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 .
Election/Restrictions
Applicant’s election without traverse of Group I (claims 1-10) in the reply filed on May 12, 2026 is acknowledged. Claims 11 and 12 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected Group.
Claim Objections
Claim 1 is objected to because of the following informalities. In line 3, the term “the hardness” should be changed to “a hardness”.
Claim Interpretation
In claim 1, the limitation of “wherein the hardness of a roll obtained by slitting a master roll on which the biaxially oriented polyester film is wound and then by being rewound thereon at a winding tension of 6.5 kg/m to 8.5 kg/m, a winding surface pressure of 35 kg/m to 50 kg/m and a winding rate of 300 m/min to 350 m/min, is 90 to 95 points” is being interpreted as being a property limitation that does not require that the biaxially oriented polyester is in roll-form. That is, this claim is being interpreted as being directed to a biaxially oriented polyester that exhibits the claimed hardness when subjected to the conditions set forth in the claim, e.g., winding tension in the range of 6.5 to 8.5 kg/m.
Claim Rejections - 35 USC § 102/103
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 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.
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 and 8-9 are rejected under 35 U.S.C. 102(a)(1) as anticipated by or, in the alternative, under 35 U.S.C. 103 as obvious over JP2012-46736. An English language translation of JP ‘736 is attached to this Office action and relied upon in the below rejections.
Regarding claims 1 and 8, JP ‘736 discloses a biaxially oriented [0027] polyester film roll, wherein the polyester contains silica particles [0083].
JP ‘736 does not specifically disclose the limitation of “wherein the hardness of a roll obtained by slitting a master roll on which the biaxially oriented polyester film is wound and then by being rewound thereon at a winding tension of 6.5 kg/m to 8.5 kg/m, a winding surface pressure of 35 kg/m to 50 kg/m and a winding rate of 300 m/min to 350 m/min, is 90 to 95 points”, but does disclose that the film roll is wound at a winding tension of 10 to 50 N/m [0066], a roll pressure of a 200-400N/m [0066], and a winding speed of 25 m/ min or more [0062], and has a hardness of 93 to 96 [0026], the polyester film roll is wound using a slitter at a speed of 260 m/min, a tensile force of 20 N/m, and a pressure of 200 N/m [0091], and the hardness of the film roll is excellent and wrinkles do not occur. So, while a different test is used in JP ‘736, the disclosure of a roll that is free of wrinkles and has excellent hardness is disclosed. MPEP 2112.01 states: “’Products of identical chemical composition cannot have mutually exclusive properties.’ In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990). A chemical composition and its properties are inseparable. Therefore, if the prior art teaches the identical chemical structure, the properties applicant discloses and/or claims are necessarily present.” Further, MPEP 2112 states: "’[T]he discovery of a previously unappreciated property of a prior art composition, or of a scientific explanation for the prior art’s functioning, does not render the old composition patentably new to the discoverer.’ Atlas Powder Co. v. IRECO Inc., 190 F.3d 1342, 1347, 51 USPQ2d 1943, 1947 (Fed. Cir. 1999). Thus the claiming of a new use, new function or unknown property which is inherently present in the prior art does not necessarily make the claim patentable. In re Best, 562 F.2d 1252, 1254, 195 USPQ 430, 433 (CCPA 1977).” And, “Where applicant claims a composition in terms of a function, property or characteristic and the composition of the prior art is the same as that of the claim but the function is not explicitly disclosed by the reference, the examiner may make a rejection under both 35 U.S.C. 102 and 103. ‘There is nothing inconsistent in concurrent rejections for obviousness under 35 U.S.C. 103 and for anticipation under 35 U.S.C. 102.’ In re Best, 562 F.2d 1252, 1255 n.4, 195 USPQ 430, 433 n.4 (CCPA 1977). This same rationale should also apply to product, apparatus, and process claims claimed in terms of function, property or characteristic. Therefore, a 35 U.S.C. 102 and 103 rejection is appropriate for these types of claims as well as for composition claims.”
