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/Restriction
Applicant’s election without traverse of Group I in the reply filed on 12 May 2026 is acknowledged.
Claim 4 is withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected Group II, there being no allowable generic or linking claim.
Claim Rejections - 35 USC § 102
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 1 is rejected under 35 U.S.C. 102(a)(1) as being anticipated by U.S. 2020/0171791 A1 (“Liao”).
Considering claim 1, Liao discloses a tri-layered co-extruded and biaxially stretched polyester film having surfaces layers A and C and core layer B, wherein core layer B includes recycled polyester resin. (Liao abs.; and ¶¶ 0003 and 0015). Liao discloses in various specific examples respective tri-layered co-extruded and biaxially stretched polyester films having properties recited in claim 1. For instance, Embodiment 1 has mean roughness Sa of 14 nm and haze of 8.6%, and other examples have Sa values of 14-16 nm and haze of 8.7%. (Liao ¶¶ 0078-0089 and Table 1). These embodiments read on claim 1 with sufficient specificity as to anticipate claim 1.
Claims 1 and 3 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by JP 6380104 B (referenced below using its machine translation, “JP 104”).
Considering claims 1 and 3, JP ‘104 discloses a particular example of biaxially stretched polyester film having haze of 3.2% and SRa of 9.0 nm, wherein the polyester film includes a resin having viscosity of 0.63 dl/g. (JP ‘104 ¶¶ 0091-0101 and Table 1).
Claim Rejections - 35 USC § 102/103
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.
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 of this title, 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.
Claim 2 is rejected under 35 U.S.C. 102(a)(1) as anticipated by or, in the alternative, under 35 U.S.C. 103 as unpatentable over Liao as applied to claim 1 above.
Considering claim 2, Liao is analogous art, for it is directed to the same field of endeavor as that of the instant application (stretched polyester film, in particular one using significant amount of recycled materials). Liao discloses that in order to reduce surface roughness, the surfaces layers A and C are prepared from new polyester while the core layer B is a recycled layer accounts for 70% to 85% of total thickness of the co-extruded and biaxially stretched polyester film. (Liao ¶¶ 0027 and 0100). It may be inferred that all layers are made of PET. (Id. ¶¶ 0084-0089). As such, thickness ratio is also mass ratio. With the embodiments all utilizing a core layer accounting for 80% of the thickness of the co-extruded and biaxially stretched polyester film, and with the core layer made from a recycled material, Liao reads on usage of 80 mass% of recycled resin with sufficient specificity.
Liao discloses that the recycled PET can be from release films (which necessarily has a release layer), and that the recycled material is cleaned, melted, filtered, granulated, and blended. (Id. ¶ 0006). Furthermore, Liao discloses that this recycled polyester can further contain pigment (particles). (Id. ¶ 0045). Combination of the foregoing is at least obvious, due to express disclosures in Liao.
Furthermore, the sourcing of the recycled polyester is a product by process limitations. “[E]ven 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 as or obvious from a product of the prior art, the claim is unpatentable even though the prior product was made by a different process.” (In re Thorpe, 227 USPQ 964, 966). Once the Examiner provides a rationale tending to show that the claimed product appears to be the same or similar to that of the prior art, although produced by a different process, the burden shifts to applicant to come forward with evidence establishing an unobvious different between the claimed product and the prior art product. (In re Marosi, 710 F.2d 798, 802, 218 USPQ 289, 292 (Fed. Cir. 1983); MPEP § 2113).
In the instant case, the Instant Application states that the recycled PET material (which contains particles) is pulverized, kneaded, and then subsequently extruded to form a PET film. (Spec. ¶¶ 0062, 0064, and 0065). In other words, what was once a bilayered structure is turned into a single mixture during the recycling and subsequent film formation. Other than the fact that the working example has greater content of recycled product, the working examples have properties substantially similar to a substantially similar PET film prepared de novo. (Contrast Ref Ex. 1 to working examples in Spec. Table 2).
