DETAILED ACTION
Notice of Pre-AIA or AIA Status
The present application is being examined under the pre-AIA first to invent provisions.
Examiner’s Comments
Applicants’ response filed on 12/30/2025 has been fully considered. Claims 2, 4-9, 14-15 and 49-51 are cancelled, claims 22-47 are withdrawn and claims 1, 3, 10-13, 16-48 and 52 are pending.
Claim Objections
Claim 52 is objected to because of the following informalities:
The phrase “the polymeric layer” in line 16 of claim 52 should be changed to the phrase “the polymeric print layer”.
Appropriate correction is required.
Claim Rejections - 35 USC § 112
The following is a quotation of the first paragraph of 35 U.S.C. 112(a):
(a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
The following is a quotation of the first paragraph of pre-AIA 35 U.S.C. 112:
The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention.
Claims 1, 3, 10-13, 16-21, 48 and 52 are rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the written description requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for applications subject to pre-AIA 35 U.S.C. 112, the inventor(s), at the time the application was filed, had possession of the claimed invention.
Regarding claims 1 and 52, while there is support for a “low surface energy additive dispersed in the polymeric print layer” or a “low surface energy additive covalently bonded or grafted to a polymer chain in the polymeric print layer”.(see paragraphs [0039]-[0040] of Applicant’s Specification, there is no support for the limitations of a “low surface energy additive dispersed in the polymeric print layer” and a “low surface energy additive covalently bonded or grafted to a polymer chain in the polymeric print layer”.
In one embodiment, the low surface energy additive dispersed in the polymeric print layer (see paragraph [0039] of Applicant’s Specification. In another embodiment, the low surface energy additive covalently bonded or grafted to a polymer chain in the polymeric print layer.
The Examiner is interpreting claims 1 and 52 as to recognize only the low surface energy additive being dispersed in the polymeric print layer and not the low surface energy additive being covalently bonded or grafted to a polymer chain in the polymeric print layer.
Dependent claims 3, 10-13, 16-21, 48 and 52 do not cure the deficiencies of independent claim 1 are rejected for the same reasons.
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.
Claims 1, 3, 10-13, 16-21, 48 and 52 are 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.
Claims 1 and 52 are recite the limitation “the graphics layer” in line 5 of claim 1 and line 5 of claim 52. There is insufficient antecedent basis for this limitation in the claim.
It is advised changing the phrase “the graphics layer” to the phrase “the polymeric print layer” in order to overcome this rejection.
Claim Rejections - 35 USC § 103
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.
The factual inquiries set forth in Graham v. John Deere Co., 383 U.S. 1, 148 USPQ 459 (1966), that are applied for establishing a background for determining obviousness under pre-AIA 35 U.S.C. 103(a) are summarized as follows:
1. Determining the scope and contents of the prior art.
2. Ascertaining the differences between the prior art and the claims at issue.
3. Resolving the level of ordinary skill in the pertinent art.
4. Considering objective evidence present in the application indicating obviousness or nonobviousness.
This application currently names joint inventors. In considering patentability of the claims under pre-AIA 35 U.S.C. 103(a), the examiner presumes that the subject matter of the various claims was commonly owned at the time any inventions covered therein were made absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and invention dates of each claim that was not commonly owned at the time a later invention was made in order for the examiner to consider the applicability of pre-AIA 35 U.S.C. 103(c) and potential pre-AIA 35 U.S.C. 102(e), (f) or (g) prior art under pre-AIA 35 U.S.C. 103(a).
Claims 1, 3, 10-13, 16-21, 48 and 52 are rejected under pre-AIA 35 U.S.C. 103(a) as being unpatentable over Josephy et al (US 6,210,524 B1) in view of Lockhart et al (US 6,946,203 B1) as evidenced by the data sheet titled Solid Surface Energy Data for Common Polymers.
Regarding claim 1, Josephy discloses a self-adhesive print film (a label; col. 1, lines 6-9) comprising:
a polymeric print layer having an upper surface and a lower surface (a skin layer having an upper surface and a lower surface; Fig. 4 #81; col. 4, lines 48-62), the upper surface suitable for receiving ink jet printed indicia thereon (a skin layer having an upper surface and a lower surface; Fig. 4 #81; col. 4, lines 48-62); and
an adhesive layer having an upper surface and a lower surface (Fig. 4 #84; col. 4, lines 48-62) disposed on the lower surface of the polymeric print layer (the adhesive layer is disposed on the lower surface of skin layer #81; Fig. 4 #84; col. 4, lines 48-62); and
a release liner disposed over the lower surface of the adhesive layer (Fig. 4 #85; col. 4, lines 48-62), wherein the release liner includes a front surface and a back surface (Fig. 4 #85; col. 4, lines 48-62), and wherein the release liner includes a silicone release coating that defines the front surface of the release liner (release liner comprises a silicone coated paper substrate; Fig. 4 #85; col. 22, lines 41-53).