Regarding claim 9, JP ‘736 discloses that the film can have a thickness of 1 to 12 µm [0052].
Claim Rejections - 35 USC § 103
Claims 2-5 and 7 are rejected under 35 U.S.C. 103 as being unpatentable over JP2012-46736.
Regarding claims 2 and 3, JP ‘736 does not disclose that the silica particles have an average size of 3-5 µm or are present in an amount from 0.0008-0.0015 wt%. JP ‘736 does disclose using silica particles having a particle diameter of 800 nm in an amount of 0.02 wt% [0083]. Per MPEP 2144.05, it would have been obvious to one of ordinary skill in the art to have optimized or discovered workable ranges for the silica size and content, motivated by the desire to obtain a biaxially oriented polyester film having desire opacity properties. It is noted Table 1 of the specification appears to demonstrate criticality for the combination of the inorganic particle size and content. However, the claims are not commensurate in scope with this showing, because none of the claims are limited to the combination of an inorganic particle size of 3-5 µm and an amount from 0.0008-0.0015 wt%.
Regarding claim 4 and 5, JP ‘736 does not disclose claimed roughness properties. However, JP ‘736 discloses that the center line surface roughness Ra in one direction of the film is 1 to 6 nm, the center line surface roughness Ra on the other surface is 1 to 30 nm, and particles are added to adjust the surface roughness ([0039], [0041]). It would have been obvious to have optimized or discovered workable ranges for the surface roughness of the film, motivated by the desire to obtain a biaxially oriented polyester film having a desired smoothness or texture.
Regarding claim 7, JP ‘736 does not disclose the claimed SPC of 100 or more projections property. However, JP ‘736 does disclose that the roughness, i.e., projections from the surface, can be modified by the inclusion of inorganic particles to the layer forming the surface [0041]. It would have been obvious to have optimized or discovered workable ranges for the surface peak count of the projections of the film, motivated by the desire to obtain a biaxially oriented polyester film having a desired smoothness or texture
Claim 6 is rejected under 35 U.S.C. 103 as being unpatentable over JP2012-46736 in view of WO2020/095725 or WO2020/166353. U.S. Pub. No. 2022/0024111 is the U.S. equivalent to WO ‘725 and U.S. Pub. No. 2022/0056223 is the U.S. equivalent to WO ‘353. These U.S. Publications are relied upon in the below rejection.
JP ‘736 is silent as to the haze of the biaxially oriented polyester film. US ‘111 discloses that it is known in the biaxially oriented polyester film art to prepare films having a haze % of up to 7% (claim 1). Such a film is disclosed as having excellent printing appearance and can easily defect foreign materials with X-ray [0127]. Additionally, US ‘223 also discloses that it is known in the biaxially oriented polyester film art to prepare films having a haze % of up to 8% [0013]. Such a film is disclosed as having a desired balance of opacity and slipperiness properties [0085]. It would have been obvious to one of ordinary skill in the art to have prepared the film of JP ‘736 that has a haze % above 4%, motivated by the desire to obtain a film having excellent printing appearance, can easily defect foreign materials with X-ray, and has a desired balance of opacity and slipperiness properties, as taught in US ‘111 and US ‘223.
Claim 10 is rejected under 35 U.S.C. 103 as being unpatentable over JP2012-46736 in view of JPH-11-250890. An English language translation of JP ‘890 is attached to this Office action and relied upon in the below rejections.
JP ‘736 does not disclose using the biaxially oriented polyester film as a battery separator. JP ‘890 discloses that it is known in the art to use biaxially oriented polyester films [0053] as a battery separator [0089]. It would have been obvious to the skilled artisan to have used the biaxially oriented polyester film of JP ‘736 as a battery separator, as taught in JP ‘890, motivated by the desire to use the film in a conventionally known application.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Blaine Copenheaver whose telephone number is (571)272-1156. The examiner can normally be reached M-F 8-5.
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/BLAINE COPENHEAVER/Primary Examiner, Art Unit 1781
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