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 .
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 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.
Claims 1-10 are pending. Applicant’s previous election of Group I, claims 1-4 and 10 still applies and claims 5-9 remain withdrawn.
Continued Examination Under 37 CFR 1.114
A request for continued examination under 37 CFR 1.114, including the fee set forth in 37 CFR 1.17(e), was filed in this application after final rejection. Since this application is eligible for continued examination under 37 CFR 1.114, and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114. Applicant's submission filed on 04/16/25 has been entered.
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 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.
If 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.
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.
The factual inquiries set forth in Graham v. John Deere Co., 383 U.S. 1, 148 USPQ 459 (1966), that are applied for establishing a background for determining obviousness under 35 U.S.C. 103 are summarized as follows:
1. Determining the scope and contents of the prior art.
2. Ascertaining the differences between the prior art and the claims at issue.
3. Resolving the level of ordinary skill in the pertinent art.
4. Considering objective evidence present in the application indicating obviousness or nonobviousness.
When something is indicated as being “obvious” this should be taken as shorthand for “prima facie obvious to one having ordinary skill in the art to which the claimed invention pertains before the effective filing date of the invention”.
When a range is indicated as overlapping a claimed range, unless otherwise noted, this should be taken as short hand to indicate that the claimed range is obvious in view of the overlapping range in the prior art as set forth in MPEP 2144.05, in the case where the claimed range “overlap or lie inside ranges disclosed by the prior art”, a prima facie case of obviousness exists, In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990).
Claim(s) 1-4 and 10 is/are rejected under 35 U.S.C. 103 as being unpatentable over Jung et al. (U.S. 6,458,439) in view of Namekawa et al. (U.S. 2016/0221064) in view of Nakamura et al. (U.S. 2018/0029334) in view of Yamanaka (U.S. 2018/0065339).
Regarding claims 1-4 and 10 Jung teaches a polyester resin coating for a metal sheet that includes a 10/90-90/10 mixture (overlapping the claimed ranges) of polyesters, e.g., polyethylene terephthalate isophthalate copolymer and polybutylene terephthalate homopolymer, with the coating being applied via extrusion coating (without stretching/orientation) to a thickness overlapping claims 3-4 (see abstract, col. 4, line 45 – col. 5, line 15). The PBT resin is exemplified as having a melting point of 225 Celsius (close enough to the claimed range for polyester II to render the claimed range obvious, see below, also further obvious in view of Yamanaka, see below) (Columns 17-18, footnote 5 in the table), such that it would have been obvious to use this melting point because it is shown in the examples as being suitable. Jung also teaches that pigments may be included as an additive (col. 15, lines 25-45).
The instantly claimed melting point of 223 and that taught by Jung are so close to each other that the fact pattern is similar to the one in In re Woodruff , 919 F.2d 1575, USPQ2d 1934 (Fed. Cir. 1990) or Titanium Metals Corp. of America v. Banner, 778 F.2d 775, 227 USPQ 773 (Fed.Cir. 1985) where despite a “slight” difference in the ranges the court held that such a difference did not “render the claims patentable” or, alternatively, that “a prima facie case of obviousness exists where the claimed ranges and prior art ranges do not overlap but are close enough so that one skilled in the art would have expected them to have the same properties”.
The melting point of the polyethylene terephthalate isophthalate copolymer is not disclosed. However, Namekawa is also directed to polyester coatings for metal sheets in the same field and teaches that a suitable polyethylene terephthalate isophthalate copolymer comprises less than 25 mol% of isophthalic acid based monomers (overlapping the ratio of terephthalate and isophthalate in the present examples) and has a melting point overlapping the claimed range (see abstract, [0023]). Namekawa does not call for orientation/stretching (as in Jung). Thus, it would have been obvious to have used such a polyethylene terephthalate isophthalate copolymer as taught by Namekawa for the polyethylene terephthalate isophthalate copolymer already generally called for in Jung because it is shown in Namekawa to be suitable for the same intended use as desired in Jung.
Modified Jung does not disclose the claimed second and fourth Xray relationship, however, Nakamura is also directed to polyester coatings of metal sheets in the same field and teaches that when PBT is used (as in modified Jung) the heat history of the coating during application to the metal sheet should be controlled such that the I011/I100 peak ratio (the inverse of the second ratio as claimed), which reflects the crystallization orientation characteristics of the PBT (such that the PBT is crystallized, as in the present specification), should be between 0.2 and 5 (overlapping the claimed second and forth formula ranges of claims 1 and 2) in order to provide good formability (see abstract, [0056]-[0058]). Nakamura also teaches that the PBT may achieve the above effects without orientation/stretching of the resin layer (as in Jung). Thus, it would have been obvious to have provided the PBT in the polyester coating of modified Jung with the I011/I100 peak ratio property taught by Nakamura in order to impart good formability.
