DETAILED ACTION
Examiner’s Note
All claims being currently amended in an amendment paper shall be presented in the claim listing, indicate a status of “currently amended,” and be submitted with markings to indicate the changes that have been made relative to the immediate prior version of the claims. The text of any added subject matter must be shown by underlining the added text. The text of any deleted matter must be shown by strike-through, except that double brackets placed before and after the deleted characters may be used to show deletion of five or fewer consecutive characters. The text of any deleted subject matter must be shown by being placed within double brackets if strike-through cannot be easily perceived. Only claims having the status of “currently amended” or “withdrawn” if also being amended, shall include markings. If a withdrawn claim is currently amended, its status in the claim listing may be identified as “withdrawn— currently amended.” (see MPEP 714)
Current claim 22 is listed as “Currently Amended” but the claim does not demonstrate any amendments.
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 .
Rejections
The text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action.
Claim Rejections - 35 USC § 103
Claim(s) 1, 3, 6-9 and 21-22 is/are rejected under 35 U.S.C. 103 as being unpatentable over Mihashi (JP 2017173562 A) in view of Antila et al. (EP 3059344 A1) and in further view of Sasaki et al. (JP 2008222973 A). Citations from the ‘562 reference were taken from a machine translation which was included with a previous action, and citations from the ‘973 reference were taken from a machine translation which is included with the current action.
Regarding claim(s) 1, 3, 6-9 and 21-22, Mihashi teaches a heat removal adhesive label comprising a base material (1) (face layer), an information display layer (2) on one surface of base material (varnished, current claim 6) made of paper, and a heat-peelable pressure-adhesive layer (PSA) (3) containing thermally expandable filler (expandable particles), which teaches at least one additive for adjusting the total density of the label, towards a label that is peeled from an adherend following heating to expand the expandable particles (abstract, page 2 description of the Figures).
Mihashi also teaches that a primer layer (current claim 3) is between the adhesive layer and the base material (page 5, 2nd paragraph), and that the paper is coated (1st full paragraph of page 3), which is identical to that presently disclosed for providing the presently claimed wet strength paper. Mihashi further teaches that the thermally expandable filler comprises an average particle size of 5 to 50 mm, which overlaps that of the presently claimed initial diameter (5 to 40 mm, current claim 21), and expandable to 10-100 times its volume when expanded (pages 4, 7th paragraph).
As set forth in MPEP 2144.05, in the case where the claimed range “overlap or lie inside ranges disclosed by the prior art”, a prima facie case of obviousness exists, In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990).
The Examiner notes that, as disclosed in the reference, Mihashi teaches that the adhesion is reduced following the expansion of the heat-expandable particles, which provides that the “label is detachable,” and given that they are expandable at 70 to 90 ℃, it is reasonable to conclude that the expandable particles of the prior art would expand at the higher temperature of 95 ℃ for at least one minute (current claim 9). Also, Mihashi teaches that the method of peeling including spraying with water at 80 ℃ or higher prior to heat peeling, which overlaps that presently claimed (washing conditions above 60 ℃, 65 to 85 ℃, current claim 7), further teaches that the expandable particles are “pre-activated,” prior to the heating and washing step (current claim 8).
Mihashi is silent to the paper base material (1) having a water absorptiveness of from 5 to 30 g/m2 according to an ISO standard 535, arranged to float on a washing liquid when detached, and to the total label density being equal to or less than 1 g/cm3 after immersion in an aqueous solution (current claim 1); and to the thermally expandable filler having a post-expanded final density of 5 to 30 kg/m3 (current claim 22).
However, as noted above, Mihashi is clearly directed to a removable adhesive layer which is removable by washing and heating expandable particles towards said removal of said adhesive. In addition, Mihashi does contemplate the importance of water absorption in its discussion of the base material’s thickness and rigidity (page 3, 2nd full paragraph).
Thus, it would have been obvious to one of ordinary skill in the art before the effective filing date of the present invention to adjust the degree of expansion and/or the number of the thermally expandable filler (i.e., the degree of porosity provided by the voided expansion), the initial diameter of said thermally expandable filler to that presently claimed and the post-expanded density of the thermally expandable filler to that presently claimed (5 to 30 kg/m3) to provide the heat removable adhesive label of Mihashi with the presently claimed total density (below 1 g/cm3), and thus the ability to float on the liquid water, for the intended application since it has been held that discovering an optimum value of a result-effective variable involves only routine skill in the art (In re Boesch, 617 F.2d 272, 205 USPQ 215 (CCPA 1980)) towards a label demonstrating the overall total density and peelability required of the prior art’s intended application as in the present invention.
