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 .
Summary
The Applicant’s arguments and claim amendments received on October 21, 2025 are entered into the file. Currently, claim 1 is amended; claim 4 is canceled; resulting in claims 1-3 and 5-7 pending for examination.
Information Disclosure Statement
The information disclosure statement (IDS) submitted on 12/31/2025 has been considered by the examiner.
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.
The factual inquiries 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.
This application currently names joint inventors. In considering patentability of the claims the examiner presumes that the subject matter of the various claims was commonly owned as of the effective filing date of the claimed invention(s) absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and effective filing dates of each claim that was not commonly owned as of the effective filing date of the later invention in order for the examiner to consider the applicability of 35 U.S.C. 102(b)(2)(C) for any potential 35 U.S.C. 102(a)(2) prior art against the later invention.
Claims 1-3 and 5-7 are rejected under 35 U.S.C. 103 as being unpatentable over Fukuda et al. (US 4,985,538, cited on IDS) in view of Liu et al. (US 2008/0058488, newly cited).
Regarding claims 1, 6, and 7, Fukuda et al. teaches a shrinkable polyester film used as a label for various vessels such as glass or PET bottles (Abstract). In the shrinkable polyester film disclosed in Example 2 of Fukuda et al., the polyester has an intrinsic viscosity (limiting viscosity) of 0.75 obtained by solid phase polymerization, comprising 97 mol% of terephthalic acid and 3 mol% of isophthalic acid as the dicarboxylic component and 80 mol% of ethylene glycol and 20 mol% of diethylene glycol as the glycol component (col 15, Ln 40-60). As shown in Table 1, the shrinkage rate in the main shrinkage direction is 69%, the shrinking stress (maximum shrinkage stress) is 580 g/mm2 (equivalent to about 5.7 MPa), and the heat of fusion (melting heat amount) is 5.5 cal/g (equivalent to about 23.0 J/g). Fukuda et al. therefore teaches an exemplary embodiment of a heat-shrinkable polyester film having values for the shrinkage rate, maximum shrinkage stress, melting heat amount, and limiting viscosity which fall within the claimed ranges.
With respect to the solvent adhesion strength of the film, while it is acknowledged that all of the claimed physical properties are not explicitly recited by Fukuda et al., the reference teaches all of the features/materials which the instant specification recognizes as essential to achieving the claimed solvent adhesion strength. In particular, paragraph [0033] of the as-filed specification indicates that the solvent adhesion strength is set within the claimed range when the film has a high amorphous property, or low crystallinity. Fukuda et al. teaches that the degree of crystallinity is preferably not more than 5%, where a high degree of crystallinity inhibits the shrinkage properties of the film (col 3, Ln 51-58; col 5, Ln 59-68). Therefore, since Fukuda et al. teaches that the degree of crystallinity is low and also teaches values for the maximum shrinkage stress, melting heat amount, and limiting viscosity associated with a high amorphous property, the solvent adhesion strength of the film is presumed to fall within the claimed range. Should the Applicant disagree, it is requested that evidence is provided to support their position. See also MPEP 2112, 2112.01 and analogous burden of proof in MPEP 2113.
With respect to the limitation requiring that the polyester of the polyester film contains 5 mass% or more and 50 mass% or less of recycled raw material from a PET bottle, it is noted that this is a product-by-process limitation, where the limitation reciting a particular content of recycled raw material from a PET bottle is interpreted as requiring that the polyester contains polyethylene terephthalate. The limitation requiring that the polyester contains a recycled raw material from a bottle does not produce a structural feature of the product, as the material resulting from recycling a PET bottle is substantially identical to a PET material sourced by any other means (e.g., virgin PET, PET from other types of consumer products).
Given that the polyester film disclosed in Example 2 of Fukuda et al. is formed using 97 mol% terephthalic acid as a dicarboxylic component and 80% ethylene glycol as a glycol component, the polyester film taught by Fukuda et al. contains polyethylene terephthalate and is not patentably distinct from a polyester film which contains 5 to 50 mass% of recycled raw material from a PET bottle. The method of forming the product is not germane to the issue of patentability of the product itself, unless Applicant presents evidence from which the Examiner could reasonably conclude that the claimed product differs in kind from that of the prior art. See MPEP 2113.