As explained above, Jung already teaches a PBT melting point close enough to the claimed range to render it obvious. However, Yamanaka provides further teachings that render the claimed range even more obvious. That is, Yamanaka is also directed to polyester coatings on metal sheets that use PBT for crystallinity (as in the benefit of modified Jung via Nakamura, see above) and teaches that a melting point of PBT overlapping the claimed range provides such crystallinity (see abstract, [0069]) such that it would have been further obvious to use such a melting point for the PBT in Jung as taught by Yamanaka for suitable crystallinity.
Modified Jung does not disclose the claimed first and third Xray relationships of claims 1 and 2, but given that the same type and amount of polyesters are disclosed in modified Jung (i.e., the same polyethylene terephthalate isophthalate copolymer and PBT as is used in the present examples) and given that the coating heat history is controlled to achieve the same second and fourth Xray relationship as in the present application, the first and third Xray relationship property of the resin layer in modified Jung will also inherently overlap the claimed first and third Xray property of claims 1 and 2.
Modified Jung does not disclose that the above polyester resin layer of PET and PBT having the claimed X ray properties comprises two or more layers as claimed. However, Nakamura teaches that when polyester coatings are applied to metal sheets and include pigment (as already taught in Jung), the polyester coating should be applied in multiple layers, with the pigment included in an interior polyester layer 3b and with the outer polyester layer 3c being free of pigment (in order to improve color tone change after retorting) and with the pigmented and non-pigmented layers of polyester being substantially similar in melting point and composition (which overlaps the embodiment wherein the pigmented and non-pigmented polyester layers are compositionally identical besides the pigment ingredient) in view of film formation considerations ([0050]). Nakamura also teaches a similar thickness of the overall polyester layers as in Jung and the present claims 3 and 4 ([0054]) and teaches that the outer layer 3c should have a thickness of at least 1 micron with the total layer (3a, 3b, and 3c) thickness being 3-25 microns and a lowermost layer 3a having, e.g., 5-50% of the interior layer 3b pigment thickness, such that the thickness of the layers overlaps claims 1 and 10 (e.g., the above ranges include 4 microns for outermost layer 3c, 20 microns for interior layer 3b, and 1 micron for inner layer 3a, which overlaps the claimed ranges) ([0050]-[0054]). Thus, it would have been obvious to have applied the polyester coating of modified Jung in two layers that are identical except for pigment being included in an interior layer (corresponding to layer C) and being omitted from the outermost layer (corresponding to layer A) to protect the pigment during retort treatment (lessen color tone change) and still provide good film formability, as taught by Nakamura.
As indicated above, the polyester coating composition taught by modified Jung inherently overlaps the Xray properties of claims 1 and 2 and therefore, upon being divided into different layers that differ only in the inclusion/exclusion of pigment, the combination of these layers (corresponding to layers A and C as claimed) would also have these Xray properties, as claimed (especially because the present examples show that a single resin layer, e.g., Example 2, that meets the claimed X ray properties can be divided into two layers that are pigmented and unpigmented but otherwise identical, e.g., Example 4, and still have X ray properties within the claimed range).
Response to Arguments
Applicant’s remarks are moot in light of the new grounds of rejection. Remarks which are still deemed relevant are addressed below and are not persuasive.
Applicant argues that the composition of Nakamura does not include sufficient PET to render obvious the claimed layers. This is not persuasive because the rejection is not based on the composition of Nakamura replacing the composition of Jung. Rather, it is based on the treatment process of Nakamura being applied to Jung to improve crystallization of the PBT (PBT already being included in the composition of Jung along with PET, as claimed), and also based on the teaching in Nakamura that a polyester coating on metal substrate may be applied as a pigmented composition followed by an non-pigmented composition that is identical (aside from lacking pigment). Neither of these modifications of Jung based on Nakamura require that the composition of Nakamura is used instead of the composition of Jung because the teachings of Nakamura apply to the PBT that is already included as part of the composition of Jung. In other words, the benefit of PBT crystallization treatment from Nakamura would still improve/crystallize the PBT in the PET/PBT blend of Jung (without having to use the composition of Nakamura) because it both cases the PBT in the resin layer is being crystallized and thereby improved.
Conclusion
References cited in any corresponding foreign applications have been considered but would be cumulative to the above. Any inquiry concerning this communication or earlier communications from the examiner should be directed to MICHAEL B NELSON whose direct telephone number is (571)272-9886 and whose direct fax number is (571)273-9886 and whose email address is Michael.Nelson@USPTO.GOV. The examiner can normally be reached on Mon-Sat, 7am - 7pm.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Callie Shosho can be reached on 571-272-1123. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300 (faxes sent to this number will take longer to reach the examiner than faxes sent to the direct fax number above).
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/MICHAEL B NELSON/
Primary Examiner, Art Unit 1787