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
REQUIREMENT FOR UNITY OF INVENTION
As provided in 37 CFR 1.475(a), a national stage application shall relate to one invention only or to a group of inventions so linked as to form a single general inventive concept (“requirement of unity of invention”). Where a group of inventions is claimed in a national stage application, the requirement of unity of invention shall be fulfilled only when there is a technical relationship among those inventions involving one or more of the same or corresponding special technical features. The expression “special technical features” shall mean those technical features that define a contribution which each of the claimed inventions, considered as a whole, makes over the prior art.
The determination whether a group of inventions is so linked as to form a single general inventive concept shall be made without regard to whether the inventions are claimed in separate claims or as alternatives within a single claim. See 37 CFR 1.475(e).
When Claims Are Directed to Multiple Categories of Inventions:
As provided in 37 CFR 1.475 (b), a national stage application containing claims to different categories of invention will be considered to have unity of invention if the claims are drawn only to one of the following combinations of categories:
(1) A product and a process specially adapted for the manufacture of said product; or
(2) A product and a process of use of said product; or
(3) A product, a process specially adapted for the manufacture of the said product, and a use of the said product; or
(4) A process and an apparatus or means specifically designed for carrying out the said process; or
(5) A product, a process specially adapted for the manufacture of the said product, and an apparatus or means specifically designed for carrying out the said process.
Otherwise, unity of invention might not be present. See 37 CFR 1.475 (c).
Restriction is required under 35 U.S.C. 121 and 372.
This application contains the following inventions or groups of inventions which are not so linked as to form a single general inventive concept under PCT Rule 13.1.
In accordance with 37 CFR 1.499, applicant is required, in reply to this action, to elect a single invention to which the claims must be restricted.
Group I, claims 1-8 and 19, drawn to a power storage device packaging material, comprising a heat-sealable resin layer, wherein the heat-sealable layer comprises a film, the film is formed of a resin containing three or more structural units, and the film has a melting peak temperature of 170°C or more, or a power storage device comprising a power storage device element that is housed in a package formed of the power storage device packaging material according to claim 1.
Group II, claims 9-16, drawn to a film formed of a resin containing three or more structural units, the film having a melting peak temperature of 170°C or more.
Group III, claims 17 and 18, drawn to a method for producing a power storage device packing material, comprising the step of obtaining a laminate in which a heat-sealable risen layer is laminated, wherein the heat-sealable resin layer comprises a film, the film is formed of a resin containing three or more structural units, and the film has a melting peak temperature of 170°C or more.
The groups of inventions listed above do not relate to a single general inventive concept under PCT Rule 13.1 because, under PCT Rule 13.2, they lack the same or corresponding special technical features for the following reasons:
Groups I-III lack unity of invention because even though the inventions of these groups require the technical feature of a film according to claim 9, this technical feature is not a special technical feature as it does not make a contribution over the prior art in view of Manabe et al. (US 2015/0017406 A1, cited in IDS). Manabe teaches a biaxially oriented polyester film [0011], wherein the biaxially oriented polyester film is a laminate polyester film having a polyester layer, wherein crystal melting peak temperature of the polyester layer is greater than or equal to 246°C and less than or equal to 254°C, and a polyester layer, wherein crystal melting peak temperature of the polyester layer is greater than or equal to 235°C and less than 246°C [0012], wherein the polyester layer contains ethylene glycol-derived structural units, 1,4-cyclohexane dimethanol-derived structural units, and neopentyl glycol-derived structural units [0015, 0016], which reads on a film formed of a resin containing three structural units, the film having a melting peak temperature of more than 170°C as claimed.
During a telephone conversation with Tiffany N. Adigwe on 09/25/2026 a provisional election was made with traverse to prosecute the invention of Group II, claims 9-16. Affirmation of this election must be made by applicant in replying to this Office action. Claims 1-8 and 17-19 are withdrawn from further consideration by the examiner, 37 CFR 1.142(b), as being drawn to a non-elected invention.