Since the label of Josephy discloses a skin layer having an image printed on its upper surface, an adhesive layer on its bottom surface and a silicone coated paper substrate coated on a bottom surface of the adhesive layer; the label of Josephy would inherently be a self-adhesive print film.
Since the skin layer comprises polyvinyl chloride, which is one of Applicant’s preferred materials for the polymeric print layer, the upper surface of the skin layer would inherently be suitable for receiving ink jet printed indicia thereon.
Josephy does not disclose the self-adhesive print film comprising the polymeric print layer comprises a low surface energy additive dispersed in the polymeric print layer and the concentration of the low surface energy additive in the polymeric print layer is from about 0.1 to about 10 wt%.
However, Lockhart discloses an image receiving article comprising an image receiving layer comprises a release agent of silicone oil (low surface energy additive distributed in the polymeric print layer) in an amount from 0.2 to 30 parts by weight based on the particular polymer to form the image receiving layer (concentration of low energy surface additive; col. 12, lines 29-37).
The amount of release agent of silicone oil would overlap the claimed range for the concentration of low surface energy additive in the polymeric print layer.
It would have been obvious to one of ordinary skill in the art to select any portion of the disclosed ranges including the instantly claimed ranges from the ranges disclosed in the prior art reference in order to provide a reduced coefficient of friction of structures for improved characteristics such as ease of manufacturing and processing and ease of use in image forming machinery (col. 12, lines 5-9 of Lockhart) as the release agent of silicone oil is also known by one of ordinary skill in the art as being a slip agent. It has been held that “[i]n the case where the claimed ranges “overlap or lie inside ranges disclosed by the prior art” a prima facie case of obviousness exists.” Please see MPEP 2144.05, In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); and In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990).
It would have been obvious to one of ordinary skill in the art having the teachings of Josephy and Lockhart before him or her, to modify the label of Josephy to include the release agent of silicone oil of Lockhart in the skin layer of Josephy because provide a reduced coefficient of friction of structures for improved characteristics such as ease of manufacturing and processing and ease of use in image forming machinery (col. 12, lines 5-9 of Lockhart).
Josephy does not disclose the self-adhesive print film comprising the polymeric print layer comprises at least about 3 Atomic% of Si at the upper surface of the polymeric print layer and the low surface energy material being siloxane.
However, Lockhart discloses a self-adhesive print film (image receiving article; col. 11-12) comprising an image receiving layer comprises a release agent of silicone oil (a low surface energy material being siloxane) in an amount from 0.2 to 30 parts by weight based on the particular polymer to form the image receiving layer (concentration of low energy surface additive; col. 12, lines 29-37).
Since Lockhart discloses silicone oil, which is the same as Applicant’s preferred material for the low surface energy additive, in an amount from 0.2 to 30 parts by weight based on the particular polymer to form the image receiving layer, which overlaps the claimed range for the amount of low surface energy additive in the polymeric print layer; the image receiving layer would inherently provide at least about 3 Atomic% of Si at the upper surface as the structure of silicone oil is the same as the structure of the silicone-containing material being siloxane.
It would have been obvious to one of ordinary skill in the art having the teachings of Josephy and Lockhart before him or her, to modify the label of Josephy to include the release agent of silicone oil of Lockhart in the skin layer of Josephy because provide a reduced coefficient of friction of structures for improved characteristics such as ease of manufacturing and processing and ease of use in image forming machinery (col. 12, lines 5-9 of Lockhart).
Regarding claim 3, Josephy and Lockhart disclose the self-adhesive print film of claim 1 as noted above.
Josephy does not disclose the self-adhesive print film comprising the polymeric print layer comprising a concentration of 1 to about 5% by weight of a low surface energy additive.
