DETAILED ACTION
Notice of Pre-AIA or AIA Status
Claim(s) 1-10 is/are pending.
Claim(s) 1-8, 10 is/are rejected.
Claim(s) 9 is/are withdrawn from consideration.
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.
Response to Election/Restrictions
Applicant’s election without traverse of Species (a)(i) in the reply filed on 01/30/2026 is acknowledged.
Claim(s) 9 is/are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected species, there being no allowable generic or linking claim. Election was made without traverse in the reply filed on 01/30/2026.
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 §§ 706.02(l)(1) - 706.02(l)(3) 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 USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The 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/process/file/efs/guidance/eTD-info-I.jsp.
Claim(s) 1-8, 10 is/are rejected on the ground of nonstatutory double patenting as being unpatentable over:
• claims 1-18 of U.S. Patent No. 11,572,449 (LIAO ET AL),
in view of KLIESCH ET AL (US 2012/0196968),
and in view of JUNG ET AL (US 2014/0288209).
U.S. Patent No. 11,572,449 claims a polyester film and/or a method of forming a polyester film as recited in present application claims 1-8, 10. However, the U.S. Patents does not explicitly claim the use of a black additive or the production of a black polyester film.
KLIESCH ET AL ‘968 discloses that it is well known in the art to make black polyester films incorporating a black pigment (e.g., iron oxide, carbon black, graphite, etc.) with typical sizes of 2 microns or less in typical amounts of less than 10 wt% into polyester resins which are subsequently formed into films. The reference further discloses that it is well known in the art to incorporate organic or inorganic particles (e.g., silica, titanium dioxide, etc.) with a general size of 0.1-8 microns (preferably 0.5-2.5 microns) in typical amounts of 0.05-5 wt% in order to adjust surface topography and/or optical properties and/or film winding properties. (paragraph 0010-0011, 0021-0022, 0024-0027, etc.).
JUNG ET AL ‘209 discloses that it is well known in the art to utilize metal salts such as magnesium acetate (i.e., Mg(CH3COO)2) as an electrostatic pinning agent for polyester films. (paragraph 0010, 0014, 0043, etc.)
Regarding claims 1-8, 10, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to incorporate effective amounts of a known black pigments as suggested by KLIESCH ET AL ‘968 in the polyester film produced by the method claimed in U.S. Patent No. 11,572,449 in order to produce black-colored polyester films made from recycled polyester resins.
Regarding claim 2, one of ordinary skill in the art would have selected the amount of black pigment and optionally utilized additional pigments and/or dyes utilized in the polyester film produced by the method claimed in U.S. Patent No. 11,572,449 in order to obtain the opacity (e.g., an optical density of 1.5 or more) required for specific applications (e.g., for light-shielding or light-blocking for packaging, etc.).
Regarding claims 7-8, one of ordinary skill in the art would have utilized known magnesium-based electrostatic pinning agents (as suggested in JUNG ET AL ‘209) as the metal salt electrostatic pinning agents in the polyester film produced by the method claimed in U.S. Patent No. 11,572,449.
Regarding claim 10, one of ordinary skill in the art would have incorporated pigments into just one type of recycled polyester chips utilized in the polyester film produced by the method claimed in U.S. Patent No. 11,572,449 in order to simplify processing and to make it easier to obtain the desired optical characteristics and coloration.