With respect to the claimed content ratio of isophthalic acid, although Fukuda et al. teaches an embodiment in Example 2 in which the content ratio of isophthalic acid in 100 mol% of the entire acid component in the polyester forming the film is 3 mol% (Example 2), the reference does not expressly teach a content ratio of isophthalic acid which falls within the claimed range of 0.1 mol% to 2.0 mol%.
However, in the analogous art of heat-shrinkable polyester films, Liu et al. teaches a modified PET composition used for shrinkable labels, wherein the PET composition comprises terephthalic acid, ethylene glycol, a first modifier, and a second modifier ([0009], [0023], [0031]). The second modifier may be a diacid which is present in an amount ranging from 1 to 30 mol% based on one mole of ethylene glycol, wherein when isophthalic acid is used as the second modifier, the amorphous phase region of the PET material can be increased [0025].
Given that Fukuda et al. teaches that the degree of crystallinity is preferably not more than 5%, where a high degree of crystallinity inhibits the shrinkage properties of the film (col 3, Ln 51-58; col 5, Ln 59-68), it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the polyester film of Fukuda et al. by setting an amount of isophthalic acid within the claimed range, as taught by Liu et al., in order to control the crystallinity of the polyester within the desired range. It is noted that Liu et al. teaches that a content of isophthalic acid is 1 to 30 mol% based on one mole of ethylene glycol, such that when the diol component of the polyester contains components other than ethylene glycol (such as, e.g., diethylene glycol, as in Example 2 of Fukuda et al.), the content ratio of isophthalic relative to the entire acid component in the polyester is even less than 1 to 30 mol%, which overlaps the claimed range. In the case where the claimed ranges overlap or lie inside ranges disclosed by the prior art, a prima facie case of obviousness exists. See MPEP 2144.05(I).
Regarding claim 2, Fukuda et al. in view of Liu et al. teaches all of the limitations of claim 1 above. With respect to the heat capacity change amount ΔCp, while it is acknowledged that all of the claimed physical properties are not explicitly recited by Fukuda et al. in view of Liu et al., the combination of references teaches all of the features/materials which the instant specification recognizes as essential to achieving the claimed heat capacity change amount property.
In particular, paragraph [0036] of the as-filed specification discloses that the heat capacity change amount corresponds to a mobile amorphous content, wherein a necessary shrinkage rate cannot be obtained when the ΔCp value smaller than 0.2 J/(g °C). Given that the polyester film taught by Fukuda et al. in view of Liu et al. has a low degree of crystallinity and has a heat shrinkage rate within the claimed range, the heat capacity change amount ΔCp of the film would also be expected to fall within the claimed range. Should the Applicant disagree, it is requested that evidence is provided to support their position. See also MPEP 2112, 2112.01 and analogous burden of proof in MPEP 2113.
Regarding claim 3, Fukuda et al. in view of Liu et al. teaches all of the limitations of claim 1 above, and Fukuda et al. further teaches that the elongation at break in the direction perpendicular to the main shrinking direction is 1 to 100% (col 7, Ln 51-58), which overlaps the claimed range. In the case where the claimed ranges overlap or lie inside ranges disclosed by the prior art, a prima facie case of obviousness exists. See MPEP 2144.05(I).
Regarding claim 5, Fukuda et al. in view of Liu et al. teaches all of the limitations of claim 1 above. As noted above with respect to claim 1, the polyester in Example 2 of Fukuda et al. is obtained from 97 mol% of terephthalic acid and 3 mol% of isophthalic acid as the dicarboxylic component, and 80 mol% of ethylene glycol and 20 mol% of diethylene glycol as the glycol component (col 15, Ln 40-60). Liu et al. further teaches using isophthalic acid as a diacid modifier in an amount ranging from 1 to 30 mol% ([0025]), such that the amount of terephthalic acid in the dicarboxylic component can be as high as about 99 mol%. Therefore, the polyester resin taught by Fukuda et al. in view of Liu et al. comprises ethylene terephthalate as a main constituent component.
Claims 1 and 5-7 are rejected under 35 U.S.C. 103 as being unpatentable over Yang et al. (US 2022/0235187, previously cited) in view of Tomita et al. (JP 2006-028210, machine translation via EPO provided).