However, Lockhart discloses a self-adhesive print film (image receiving article; col. 11-12) comprising an image receiving layer comprises a release agent of silicone oil (a low surface energy material being siloxane) in an amount from 0.2 to 30 parts by weight based on the particular polymer to form the image receiving layer (concentration of low energy surface additive; col. 12, lines 29-37).
The amount of release agent of silicone oil would overlap the claimed range for the concentration of low surface energy additive in the polymeric print layer.
It would have been obvious to one of ordinary skill in the art to select any portion of the disclosed ranges including the instantly claimed ranges from the ranges disclosed in the prior art reference in order to provide a reduced coefficient of friction of structures for improved characteristics such as ease of manufacturing and processing and ease of use in image forming machinery (col. 12, lines 5-9 of Lockhart) as the release agent of silicone oil is also known by one of ordinary skill in the art as being a slip agent. It has been held that “[i]n the case where the claimed ranges “overlap or lie inside ranges disclosed by the prior art” a prima facie case of obviousness exists.” Please see MPEP 2144.05, In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); and In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990).
Regarding claim 10, Josephy and Lockhart disclose the self-adhesive print film of claim 1 as noted above.
Since Lockhart discloses silicone oil, which is the same as Applicant’s preferred material for the silicone-containing material, in an amount from 0.2 to 30 parts by weight based on the particular polymer to form the image receiving layer, which overlaps the claimed range for the amount of low surface energy additive in the polymeric print layer; the image receiving layer would inherently provide at least about 4 Atomic% of Si at the upper surface at the upper surface as the structure of silicone oil is the same as the structure of the silicone-containing material being siloxane.
Regarding claim 11, Josephy and Lockhart disclose the self-adhesive print film of claim 1 as noted above.
Since Lockhart discloses silicone oil, which is the same as Applicant’s preferred material for the silicone-containing material, in an amount from 0.2 to 30 parts by weight based on the particular polymer to form the image receiving layer, which overlaps the claimed range for the amount of low surface energy additive in the polymeric print layer; the image receiving layer would inherently provide at least about 5 Atomic% of Si at the upper surface at the upper surface as the structure of silicone oil is the same as the structure of the silicone-containing material being siloxane.
Regarding claim 12, Josephy and Lockhart disclose the self-adhesive print film of claim 1 as noted above.
Since Lockhart discloses silicone oil, which is the same as Applicant’s preferred material for the silicone-containing material, in an amount from 0.2 to 30 parts by weight based on the particular polymer to form the image receiving layer, which overlaps the claimed range for the amount of low surface energy additive in the polymeric print layer; the image receiving layer would inherently provide from about 3 to about 15 Atomic% of Si at the upper surface at the upper surface as the structure of silicone oil is the same as the structure of the silicone-containing material being siloxane.
Regarding claim 13, Josephy and Lockhart disclose the self-adhesive print film of claim 1 as noted above and Josephy discloses the self-adhesive print film comprising the polymeric print layer comprising polyvinyl chloride (skin layer comprising polyvinyl chloride; col. 5, lines 17-20).
Regarding claim 16, Josephy and Lockhart disclose the self-adhesive print film of claim 1 as noted above.
Josephy does not disclose the self-adhesive print film comprising the low surface energy additive having a surface energy from about 5 dynes/cm to about 50 dynes/cm.
However, Lockhart discloses an image receiving article comprising a slip agent blended into any layer of the structure including an image-receptive layer and wherein the slip agent includes polydimethylsiloxane (col. 11, line 52-col. 12, line 17).
Polydimethylsiloxane has a surface energy of 19.8 mN/m or 19.8 dynes/cm as evidenced by the data sheet titled Solid Surface Energy Data for Common Polymers.
It would have been obvious to one of ordinary skill in the art having the teachings of Josephy and Lockhart before him or her, to modify the self-adhesive print film of Josephy to include the slip agent of polydimethylsiloxane of Lockhart in the skin layer of Josephy because doing so provide a reduced coefficient of friction of structures for improved characteristics such as ease of manufacturing and processing and ease of use in image forming machinery (col. 12, lines 5-9 of Lockhart).
Regarding claim 17, Josephy and Lockhart disclose the self-adhesive print film of claim 1 as noted above.
In regard to the value of the second dot area within the first dot area, since Josephy and Lockhart discloses Applicant's claimed structure of the self-adhesive print film of claim 1, the self-adhesive print film of Josephy and Lockhart would inherently have the value of the second dot area be within 20% of the value of the first dot area as the structure and the materials for each of the layers of the self-adhesive print film of Josephy and Lockhart is the same as Applicant’s claimed structure of claim 1 and the materials for each of the layers of the self-adhesive print film which has the claimed value of the second dot area within the first dot area.