In addition, Antila teaches that the ISO 535 standard is employed to determine the water absorptiveness of paper (para 0044).
Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the present invention to provide base material (1) of Mihashi with the presently claimed absorptiveness based on the water absorption, or lack thereof, required of the prior art’s intended application.
Mihashi/Antila is silent to the presently claimed wet strength chemicals.
However, the paper substrates of Mihashi are disclosed as comprising coated paper and paper employing a synthetic resin (page 3, 1st full paragraph).
In addition, Sasaki teaches a support comprising a base paper and paper strength agents such as, inter alia, urea-formaldehyde resins (para 0027).
Therefore, it would have been obvious to one of ordinary skill in the art before the effective date of the present invention to employ urea-formaldehyde resins in the paper base material (1) of Mihashi towards the heat removable label having improved strength as in the present invention.
Claim(s) 10-11 and 14-16 is/are rejected under 35 U.S.C. 103 as being unpatentable over Mihashi (JP 2017173562 A) in view of Antila et al. (EP 3059344 A1) and in further view of Sasaki et al. (JP 2008222973 A). Citations from the ‘562 reference were taken from a machine translation which was included with a previous action, and citations from the ‘973 reference were taken from a machine translation which is included with the current action.
Regarding claim(s) 10-11 and 14-16, Mihashi/Antila/Sasaki teaches the heat removal adhesive label as in the rejection of claims 1, 3, 6-9 and 21-22 set forth above, which is equally applicable to the current claims.
Antila also instructs that release liners are employed with self-adhesive materials (para 0051).
Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the present invention to employ a release liner to cover the adhesive layer (3) to protect it from contamination until use as in the present invention.
Response to Arguments
Applicant's arguments, see the claim amendments and the remarks filed 10/24/2025, with respect to the rejections of claims 1, 3, 6-9 and 21-22 over Mihashi in view of Antila et al. under 35 U.S.C. 103(a) and claims 10-11 and 14-16 over Mihashi in view of Antila et al. under 35 U.S.C. 103(a) as set forth in paragraphs 4-5 of the action mailed 7/25/2025, have been fully considered but they are not persuasive.
Initially, the Examiner respectfully directs the Applicant’s attention to at least claims 1 and 10 of the claim listings filed 7/16/2025. It is noted that, contrary to the Applicant’s current assertions, said previously presented claims 1 and 10 did not recite that the claimed wet strength paper comprised the selected chemicals. The Applicant’s attention is also respectfully directed to the prior art rejections set forth above, appended from the previous prior art rejections in response to the currently amended claims, wherein it is noted that the cited prior art, to include the newly cited Sasaki reference, teaches or renders obvous all the limitations of the presently claimed invention. Further, while not identical in its disclosure to paragraph 0070 of the US PGPub of the present application, Sasaki also teaches that the presently claimed wet strength chemical are employed in paper substrates as paper strength agents (see para 0027 of Sasaki). Moreover, to teach or render obvious the presently claimed invention, Mihashi/Antila/Sasaki do not have to specify that the disclosed heat removal adhesive label comprising the presently claimed wet strength chemicals are “wash-off labels” in order to be capable of being washed off an adherend to which it is attached, or to demonstrate “diminished fiber disintegration” and “defibration,” via the functional language associated with a “washing-off” procedure.
In regards to the Applicant’s position that label removal presently claimed/disclosed is different from that disclosed in Mihashi (beginning on page 8 of said remarks), the Examiner firstly submits that the presently claimed invention is not directed to a method, but to the recited product of a label comprising the face layer and the adhesive layer and their attendant further limitations. The Examiner also respectfully submits that the presently claimed invention recites that the label is detachable at the disclosed temperatures of 60-90 ℃ or above, which does not preclude that the label is not detachable at temperatures above or below the recited range (e.g., 80 ℃ or higher as disclosed in Mihashi). The claim language reciting a temperature range of “60-90 ℃ or above” allows for any temperature value above 90 ℃. In addition, the presently claimed invention does not positively exclude other methodologies towards removal of the label that occur in tandem with the washing procedures such as the heat peelability of Mihashi via the inclusion of the heat-expandable particles. Moreover, without conceding the merits or persuasiveness of the Applicant’s remarks, the Applicant’s position (first full paragraph on page 8 of the remarks) that the washing liquid “maybe be” pure water or an aqueous solution containing an alkaline agent is not recited in the claims.