Further regarding claims 1, 10: (i) the presence of the electrostatic pinning additive in the chemically recycled polyester resin; and (ii) dispersion or inclusion of the black additive in the physically recycled polyester resin; are product-by-process limitations and is not further limiting in as so far as the structure of the product is concerned. "[E]even though product-by-process claims are limited by and defined by the process, determination of patentability is based on the product itself. The patentability of a product does not depend on its method of production. If the product in the product-by-process claim is the same or obvious from a product of the prior art, the claim is unpatentable even though the prior product was made by a different process." [emphasis added] In re Thorpe, 777 F.2d 695, 698, 227 USPQ 964, 966 (Fed. Cir. 1985). See MPEP 2113. Once a product appearing substantially identical is found, the burden shifts to applicant to show a unobvious difference between the claimed product and the prior art product. In re Marosi, 710 F.2d 798, 802, 218 USPQ 289, 292 (Fed. Cir. 1993). There is no evidence on record that after film-formation (typically by melt-blending the various polyester chip components and extrusion): (i) the incorporation of the electrostatic pinning agent specifically in the chemically recycled polyester chips; and (ii) incorporation of the black additive specifically in the physically recycled polyester chips; chemically or structurally affects the distribution or behavior of the electrostatic pinning agent and/or the black additive in the final polyester film product as a whole.
Claim(s) 1-8, 10 is/are rejected on the ground of nonstatutory double patenting as being unpatentable over:
• claims 1-18 of U.S. Patent No. 11,608,422 (LIAO ET AL),
in view of KLIESCH ET AL (US 2012/0196968),
and in view of JUNG ET AL (US 2014/0288209).
U.S. Patent No. 11,608,422 claim a method of forming a polyester film as recited in present application claims 1-8, 10. However, the U.S. Patent does not explicitly claim the use of a black additive or the production of a black polyester film.
KLIESCH ET AL ‘968 discloses that it is well known in the art to make black polyester films incorporating a black pigment (e.g., iron oxide, carbon black, graphite, etc.) with typical sizes of 2 microns or less in typical amounts of less than 10 wt% into polyester resins which are subsequently formed into films. The reference further discloses that it is well known in the art to incorporate organic or inorganic particles (e.g., silica, titanium dioxide, etc.) with a general size of 0.1-8 microns (preferably 0.5-2.5 microns) in typical amounts of 0.05-5 wt% in order to adjust surface topography and/or optical properties and/or film winding properties. (paragraph 0010-0011, 0021-0022, 0024-0027, etc.).
JUNG ET AL ‘209 discloses that it is well known in the art to utilize metal salts such as magnesium acetate (i.e., Mg(CH3COO)2) as an electrostatic pinning agent for polyester films. (paragraph 0010, 0014, 0043, etc.)
Regarding claims 1-8, 10, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to substitute effective amounts of a known black pigments as suggested by KLIESCH ET AL ‘968 for the white additive in the polyester film produced by the method claimed in U.S. Patent No. 11,608,422 in order to produce useful black-colored polyester films made from recycled polyester resins, since it is well known in the art that the color of polymeric films can be readily changed by changing the pigments contained in said polymeric films.
Regarding claim 2, one of ordinary skill in the art would have selected the amount of black pigment and utilized additional pigments and/or dyes utilized in the polyester film produced by the method claimed in U.S. Patent No. 11,608,422 in order to obtain the opacity (e.g., an optical density of 1.5 or more) required for specific applications (e.g., for light-shielding or light-blocking for packaging, etc.)
Regarding claims 7-8, one of ordinary skill in the art would have utilized known magnesium-based electrostatic pinning agents (as suggested in JUNG ET AL ‘209) as the metal salt electrostatic pinning agents in the polyester film produced by the method claimed in U.S. Patent No. 11,608,422.
Regarding claim 10, one of ordinary skill in the art would have incorporated pigments into just one type of recycled polyester chips utilized in the polyester film produced by the method claimed in U.S. Patent No. 11,608,422 in order to simplify processing and to make it easier to obtain the desired optical characteristics and coloration.
