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 .
Status of the Claims
Claims 1-6 and 8-18 are currently pending.
Claim 7 is canceled.
Response to Amendments
Applicant’s amendments filed 03/09/2026 have been entered.
Claims 1 and 2 have been amended. Claim 7 has been canceled.
The Section 103 rejections have been updated to reflect Applicant’s amendments.
Claim Rejections - 35 USC § 103
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 1-6 and 8-16 are rejected under 35 U.S.C. 103 as being unpatentable over Goerlitz et al. (US 2021/0147645 A1).
Regarding claims 1 and 3-6,
Goerlitz teaches biaxially stretched polyolefin films (a polyolefin-based film) (Goerlitz: abstract). The film comprises a layer comprising (corresponds to “layer A”) containing: 10 to 45 wt% of a cycloolefin-based resin (such as TOPAS® 6013 resins which is the same tradename utilized in par. 0080 of Applicant’s PGpub and proportions utilized in Table 1-1 of Applicant’s PGpub) blended with 90 to 55 wt% of propylene (such as Borclean® HC300 BF which is the same tradename utilized in par. 0194 of Applicant’s PGpub and proportions utilized in Table 1-1 of Applicant’s PGpub) (Goerlitz: par. 0044-0047, 0068-0069, and 0141-0142). The film may have a machine direction stretch ratio of 1:2 to 1:8 (overlaps with the longitudinal stretch ratio in Table 1-1 of Applicant’s PGpub), a transverse direction stretch ratio of 1:5 to 1:10 (which overlaps with the lateral stretch ratio in Table 1-1 of Applicant’s PGpub), and an area ratio of from 10-fold to 100-fold (overlaps with the disclosed area stretch ratio of 35 or more in par. 0030 and Table 1-1 of Applicant’s specification) (Goerlitz: par. 0081-0082). The films have a thickness of 0.5 and 15 µm which is within the preferred thickness range of 0.5 to 25 µm in par. 0090 of Applicant’s PGpub (Goerlitz: par. 0110).
Goerlitz is silent towards the claimed material properties such as the temperature of peak and melting temperatures, the Haze the relationship between MOP and TOP parameters, the loss tangent when tested in the claimed manner, the shrinkage stress (130 S) when tested in the claimed manner, and the thermal shrink ratio required by claims 3-6.
However, as explained above, Goerlitz teaches a polyolefin-based film having the claimed and disclosed structure (film thickness), composition (same tradenames which have the same properties) and compositional proportions, and stretched in overlapping proportions as explained above. Therefore, it would be expected that the film of Goerlitz would possess the same material properties when tested in the claimed manner. When the claimed and prior art products are identical or substantially identical in structure or composition, or are produced by identical or substantially identical processes, the prior art products necessarily possess the characteristics of the claimed product. See MPEP 2112.01.
Regarding claims 2 and 10-12,
Goerlitz teaches the polyolefin-based film required by claim 1. Goerlitz is silent towards the “layer A” having the claimed domains when cut and tested in the various claimed manners required by claims 2 and 10-12.
However, as explained in the rejection of claim 1 above, Goerlitz teaches a polyolefin-based film having the claimed and disclosed structure (film thickness), composition (same tradenames which have the same properties) and compositional proportions, and stretched in overlapping proportions as explained above. Therefore, it would be expected that the film of Goerlitz would possess the same properties such as the domain sizes when cut and tested in the claimed manner. When the claimed and prior art products are identical or substantially identical in structure or composition, or are produced by identical or substantially identical processes, the prior art products necessarily possess the characteristics of the claimed product. See MPEP 2112.01.
Regarding claim 8,
Goerlitz teaches the polyolefin-based film required by claim 1. Goerlitz further teaches the cycloolefin-based resin is an amorphous resin (Goerlitz: par. 0005).
Regarding claim 9,
Goerlitz teaches the polyolefin-based film required by claim 1. Goerlitz further teaches the polyolefin-based film (“layer A”) may be implemented into a multi-layer film (Goerlitz: par. 0086). There may be three or more layers wherein the “layer A” may be a core layer and the two outermost layers may be polypropylene resin layers and would thus have a larger amount of polypropylene and less of the cycloolefin-based resin compared to the “layer A” (Goerlitz: par. 0094).
Regarding claim 13,
Goerlitz teaches the polyolefin-based film required by claim 1. Goerlitz further teaches a metallized film comprising a metallized layer on one or both surfaces of the polyolefin-based film and thus may be considered to have a metal membrane on at least one surface of said polyolefin-based film (Goerlitz: par. 0113 and 0118).
Regarding claim 14,
Goerlitz teaches the metallized film required by claim 13. Goerlitz further teaches the film may be a capacitor film (Goerlitz: par. 0118).
Regarding claim 15,
Goerlitz teaches the film capacitor required by claim 14. The limitation requiring the film capacitor to be “produced by subjecting the metallized film to a heat treatment at 125°C or more” is a product-by-process limitation. When the prior art discloses a product which reasonably appears to be either identical with or only slightly different than a product claimed in a product-by-process claim, a rejection based alternatively on either Section 102 or Section 103 is proper. See MPEP 2113. In this case, there appears to be no structural difference between the claimed capacitor film and the capacitor film disclosed by Goerlitz.