Applicant is reminded that upon the cancelation of claims to a non-elected invention, the inventorship must be corrected in compliance with 37 CFR 1.48(a) if one or more of the currently named inventors is no longer an inventor of at least one claim remaining in the application. A request to correct inventorship under 37 CFR 1.48(a) must be accompanied by an application data sheet in accordance with 37 CFR 1.76 that identifies each inventor by his or her legal name and by the processing fee required under 37 CFR 1.17(i).
The examiner has required restriction between product or apparatus claims and process claims. Where applicant elects claims directed to the product/apparatus, and all product/apparatus claims are subsequently found allowable, withdrawn process claims that include all the limitations of the allowable product/apparatus claims should be considered for rejoinder. All claims directed to a nonelected process invention must include all the limitations of an allowable product/apparatus claim for that process invention to be rejoined.
In the event of rejoinder, the requirement for restriction between the product/apparatus claims and the rejoined process claims will be withdrawn, and the rejoined process claims will be fully examined for patentability in accordance with 37 CFR 1.104. Thus, to be allowable, the rejoined claims must meet all criteria for patentability including the requirements of 35 U.S.C. 101, 102, 103 and 112. Until all claims to the elected product/apparatus are found allowable, an otherwise proper restriction requirement between product/apparatus claims and process claims may be maintained. Withdrawn process claims that are not commensurate in scope with an allowable product/apparatus claim will not be rejoined. See MPEP § 821.04. Additionally, in order for rejoinder to occur, applicant is advised that the process claims should be amended during prosecution to require the limitations of the product/apparatus claims. Failure to do so may result in no rejoinder. Further, note that the prohibition against double patenting rejections of 35 U.S.C. 121 does not apply where the restriction requirement is withdrawn by the examiner before the patent issues. See MPEP § 804.01.
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 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 16 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 16 recites the limitation “The film according to claim 9, wherein the film is used as a heat-sealable resin layer of a power storage device packaging material” in lines 1-3, which is indefinite because it is unclear how “wherein the film is used as a heat-sealable resin layer of a power storage device packaging material” limits the composition and/or structure of “The film according to claim 9”. It is also unclear if the applicant is claiming a process of using “The film according to claim 9” because “the film is used as a heat-sealable resin layer of a power storage device packaging material” could be interpreted as a process, which would be indefinite also because the steps for practicing “the film is used as a heat-sealable resin layer of a power storage device packaging material” are not defined. For further examination of the claims, this limitation is interpreted as “The film according to claim 9, wherein the film is capable of being used as a heat-sealable resin layer of a power storage device packaging material”.
Claim Rejections - 35 USC § 102
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.
Claims 9, 10, 12, and 14-16 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Manabe et al. (US 2015/0017406 A1, cited in IDS).
Regarding claims 9, 10, and 12, Manabe teaches a biaxially oriented polyester film [0011], wherein the biaxially oriented polyester film is a laminate polyester film having a polyester A layer and a polyester B layer, wherein crystal melting peak temperature of the polyester A layer is greater than or equal to 246°C and less than or equal to 254°C, wherein crystal melting peak temperature of the polyester B layer is greater than or equal to 235°C and less than 246°C [0012], wherein the polyester A layer contains ethylene glycol-derived structural units, 1,4-cyclohexane dimethanol-derived structural units, and neopentyl glycol-derived structural units [0015], wherein the polyester B layer contains ethylene glycol-derived structural units, 1,4-cyclohexane dimethanol-derived structural units, and neopentyl glycol-derived structural units [0016], which reads on a film formed of a resin containing three structural units, the film having a melting peak temperature of more than 170°C as claimed, wherein the resin forming the film contains a polyester structure A as claimed, wherein the resin forming the film additionally has at least one selected from a polyester structure B as claimed.
Regarding claim 14, Manabe satisfies the limitation wherein the polyether structure is a polyether structure derived from at least one selected from the group consisting of polytetramethylene ether glycol and neopentyl glycol as claimed because claims 12 and 14 do not limit the resin forming the film to additionally have a polyether structure if the resin forming the film additionally has a polyester structure B, and Manabe’s teachings read on wherein the resin forming the film additionally has at least one selected from a polyester structure B as explained above for claim 12.