The Examiner respectfully acknowledges that the word “vapor” was inadvertently left out in citing Mihashi. The Examiner respectfully submits that water vapor sprayed at 80 ℃ or higher is still water, and is within the washing temperature of “60-90 ℃ or above” presently claimed. Also, while Mihashi employs heat (via heat-expandable particles) to assist in removal of the label, as acknowledges by the Applicant, Mihashi also discloses spraying water, in the form of water vapor, towards the same. Further, the claims only generally recite a “washing liquid,” but do not further limit the washing liquid as being water-based or aqueous; the aqueous limitations recited in the presently claimed invention as recited in current claims 1 and 10 are limited to the density after submersion in and aqueous solution. Moreover, the recited temperature range of “60-90 ℃ or above” is directed to further limiting the “washing conditions” such as the temperature of at 80 ℃ or higher at which the water vapor of Mihashi was applied. There is nothing is the claimed invention requiring” 1) that the recited “washing conditions” are limited to the recited :washing liquid;” and 2) there is nothing is claimed invention requiring that the recited “washing liquid” is water or aqueous-based. Continuing, and without conceding the merits or persuasiveness of the Applicant’s remarks, the Applicant’s position (4th full paragraph on page 8 of the remarks) that steam’s ability to permeate a label is not excluded from the presently claimed invention.
Turning now to Mihashi’s discussion of water absorption, the cited portion of the reference was included to demonstrate that water absorption was a consideration of Mihashi’s in regards to adhesive strength with respect to thickness and rigidity, and not completely directed to the thickness of the substrate. Indeed, water absorption is also disclosed as a consideration towards curling due to the expansion of the adhesive layer and the reduction of the adhesion (i.e., the detachability) of the label from the surface of an adherend. Further, the substrate cited in Mihashi (i.e., the base material (1)) of the previous and the current actions a paper substrate and not a PET.
The Applicant’s arguments against the Examiner’s obviousness statements towards the presently claimed total density of 1 g/m2 or less after immersion in an aqueous solution, and thus the ability to float on a washing liquid when detached, are not persuasive. First, the Examiner respectfully reminds the Applicant that:
“[T]he discovery of a previously unappreciated property of a prior art composition, or of
a scientific explanation for the prior art’s functioning, does not render the old
composition patentably new to the discoverer.” Atlas Powder Co. v. Ireco Inc., 190 F.3d
1342, 1347, 51 USPQ2d 1943, 1947 (Fed. Cir. 1999). Thus the claiming of a new use,
new function or unknown property which is inherently present in the prior art does not
necessarily make the claim patentable. In re Best, 562 F.2d 1252, 1254, 195 USPQ 430,
433 (CCPA 1977).
Indeed, while Mihashi does not disclose the advantages of a label that floats on a washing liquid towards improved recyclability, Mihashi does teach a label that comprises heat-expandable particles that expand up to 100 times their original volume. One skilled in the art would recognize that an increase in the volume, with no accompanying increase in mass, would result in a decreased density. Thus, given that Mihashi/Antila/Sasaki teach or render obvious a label identical to that presently claimed in structure, composition and properties, it is reasonable to conclude that the skilled artisan would recognize that the label with a density lower than that of the water (i.e., 1 g/m3) would float on the washing material disclosed in Mihashi. It is noted that water vapor would eventually condense into an aqueous state, and there is no definitive claim language stating that the label was immersed in the aqueous solution in before, after, or in tandem with the process of washing.
Stated another way, the Examiner respectfully submits that the routine optimization is directed towards Mihashi’s disclosure of the 1) the degree of expansion of the heat-expandable particles (i.e., degree of porosity/volume increase), and the number or quantity of the heat-expandable particles present in the adhesive layer (i.e., also providing the degree of porosity/volume increase). That is, optimizing the quantities of items 1) and 2) towards a density required of the prior art’s intended application would have been obvious to the skilled artisan, and that a density decrease could further provide said resultant density below that of the washing liquid (i.e., the condense water vapor) of Mihashi. Indeed, the heat-expandable particles of Mihashi serve the same purpose as the presently claimed “additive for adjusting the total density of the label.”
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 FRANK D DUCHENEAUX whose telephone number is (571)270-7053. The examiner can normally be reached 8:30 PM - 5:00 PM.
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/FRANK D DUCHENEAUX/Primary Examiner, Art Unit 1788 1/15/2026
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