DETAILED ACTION
Response to Amendment
Applicant's amendment filed 2/19/2026 is being entered. Currently, claims 1 and 4-9, 11-14 and 16-21 are pending, claims 2, 3, 10 and 15 are cancelled and claims 17-21 are withdrawn.
Please note that there appears to be a change/typo in claim 6 on line 2 that was not shown in underline/strikethrough, i.e. “Sor”. This should be “S or” and in the interest of compact prosecution, the claim will be examined with this in mind.
Claim Rejections - 35 USC § 103
Claims 1, 4-9, 11-13 and 16 are rejected under 35 U.S.C. 103 as being unpatentable over Akimoto (JP 2004-279853), machine translation included, as evidenced by Maruyama et al. (US 4708947).
With regard to claims 1 and 4-6, Akimoto teaches a pressure-sensitive adhesive label for heat-sensitive recoding [0001]. There may be a support of high-quality paper, which will intrinsically be made of chemical pulp, having a heat-sensitive recording layer, which reads on applicants’ temperature sensitive coating for direct thermal printing, on one side comprising a leuco dye, a sensitizer, and a 4,4’-dihydroxydiphenylsulfone developer, which is bisphenol S and means the temperature sensitive coating is free of bisphenol A [0007], [0019], [0021] and example 4 [0024]. The pressure-sensitive adhesive layer is on the back side of the support and is made of an acrylic emulsion, which is a water-based acrylic adhesive [0008] and [0021].
The claimed limitations that it is “for machine readable labelling of food containers” is an intended use limitation that is not dispositive of patentability.
Akimoto also teaches that the adhesive layer was formed at a coat weight of 18 g/m2 [0021]. It is known in the art that coat weight value is approximately the same as thickness in microns; however, they do not specifically teach the thickness claimed.
It would have been obvious to one having ordinary skill in the art to have made the thickness of the adhesive layer any amount, including from 10 to 20 microns, such that there was enough adhesive to stick to the desired substrate while not making it too thick as to waste materials.
With regard to claims 1, 7-9 and 16, given the fact that the materials of the label are identical to the preferred materials used in applicants’ specification and claims, the adhesive label of Akimoto will intrinsically be suitable for flexographic printing with UV curable inks, possess an optical density both from the reverse side and face side of less than 0.1 when subjected to the test conditions claimed, possess the portion of incident light reflected by the face side of less than 0.7 when subjected to the test conditions claimed, the portion of light reflected by the reverse side will be less than the portion reflected by the face side as claimed, the loop tack value, the minimum print contrast after printing, and the CIE whiteness claimed.
With regard to claims 11-13, the examples 1 and 4 have a backcoat, which reads on applicants’ barrier layer, an overcoat layer, which reads on applicants’ coating layer on top, and an intermediate layer, which reads on applicants’ precoating layer [0021]. The backcoat and the overcoat both comprise the polyvinyl alcohol aqueous solution KL-318 of the ‘G liquid’ [0021]. As evidenced by Maruyama et al. (US 4708947), KL-318 is a partially hydrolyzed polyvinyl alcohol (Table 4, col. 17, lines 10-15).
Claim 14 is rejected under 35 U.S.C. 103 as being unpatentable over Akimoto (JP 2004-279853) in view of Young et al. (“Pulp and Paper”, 2003, pg. 249-265).
Akimoto renders obvious all of the limitations of claim 1 above. It is noted again that high-quality paper will be made from chemical pulp; however, they do not specifically teach the lignin content of the high-quality paper.
Young et al. teach that the chemical pulping process to make paper breaks the lignin linkages to form high-strength pulps for papermaking (pg. 253).
Since Akimoto and Young et al. are both drawn to paper supports, it would have been obvious to one having ordinary skill in the art to have fully treated the wood chips with the chemicals needed to remove all lignin from the pulp and thereby form a stronger piece of paper, e.g. a high-quality paper. Removing all of the lignin from the pulp would means that the content of lignin will be less than 0.5 wt% as claimed.
Claims 1, 4-9, 13 and 16 are rejected under 35 U.S.C. 103 as being unpatentable over Oshizaka et al. (JP 2017-177346).
With regard to claims 1 and 4-6, Oshizuka et al. teach a linerless label for thermal recoding [0009]. There may be a support of high-quality paper, which will intrinsically be made of chemical pulp, having a thermosensitive recording layer on one surface, which reads on applicants’ temperature sensitive coating for direct thermal printing, comprising a dye precursor, a sensitizer and a 4-hydroxy-4’-n-propoxydiphenyl sulfone developer, which is means the temperature sensitive coating is free of bisphenol A [0011] and [0044]. They also teach a water-based pressure-sensitive adhesive layer on the other side of the support that is made of an acrylic, which reads on applicants’ water-based acrylic pressure sensitive adhesive [0011] and [0020].