Regarding claim 15, the Office recognizes that all the claimed physical properties are not positively taught by Manabe, namely that the film has an indentation modulus of 0.3 GPa or more. However, Manabe teaches all the claimed ingredients, amounts, process steps, and process conditions of the film according to claims 9, 10, 12, and 14 as explained above. Furthermore, the specification of the instant application recites that an indentation modulus as measured from the heat-sealable resin layer side of the laminate constituting the packaging material (indentation modulus of the film) is preferably about 0.3 GPa or more, more preferably about 0.4 GPa or more, and still more preferably about 0.5 GPa or more [0101], that the indentation modulus of the film is preferably about 5 GPa or less, more preferably about 4 GPa or less, still more preferably about 3 GPa or less, even more preferably about 2 GPa or less, and still more preferably about 1.5 GPa or less [0101], and that preferred ranges of the indentation modulus of the film include from about 0.3 to 5 GPa, from about 0.3 to 4 GPa, from about 0.3 to 3 GPa, from about 0.3 to 2 GPa, from about 0.3 to 1.5 GPa, from about 0.4 to 5 GPa, from about 0.4 to 4 GPa, from about 0.4 to 3 GPa, from about 0.4 to 2 GPa, from about 0.4 to 1.5 GPa, from about 0.5 to 5 GPa, from about 0.5 to 4 GPa, from about 0.5 to 3 GPa, from about 0.5 to 2 GPa, and from about 0.5 to 1.5 GPa [0101]. Therefore, the claimed physical properties would naturally arise from the film of Manabe. 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 16, the claim is interpreted as the film according to claim 9, wherein the film is capable of being used as a heat-sealable resin layer of a power storage device packaging material. Since Manabe teaches the film according to claim 9 as explained above, Manabe’s film would have been capable of being used as a heat-sealable resin layer of a power storage device packaging material.
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 11 and 13 are rejected under 35 U.S.C. 103 as being unpatentable over Manabe et al. (US 2015/0017406 A1, cited in IDS) as applied to claims 10 and 12.
Regarding claim 11, Manabe teaches the film according to claim 10 as explained above. Manabe teaches that crystal melting peak temperature of the polyester A layer is greater than or equal to 246°C and less than or equal to 254°C, that crystal melting peak temperature of the polyester B layer is greater than or equal to 235°C and less than 246°C [0012], that the polyester A layer contains greater than or equal to 90 mol % of ethylene glycol-derived structural units, and greater than or equal to 1 mol % and less than or equal to 10 mol % of 1,4-cyclohexane dimethanol-derived structural units, and/or neopentyl glycol-derived structural units, relative to diol-derived structural units [0015], that the polyester B layer contains greater than or equal to 80 mol % of ethylene glycol-derived structural units, and greater than or equal to 10 mol % and less than or equal to 20 mol % of 1,4-cyclohexane dimethanol-derived structural units and/or neopentyl glycol-derived structural units, relative to diol-derived structural units [0016], that the polyester A layer contains greater than or equal to 95 mol % and less than or equal to 100 mol % of terephthalic acid derived structural units relative to dicarboxylic acid derived structural units [0021], that the polyester B layer contains greater than or equal to 95 mol % and less than or equal to 100 mol % of terephthalic acid derived structural units relative to dicarboxylic acid derived structural units [0022], that the polyester that constitutes the biaxially oriented polyester film is obtained by causing a polycondensation reaction between dicarboxylic acid and glycol [0031], that as the glycol that provides a polyester, which can be cited besides ethylene glycol are 1,4-butanediol, neopentyl glycol, and 1,4-cyclohexane dimethanol [0036], that among these, 1,4-butanediol, neopentyl glycol, and 1,4-cyclohexane dimethanol are preferably used in respect of moldability and handling characteristic [0036], that as a preferable mode for causing the crystal melting peak temperature of the polyester B layer to be in the forgoing range, it is preferable that the polyester B layer contain, relative to diol-derived structural units, greater than or equal to 80 mol % and less than or equal to 90 mol % of ethylene glycol-derived structural units, and greater than or equal to 10 mol % and less than or equal to 20 mol % of 1,4-cyclohexane dimethanol-derived structural units and/or neopentyl glycol-derived structural units, and greater than or equal to 95 mol % and less than or equal to 100 mol % of terephthalic acid [0047, 0048-0050], and that as a preferable mode or particularly preferable mode for causing the crystal melting peak temperature of the polyester A layer to be in the foregoing range, the polyester A layer is preferred to be a composition as following: [0053, 0055] greater than or equal to 90 mol % and less than or equal to 99 mol % of ethylene glycol units and greater than or equal to 1 mol % and less than or equal to 10 mol % of 1,4-cyclohexane dimethanol units and/or neopentyl glycol units [0054, 0056, 0058], and greater than or equal to 95 mol % and less than or equal to 100 mol % of terephthalic acid units [0052, 0057, 0059], which optionally reads on wherein the polyester structure A has at least a polybutylene terephthalate structure as claimed.