Further regarding claims 1, 10: (i) the presence of the electrostatic pinning additive in the chemically recycled polyester resin; and (ii) dispersion or inclusion of the black additive in the physically recycled polyester resin; are product-by-process limitations and is not further limiting in as so far as the structure of the product is concerned. "[E]even though product-by-process claims are limited by and defined by the process, determination of patentability is based on the product itself. The patentability of a product does not depend on its method of production. If the product in the product-by-process claim is the same or obvious from a product of the prior art, the claim is unpatentable even though the prior product was made by a different process." [emphasis added] In re Thorpe, 777 F.2d 695, 698, 227 USPQ 964, 966 (Fed. Cir. 1985). See MPEP 2113. Once a product appearing substantially identical is found, the burden shifts to applicant to show a unobvious difference between the claimed product and the prior art product. In re Marosi, 710 F.2d 798, 802, 218 USPQ 289, 292 (Fed. Cir. 1993). There is no evidence on record that after film-formation (typically by melt-blending the various polyester chip components and extrusion): (i) the incorporation of the electrostatic pinning agent specifically in the chemically recycled polyester chips; and (ii) incorporation of the black additive specifically in the physically recycled polyester chips; chemically or structurally affects the distribution or behavior of the electrostatic pinning agent and/or the black additive in the final polyester film product as a whole.
Claim(s) 1-8, 10 is/are rejected on the ground of nonstatutory double patenting as being unpatentable over:
• claims 1-18 of U.S. Patent No. 11,680,150 (LIAO ET AL), or
• claims 1-8 of U.S. Patent No. 11,753,512 (YANG ET AL),
in view of KLIESCH ET AL (US 2012/0196968),
and in view of JUNG ET AL (US 2014/0288209).
U.S. Patent Nos. 11,680,150 and 11,753,512 each claim a polyester film and/or a method of forming a polyester film as recited in present application claims 1-8, 10. However, the U.S. Patent do not explicitly claim the use of a black additive or the production of a black polyester film.
KLIESCH ET AL ‘968 discloses that it is well known in the art to make black polyester films incorporating a black pigment (e.g., iron oxide, carbon black, graphite, etc.) with typical sizes of 2 microns or less in typical amounts of less than 10 wt% into polyester resins which are subsequently formed into films. The reference further discloses that it is well known in the art to incorporate organic or inorganic particles (e.g., silica, titanium dioxide, etc.) with a general size of 0.1-8 microns (preferably 0.5-2.5 microns) in typical amounts of 0.05-5 wt% in order to adjust surface topography and/or optical properties and/or film winding properties. (paragraph 0010-0011, 0021-0022, 0024-0027, etc.).
JUNG ET AL ‘209 discloses that it is well known in the art to utilize metal salts such as magnesium acetate (i.e., Mg(CH3COO)2) as an electrostatic pinning agent for polyester films. (paragraph 0010, 0014, 0043, etc.)
Regarding claims 1-8, 10, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to incorporate effective amounts of a known black pigments as suggested by KLIESCH ET AL ‘968 in addition to other functional additives (e.g., matting additive in U.S. Patent No. 11,680,150; flame retardant in U.S. Patent No. 11,753,512; etc.) in the polyester film produced by the method claimed in U.S. Patent Nos. 11,680,150 or 11,753,512 in order to produce useful black-colored polyester films made from recycled polyester resins with other useful characteristics provided by other functional additives (e.g., a matte appearance; improved fire-resistance; etc.), since it is well known in the art that the color and appearance of polymeric films can be readily changed by changing the pigments contained in said polymeric films.
Regarding claim 2, one of ordinary skill in the art would have selected the amount of black pigment and utilized additional pigments and/or dyes utilized in the polyester film produced by the method claimed in U.S. Patent Nos. 11,680,150 or 11,753,512 in order to obtain the opacity (e.g., an optical density of 1.5 or more) required for specific applications (e.g., for light-shielding or light-blocking for packaging, etc.).
Regarding claim 6, one of ordinary skill in the art would have selected the amount of electrostatic pinning agent in the polyester film produced by the method claimed in U.S. Patent Nos. 11,680,150 or 11,753,512 in order to obtain the optimal pinning characteristics for specific manufacturing processes and/or equipment.
Regarding claims 7-8, one of ordinary skill in the art would have utilized known magnesium-based electrostatic pinning agents (as suggested in JUNG ET AL ‘209) as the metal salt electrostatic pinning agents in the polyester film produced by the method claimed in U.S. Patent Nos. 11,680,150 or 11,753,512.