Regarding claim 1, Yang et al. teaches a polyester film suitable for a heat shrinkage process and a seaming process, wherein the polyester film comprises a copolymerized polyester resin and a homo-polyethylene terephthalate (HOMO-PET) which may be obtained by recycling a container (recycled raw material from a PET bottle) ([0012], [0057], [0119]). In particular, the polyester film may comprise the HOMO-PET resin in an amount of 0.5% by weight to 37% by weight, preferably 3% to 25% by weight [0120]. The copolymerized polyester resin may be formed by polymerizing two or more diols and a dicarboxylic acid, wherein the dicarboxylic acid may be isophthalic acid ([0097], [0101]).
The polyester film has a melting enthalpy (melting heat amount ΔHm) of 9 J/g or more, preferably 15 to 28 J/g, in order to control the crystallinity and seaming characteristics of the polyester film ([0059]-[0060]). The polyester film has a heat shrinkage rate (T90) of 40% or more in a first direction (i.e., a main shrinkage direction) when immersed in 90°C hot water for 10 seconds, and a heat shrinkage rate (T100) of 45% to 85% in a first direction when immersed in 100°C hot water for 10 seconds ([0082]-[0087]). The polyester film also has a peel strength of 150 gf/3 cm or more, preferably 330 to 1300 gf/3 cm (equivalent to about 3.2 to about 12.7 N/30 mm), as measured using 1,3-dioxolane as an adhesive solvent for seaming ([0079]-[0081]). Yang et al. therefore teaches a content of recycled PET in the polyester, a shrinkage rate, a melting heat amount, and a solvent adhesion strength which overlap or fall within the claimed ranges. In the case where the claimed ranges overlap or lie inside ranges disclosed by the prior art, a prima facie case of obviousness exists. See MPEP 2144.05(I).
With respect to the claimed content ratio of isophthalic acid, although Yang et al. teaches that the copolymerized polyester resin may include isophthalic acid as a dicarboxylic acid ([0101]), the reference does not expressly teach a content ratio of the isophthalic acid relative to the entire acid component in polyester forming the film.
However, in the analogous art of heat-shrinkable polyester films, Tomita et al. teaches a heat-shrinkable film made from a polyester resin composition suitable for shrink labels for bottles, wherein the polyester resin composition comprises a polyethylene terephthalate copolymer A containing at least terephthalic acid as a dicarboxylic acid component, and a polybutylene terephthalate copolymer B containing at least terephthalic acid and isophthalic acid as dicarboxylic acid components ([0001], [0010]). Similar to Yang et al., Tomita et al. teaches that the PET copolymer A may contain an acid component other than terephthalic acid in an amount of 10 mol% or less based on 100 mol% of the total carboxylic acid components constituting the copolymer A [0017]. Tomita et al. teaches that by including terephthalic acid in a proportion of 90 to 100 mol%, preferably 98 to 100 mol%, based on 100 mol% of all carboxylic acid components in copolymer A, high crystallinity and sufficient strength can be ensured when the film is made into a heat-shrinkable film [0016]. Tomita et al. further teaches that by including isophthalic acid as a small proportion of the total carboxylic acid components, the crystallinity of the film can be reduced, and good printability and sealability can be obtained [0024].
It would, therefore, have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have determined the optimum value of a result-effective variable such as the content of isophthalic acid relative to the total acid component in the polyester through routine experimentation, especially given the teachings in Yang et al. and Tomita et al. regarding the desire to control the crystallinity of the polyester film in order to obtain desirable physical properties such as strength, shrinkability, printability, and sealability. See MPEP 2144.05(II).
With respect to the maximum shrinkage stress of the film, although Yang et al. teaches that conventional polyester films have fast shrinkage speed and high shrinkage stress but often exhibit defects caused by non-uniform shrinkage or distortions of a plastic container ([0004]), the reference does not expressly teach a maximum shrinkage stress of its polyester film.