The claimed limitations that it is “for machine readable labelling of food containers” is an intended use limitation that is not dispositive of patentability.
Oshizaka et al. also teach that the developer can include 4,4’-dihydroxydiphenylsulfone, which is bisphenol S [0035]; however, they do not specifically teach the thickness or using bisphenol S in the developer.
It would have been obvious to one having ordinary skill in the art to have made the thickness of the adhesive layer any amount, including from 10 to 20 microns, such that there was enough adhesive to stick to the desired substrate while not making it too thick as to waste materials.
It would also have been obvious to one having ordinary skill to have combined in bisphenol S as a second developer into the composition of Oshizaka et al. The results of such a combination would have been predictable; further, each of the elements would have performed the same in combination as they had separately.
With regard to claims 1, 7-9 and 16, given the fact that the materials of the label are identical to the preferred materials used in applicants’ specification and claims, the adhesive label of Oshizuka et al. will intrinsically be suitable for flexographic printing with UV curable inks, possess an optical density both from the reverse side and face side of less than 0.1 when subjected to the test conditions claimed, possess the portion of incident light reflected by the face side of less than 0.7 when subjected to the test conditions claimed, the portion of light reflected by the reverse side will be less than the portion reflected by the face side as claimed, the loop tack value, the minimum print contrast after printing, and the CIE whiteness claimed.
With regard to claim 13, there may be an undercoat between the support and the heat-sensitive recording layer, which reads on applicants’ precoating [0045].
Claim 14 is rejected under 35 U.S.C. 103 as being unpatentable over Oshizaka et al. (JP 2017-177346) in view of Young et al. (“Pulp and Paper”, 2003, pg. 249-265).
Oshizaka et al. render obvious all of the limitations of claim 1 above. It is noted again that high-quality paper will be made from chemical pulp; however, they do not specifically teach the lignin content of the high-quality paper.
Young et al. teach that the chemical pulping process to make paper breaks the lignin linkages to form high-strength pulps for papermaking (pg. 253).
Since Oshizaka et al. and Young et al. are both drawn to paper supports, it would have been obvious to one having ordinary skill in the art to have fully treated the wood chips with the chemicals needed to remove all lignin from the pulp and thereby form a stronger piece of paper, e.g. a high-quality paper. Removing all of the lignin from the pulp would means that the content of lignin will be less than 0.5 wt% as claimed.
Response to Arguments
Applicant’s arguments, see Remarks, filed 2/19/2026, with respect to the objections to the claim 8 and the previous 112(a) and (d) rejections have been fully considered and are persuasive. The relevant objections/rejections have been withdrawn.
Applicant's arguments filed 2/19/2026 have been fully considered but they are not persuasive.
Applicants argue on page 7 of their Remarks that there is no teaching or suggestion to “perform both flexo printing and a subsequent thermal printing on a peeled label without a release paper”.
The Examiner notes that applicants are arguing limitations that are not claimed. The claims are drawn to a product and not a method of using the product. The product of the prior art has the same structure as the product of the claims as the claims do not exclude a release layer. Given the fact that Akimoto and Oshizaka teach a water-based acrylic PSA and a bisphenol S developer, the Examiner has set forth a proper prima facie case that the label structure and materials of the prior art will intrinsically possess the properties of the claims.
As such, the Examiner has provided “a basis in fact and/or technical reasoning to reasonably support the determination that the allegedly inherent characteristic necessarily flows from the teachings of the applied prior art.” Please see MPEP 2112(IV) and Ex parte Levy, 17 USPQ2d 1461, 1464 (Bd. Pat. App. & Inter. 1990). It has also been held that “[w]hen 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.” Please see MPEP 2112.01(I) and In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990). Applicants have not provided a showing or evidence to overcome the Examiner's prima facie case.
Applicants argue on page 8 of their Remarks that if Akimoto is “inserted into a recording equipment without a release paper, the adhesive will stick and prevent the label from propagating”.
The Examiner respectfully disagrees for multiple reasons. First, applicants are once again arguing the method of using the label when the claims are drawn to a product. The Examiner has rendered obvious the claimed product and applicants have not explained the structural or chemical differences between the prior art product and the claimed invention.
Second, since the label of the prior art has the same structure and materials as the claimed invention, if the prior art label would stick in recording equipment, this means applicants’ product would have the same flaws, which does not make sense. Since the product of the prior art and the product claimed are made from the same materials and have the same structure, the Examiner has set forth a proper prima facie case that the label structure and materials of the prior art will intrinsically possess the properties of the claims.
As such, the Examiner has provided “a basis in fact and/or technical reasoning to reasonably support the determination that the allegedly inherent characteristic necessarily flows from the teachings of the applied prior art.” Please see MPEP 2112(IV) and Ex parte Levy, 17 USPQ2d 1461, 1464 (Bd. Pat. App. & Inter. 1990). It has also been held that “[w]hen 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.” Please see MPEP 2112.01(I) and In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990). Applicants have not provided a showing or evidence to overcome the Examiner's prima facie case.