Regarding claim 10, one of ordinary skill in the art would have incorporated pigments into just one type of recycled polyester chips utilized in the polyester film produced by the method claimed in U.S. Patent Nos. 11,680,150 or 11,753,512 in order to simplify processing and to make it easier to obtain the desired optical characteristics and coloration.
Further regarding claims 1, 10: (i) the presence of the electrostatic pinning additive in the chemically recycled polyester resin; and (ii) dispersion or inclusion of the black additive in the physically recycled polyester resin; are product-by-process limitations and is not further limiting in as so far as the structure of the product is concerned. "[E]even though product-by-process claims are limited by and defined by the process, determination of patentability is based on the product itself. The patentability of a product does not depend on its method of production. If the product in the product-by-process claim is the same or obvious from a product of the prior art, the claim is unpatentable even though the prior product was made by a different process." [emphasis added] In re Thorpe, 777 F.2d 695, 698, 227 USPQ 964, 966 (Fed. Cir. 1985). See MPEP 2113. Once a product appearing substantially identical is found, the burden shifts to applicant to show a unobvious difference between the claimed product and the prior art product. In re Marosi, 710 F.2d 798, 802, 218 USPQ 289, 292 (Fed. Cir. 1993). There is no evidence on record that after film-formation (typically by melt-blending the various polyester chip components and extrusion): (i) the incorporation of the electrostatic pinning agent specifically in the chemically recycled polyester chips; and (ii) incorporation of the black additive specifically in the physically recycled polyester chips; chemically or structurally affects the distribution or behavior of the electrostatic pinning agent and/or the black additive in the final polyester film product as a whole.
Claim(s) 1-8, 10 is/are rejected on the ground of nonstatutory double patenting as being unpatentable over:
• claims 1-17 in U.S. Patent No. 12,012,518 (YANG ET AL),
in view of KLIESCH ET AL (US 2012/0196968),
and in view of JUNG ET AL (US 2014/0288209).
U.S. Patent No. 12,012,518 claims a method of forming a polyester film layer as recited in present application claims 1-8, 10. However, the U.S. Patent does not explicitly claim the use of a black additive or the production of a black polyester film.
KLIESCH ET AL ‘968 discloses that it is well known in the art to make black polyester films incorporating a black pigment (e.g., iron oxide, carbon black, graphite, etc.) with typical sizes of 2 microns or less in typical amounts of less than 10 wt% into polyester resins which are subsequently formed into films. The reference further discloses that it is well known in the art to incorporate organic or inorganic particles (e.g., silica, titanium dioxide, etc.) with a general size of 0.1-8 microns (preferably 0.5-2.5 microns) in typical amounts of 0.05-5 wt% in order to adjust surface topography and/or optical properties and/or film winding properties. (paragraph 0010-0011, 0021-0022, 0024-0027, etc.).
JUNG ET AL ‘209 discloses that it is well known in the art to utilize metal salts such as magnesium acetate (i.e., Mg(CH3COO)2) as an electrostatic pinning agent for polyester films. (paragraph 0010, 0014, 0043, etc.)
Regarding claims 1-8, 10, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to incorporate effective amounts of a known black pigments as suggested by KLIESCH ET AL ‘968 into at least one of the polyester compositions in the polyester film produced by the method claimed in U.S. Patent No. 12,012,518 in order to produce useful black-colored embossable polyester films made from recycled polyester resins.
Regarding claim 2, one of ordinary skill in the art would have selected the amount of black pigment and utilized additional pigments and/or dyes utilized in the polyester film produced by the method claimed in U.S. Patent No. 12,012,518 in order to obtain the opacity (e.g., an optical density of 1.5 or more) required for specific applications.
Regarding claim 6, one of ordinary skill in the art would have selected the amount of electrostatic pinning agent in the polyester film produced by the method claimed in U.S. Patent No. 12,012,518 in order to obtain the optimal pinning characteristics for specific manufacturing processes and/or equipment.