Regarding claim 18, Josephy and Lockhart disclose the self-adhesive print film of claim 1 as noted above.
In regard to the value of the second dot area within the first dot area, since Josephy and Lockhart discloses Applicant's claimed structure of the self-adhesive print film of claim 1, the self-adhesive print film of Josephy and Lockhart would inherently have the value of the second dot area be within 15% of the value of the first dot area as the structure and the materials for each of the layers of the self-adhesive print film of Josephy and Lockhart is the same as Applicant’s claimed structure of claim 1 and the materials for each of the layers of the self-adhesive print film which has the claimed value of the second dot area within the first dot area.
Regarding claim 19, Josephy and Lockhart disclose the self-adhesive print film of claim 1 as noted above.
In regard to the value of the second dot area within the first dot area, since Josephy and Lockhart discloses Applicant's claimed structure of the self-adhesive print film of claim 1, the self-adhesive print film of Josephy and Lockhart would inherently have the value of the second dot area be within 10% of the value of the first dot area as the structure and the materials for each of the layers of the self-adhesive print film of Josephy and Lockhart is the same as Applicant’s claimed structure of claim 1 and the materials for each of the layers of the self-adhesive print film which has the claimed value of the second dot area within the first dot area.
Regarding claim 20, Josephy and Lockhart disclose the self-adhesive print film of claim 1 as noted above.
In regard to the value of the second dot area within the first dot area, since Josephy and Lockhart discloses Applicant's claimed structure of the self-adhesive print film of claim 1, the self-adhesive print film of Josephy and Lockhart would inherently have the value of the second dot area be within about 0.1% to about 20% of the value of the first dot area as the structure and the materials for each of the layers of the self-adhesive print film of Josephy and Lockhart is the same as Applicant’s claimed structure of claim 1 and the materials for each of the layers of the self-adhesive print film which has the claimed value of the second dot area within the first dot area.
Regarding claim 21, Josephy and Lockhart disclose the self-adhesive print film of claim 1 as noted above.
In regard to the value of the second dot area within the first dot area, since Josephy and Lockhart discloses Applicant's claimed structure of the self-adhesive print film of claim 1, the self-adhesive print film of Josephy and Lockhart would inherently have the value of the second dot area be within about 1% to about 17% of the value of the first dot area as the structure and the materials for each of the layers of the self-adhesive print film of Josephy and Lockhart is the same as Applicant’s claimed structure of claim 1 and the materials for each of the layers of the self-adhesive print film which has the claimed value of the second dot area within the first dot area.
Regarding claim 48, Josephy and Lockhart disclose the self-adhesive print film of claim 1 as noted above and Josephy discloses the self-adhesive print film comprising the polymeric print layer comprising polyvinyl chloride (skin layer comprising polyvinyl chloride; col. 5, lines 17-20).
Regarding claim 52, Josephy discloses a self-adhesive print film (a label; col. 1, lines 6-9) comprising:
a polymeric print layer having an upper surface and a lower surface (a skin layer having an upper surface and a lower surface; Fig. 4 #81; col. 4, lines 48-62), the upper surface suitable for receiving ink jet printed indicia thereon (a skin layer having an upper surface and a lower surface; Fig. 4 #81; col. 4, lines 48-62); and
an adhesive layer having an upper surface and a lower surface (Fig. 4 #84; col. 4, lines 48-62) disposed on the lower surface of the polymeric print layer (the adhesive layer is disposed on the lower surface of skin layer #81; Fig. 4 #84; col. 4, lines 48-62); and
a release liner disposed over the lower surface of the adhesive layer (Fig. 4 #85; col. 4, lines 48-62), wherein the release liner includes a front surface and a back surface (Fig. 4 #85; col. 4, lines 48-62), and wherein the release liner includes a silicone release coating that defines the front surface of the release liner (release liner comprises a silicone coated paper substrate; Fig. 4 #85; col. 22, lines 41-53).
Since the label of Josephy discloses a skin layer having an image printed on its upper surface, an adhesive layer on its bottom surface and a silicone coated paper substrate coated on a bottom surface of the adhesive layer; the label of Josephy would inherently be a self-adhesive print film.
