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 .
Double Patenting
The nonstatutory double patenting rejection is based on a judicially created doctrine grounded in public policy (a policy reflected in the statute) so as to prevent the unjustified or improper timewise extension of the “right to exclude” granted by a patent and to prevent possible harassment by multiple assignees. A nonstatutory double patenting rejection is appropriate where the conflicting claims are not identical, but at least one examined application claim is not patentably distinct from the reference claim(s) because the examined application claim is either anticipated by, or would have been obvious over, the reference claim(s). See, e.g., In re Berg, 140 F.3d 1428, 46 USPQ2d 1226 (Fed. Cir. 1998); In re Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993); In re Longi, 759 F.2d 887, 225 USPQ 645 (Fed. Cir. 1985); In re Van Ornum, 686 F.2d 937, 214 USPQ 761 (CCPA 1982); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Thorington, 418 F.2d 528, 163 USPQ 644 (CCPA 1969).
A timely filed terminal disclaimer in compliance with 37 CFR 1.321(c) or 1.321(d) may be used to overcome an actual or provisional rejection based on nonstatutory double patenting provided the reference application or patent either is shown to be commonly owned with the examined application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. See MPEP § 717.02 for applications subject to examination under the first inventor to file provisions of the AIA as explained in MPEP § 2159. See MPEP § 2146 et seq. for applications not subject to examination under the first inventor to file provisions of the AIA . A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
The filing of a terminal disclaimer by itself is not a complete reply to a nonstatutory double patenting (NSDP) rejection. A complete reply requires that the terminal disclaimer be accompanied by a reply requesting reconsideration of the prior Office action. Even where the NSDP rejection is provisional the reply must be complete. See MPEP § 804, subsection I.B.1. For a reply to a non-final Office action, see 37 CFR 1.111(a). For a reply to final Office action, see 37 CFR 1.113(c). A request for reconsideration while not provided for in 37 CFR 1.113(c) may be filed after final for consideration. See MPEP §§ 706.07(e) and 714.13.
The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The actual filing date of the application in which the form is filed determines what form (e.g., PTO/SB/25, PTO/SB/26, PTO/AIA /25, or PTO/AIA /26) should be used. A web-based eTerminal Disclaimer may be filled out completely online using web-screens. An eTerminal Disclaimer that meets all requirements is auto-processed and approved immediately upon submission. For more information about eTerminal Disclaimers, refer to www.uspto.gov/patents/apply/applying-online/eterminal-disclaimer.
Claims 1, 2, 3, 5, 7, 9, and 10 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1/9, 3, 4, 6, 9/10, 11, and 12 respectively of U.S. Patent No. 12,583,982. Although the claims at issue are not identical, they are not patentably distinct from each other.
Patent claims 1 and 9 together define a polyester film derived from three specific diols and a dicarboxylic acid. Patent claim 1 also discloses the entirety of the wherein clause from instant claim 1, and also several other properties of the film. In general, instant claim 1 is fully encompassing of the subject matter of combined patent claims 1 and 9 insofar as it allows any three diols to be used in the production of the film and is open to any other attributes in addition to that which is described within the aforementioned wherein clause. Instant claim 7, while narrower in scope, is also fully encompassing of the subject matter of patent claims 9 and 10.
The remaining claims all mirror one another in the manner they further limit the scope of base claims 1.
Claim Rejections - 35 USC § 102
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.
Claims 1-10 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Kim et al., KR 2021/0052313. U.S. Patent Application Publication No. 2022/0002477 is believed to have an identical disclosure and is used as a faithful translation of the WIPO document into the English language. All citation of teaching location will be those for the U.S. publication.
Applicant is invited to compare the makeup of the copolymers summarized in Example 2 of the instant Specification and Example 1-6 of Kim. Not only are they compositionally equivalent, including conforming with the limitations of claims 7 and 8, but the processing conditions to which the copolymers are subjected in a film forming operation are essentially identical. Compare page 21, lines 5-13 of the instant Specification and paragraph [0159]. To the extent these two polymers are identically chemically constituted, and share the same thermal/processing history, the magnitude of the parameter ΔCp for the film of prior art Example 1-6 would be the same as that for Example 2 (0.256 according to Table 2 of the Specification) and ΔC0p is independent of thermal history being dictated entirely by the chemical makeup of the copolymer.
As for claim 2, Table 2 of the reference reports the Tc and Tm of copolymer 1-6 being 115.8° C and 185.1° C respectively, their difference being less than 100° C.
Concerning claim 4, it having already been established that the values of ΔCp and ΔC0p are/will be the same among prior art Example 1-6 and instant Example 2, than it necessarily holds that their ratio multiplied by 100 will also be the same.
As for claims 5 and 6, Table 2 of Kim only reports shrinkage rates at two lower temperatures and is silent as to the results of a THF adhesion test. To reiterate, the copolymers are, however, the same as are the processing conditions as are, at least in the case of the shrinkage rate the sample preparation and the exposure duration. Hence, it is the position of the Examiner that the limitations of claims 5 and 6 are necessarily inherent properties of the prior art film.
The films of this disclosure are used in the same applications outlined in claims 9 and 10 according to [0003].
Claims 1 and 3-10 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by EP 3584052.
Applicant is directed to the copolymers summarized in Example 4 of the instant Specification and Example 3-2 of the reference. Not only are they compositionally equivalent, including conforming with the limitations of claims 7 and 8, but the processing conditions to which the copolymers are subjected in a film forming operation are essentially identical. Compare page 21, lines 5-13 of the instant Specification and paragraph [0122]. To the extent these two polymers are identically chemically constituted, and share the same thermal/processing history, the magnitude of the parameter ΔCp for the film of prior art Example 3-2 would be the same as that for Example 4 (0.159 according to Table 2 of the Specification) and ΔC0p is independent of thermal history being dictated entirely by the chemical makeup of the copolymer.
Concerning claim 4, it having already been established that the values of ΔCp and ΔC0p are/will be the same among prior art Example 3-2 and instant Example 4, than it necessarily holds that their ratio multiplied by 100 will also be the same.
As for claims 5 and 6, Table 2 of EP ‘052 only reports shrinkage rates at two lower temperatures and is silent as to the results of a THF adhesion test. To reiterate, the copolymers are, however, the same as are the processing conditions as are, at least in the case of the shrinkage rate the sample preparation and the exposure duration [0127]. Hence, it is the position of the Examiner that the limitations of claims 5 and 6 are necessarily inherent properties of the prior art film.
The films of this disclosure are used in the same applications outlined in claims 9 and 10 according to page 1, line 15.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to MARC S ZIMMER whose telephone number is (571)272-1096. The examiner can normally be reached M-F 8:30-5:00.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Heidi Kelley can be reached at 571-270-1831. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
July 15, 2026
/MARC S ZIMMER/Primary Patent Examiner, Art Unit 1765
Prosecution Insights