Regarding claims 7-8, one of ordinary skill in the art would have utilized known magnesium-based electrostatic pinning agents (as suggested in JUNG ET AL ‘209) as the metal salt electrostatic pinning agents in the polyester film produced by the method claimed in U.S. Patent No. 12,012,518.
Regarding claim 10, one of ordinary skill in the art would have incorporated
pigments into just one type of recycled polyester chips utilized in the polyester film produced by the method claimed in U.S. Patent No. 12,012,518 in order to simplify processing and to make it easier to obtain the desired optical characteristics and coloration.
Further regarding claims 1, 10: (i) the presence of the electrostatic pinning additive in the chemically recycled polyester resin; and (ii) dispersion or inclusion of the black additive in the physically recycled polyester resin; are product-by-process limitations and is not further limiting in as so far as the structure of the product is concerned. "[E]even though product-by-process claims are limited by and defined by the process, determination of patentability is based on the product itself. The patentability of a product does not depend on its method of production. If the product in the product-by-process claim is the same or obvious from a product of the prior art, the claim is unpatentable even though the prior product was made by a different process." [emphasis added] In re Thorpe, 777 F.2d 695, 698, 227 USPQ 964, 966 (Fed. Cir. 1985). See MPEP 2113. Once a product appearing substantially identical is found, the burden shifts to applicant to show a unobvious difference between the claimed product and the prior art product. In re Marosi, 710 F.2d 798, 802, 218 USPQ 289, 292 (Fed. Cir. 1993). There is no evidence on record that after film-formation (typically by melt-blending the various polyester chip components and extrusion): (i) the incorporation of the electrostatic pinning agent specifically in the chemically recycled polyester chips; and (ii) incorporation of the black additive specifically in the physically recycled polyester chips; chemically or structurally affects the distribution or behavior of the electrostatic pinning agent and/or the black additive in the final polyester film product as a whole.
* * *
Claim(s) 1-8, 10 is/are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over:
•claims 1-5, 12, 14 in copending U.S. Application No. 17/197,041 (US 2021/0332199) (LIAO ET AL),
in view of KLIESCH ET AL (US 2012/0196968),
and in view of JUNG ET AL (US 2014/0288209).
Copending U.S. Application No. 17/197,041 claims a method of forming a black polyester film layer as recited in present application claims 1-8, 10. However, the copending U.S. Application does not explicitly claim the use of a black additive.
KLIESCH ET AL ‘968 discloses that it is well known in the art to make black polyester films incorporating a black pigment (e.g., iron oxide, carbon black, graphite, etc.) with typical sizes of 2 microns or less in typical amounts of less than 10 wt% into polyester resins which are subsequently formed into films. The reference further discloses that it is well known in the art to incorporate organic or inorganic particles (e.g., silica, titanium dioxide, etc.) with a general size of 0.1-8 microns (preferably 0.5-2.5 microns) in typical amounts of 0.05-5 wt% in order to adjust surface topography and/or optical properties and/or film winding properties. (paragraph 0010-0011, 0021-0022, 0024-0027, etc.).
Regarding claims 1-8, 10, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to incorporate effective amounts of a known black pigments as suggested in KLIESCH ET AL ‘968 in the polyester film produced by the method claimed in copending U.S. Application No. 17/197,041 in order to produce useful black-colored polyester film layers made from recycled polyester resin.
Regarding claim 2, one of ordinary skill in the art would have selected the amount of black pigment and utilized additional pigments and/or dyes utilized in the polyester film produced by the method claimed in copending U.S. Application No. 17/197,041 in order to obtain the opacity (e.g., an optical density of 1.5 or more) required for specific applications (e.g., for light-shielding or light-blocking for packaging, etc.).
Regarding claim 6, one of ordinary skill in the art would have selected the amount of electrostatic pinning agent in the polyester film produced by the method claimed in copending U.S. Application No. 17/197,041 in order to obtain the optimal pinning characteristics for specific manufacturing processes and/or equipment.
