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 .
Priority
Applicant’s claim for the benefit of a prior-filed application under 35 U.S.C. 119(e) or under 35 U.S.C. 120, 121, 365(c), or 386(c) is acknowledged.
Receipt is acknowledged of certified copies of papers required by 37 CFR 1.55.
Claim Objections
Claim 3 is objected to because of the following informalities: Claim 3 does not end in a period. Each claim must end with a period (MPEP 608.01(m)). Appropriate correction is required.
Claim Rejections - 35 USC § 112
The following is a quotation of 35 U.S.C. 112(b):
(b) CONCLUSION.—The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the inventor or a joint inventor regards as the invention.
The following is a quotation of 35 U.S.C. 112 (pre-AIA ), second paragraph:
The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.
Claim 3 is rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor (or for applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention.
Claim 3 recites that limitation “thickness unevenness per 700 mm in a traverse” in line 2, which is indefinite because the claim does not limit a value of the term “thickness unevenness per 700 mm in a traverse” and does not define the term. Since claim 3, before it was amended, recited “thickness unevenness per 700 mm in a traverse direction of the film is 18% or less” in lines 3-4, for further examination of the claims, this limitation is interpreted as “thickness unevenness per 700 mm in a traverse direction of the film is 18% or less”.
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.
Claims 1-4 and 6 are rejected under 35 U.S.C. 103 as being unpatentable over Haruta et al. (WO 2020/166353 A1, US 2022/0056223 A1 is English language equivalent and is used for citation) in view of Mogi (JP 2013-103493 A, machine translation in English used for citation).
Regarding claim 1, Haruta teaches a film roll formed by winding a polyester film, wherein the polyester film is a biaxially-oriented polyester film [0022], wherein as the polyester resin, recycled resin obtained through recycling PET bottles can be used [0029], wherein the PET is polyethylene terephthalate [0002], which reads on biaxially-oriented polyethylene terephthalate film roll obtained by winding a biaxially-oriented polyethylene terephthalate film that is fabricated using a recycled raw material derived from a PET container into a roll as claimed. Haruta teaches that the film has a heat-shrinkage ratio in a longitudinal direction of 0.8% or more and 3% or less, measured at 150° C for 15 minutes [0014], and that measurement of the heat-shrinkage ratio is carried out according to JIS-C-2318 [0100], which reads on the biaxially-oriented polyethylene terephthalate film roll satisfies the following (1): (1) a heat shrinkage rate in a machine direction of the film is 0.8% or more and 3.0% or less when measured at 150°C for 30 minutes. Haruta teaches that the biaxially-oriented polyester film is characterized by satisfying a number of defects with a size of 1 mm or more is 1.0 or less per 1000 square meters of the film [0011], that by thus reducing the number of defects with a size of 1 mm or more per large area of 1000 square meters (m2) to 1 or less, the printability becomes very good [0082], that when the number of defects due to foreign substances is large, omission of ink may unfavorably occur in printing [0082], and that the number of defects with a size of 1 mm or more is set to 1 or less since there is a possibility of incorporation of a foreign substance when an unexpected trouble happens [0082], which reads on the biaxially-oriented polyethylene terephthalate film roll satisfies the following (3): (3) a number of foreign substances having a maximum length of 1 mm or more per 1000 m2 of the film roll is 1 or less.
Haruta does not teach with sufficient specificity that the biaxially-oriented polyethylene terephthalate film roll satisfies the following (1): (1) a heat shrinkage rate in a machine direction of the film is 0.5% or more and 2.0% or less when measured at 150°C for 30 minutes. Before the effective filing date of the claimed invention, one of ordinary skill in the art would have found it obvious to optimize Haruta’s heat-shrinkage ratio in a longitudinal direction of Haruta’s film that is measured according to JIS-C-2318 at 150° C for 15 minutes to be 0.8% or more and 2.0% or less. The proposed modification would read on the biaxially-oriented polyethylene terephthalate film roll satisfies the following (1): (1) a heat shrinkage rate in a machine direction of the film is 0.8% or more and 2.0% or less when measured at 150°C for 30 minutes as claimed. One of ordinary skill in the art would have been motivated to do so because it would have been beneficial for optimizing prevention of shrinking of the film when dried in a post-printing process and for optimizing prevention of displacements of printed patterns because Haruta teaches that the film has a heat-shrinkage ratio in a longitudinal direction of 0.8% or more and 3% or less, measured at 150° C for 15 minutes [0014], that measurement of the heat-shrinkage ratio is carried out according to JIS-C-2318 [0100], that if the heat-shrinkage ratio in the longitudinal direction is more than 3%, the film shrinks when dried in a post-printing process, causing displacements of printed patterns, and the like [0086], that even if the heat-shrinkage ratio in the longitudinal direction is less than 0.8%, no problem occurs, but since the lower limit of the heat-shrinkage ratio in the longitudinal direction was 0.8% in the production method, it is set to 0.8% or less [0086], and that the upper limit of the heat-shrinkage ratio in the longitudinal direction is preferably 2.5% or less, and more preferably 2% or less [0086].
