DETAILED ACTION
Examiner’s Note
The Examiner acknowledges the cancelation of claim 13 and the addition of new claim 28 in the amendments filed 6/11/2026.
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 .
Continued Examination Under 37 CFR 1.114
A request for continued examination under 37 CFR 1.114, including the fee set forth in 37 CFR 1.17(e), was filed in this application after final rejection. Since this application is eligible for continued examination under 37 CFR 1.114, and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114. Applicant's submission filed on 6/11/2026 has been entered.
Response to Amendment
Applicant’s arguments, see the claim limitations and the remarks filed 6/11/2026, with respect to the rejection of claim 24 under 35 U.S.C. 112(a) as set forth in paragraph 9 of the action mailed 3/11/2026, have been fully considered and are persuasive. The rejection of claim 24 has been withdrawn.
Applicant’s arguments, see the claim limitations and the remarks filed 6/11/2026, with respect to the rejections of claims 1-3, 6, 9-10, 21-22 and 24 over Blackwell et al. in view of Hu et al. under 35 U.S.C. 103; claims 4-5, 7-8 and 26 over Blackwell et al. in view of Hu et al. and in further view of Condon et al. under 35 U.S.C. 103; and claim 25 over Blackwell et al. in view of Hu et al. and in further view of Condon et al. and Jozuka et al. under 35 U.S.C. 103 as set forth in paragraphs 10-12 of the action mailed 3/11/2026, have been fully considered and are persuasive. The rejections of claims 1-10, 21-22 and 24-26 has been withdrawn.
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 § 112
Claim 23 is 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 claim 23, the recitation that the film stack is “free of a print or image” clearly signifies a “negative” or “exclusionary” limitation for which the applicants have no support in the original disclosure. Negative limitations in a claim which do not appear in the specification as filed introduce new concepts and violate the description requirement of 35 USC 112, first paragraph, Ex Parte Grasselli, Suresh, and Miller, 231 USPQ 393, 394 (Bd. Pat. App. and Inter. 1983); 783 F. 2d 453.
While the present specification is silent with respect to the film stack comprising images or print(ing), is noted that as stated in MPEP 2173.05(i), the “mere absence of a positive recitation is not the basis for an exclusion.” The Examiner acknowledges the Applicant’s citation of the specification allegedly providing support for the limitations of current claim 23, but there is no persuasive evidence contained therein supporting said claim 23 limitations. The new matter should be deleted.
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.
(a)(2) the claimed invention was described in a patent issued under section 151, or in an application for patent published or deemed published under section 122(b), in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention.
Claim(s) 11-12 and 27 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Blackwell et al. (US 2015/0344741 A1), and in light of the evidence provided by the SURLYN 1802 data sheet.
Regarding claim(s) 11-12, Blackwell teaches a label assembly (410) (film stack) comprising a multilayer film (10) (or multilayer films (110), (210) or (310)) comprising, in order, first skin layer (20), core layer (40) and second skin layer (30) (para 0057, 0061; Figs. 1 and 5). The Examiner notes that the core layer (40) teaches a base overlaminate film layer, and that the skin layer (20) (or skin layer (30)) is disposed on a major surface of core layer (40).
Blackwell also teaches that the core layer comprises a first polymeric material comprising polyethylene copolymer(s) (para 0026) such as, inter alia, ethylene copolymerized with carboxyl groups and a metal ion (i.e., SURLYN) (para 0029), which is identical to that presently disclosed for providing the presently claimed base overlaminate film layer with irreversible damage due to stretching.
In addition, Blackwell also teaches that the skin layer(s) comprise ionomer resins available from DuPont under the designation of SURLYN (para 0036-0037) such as SURLYN 1802 (para 0064, Table 1), which is an ionomer of ethylene acid copolymer; and thus identical to ionomers of ethylene acid copolymers given by the SURLYN 1705, 1706 and 1707 of presently disclosed outer layer (i.e., the removable skin layer) demonstrating a visible indication when stretched of a sudden increase of least a 50% increase in haze.