Since the skin layer comprises polyvinyl chloride, which is one of Applicant’s preferred materials for the polymeric print layer, the upper surface of the skin layer would inherently be suitable for receiving ink jet printed indicia thereon.
Josephy does not disclose the self-adhesive print film comprising the polymeric print layer comprises a low surface energy additive dispersed in the polymeric print layer.
However, Lockhart discloses an image receiving article comprising an image receiving layer comprises a release agent of silicone oil (low surface energy additive distributed in the polymeric print layer).
It would have been obvious to one of ordinary skill in the art having the teachings of Josephy and Lockhart before him or her, to modify the label of Josephy to include the release agent of silicone oil of Lockhart in the skin layer of Josephy because provide a reduced coefficient of friction of structures for improved characteristics such as ease of manufacturing and processing and ease of use in image forming machinery (col. 12, lines 5-9 of Lockhart).
Josephy does not disclose the self-adhesive print film comprising the polymeric print layer comprises at least about 3 Atomic% of Si at the upper surface of the polymeric print layer and the low surface energy material being siloxane.
However, Lockhart discloses a self-adhesive print film (image receiving article; col. 11-12) comprising an image receiving layer comprises a release agent of silicone oil (a low surface energy material being siloxane) in an amount from 0.2 to 30 parts by weight based on the particular polymer to form the image receiving layer (concentration of low energy surface additive; col. 12, lines 29-37).
Since Lockhart discloses silicone oil, which is the same as Applicant’s preferred material for the low surface energy additive, in an amount from 0.2 to 30 parts by weight based on the particular polymer to form the image receiving layer, which overlaps the claimed range for the amount of low surface energy additive in the polymeric print layer; the image receiving layer would inherently provide at least about 3 Atomic% of Si at the upper surface as the structure of silicone oil is the same as the structure of the silicone-containing material being siloxane.
It would have been obvious to one of ordinary skill in the art having the teachings of Josephy and Lockhart before him or her, to modify the label of Josephy to include the release agent of silicone oil of Lockhart in the skin layer of Josephy because provide a reduced coefficient of friction of structures for improved characteristics such as ease of manufacturing and processing and ease of use in image forming machinery (col. 12, lines 5-9 of Lockhart).
Response to Arguments
Applicant’s arguments, see page 9, filed 12/30/2025, with respect to the 112(a) rejections have been fully considered and are persuasive.
The 112(a) rejections has been withdrawn.
Applicant's arguments filed 12/30/2025 have been fully considered but they are not persuasive.
Applicants argue that Josephy does not disclose a low surface energy additive incorporated into the polymeric print layer via covalent bonding or grafting as claimed.
This argument is not persuasive as Lockhart is being relied upon to disclose distributing the low surface energy additive into the polymeric print layer. In regard to the 112(a) rejection noted above, the limitation of the low surface energy additive incorporated into the polymeric print layer via covalent bonding or grafting is not being recognized as the low surface energy additive is either distributed into the polymeric print layer or covalent bonded or grafted onto the polymeric print layer.
Applicants argue that Lockhart fails to remedy the deficiencies of Josephy and fails to disclose a low surface energy additive that is covalently bonded or grafted to a polymer chain in the polymeric print layer.
This argument is not persuasive as Lockhart is a teaching reference used to teach a release agent of silicone oil.
However, note that while Lockhart does not disclose all the features of the present claimed invention, Lockhart is a teaching reference, and therefore, it is not necessary for this secondary reference to contain all the features of the presently claimed invention, In re Nievelt, 482 F.2d 965, 179 USPQ 224, 226 (CCPA 1973), In re Keller 624 F.2d 413, 208 USPQ 871, 881 (CCPA 1981). Rather this reference teaches certain concepts, namely a release agent of silicone oil, and in combination with the primary reference, discloses the presently claimed invention.
In regard to the 112(a) rejection noted above, the limitation of the low surface energy additive incorporated into the polymeric print layer via covalent bonding or grafting is not being recognized as the low surface energy additive is either distributed into the polymeric print layer or covalent bonded or grafted onto the polymeric print layer.
Conclusion
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any nonprovisional extension fee (37 CFR 1.17(a)) pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the mailing date of this final action.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to SATHAVARAM I REDDY whose telephone number is (571)270-7061. The examiner can normally be reached Monday-Friday 9:00 AM-6:00 PM EST.
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/SATHAVARAM I REDDY/Examiner, Art Unit 1785
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