Regarding claim 10, one of ordinary skill in the art would have incorporated pigments into just one type of recycled polyester chips utilized in the polyester film produced by the method claimed in copending U.S. Application No. 17/197,041 in order to simplify processing and to make it easier to obtain the desired optical characteristics and coloration.
Further regarding claims 1, 10: (i) the presence of the electrostatic pinning additive in the chemically recycled polyester resin; and (ii) dispersion or inclusion of the black additive in the physically recycled polyester resin; are product-by-process limitations and is not further limiting in as so far as the structure of the product is concerned. "[E]even though product-by-process claims are limited by and defined by the process, determination of patentability is based on the product itself. The patentability of a product does not depend on its method of production. If the product in the product-by-process claim is the same or obvious from a product of the prior art, the claim is unpatentable even though the prior product was made by a different process." [emphasis added] In re Thorpe, 777 F.2d 695, 698, 227 USPQ 964, 966 (Fed. Cir. 1985). See MPEP 2113. Once a product appearing substantially identical is found, the burden shifts to applicant to show a unobvious difference between the claimed product and the prior art product. In re Marosi, 710 F.2d 798, 802, 218 USPQ 289, 292 (Fed. Cir. 1993). There is no evidence on record that after film-formation (typically by melt-blending the various polyester chip components and extrusion): (i) the incorporation of the electrostatic pinning agent specifically in the chemically recycled polyester chips; and (ii) incorporation of the black additive specifically in the physically recycled polyester chips; chemically or structurally affects the distribution or behavior of the electrostatic pinning agent and/or the black additive in the final polyester film product as a whole.
This is a provisional nonstatutory double patenting rejection.
Claim Rejections - 35 USC § 103 (AIA )
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.
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.
Claim(s) 1-8, 10 is/are rejected under 35 U.S.C. 103 as being unpatentable over:
• LIAO ET AL (US 2021/0047493),
in view of KLIESCH ET AL (US 2012/0196968),
and in view of JUNG ET AL (US 2014/0288209).
The applied reference LIAO ET AL ‘493 has a common inventor and/or assignee with the instant application. Based upon the earlier effectively filed date of the reference, it constitutes prior art under 35 U.S.C. 102(a)(2).
LIAO ET AL ‘493 discloses a polyester film comprising:
• 10-90 wt% physically regenerated polyester resin (e.g. PET);
• 10-90 wt% chemically regenerated polyester resin;
• optionally colored pigment (e.g. black pigment, etc.);
• optionally other additives;
wherein the combined amount of physically regenerated and chemically regenerated polyester resin is 10-100 wt% of the polyester film. (entire document, e.g., paragraph 0010-0011, 0014, 0016, 0030, 0034, 0036, 0041-0042, 0044, 0047, 0049-0051, etc.) However, LIAO ET AL ‘493 do not specifically discuss the presence of electrostatic pinning agent.
KLIESCH ET AL ‘968 discloses that it is well known in the art to make black polyester films incorporating a black pigment (e.g., iron oxide, carbon black, graphite, etc.) with typical sizes of 2 microns or less in typical amounts of less than 10 wt% into polyester resins which are subsequently formed into films. The reference further discloses that it is well known in the art to incorporate organic or inorganic particles (e.g., silica, titanium dioxide, etc.) with a general size of 0.1-8 microns (preferably 0.5-2.5 microns) in typical amounts of 0.05-5 wt% in order to adjust surface topography and/or optical properties and/or film winding properties. (paragraph 0010-0011, 0021-0022, 0024-0027, etc.).
JUNG ET AL ‘209 discloses that it is well known in the art to utilize metal salts such as magnesium acetate (i.e., Mg(CH3COO)2) as an electrostatic pinning agent for polyester films. (paragraph 0010, 0014, 0043, etc.)
Regarding claims 1-8, 10, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to incorporate effective amounts of known black pigments as suggested by KLIESCH ET AL ‘968 in the polyester film of LIAO ET AL ‘493 in order to produce useful black-colored polyester films made from recycled polyester resins for specific applications.