Manabe does not teach a specific embodiment wherein the polyester structure A has at least a polybutylene terephthalate structure. Before the effective filing date of the claimed invention, one of ordinary skill in the art would have found it obvious to select Manabe’s dicarboxylic acid that is reacted in a polycondensation reaction to obtain Manabe’s polyester in Manabe’s biaxially oriented polyester film to be terephthalic acid, and to select Manabe’s glycol that is reacted in a polycondensation reaction to obtain Manabe’s polyester in Manabe’s biaxially oriented polyester film to be ethylene glycol, neopentyl glycol and/or 1,4-cyclohexane dimethanol, and 1,4-butanediol, such that Manabe’s polyester B layer contains, relative to diol-derived structural units, greater than or equal to 80 mol % and less than or equal to 90 mol % of ethylene glycol-derived structural units, and greater than or equal to 10 mol % and less than or equal to 20 mol % of 1,4-cyclohexane dimethanol-derived structural units and/or neopentyl glycol-derived structural units, and 100 mol % of terephthalic acid derived structural units, and such that Manabe’s polyester A layer comprises greater than or equal to 90 mol % and less than or equal to 99 mol % of ethylene glycol units and greater than or equal to 1 mol % and less than or equal to 10 mol % of 1,4-cyclohexane dimethanol units and/or neopentyl glycol units, and equal to 100 mol % of terephthalic acid unit. The proposed modification would read on wherein the polyester structure A has at least a polybutylene terephthalate structure as claimed. One of ordinary skill in the art would have been motivated to do so because it would have been beneficial for modifying moldability and handling characteristic of Manabe’s biaxially oriented polyester film, while causing the crystal melting peak temperature of Manabe’s polyester A layer to be greater than or equal to 246°C and less than or equal to 254°C, and while causing the crystal melting peak temperature of Manabe’s polyester B layer to be greater than or equal to 235°C and less than 246°C, because Manabe teaches that crystal melting peak temperature of the polyester A layer is greater than or equal to 246°C and less than or equal to 254°C, that crystal melting peak temperature of the polyester B layer is greater than or equal to 235°C and less than 246°C [0012], that the polyester A layer contains greater than or equal to 90 mol % of ethylene glycol-derived structural units, and greater than or equal to 1 mol % and less than or equal to 10 mol % of 1,4-cyclohexane dimethanol-derived structural units, and/or neopentyl glycol-derived structural units, relative to diol-derived structural units [0015], that the polyester B layer contains greater than or equal to 80 mol % of ethylene glycol-derived structural units, and greater than or equal to 10 mol % and less than or equal to 20 mol % of 1,4-cyclohexane dimethanol-derived structural units and/or neopentyl glycol-derived structural units, relative to diol-derived structural units [0016], that the polyester A layer contains greater than or equal to 95 mol % and less than or equal to 100 mol % of terephthalic acid derived structural units relative to dicarboxylic acid derived structural units [0021], that the polyester B layer contains greater than or equal to 95 mol % and less than or equal to 100 mol % of terephthalic acid derived structural units relative to dicarboxylic acid derived structural units [0022], that the polyester that constitutes the biaxially oriented polyester film is obtained by causing a polycondensation reaction between dicarboxylic acid and glycol [0031], that as the glycol that provides a polyester, which can be cited besides ethylene glycol are 1,4-butanediol, neopentyl glycol, and 1,4-cyclohexane dimethanol [0036], that among these, 1,4-butanediol, neopentyl glycol, and 1,4-cyclohexane dimethanol are preferably used in respect of moldability and handling characteristic [0036], that as a preferable mode for causing the crystal melting peak temperature of the polyester B layer to be in the forgoing range, it is preferable that the polyester B layer contain, relative