DETAILED ACTION
Notice of Pre-AIA or AIA Status
1. The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
Preliminary Amendment
2. The preliminary amendment filed on March 21, 2024 has been enter din the above-identified application. The Abstract and claims 3-10 have been amended. New claim 11 has been added. Claims 1-11 are pending and under consideration.
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.
3. Claims 1-11 are rejected under 35 U.S.C. 103 as being unpatentable over Furuya et al. (US 2005/0064140 A1).
Furuya et al. disclose a membrane switch film comprising polyethylene-2,6-naphthalenedicarboxylate as the major component and having excellent handling properties and durability. The membrane switch base film is composed of a biaxial oriented polyester film (equivalent to the biaxially oriented polyester film of the claimed invention) comprising polyethylene-2,6-naphthalenedicarboxylate as the major component. The membrane switch comprises two base films lying on either side of a spacer (meeting the limitations of claims 6, 7, 10 and 11) , with contact points (electrodes) spacer (meeting the limitations of claim 8) corresponding to each of the opposing surfaces. Switching action between conduction and insulation can be easily accomplished by pressing the base films, i.e. varying the spacing between the base films. When the biaxial oriented polyester film is a copolymer, compounds having two ester-forming functional groups in the molecule may be used as the copolymerizing components of the copolymer other than polyethylene-2,6-naphthalenedicarboxylate as the major component. As such compounds there may be used, preferably, dicarboxylic acids such as oxalic acid, adipic acid, phthalic acid, sebacic acid, dodecanedicarboxylic acid, isophthalic acid (meeting the limitation that the polyester contains a unit derived from an isophthalic acid) amongst others. The polymer composing the biaxially oriented polyester film of the invention comprises polyethylene-2,6-naphthalenedicarboxylate (hereinafter also abbreviated as "PEN") as the major component, and it may be also be a copolymer or blend and it is only necessary to guarantee permanent deformation resistance with use under high temperature, without extreme loss of the original properties of the biaxially oriented polyester film. These compounds may be used alone or in combinations of two or more. Among these compounds are preferred those with isophthalic acid and terephthalic acid.
The polymer composing the membrane switch base film of the invention may also be, instead of PEN, a blend with other organic polymer. As organic polymers blended with PEN there may be mentioned polyethylene terephthalate (meeting the limitation of claim 2 that the biaxially oriented polyester film also contain another polyester resin; with regards to the limitiosn that the second polyester is recycled from PET bottles , the Examiner would like to point out that the use of "recycled" materials is not a patentable distinction, as it merely goes to the source of the materials and is not a structural distinction). The intrinsic viscosity of the polyester comprising PEN as the major component is preferably from 0.40 dl/g to 0.90 dl/g (meeting the limitation that the intrinsic viscosity of the biaxially oriented polyester film is 0.59 dl/g or more and 0.65 dl/g or less). The biaxial oriented polyester base film may also be provided with a coating layer on at least one side for the purpose of enhancing adhesion with printing pastes. The coating layer preferably comprises at least one type of water-soluble or water-dispersible polymer resin selected from among polyester resins, urethane resins, acrylic resins and vinyl-based resins, with combinations of polyester resins and acrylic resins being particularly preferred (meeting the limitations of claims 4 and 9). (See Abstract and paragraphs 0001-0005, 0019-00028, 0031, 0079-0081, 0088, and 0102).
With regards to the limitations that the unit derived from an isophthalic acid component is 0.5 mol% or more and 5.0 mol% or less (as recited in claim 1) and that the amount of the second polyester resin (as recited in claim 2) is 50% by mass or more and 100% by mass or less, the Examiner would like to point out that workable physical properties and concentrations are deemed to be obvious routine optimizations to one of ordinary skill in the art, motivated by the desire to obtain the required properties particularly given that Furuya et al. specifically states that the when the poolyethylene-2,6-naphthalenedicarboxylate is a copolymer or blend, it is only necessary to guarantee permanent deformation resistance with use under high temperature, without extreme loss of the original properties of the biaxially oriented polyester film of the invention.
With regards to the amount of change in haze of the biaxially oriented polyester film when the film is heated at 150°C for 30 minutes, the storage modulus of the biaxially oriented polyester film at 150°C, average value of storage moduli in a machine direction and a transverse direction of the film the acid value (as recited in claim 1 and 3) and the relational relationship between the storage modulus and the thickness (as recited in claim 1 and 5), the Examiner takes the position that such property limitiosn are inherent in the polyester taught by Furuya et al. given that the chemical composition of the polyester as taught by Furuya et al. and that of the claimed invention are identical.
4. Claims 1-7 and 9 are rejected under 35 U.S.C. 103 as being unpatentable over Yoshino et al. (JP 2019127536 A) in view of Kageyama et al. (US 2009/0082529 A1).