However, Tomita et al. further teaches that the maximum shrinkage stress in the main shrinkage direction of the film at 80°C is usually 12 MPa or less, preferably 10 MPa or less, so that wrinkles and bending are less likely to occur when the film is attached to a square PET bottle or a plastic container with a catch, or when a highly directional heating method using hot air or the like is used [0050]. Tomita et al. teaches that the shrinkage stress depends on the stretching temperature and stretching ratio used to stretch the polyester film, as well as heat treatment after stretching ([0046]-[0047]).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the polyester film of Yang et al. in view of Tomita et al. by setting the maximum shrinkage stress in the main shrinkage direction of the film within the claimed range, as taught by Tomita et al., in order to prevent the occurrence of wrinkles and other defects when the film is attached to a plastic container. Furthermore, Tomita et al. teaches a range for the maximum shrinkage stress which overlaps the claimed range. In the case where the claimed ranges overlap or lie inside ranges disclosed by the prior art, a prima facie case of obviousness exists. See MPEP 2144.05(I).
With respect to the limiting viscosity of the film, while it is acknowledged that all of the claimed physical properties are not explicitly recited by Yang et al. in view of Tomita et al., the combination of references teaches all of the claimed features/materials formed by substantially the same methods as disclosed in the instant invention. Therefore, the claimed physical properties, i.e., a limiting viscosity of 0.59 to 0.75 dl/g, would be inherently achieved by a polyester film with all the claimed features/materials. The instant specification has not provided adequate teachings that the claimed properties are obtainable only with the claimed features/materials. Should the Applicant disagree, it is requested that evidence is provided to support their position. See also MPEP 2112, 2112.01 and analogous burden of proof in MPEP 2113.
As evidence that the claimed limiting viscosity of the film is inherent to the polyester film taught by Yang et al. in view of Tomita et al., it is noted that paragraphs [0042]-[0044] of the as-filed specification indicate that the limiting viscosity is controlled by the temperature of the resin in the extruder during a melt extrusion processing step, wherein when the temperature is higher than 330°C, decomposition of resin occurs and the limiting viscosity decreases. Yang et al. similarly teaches that the copolymerized polyester resin and homo-polyethylene terephthalate resin are melt-extruded at a temperature of 260°C to 300°C ([0125], [0132]). Given that the polyester film taught by Yang et al. in view of Tomita et al. is formed by a substantially identical process using substantially identical materials to the polyester film of the present invention, including performing a melt extrusion step at a temperature range coincident with that disclosed in the instant specification, the limiting viscosity of the film is presumed to fall within the claimed range.
Regarding claim 5, Yang et al. in view of Tomita et al. teaches all of the limitations of claim 1 above. As noted above, Yang et al. teaches that the polyester film comprises a copolymerized polyester resin and a homo-polyethylene terephthalate (HOMO-PET), and further teaches that the copolymerized polyester resin may be a copolymerized polyethylene terephthalate (Co-PET) ([0009], [0097]). Therefore, the polyester resin formed of polyethylene terephthalate comprises ethylene terephthalate as a main constituent component.
Regarding claims 6 and 7, Yang et al. in view of Tomita et al. teaches all of the limitations of claim 1 above, and Yang et al. further teaches that the polyester film can be applied as a heat shrinkable label to containers of various types of products including beverages and foods ([0002], [0055]).
Claim 2 is rejected under 35 U.S.C. 103 as being unpatentable over Yang et al. (US 2022/0235187, previously cited) in view of Tomita et al. (JP 2006-028210, machine translation via EPO provided) as applied to claim 1 above, and further in view of Haruta et al. (US 2017/0021601, cited on IDS).
Regarding claim 2, Yang et al. in view of Tomita et al. teaches all of the limitations of claim 1 above but does not expressly teach a heat capacity change amount ΔCp before and after a glass transition temperature as claimed.
Similar to Yang et al., Haruta et al. teaches a heat shrinkable polyester film which has a hot-water heat shrinkage of 55% to 90% in a main shrinking direction when dipped in hot water at 98% and a difference in specific heat capacity ΔCp between at a lower and a higher temperature than Tg of not less than 0.1 J/(g °C) and not more than 0.7 J/(g °C) (Abstract). In particular, Haruta et al. teaches that the ΔCp is preferably 0.2 J/(g °C) or more because if the difference in heat capacity is too small, the mobile amorphous amount is small, and the film fails to achieve high heat shrinkage ([0016], [0048]). Haruta et al. teaches that the steps of drawing or heat treatment of the film are adjusted to achieve the desired ratio of conversion from rigid amorphous to mobile amorphous amount [0032].