to diol-derived structural units, greater than or equal to 80 mol % and less than or equal to 90 mol % of ethylene glycol-derived structural units, and greater than or equal to 10 mol % and less than or equal to 20 mol % of 1,4-cyclohexane dimethanol-derived structural units and/or neopentyl glycol-derived structural units, and greater than or equal to 95 mol % and less than or equal to 100 mol % of terephthalic acid [0047, 0048-0050], and that as a preferable mode or particularly preferable mode for causing the crystal melting peak temperature of the polyester A layer to be in the foregoing range, the polyester A layer is preferred to be a composition as following: [0053, 0055] greater than or equal to 90 mol % and less than or equal to 99 mol % of ethylene glycol units and greater than or equal to 1 mol % and less than or equal to 10 mol % of 1,4-cyclohexane dimethanol units and/or neopentyl glycol units [0054, 0056, 0058], and greater than or equal to 95 mol % and less than or equal to 100 mol % of terephthalic acid units [0052, 0057, 0059].
Regarding claim 13, Manabe teaches the film according to claim 12 as explained above. Manabe teaches that the polyester A layer contains ethylene glycol-derived structural units, 1,4-cyclohexane dimethanol-derived structural units, and neopentyl glycol-derived structural units [0015], that the polyester B layer contains ethylene glycol-derived structural units, 1,4-cyclohexane dimethanol-derived structural units, and neopentyl glycol-derived structural units [0016], that the polyester A layer contains terephthalic acid derived structural units [0021], that the polyester B layer contains terephthalic acid derived structural units [0022], that the polyester that constitutes the biaxially oriented polyester film is obtained by causing a polycondensation reaction between dicarboxylic acid and glycol [0031], that as the dicarboxylic acid that provides a polyester, which can be cited besides terephthalic acid are isophthalic acid and sebacic acid [0037], which optionally reads on wherein the polyester structure B is a polyester structure resulting from polycondensation of a polyol forming the polyester structure A and at least one dicarboxylic acid selected from isophthalic acid and sebacic acid as claimed.
Manabe does not teach a specific embodiment wherein the polyester structure B is a polyester structure resulting from polycondensation of a polyol forming the polyester structure A and at least one dicarboxylic acid selected from isophthalic acid, sebacic acid, and dodecanedionic acid. Before the effective filing date of the claimed invention, one of ordinary skill in the art would have found it obvious to select Manabe’s dicarboxylic acid besides terephthalic acid that is reacted with Manabe’s glycol to obtain Manabe’s polyester that constitutes Manabe’s biaxially oriented polyester film to be isophthalic acid or sebacic acid. The proposed modification would read on wherein the polyester structure B is a polyester structure resulting from polycondensation of a polyol forming the polyester structure A and at least one dicarboxylic acid selected from isophthalic acid and sebacic acid as claimed. One of ordinary skill in the art would have been motivated to do so because it would have been beneficial for modifying moldability and handling of Manabe’s biaxially oriented polyester film because Manabe teaches that the polyester that constitutes the biaxially oriented polyester film is obtained by causing a polycondensation reaction between dicarboxylic acid and glycol [0031], that as the dicarboxylic acid that provides a polyester, which can be cited besides terephthalic acid are isophthalic acid and sebacic acid [0037], and that among the dicarboxylic acid that provides a polyester, which can be cited besides terephthalic acid, isophthalic acid is preferably used, in respect of moldability and handling characteristic [0037].
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.
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, Mark Eashoo can be reached at 571-272-1197. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/DAVID T KARST/Primary Examiner, Art Unit 1767