Haruta does not teach with sufficient specificity that the biaxially-oriented polyethylene terephthalate film roll satisfies the following (3): (3) a number of foreign substances having a maximum length of 1.3 mm or more per 1000 m2 of the film roll is 1 or more. Before the effective filing date of the claimed invention, one of ordinary skill in the art would have found it obvious to optimize the number of defects due to foreign substances with a size of 1.3 mm or more in Haruta’s biaxially-oriented polyester film to be 1 per large area of 1000 square meters (m2). The proposed modification would read on the biaxially-oriented polyethylene terephthalate film roll satisfies the following (3): (3) a number of foreign substances having a maximum length of 1.3 mm or more per 1000 m2 of the film roll is 1 as claimed. One of ordinary skill in the art would have been motivated to do so because it would have been beneficial for optimizing printability, for optimizing prevention of omission of ink, and for optimizing prevention of incorporation of a foreign substance when an unexpected trouble happens because Haruta teaches that the biaxially-oriented polyester film is characterized by satisfying a number of defects with a size of 1 mm or more is 1.0 or less per 1000 square meters of the film [0011], that by thus reducing the number of defects with a size of 1 mm or more per large area of 1000 square meters (m2) to 1 or less, the printability becomes very good [0082], that when the number of defects due to foreign substances is large, omission of ink may unfavorably occur in printing [0082], and that the number of defects with a size of 1 mm or more is set to 1 or less since there is a possibility of incorporation of a foreign substance when an unexpected trouble happens [0082], which means that the number of defects due to foreign substances with a size of 1.3 mm or more in Haruta’s biaxially-oriented polyester film in number per large area of 1000 square meters (m2) would have affected printability, prevention of omission of ink, and prevention of incorporation of a foreign substance when an unexpected trouble happens.
Haruta does not teach that the biaxially-oriented polyethylene terephthalate film roll satisfies the following (2): (2) a plane orientation coefficient (ΔP) of the film is 0.16 or more and 0.17 or less as calculated from a refractive index measured based on JIS K 7142-1996 A method. However, Mogi teaches a biaxially oriented polyethylene terephthalate film characterized in that the plane orientation coefficient (fn) is 0.165 or more and 0.174 or less (Mogi claim 1), wherein if the fn is less than 0.165, the resistance to puncture pinholes is poor [0021], wherein if the fn exceeds 0.174, in packaging materials where polyethylene terephthalate film is laminated with other materials to form composites, cleavage and delamination may occur within the polyethylene terephthalate film, or the film may become more prone to tearing, resulting in poor resistance to puncture pinholes [0021]. Haruta and Mogi are analogous art because both references are in the same field of endeavor of a biaxially-oriented polyethylene terephthalate film. Before the effective filing date of the claimed invention, one of ordinary skill in the art would have found it obvious to optimize the plane orientation coefficient of Haruta’s biaxially-oriented polyester film to be 0.165 or more and 0.170 or less, as suggested by Mogi. The proposed modification would read on the biaxially-oriented polyethylene terephthalate film roll satisfies the following (2): (2) a plane orientation coefficient (ΔP) of the film is 0.165 or more and 0.17 or less as calculated from a refractive index measured based on JIS K 7142-1996 A method as claimed. One of ordinary skill in the art would have been motivated to do so because it would have been beneficial for optimizing resistance to puncture pinholes, resistance to tearing, and/or mechanical properties of Haruta’s biaxially-oriented polyester film because Mogi teaches that a biaxially oriented polyethylene terephthalate film is characterized in that the plane orientation coefficient (fn) is 0.165 or more and 0.174 or less (Mogi claim 1), that if the fn is less than 0.165, the resistance to puncture pinholes is poor [0021], and that if the fn exceeds 0.174, in packaging materials where polyethylene terephthalate film is laminated with other materials to form composites, cleavage and delamination may occur within the polyethylene terephthalate film, or the film may become more prone to tearing, resulting in poor resistance to puncture pinholes [0021], and because Haruta teaches that the polyester film is a biaxially-oriented polyester film [0022], that as the polyester resin, recycled resin obtained through recycling PET bottles can be used [0029], that the PET is polyethylene terephthalate [0002], that it is undesirable for the polyester film to tear [0031, 0032], that it is desirable for the biaxially-oriented polyester film to have good mechanical properties [0030, 0032, 0077], and that the biaxially oriented polyester film is excellent in transparency [0009, 0022], which means that the plane orientation coefficient of Haruta’s biaxially-oriented polyester film would have affected resistance to puncture pinholes, resistance to tearing, and/or mechanical properties of Haruta’s biaxially-oriented polyester film.
