious the polyester resin according to claim 1 as explained above.
Murakami does not teach a film comprising the polyester resin according to claim 1, wherein the film has thickness of from 20 to 100 µm, and has an in-plane retardation of from 4,000 to 20,000 nm. Murakami and the prior art of record do not teach or suggest a film comprising the polyester resin according to claim 1, wherein the film has thickness of from 20 to 100 µm, and has an in-plane retardation of from 4,000 to 20,000 nm.
Regarding claim 6, Manabe et al. (JP 2017-067819 A, machine translation in English used for citation, made of record on 03/31/2026) 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 [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], where in examples, the polyester film has a film thickness of 90 µm [0031, 0032], 85 µm, or 100 µm [0032], which reads on a film comprising a polyester resin, the 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) consists of from more than 70 to less than 100 mol% of ethylene glycol component and from more than 0 to less than 30 mol% of 1,4-butanediol component with respect to the total amount of the component (B), and the film has a thickness of 85, 90, or 100 µm.
Manabe does not teach with sufficient specificity that component (A) comprises 80 mol% or more of a 2,6-naphthalenedicarboxylic acid component with respect to a total amount of the component (A), does not teach with sufficient specificity that the component (B) consists of from 5 to 75 mol% of ethylene glycol component and from 20 to 95 mol% of a 1,4-butanediol component with respect to the total amount of the component (B), and does not teach that the polyester resin has a degree of polymerization of from 100 to 5000. Although Manabe teaches 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%, 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], 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 suggests the claimed mol%, Manabe and the prior art of record do not teach or suggest a degree of polymerization or a molecular weight of the polyester resin and do not provide guidance on selecting a degree of polymerization or a molecular weight of the polyester resin. The prior art of record therefore do not teach or suggest the film of claim 6, wherein the polyester resin has a degree of polymerization of from 100 to 5000.
Regarding claim 8, Manabe et al. (JP 2017-067819 A, machine translation in English used for citation, made of record on 03/31/2026) 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-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], where in examples, the polyester film has a film thickness of 90 µm [0031, 0032], 85 µm, or 100 µm [0032], wherein the in-plane retardation is 3000 nm or more and 30000 nm or less [0005], which reads on a film comprising a polyester resin, the 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) consists of from more than 70 to less than 100 mol% of ethylene glycol component and from more than 0 to less than 30 mol% of 1,4-cyclohexanedimethanol component with respect to the total amount of the component (B), and the film has a thickness of 85, 90, or 100 µm, and has an in-plane retardation of from 3,000 to 30,000 nm.
Manabe does not teach with sufficient specificity that component (A) comprises 80 mol% or more of a 2,6-naphthalenedicarboxylic acid component with respect to a total amount of the component (A), does not teach with sufficient specificity that the component (B) consists of from 82 to 95 mol% of ethylene glycol component and from 5 to 18 mol% of a 1,4-cyclohexanedimethanol component with respect to the total amount of the component (B), does not teach that the polyester resin has a degree of polymerization of from 100 to 5000, and does not teach with sufficient specificity that the film has an in-plane retardation of form 4,000 to 15,000 nm. Although Manabe teaches 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, and 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], 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], and that the in-plane retardation is 3000 nm or more and 30000 nm or less [0005], which suggests the claimed mol% and the claimed in-plane retardation, Manabe and the prior art of record do not teach or suggest a degree of polymerization or a molecular weight of the polyester resin and do not provide guidance on selecting a degree of polymerization or a molecular weight of the polyester resin. The prior art of record therefore do not teach or suggest the film of claim 9, wherein the polyester resin has a degree of polymerization of from 100 to 5000.
Response to Arguments
Applicant’s arguments, see p. 7, filed 6/29/2026, with respect to the rejection of claims 5, 7, 10, 13, 14, 17, and 18 under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, have been fully considered and are persuasive. The rejection of claims 5, 7, 10, 13, 14, 17, and 18 under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, has been withdrawn.
Applicant’s arguments, see p. 7-8, filed 06/29/2026, with respect to, the rejection of claims 1 and 3 under 35 U.S.C. 102(a)(1) as being anticipated by Yust et al. (US 2009/0273836 A1, cited in IDS) have been considered but are moot because the new ground of rejection does not rely on any reference applied in the prior rejection of record for any teaching or matter specifically challenged in the argument.
Applicant’s arguments, see p. 7-8, filed 06/29/2026, with respect to, the rejection of claims 1 and 3 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) have been considered but are moot because the new ground of rejection does not rely on any reference applied in the prior rejection of record for any teaching or matter specifically challenged in the argument.
Applicant’s arguments, see p. 7-8, filed 06/29/2026, with respect to, the rejection of claim 1 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) have been considered and are responded to by the new grounds of rejection in this Office action.
Applicant’s arguments, see p. 8-13, filed 06/29/2026, with respect to, the rejection of claims 1 and 3 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 have been considered but are moot because the new ground of rejection does not rely on any reference applied in the prior rejection of record for any teaching or matter specifically challenged in the argument.
Applicant’s arguments, see p. 8-13, filed 06/29/2026, with respect to the rejection of claims 6-8, 14, and 18 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 have been fully considered and are persuasive. The rejection of claims 6-8, 14, and 18 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 has been withdrawn.
Applicant’s arguments, see p. 8-13, filed 06/29/2026, with respect to the rejection of claims 6 and 8 are rejected under 35 U.S.C. 103 as being unpatentable over Heo et al. (KR 10-2010-0024304, cited in IDS, machine translation in English used for citation, made of record on 12/21/2023) as applied to claim 1 have been fully considered and are persuasive. The rejection of claims 6 and 8 are rejected under 35 U.S.C. 103 as being unpatentable over Heo et al. (KR 10-2010-0024304, cited in IDS, machine translation in English used for citation, made of record on 12/21/2023) as applied to claim 1 has been withdrawn.
Applicant's arguments filed 06/29/2026 have been fully considered but they are not persuasive. In response to the applicant’s argument that Example 1 of Murakami does not satisfy the requirement of claim 1 of the present application to contain 95 mol% or more of a 2,6-naphthalenedicaroxylic acid component, that Example 6 of Murakami does not satisfy the requirement in claim 1 of the present application of consisting 35 to 75 mol% of 1,4-butanediol component and 25 to 65 mol% of 1,4-cyclohexanediemthanol component, that therefore, Murakami does not include as an essential configuration the requirement in claim 1 of containing 95 mol% or more of a 2,6-naphthalenedicarboxylic acid component based on the total amount of component (A), and component (B) consisting of 35 to 75 mol% of 1,4-butanediol component and 25 to 65 mol% of 1,4-cyclohexanedimethanol component based on the total amount of component (B), and that since the resin component is different, the configuration is different (p. 8-9), the rejection of claim 1 in this Office action is not based on Murakami’s Example 1 and is not based on Murakami’s Example 6 unmodified. The rejection is based on a modified version of Murakami’s Example 6 as explained in the rejection of claim 1 in this Office action. Murakami renders it obvious that on the component (B) consists of from 35 to 40 mol% of 1,4-butanediol component and from 60 to 65 mol% of 1,4-cyclohexanedimethanol component with respect to the total amount of the component (B) as claimed and as explained in the rejection of claim 1 in this Office action.
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.
Correspondence
Any inquiry concerning this communication or earlier communications from the examiner should be directed to DAVID KARST whose telephone number is (571)270-7732. The examiner can normally be reached Monday-Friday 8:00 AM-5:00 PM.
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/DAVID T KARST/Primary Examiner, Art Unit 1767
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