As discussed above, the recycled material in Liao is cleaned, melted, filtered, granulated, and blended; and this is substantially similar to the process described in the Instant Application. Used release film is one of three sources of the recycled material disclosed by Liao and is therefore considered to be disclosed with sufficient specificity. Furthermore, processing of the recycled material mentioned in ¶ 0006 of Liao is substantially similar to (if not more stringent than) what is used in the Instant Application. It follows that a substantially similar precursor processed by a substantially similar process yields a substantially similar product that anticipates or renders obvious the claimed product. Formation of the polyester film from a precursor that was a film having a functional layer and containing particles as instantly claimed is not considered to provide a patentably distinct structure from that of the prior art unless submission of evidence can probatively demonstrate material differences.
Claims 1-3 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by or, in the alternative, under 35 U.S.C. 103 as unpatentable over WO 2020/095725 A1 (referenced below using its English-language counterpart publication U.S. 2022/0024111 A1, “Nakano”).
Considering claims 1 and 3, Nakano discloses a biaxially oriented (viz. stretched) polyester film having SRa of 24-45 nm, haze of 7% or less, and intrinsic viscosity of 0.50 to 0.85 dl/g. (Nakano claim 1 and ¶ 0046). Nakano is analogous art, for it is directed to the same field of endeavor as that of the instant application (stretched polyester film). Furthermore, various working examples read on the claimed polyester film with sufficient specificity. (Id. Table 1, Ex. 1-7). For instance Ex. 1 of Nakano has SRa of 32 nm, haze of 2.4% and IV of 0.59 (n.b. unit in table in typographical error as it is given in µm, but it is abundantly clear that the correct unit is dl/g). The broad disclosures at least render obvious claims 1 and 3; and each of Ex. 1-7 reads on claims 1 and 3 with sufficient specificity as to anticipate claims 1 and 3.
Considering claim 2, Nakano discloses that the PET resin used to make its biaxially oriented film is obtained from recycled PET having particles. (Id. ¶¶ 0048 and 0065). Specifically, each of Ex. 1-4 is rated “3” in terms of environmental friendliness, which is indicative of 80 wt% or more of recycled polyester. (Id. ¶¶ 0181-0186 and Table 1).
The sole difference between Nakano and the claim is source of recycled polyester. However, the limitation reciting this difference is a product by process limitations. “[E]ven 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 as or obvious from a product of the prior art, the claim is unpatentable even though the prior product was made by a different process.” (In re Thorpe, 227 USPQ 964, 966). Once the Examiner provides a rationale tending to show that the claimed product appears to be the same or similar to that of the prior art, although produced by a different process, the burden shifts to applicant to come forward with evidence establishing an unobvious different between the claimed product and the prior art product. (In re Marosi, 710 F.2d 798, 802, 218 USPQ 289, 292 (Fed. Cir. 1983); MPEP § 2113).
In the instant case, the Instant Application states that the recycled PET material (which contains particles) is pulverized, kneaded, and then subsequently extruded to form a PET film. (Spec. ¶¶ 0062, 0064, and 0065). In other words, what was once a bilayered structure is turned into a single mixture during the recycling and subsequent film formation. Other than the fact that the working example has greater content of recycled product, the working examples have properties substantially similar to a substantially similar PET film prepared de novo. (Contrast Ref Ex. 1 to working examples in Spec. Table 2).
The difference between what is taught in Nakano and the claimed limitation is even smaller, as the PET in Nakano is not prepared de novo but is actually recycled. As such, with even a greater difference in starting material resulting in no discernible difference, the same is expected when the difference is even smaller. Formation of the polyester film from a precursor that was a film having a functional layer and containing particles as instantly claimed is not considered to provide a patentably distinct structure from that of the prior art unless submission of evidence can probatively demonstrate material differences.
Concluding Remarks
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. Each of these references renders obvious at least claims 1 and 3.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Zheren Jim Yang whose telephone number is (571)272-6604. The examiner can normally be reached M-F 10:30 - 7:30 ET.
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, Frank Vineis can be reached at (571)270-1547. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/Z. Jim Yang/Primary Examiner, Art Unit 1781
Prosecution Insights