Regarding claim 16,
Goerlitz teaches the film capacitor required by claim 14. Goerlitz further teaches the film capacitor may be plugged into a capacitor (a power control unit) (Goerlitz: par. 0114).
Claims 17 and 18 are rejected under 35 U.S.C. 103 as being unpatentable over Goerlitz in view of Shepard (US 2013/0182372 A1).
Regarding claims 17 and 18,
Goerlitz teaches the film capacitor required by claim 16. Goerlitz does not explicitly teach wherein the power control unit is utilized in an electric vehicle/aircraft.
However, Shepard teaches it is known in the art of film capacitors made of metalized plastic layers are known to be utilized in aircraft avionics (electric vehicle/aircraft) (Shepard: abstract; par. 0003-0005 and 0013-0015).
Goerlitz and Shepard are in the corresponding field of metallized plastic film capacitors for use in power units. Therefore, it would be obvious to one of ordinary skill in the art to apply the power control unit of Goerlitz into an electric aircraft/vehicle to provide suitable power for its intended use in the field of electric aircrafts/vehicles as taught by Shepard.
Response to Arguments
Applicant’s arguments filed 03/09/2026 have been full considered but they are not found persuasive.
Applicant argues in the “first” point on pages 5-6, that a high-meso-pentad fraction, melting point, and stretch ratio is needed to have the claimed thermal shrinkage ratio (130S) in the machine direction of more than 2.0% and 5.0% or less.
The argument is not found persuasive as Goerlitz does teach propylene resins having the claimed features as Goerlitz teaches the tradename polypropylene resin (such as TOPAS® 6013) utilized in the specification, along with the claimed stretch ratios, wt%, film thickness, etc. as explained in the rejection above. Thus, it would be expected to also have the asserted high-meso-pentad fraction (which is not required by claim 1) and thus inherently have the claimed 130S shrinkage ratio as explained in the rejection above. Applicant has not provided evidence that the film has a different structure, but has just asserted it does not teach certain features, which have been held to be inherent in the rejection above. Arguments presented by applicant cannot take the place of evidence in the record. See In re De Blauwe, 736 F.2d 699, 705, 222 USPQ 191, 196 (Fed. Cir. 1984); In re Schulze, 346 F.2d 600, 602, 145 USPQ 716, 718 (CCPA 1965); In re Geisler, 116 F.3d 1465, 43 USPQ2d 1362 (Fed. Cir. 1997). See MPEP 2145 I. Although the claims are interpreted in light of the specification, limitations from the specification are not read into the claims. In re Van Geuns, 988 F.2d 1181, 26 USPQ2d 1057 (Fed. Cir. 1993). See MPEP 2145 VI.
Applicant argues further asserts in this section that Comparative Example 6 is comparable to Goerlitz.
The argument is also not persuasive as Applicant has not explained how Goerlitz is more comparable to Comparative Example 6 than the Applicant’s broader disclosure or Examples. As explained above, Goerlitz teaches the processing conditions which Applicant states is important in the previous argument such as stretching ratios and the compositional aspects by teaching the same proportions and tradenames as utilized in Applicant’s specifications.
Applicant argues in the “second” and “third” points on pages 6 and 7, that Goerlitz does not satisfy the claimed heat shrinkage rate 130S of 2% or more and 50% or less as amended in claims 1 and 2. Applicant argues that Goerlitz teaches a 130°C shrinkage rate of less than 2% in Goerlitz which is outside of the claimed range. Applicant also states the advantage detailed in the Examples and Comparative Examples that outside the claimed range leads to insufficient voltage resistance.
The argument is not found persuasive as the shrinkage rate cited for Goerlitz is not the same as the claimed 130 S shrinkage rate required by the claims. As the claims shrinkage rate is measured over a different time (10 minutes) compared to that of Goerlitz (5 minutes). Thus, the two ranges are not directly comparable. Applicant has not provided evidence or persuasively argued how the film of Goerlitz would not necessarily exhibit the claimed shrinkage range. Regarding the argument about voltage resistance being low, the ranges in Goerlitz are not comparable as explained, and mere recognition of latent properties in the prior art does not render nonobvious an otherwise known invention. In re Wiseman, 596 F.2d 1019, 201 USPQ 658 (CCPA 1979). See MPEP 2145 II.
Applicant generally argues the inherency rejection is improper because the film of Goerlitz does not necessarily exhibit the claimed properties that where rendered inherent in the rejection.
The argument is not found persuasive as the rejection is based on matching the structure, composition, and stretching conditions which necessarily lead the claimed properties in the specification. Applicant has not provided evidence or persuasive arguments on how Goerlitz is structurally different or wouldn’t necessarily exhibit the claimed properties. Arguments presented by applicant cannot take the place of evidence in the record. See In re De Blauwe, 736 F.2d 699, 705, 222 USPQ 191, 196 (Fed. Cir. 1984); In re Schulze, 346 F.2d 600, 602, 145 USPQ 716, 718 (CCPA 1965); In re Geisler, 116 F.3d 1465, 43 USPQ2d 1362 (Fed. Cir. 1997). See MPEP 2145 I.
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.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Travis M Figg whose telephone number is (571)272-9849. The examiner can normally be reached M-F 9am-5pm.
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/TRAVIS M FIGG/Primary Examiner, Art Unit 1783
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