Regarding claim 27, given that Blackwell further teaches an adhesive layer (450) disposed on at least one of skin layers (20, 30) (para 0057, 0061; Figs. 1 and 5), the recitation in the claims that the film stack is “disposed onto a graphic film” is merely an intended use. Applicants attention is drawn to MPEP 2111.02 which states that intended use statements must be evaluated to determine whether the 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 intended use recited in the present claims does not result in a structural difference between the presently claimed invention and the prior art and further that the prior art structure is capable of performing the intended use. Given that Blackwell discloses a film stack as presently claimed, it is clear that the film stack of the cited prior art would be capable of performing the intended use presently claimed as required in the above cited portion of the MPEP.
Claim(s) 11-12 and 27 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Hu et al. (US 2015/0231862 A1).
Regarding claim(s) 11-12, Hu teaches a multilayered film (100) (film stack) comprising, in order, outer layer (102), tie layer (104), core layer (106), tie layer (108) and outer layer (110) (para 0015, Fig. 1); which said outer layer (102)/tie layer (104) (or said outer layer (110)/tie layer (108)) teaches a base overlaminate film layer, and which said core layer (106) disposed on a surface of said outer layer (102)/tie layer (104) (or said outer layer (110)/tie layer (108)) teaches a removable skin layer disposed on a major surface of the base overlaminate film layer.
Hu also teaches that the core layer (106) comprises polypropylene towards, inter alia, improved stiffness (para 0014), which said polypropylene is selected from, inter alia, HA802A (para 0079, Table 1, and Table 6), which is identical to that presently disclosed (see inventive Example 5) for providing the presently claimed removable skin layer a visible indication when stretched comprising a sudden increase in haze of at least 50%.
Regarding claim 27, the recitation in the claims that the film stack is “disposed onto a graphic film” is merely an intended use. Applicants attention is drawn to MPEP 2111.02 which states that intended use statements must be evaluated to determine whether the 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 intended use recited in the present claims does not result in a structural difference between the presently claimed invention and the prior art and further that the prior art structure is capable of performing the intended use. Given that Hu discloses a film stack as presently claimed, it is clear that the film stack of the cited prior art would be capable of performing the intended use presently claimed as required in the above cited portion of the MPEP.
Allowable Subject Matter
Claims 1-10, 21-22, 24-26 and 28 are allowed over the prior art.
The following is a statement of reasons for the indication of allowable subject matter:
The closest prior art is:
US 2015/0344741 A1 to Blackwell et al. teaches a label assembly (410) (film stack) comprising a multilayer film (10) (or multilayer films (110), (210) or (310)) comprising, in order, first skin layer (20), core layer (40) and second skin layer (30), and an adhesive layer (450) disposed on at least one of skin layers (20, 30) (para 0057, 0061; Figs. 1 and 5). The Examiner notes that the core layer (40)/skin layer (30) laminate teaches a base overlaminate film layer; the skin layer (20) teaches a removable skin layer comprising a second material and disposed on the first major surface of core layer (40); and adhesive layer (450) teaches an adhesive disclosed on the second major surface of the base overlaminate film layer.
Blackwell also teaches that the core layer (40) comprises a first polymeric material (first material) comprising polyethylene copolymer(s) (para 0026) such as, inter alia, ethylene copolymerized with carboxyl groups and a metal ion (i.e., SURLYN) (para 0029), which is identical to that presently disclosed for providing the presently claimed transparent base overlaminate film layer. Blackwell further teaches that the skin layer(s), such as the skin layer (20), comprise polypropylene (second material).
Blackwell is silent to the label assembly (410) stretchable to 30% elongation without causing damage to the core layer (40)/skin layer (30) laminate; and to the skin layer (20) being more rigid than the core layer (40)/skin layer (30) laminate.
Response to Arguments
Applicant’s arguments, see the claim amendments and the remarks filed 6/11/2026, with respect to the rejection of claim 23 under 35 U.S.C. 112(a) as set forth in paragraph 9 of the action mailed 3/11/2026, have been fully considered but they are not persuasive.