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the polyester film taught by Yang et al. in view of Tomita et al. by setting a heat capacity change amount ΔCp within the claimed range, as taught by Haruta et al., in order to achieve the desired heat shrinkage properties. Furthermore, Haruta et al. teaches a heat capacity change amount ΔCp which overlaps the claimed range. In the case where the claimed ranges overlap or lie inside ranges disclosed by the prior art, a prima facie case of obviousness exists. See MPEP 2144.05(I).
Claim 3 is rejected under 35 U.S.C. 103 as being unpatentable over Yang et al. (US 2022/0235187, previously cited) in view of Tomita et al. (JP 2006-028210, machine translation via EPO provided) as applied to claim 1 above, and further in view of Fukuda et al. (US 4,985,538, cited on IDS).
Regarding claim 3, Yang et al. in view of Tomita et al. teaches all of the limitations of claim 1 above but does not expressly teach a tensile elongation at break in a directional orthogonal to the main shrinkage direction of the polyester film.
Fukuda et al. teaches a shrinkable polyester film used as a label for various vessels such as glass or PET bottles (Abstract). Fukuda et al. teaches that the elongation at break in the direction perpendicular to the main shrinking direction is 1 to 100%, wherein the elongation at break is correlated to the shrinking properties of the film (col 7, Ln 51-col 8, Ln 5). In particular, when the elongation at break is lower than 1%, the film is liable to tear in the direction parallel to the main shrinking direction, whereas when the elongation at break is over 100%, distortion or deformation is apt to occur upon subjecting the film to shrinking treatment (col 8, Ln 6-14).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the polyester film taught by Yang et al. in view of Tomita et al. by setting an elongation at break within the claimed range, as taught by Fukuda et al., in order to achieve the desired heat shrinking properties for the polyester film while preventing ensuring the film has sufficient tear resistance. Furthermore, Fukuda et al. teaches a range for the elongation at break which overlaps the claimed range. In the case where the claimed ranges overlap or lie inside ranges disclosed by the prior art, a prima facie case of obviousness exists. See MPEP 2144.05(I).
Response to Arguments
Response-Specification
The previous objection to the specification is overcome by the Applicant’s amendment to paragraph [0037] in the response filed October 21, 2025.
Response-Claim Rejections - 35 USC § 102 and 103
Applicant’s arguments, see pages 6-14 of the remarks filed October 21, 2025, with respect to amended claim 1 have been considered but are moot because they do not address the new combination of references being used in the rejections above.
In light of the amendments to claim 1, the previous rejections based on Fukuda et al. and Yang et al. are withdrawn, and new rejections are presented above in which Liu et al. and Tomita et al. are used as secondary references in combination with Fukuda et al. and Yang et al., respectively, to address the newly added limitations directed to the content of isophthalic acid in the polyester.
It is noted that the Applicant submits on pages 11-14 of the remarks that the Applicant has unexpectedly discovered that the claimed heat-shrinkable polyester film exhibits remarkable finishing quality. These arguments, however, are moot as they do not address the newly cited prior art to Liu et al. and Tomita et al., which are relied upon to render obvious the claimed limitation directed to the isophthalic acid content ratio. The Applicant’s allegations of unexpected results therefore do not compare the claimed subject matter with the prior art applied in the prima facie case of obviousness presented above. See MPEP 716.02(e).
It is further noted that the data relied upon by the Applicant (see, e.g., Tables 2A-2B) does not appear to demonstrate the criticality of the claimed range of the isophthalic acid content ratio. In particular, no examples are shown which demonstrate the effect of increasing the isophthalic acid content ratio above the upper limit of the claimed range (i.e., above 2.0 mol%) in order to establish the criticality thereof. To establish unexpected results over a claimed range, applicants should compare a sufficient number of tests both inside and outside the claimed range to show the criticality of the claimed range. See MPEP 716.02(d)(II).
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.
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/Rebecca L Grusby/Examiner, Art Unit 1785