Further regarding claims 1, 7-8, one of ordinary skill in the art would have incorporated effective amounts of known metal salt electrostatic pinning agents (as suggested in JUNG ET AL ‘209) in the polyester film of LIAO ET AL ‘493 in order to facilitate the film-formation process.
Regarding claim 2, one of ordinary skill in the art would have selected the amount of black pigment and optionally utilized additional pigments and/or dyes in the polyester film of LIAO ET AL ‘493 in order to obtain the opacity (e.g., an optical density of 1.5 or more) required for specific applications (e.g., for light-shielding or light-blocking for packaging, etc.)
Regarding claims 4-5, one of ordinary skill in the art would have utilized effective amounts of known modifying inorganic or organic particles (corresponding to the recited “slipping agent”) as suggested by KLIESCH ET AL ‘968 in the polyester film of LIAO ET AL ‘493 in order to tailor the surface characteristics and/or film-handling properties of the polyester film for specific manufacturing operations and/or end-use requirements.
Regarding claim 10, one of ordinary skill in the art would have incorporated pigments into just one type of recycled polyester chips utilized in the polyester film of LIAO ET AL ‘493 in order to simplify processing and to make it easier to obtain the desired optical characteristics and coloration.
Further regarding claims 1, 10: (i) the presence of the electrostatic pinning additive in the chemically recycled polyester resin; and (ii) dispersion or inclusion of the black additive in the physically recycled polyester resin; are product-by-process limitations and is not further limiting in as so far as the structure of the product is concerned. "[E]even though product-by-process claims are limited by and defined by the process, determination of patentability is based on the product itself. The patentability of a product does not depend on its method of production. If the product in the product-by-process claim is the same or obvious from a product of the prior art, the claim is unpatentable even though the prior product was made by a different process." [emphasis added] In re Thorpe, 777 F.2d 695, 698, 227 USPQ 964, 966 (Fed. Cir. 1985). See MPEP 2113. Once a product appearing substantially identical is found, the burden shifts to applicant to show a unobvious difference between the claimed product and the prior art product. In re Marosi, 710 F.2d 798, 802, 218 USPQ 289, 292 (Fed. Cir. 1993). There is no evidence on record that after film-formation (typically by melt-blending the various polyester chip components and extrusion): (i) the incorporation of the electrostatic pinning agent specifically in the chemically recycled polyester chips; and (ii) incorporation of the black additive specifically in the physically recycled polyester chips; chemically or structurally affects the distribution or behavior of the electrostatic pinning agent and/or the black additive in the final polyester film product as a whole.
This rejection under 35 U.S.C. 103 might be overcome by: (1) a showing under 37 CFR 1.130(a) that the subject matter disclosed in the reference was obtained directly or indirectly from the inventor or a joint inventor of this application and is thus not prior art in accordance with 35 U.S.C.102(b)(2)(A); (2) a showing under 37 CFR 1.130(b) of a prior public disclosure under 35 U.S.C. 102(b)(2)(B); or (3) a statement pursuant to 35 U.S.C. 102(b)(2)(C) establishing that, not later than the effective filing date of the claimed invention, the subject matter disclosed and the claimed invention were either owned by the same person or subject to an obligation of assignment to the same person or subject to a joint research agreement. See generally MPEP § 717.02.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
JP 2011-256328 (NAKAMACHI ET AL) disclose blends of chemically recycled and mechanically recycled PET resins.
TAKAHASHI ET AL (US 2008/00178835) and VANIER ET AL (US 2016/0108278) disclose black pigments useful for forming black polyester films.
KLIESCH ET AL (US 2006/0246306) and ONO ET AL (US 2012/0251095) disclose black polyester films.
JP 2007-169424 (TANEDA ET AL) and JUNG ET AL (US 2014/0288209) disclose polyester films containing electrostatic pinning agent.
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April 18, 2026
/VIVIAN CHEN/
Primary Examiner, Art Unit 1787
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