The Examiner acknowledges the portions of the specification cited in support of the Applicant’s arguments against the disputed rejection, to include the disclosure that the invention is employed to protect graphics (e.g., the ink). However, there is no disclosure, specific or implied, that designates the invention as being free of an image(s) or printed material, nor does it positively instruct, or suggest to, the skilled artisan that image(s) or printed material are excluded and/or unnecessary to accomplish the claimed invention. Thus, the rejection is maintained and repeated above.
Applicant’s arguments, see the claim amendments and the remarks filed 6/11/2026, with respect to the rejection of claims 11-13 and 27 over Blackwell et al. in view of Hu et al. under 35 U.S.C. 103 as set forth in paragraph 13 of the action mailed 3/11/2026, have been fully considered but they are not persuasive.
The Examiner respectfully disagrees with the Applicant’s assertions against the prior art’s “removability” taught by the skin layer (20) of Blackwell given that, 1) there is nothing in Blackwell that prohibits the skin layer (20) from being removable; and 2) there is nothing recited in the claim language that requires any quantitative requirement in order to determine what is, and what is not, required of the prior art in order to be considered removable. For example, there are no peel adhesion values recited between the removable skin layer and the base overlaminate film layer. Also, and contrary to the Applicant’s position, Blackwell does not describe the layers on the inventive multilayer film (100) as being “integral.”
The Examiner respectfully acknowledges that neither Blackwell nor Hu disclose stretching their respective laminates while observing the development of “differential haze” between the layers, the Examiner also respectfully notes that there is no “differential haze” requirement between the layers of the presently claimed film stacks. Also, as noted above, the rejection of claim 1 and its dependent claims has been withdrawn, and thus the prior art need not teach the 30% elongation properties. Further, the Applicant is respectfully reminded 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).
In In re Crish, 393 F.3d 1253, 1258, 73 USPQ2d 1364, 1368 (Fed. Cir. 2004), the court
held that the claimed promoter sequence obtained by sequencing a prior art plasmid that
was not previously sequenced was anticipated by the prior art plasmid which necessarily
possessed the same DNA sequence as the claimed oligonucleotides. The court stated that
“just as the discovery of properties of a known material does not make it novel, the
identification and characterization of a prior art material also does not make it novel.” Id.
(See also MPEP § 2112.01 and MPEP § 2141.02).
Also, there is no requirement that a person of ordinary skill in the art would have
recognized the inherent disclosure at the time of invention, but only that the subject
matter is in fact inherent in the prior art reference. Schering Corp. v. Geneva Pharm. Inc.,
339 F.3d 1373, 1377, 67 USPQ2d 1664, 1668 (Fed. Cir. 2003) (rejecting the contention
that inherent anticipation requires recognition by a person of ordinary skill in the art
before the critical date and allowing expert testimony with respect to post-critical date
clinical trials to show inherency).
Indeed, as noted above in the current rejections of claims 11-12 and 27 over Blackwell and Hu, each of these disclosed inventions teach layer(s) comprising the presently claimed/disclosed materials providing the visible indication of an increase of at least 50 % haze when subjected to stretching as required by claims 11-12.
Turning now exclusively to Hu, the Examiner submits that there is no recited orientation of the claimed base overlaminate film layer and the removable layer disposed thereon, and thus there is no requirement that a “core layer” recited in the prior art does not teach a “skin layer” or vice versa. In addition, the HA802A material comprising the core layer of Hu is identical to that employed as one of the two external layers in Example 4 of the inventive examples presently disclosed. There is no indication presently claimed of any thicknesses or processing conditions of the removable skin layer that would distinguish from Blackwell, and no indication that the materials of the recited removable skin layer comprise anything other than the above-noted HA802A material of inventive Example 4. Lastly, Hu need not teach transparency for any of the disclosed layers as current claim 11 does not require it.
Conclusion
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 9/23/2026