Yoshino et al. disclose a biaxially oriented polyester film (equivalent to the biaxially oriented polyester film of the claimed invention) that is a polyethylene terephthalate that satisfies the following requirements (1) to (4): (1) The content of ester constituent units derived from isophthalic acid components relative to the total ester constituent units in all polyester resins constituting the biaxially oriented polyester film is 0.5 mol% or more and 5.0 mol% or less, (2) the amount of change in haze of the film when heated at 150°C for 30 minutes, ΔHaze {ΔHaze = (Haze after heating) - (Haze before heating)} is 2.0% or less., (3) the intrinsic viscosity of all resins constituting the polyester film is 0.59 dl/g or more and 0.65 dl/g or less, and (4) when a 5 mm wide polyester film is measured with a gripping distance of 30 mm using a dynamic viscoelasticity measuring device under the conditions of tensile mode, frequency of 10 Hz, and heating rate of 5°C/min, the storage modulus at 150°C is 5.0 x 10 NER1 [Pa] to 7.6 x 10 NER2 [Pa], averaged over the longitudinal and transverse directions of the film. Yoshino et al. also disclose that the biaxially oriented polyester film contains 50% by mass or more and 100% by mass or less of polyester resin recycled from PET bottles (meeting the limitations of claim 2). The biaxially oriented polyester film includes at least one surface of the polyester film that has a resin layer containing at least one resin selected from polyester resins, polyurethane resins, and acrylic resins (meeting the limitations of claim 4). There is also disclosed a molded article obtained by using the biaxially oriented polyester film (meeting the limitations of claim 7). Yoshino et al. disclose an adhesive label having an adhesive layer on a least one surface of the biaxially oriented polyester film. Given that a label is applied by pressure when applying the label to an article, the adhesive would necessarily be a pressure sensitive adhesive (meeting the limitations of claim 9). (see paragraphs 0005-0006, 0010-0013, and 0028).
Yoshio et al. does not disclose the acid value of the biaxially oriented polyester film.
Kageyama et al. discloses biaxially oriented polyester film comprising polyester that has acid terminal group (equivalent to the acid value of the claimed invention) at a ratio of 10 to 50 eq/ton where if the acid terminal group is less than 10 eq/ton, the transparency of the molded article obtained by molding involving drawing does not become good while on the other hand, if the acid terminal group exceeds 50 eq/ton, the stability of the polyester such as hydrolysis resistant stability is lowered. (see Abstract and paragraphs 0041, 0172-0173, 0176, 0243).
Accordingly, it would have been obvious to one having ordinary skill in the art to use the biaxially oriented polyester having acid terminal group at a ratio of 10 to 50 eq/ton in Yoshino et a. given that Kageyama et al. specifically teach that biaxially oriented polyester having such acid terminal group produces biaxially oriented polyester with good transparency and hydrolysis resistant stability.
With regards to the storage modulus of the biaxially oriented polyester film at 150°C, average value of storage moduli in a machine direction and a transverse direction of the film, the change of acid value in a machine direction, and the relational relationship between the storage modulus and the thickness (as recited in claim 1 and 5), the Examiner takes the position that such property limitations are inherent in the polyester taught by Yoshio et al. in view of Kageyama et al. given that the chemical composition of the polyester as taught by Yoshio et al. in view of Kageyama et al. and that of the claimed invention are identical.
Although there is no disclosure that the biaxially oriented polyester film of Yoshio et al. in view of Kageyama et al. is a separator film (meeting the limitation of claim 6), applicants attention is drawn to MPEP 2111.02 which states that “if the body of a claim fully and intrinsically sets forth all the limitations of the claimed invention, and the preamble merely states, for example, the purpose or intended use of the invention, rather than any distinct definition of any of the claimed invention’s limitations, then the preamble is not considered a limitation and is of no significance to claim construction”. Further, MPEP 2111.02 states that statements in the preamble reciting the purpose or intended use of the claimed invention must be evaluated to determine whether the purpose or intended use results in a structural difference between the claimed invention and the prior art. Only if such structural difference exists, does the recitation serve to limit the claim. If the prior art structure is capable of performing the intended use, then it meets the claim. It is the examiner’s position that the preamble does not state any distinct definition of any of the claimed invention’s limitations and further that the purpose or intended use, i.e. separator film, recited in the present claims does not result in a structural difference between the presently claimed invention and the prior art film and further that the prior art structure which is a biaxially oriented polyester film identical to that set forth in the present claims is capable of performing the recited purpose or intended use.
Conclusion
5. Any inquiry concerning this communication or earlier communications from the examiner should be directed to SHEEBA AHMED whose telephone number is (571)272-1504. The examiner can normally be reached Monday-Thursday 7am-6pm.
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/SHEEBA AHMED/Primary Examiner, Art Unit 1787