Applicants argue on page 8 of their Remarks that Oshizaka only teaches a 25 g/m2 coat weight in the examples and this would not teach the adhesive layer thickness claimed.
It has been held that “applicant must look to the whole reference for what it teaches. Applicant cannot merely rely on the examples and argue that the reference did not teach others.” Please see In re Courtright, 377 F.2d 647, 153 USPQ 735,739 (CCPA 1967). Oshizaka et al. do not limit the adhesive layer to only this coat weight and they do not teach away from other coat weights/thickness. The Examiner provided a rationale to make the adhesive layer any thickness, including from 10 to 20 microns as claimed, to have enough adhesive to stick to the desired substrate while not making it too thick as to waste materials. This is a rationale that would be well within the level of ordinary skill in the art, and therefore Applicants’ arguments are unpersuasive.
Applicants argue on page 8 of their Remarks that the functional limitations of their claims “requires a specific structure” and a finding of intrinsic properties by the Examiner requires it to be present necessarily present, which would not be true in the applied prior art.
The Examiner respectfully disagrees and notes that the obviousness rejections above have set forth the same structure as claimed. Specifically, both Akimoto and Oshizaka teach or suggest using bisphenol S in their heat-sensitive recording layers, which is the same preferred developer in applicants’ claims and in the examples Ex_1 and Ex_2 of Table 2. Given the fact that Akimoto and Oshizaka teach a water-based acrylic PSA and a bisphenol S type developer, the Examiner has set forth a proper prima facie case that the label structure and materials of the prior art will intrinsically possess the properties of the claims.
As such, the Examiner has provided “a basis in fact and/or technical reasoning to reasonably support the determination that the allegedly inherent characteristic necessarily flows from the teachings of the applied prior art.” Please see MPEP 2112(IV) and Ex parte Levy, 17 USPQ2d 1461, 1464 (Bd. Pat. App. & Inter. 1990). It has also been held that “[w]hen 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.” Please see MPEP 2112.01(I) and In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990). Applicants have not provided a showing or evidence to overcome the Examiner's prima facie case. Applicants have not explained the differences between the structure of the prior art and the structure of the claims, and therefore the Examiner maintains that the prima facie case is proper.
Applicants argue on pages 8-9 that Akimoto and Oshizaka “do not have flexographic printing capabilities”. They also argue they amended the claims to include limitations that “are considered to be structural” and identical generic chemistry alone does not guarantee the optical density and print contrast properties.
The Examiner respectfully disagrees and notes that the limitations added concerning print contrast and optical density are functional limitations and not structural limitations. These are functional limitations of the label based on tests of its optical density after the exposure conditions claimed and print contrast after UV flexographic printing. These do not differentiate it from the structure of the prior references. Once again, given the fact that Akimoto and Oshizaka teach a water-based acrylic PSA and a bisphenol S type developer, which are the same preferred materials and not generic categories of chemicals, the Examiner has set forth a proper prima facie case that the label structure and materials of the prior art will intrinsically possess the properties of the claims.
As such, the Examiner has provided “a basis in fact and/or technical reasoning to reasonably support the determination that the allegedly inherent characteristic necessarily flows from the teachings of the applied prior art.” Please see MPEP 2112(IV) and Ex parte Levy, 17 USPQ2d 1461, 1464 (Bd. Pat. App. & Inter. 1990). It has also been held that “[w]hen 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.” Please see MPEP 2112.01(I) and In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990). Applicants have not provided a showing or evidence to overcome the Examiner's prima facie case.
Applicants argue that since the 4-hydroxy-4’-allyldiphenyl sulfone of Example 13 of Oshizaka has a reflection density of 0.1 when treated at 90 C for 1 hr, this means Oshizaka would not have the optical density claimed.
The Examiner respectfully disagrees and notes that the optical density test of claim 1 is exposure to 80 C for 2 seconds while the prior art test is at 90 C for 1 hr [0081]. One of ordinary skill would realize that coloring of the thermal recording layer would be higher the longer it is exposed to heat. The claimed test procedure is 99.94% shorter than the time period in the prior art and the temperature exposure of the claimed test procedure is lower than the prior art; hence, if the thermal recording label of Oshizaka was tested in the same manner as claimed, one would expect the optical density to be less than 0.1 as claimed. This means the evidence applicants are pointing to further supports the Examiner position that Oshizaka would intrinsically possess the functional limitations claimed.
Conclusion
THIS ACTION IS MADE FINAL. 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 GERARD T HIGGINS whose telephone number is (571)270-3467. The examiner can normally be reached M-F 9:30-6pm.
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/Gerard Higgins/Primary Examiner, Art Unit 1785