Regarding claim 2, Haruta teaches that as the polyester resin, recycled resin obtained through recycling PET bottles can be used [0029], which reads on wherein the recycled raw material derived from a PET container according to claim 1 is a mechanically recycled polyester resin and/or a chemically recycled polyester resin as claimed.
Regarding claim 3, Haruta teaches that the film has a value of irregularity of thickness in each of a longitudinal direction and a traverse direction of 1% or more and 10% or less, measured over a length of 1 m with a continuous contact-type thickness gauge [0015], which reads on wherein thickness unevenness per 800 mm in a traverse direction of the film is 1% or more and 10% or less as claimed.
Regarding claim 4, the Office recognizes that all of the claimed physical properties are not positively taught by Haruta, namely that breaking strength in a machine direction of the film is 180 MPa or more and 260 MPA or less and a breaking elongation is 80% or more and 170% or less. However, Haruta in view of Mogi renders obvious all of the claimed ingredients, amounts, process steps, and process conditions of the biaxially-oriented polyethylene terephthalate film roll according to claim 1 as explained above. Furthermore, the specification of the instant application recites that when the stretching temperature is 140°C or less, the stretching stress increases by crystallization, as a result, breaking due to foreign substances can be suppressed as well as the film also has favorable mechanical strength [0051, 0054], that when the stretching ratio is 2.5 times or more, the film has not only favorable mechanical strength [0052, 0055], and that as the plane orientation coefficient (AP) is set to 0.160 or more, the mechanical strength can be kept sufficiently high [0064]. Also, Haruta teaches that the stretch temperature in the longitudinal direction is preferably (Tg+15)°C to (Tg+55)°C [0073] and that the stretch ratio in the longitudinal direction is preferably 3.3 to 4.7 times [0073]. Therefore, the claimed physical properties would naturally arise from the biaxially-oriented polyethylene terephthalate film roll that is rendered obvious by Haruta in view of Mogi. When the structure recited in the reference is substantially identical to that of the claims, claimed properties or functions are presumed to be inherent (MPEP 2112.01(I)). Products of identical chemical composition can not have mutually exclusive properties (MPEP 2112.01(II)). If the prior art teaches the identical chemical structure, the properties applicant discloses and/or claims are necessarily present (MPEP 2112.01(II)). Where the claimed and prior art products are identical or substantially identical in structure or composition, or are produced by identical or substantially identical processes, a prima facie case of either anticipation or obviousness has been established. When the PTO shows a sound basis for believing that the products of the applicant and the prior art are the same, the applicant has the burden of showing that they are not (MPEP 2112.01(I)). Therefore, the prima facie case can be rebutted by evidence showing that the prior art products do not necessarily possess the characteristics of the claimed product (MPEP 2112.01(I)).
Regarding claim 6, Haruta teaches that the film roll has a winding length of 10000 m [0098], which reads on the biaxially-oriented polyethylene terephthalate film roll according to claim 1, having a winding length of 10,000 m as claimed.
Allowable Subject Matter
Claim 5 is objected to as being dependent upon a rejected base claim, but would be allowable if rewritten in independent form including all of the limitations of the base claim and any intervening claims.
The following is a statement of reasons for the indication of allowable subject matter: Regarding claim 5, Haruta et al. (WO 2020/166353 A1, US 2022/0056223 A1 is English language equivalent and is used for citation) in view of Mogi (JP 2013-103493 A, machine translation in English used for citation) renders obvious the biaxially-oriented polyethylene terephthalate film roll according to claim 1 as explained above.
Haruta does not teach that a number of foreign substances having a maximum length of 1.0 mm or more per 8000 m2 of the film roll is 16 or more. Although Haruta teaches that the biaxially-oriented polyester film is characterized by satisfying a number of defects with a size of 1 mm or more is 1.0 or less per 1000 square meters of the film [0011], that by thus reducing the number of defects with a size of 1 mm or more per large area of 1000 square meters (m2) to 1 or less, the printability becomes very good [0082], that when the number of defects due to foreign substances is large, omission of ink may unfavorably occur in printing [0082], and that the number of defects with a size of 1 mm or more is set to 1 or less since there is a possibility of incorporation of a foreign substance when an unexpected trouble happens [0082], Haruta’s teachings reads on wherein a number of foreign substances having a maximum length of 1.0 mm or more per 8000 m2 of the film roll is 8.0 or less, which is below the claimed range, and Haruta teaches away from increasing the number of foreign substances having a maximum length of 1.0 mm or more per 8000 m2 of the film roll. Furthermore, the prior art of record do not teach or suggest a number of foreign substances having a maximum length of 1.0 mm or more per 8000 m2 of the film roll is 16 or more in combination with the biaxially-oriented polyethylene terephthalate film roll according to claim 1.
Correspondence
Any inquiry concerning this communication or earlier communications from the examiner should be directed to DAVID KARST whose telephone number is (571)270-7732. The examiner can normally be reached Monday-Friday 8:00 AM-5:00 PM.
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/DAVID T KARST/Primary Examiner, Art Unit 1767
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