DETAILED ACTION
Examiner’s Note
The Examiner acknowledges the cancelation of claims 14-20 and the addition of new claims 22-27 in the amendments filed 1/26/2026.
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 .
Response to Amendment
Applicant’s arguments, see the replacement drawings and the remarks filed 1/26/2026, with respect to the objections to the drawings as set forth in paragraphs 5-6 of the action mailed 10/24/2025, have been fully considered and are persuasive. The objections to the drawings has been withdrawn.
Applicant’s arguments, see the claim amendments and the remarks filed 1/26/2026, with respect to the objection to claim 19 (actually claim 21) as set forth in paragraph 7 of the action mailed 10/24/2025, have been fully considered and are persuasive. The objection to claim 19 (21) has been withdrawn.
Applicant’s arguments, see the remarks filed 1/26/2026, with respect to the rejection of claims 7-8 under 35 U.S.C. 112(a) as set forth in paragraph 9 of the action mailed 10/24/2025, have been fully considered and are persuasive. The rejection of claims 7-8 has been withdrawn.
Applicant’s arguments, see the claim amendments and the remarks filed 1/26/2026, with respect to the rejection of claims 1-10 and 21 under 35 U.S.C. 112(b) as set forth in paragraphs 11-16 of the action mailed 10/24/2025, have been fully considered and are persuasive. The rejection of claims 1-10 and 21 has been withdrawn.
Applicant’s arguments, see the claim amendments and the remarks filed 1/26/2026, with respect to the rejection of claims 11-13 under 35 U.S.C. 112(b) as set forth in paragraphs 17-19 of the action mailed 10/24/2025, have been fully considered and are persuasive. The rejection of claims 11-13 has been withdrawn.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
Claims 23-24 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 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.
Regarding claim 24, the recitation that the base overlaminate film layer “consists essentially of an ionomer” 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 it is recognized that the phrase “consisting essentially of” narrows the scope of the claims to the specified materials and those which do not materially affect the basic and novel characteristics of the claimed invention, there is no indication explicitly or implicitly from the instant specification what is included and excluded from the current claim language. See MPEP 2111.03.
Claim Rejections - 35 USC § 103
Claim(s) 1-3, 6, 9-10, 21-22 and 24 is/are rejected under 35 U.S.C. 103 as being unpatentable over Blackwell et al. (US 2015/0344741 A1) in view of Hu et al. (US 2015/0231862 A1).
Regarding claim(s) 1-2, 9-10, 21 and 24, 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), 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 comprising a first material; 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 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.
However, Blackwell 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 are identical to that presently disclosed for providing the presently claimed transparent base overlaminate film layer and ionomer (current claim 10).
In addition, Blackwell also teaches that the skin layer(s), such as the skin layer (20), comprise polypropylene such as that presently claimed for the recited second material of the removable skin layer (current claim 9), and SURLYN for the skin layer (30) of the core layer (40)/skin layer (30) laminate (ionomer, current claim 10, consists essentially of an ionomer, current claim 24).
Furthermore, Hu teaches multilayered polyolefin films (title) comprising core layer(s) comprising 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 for providing the presently claimed removable skin layer (haze of 50 % or more between unstretched state and 30% stretched state, current claim 21).
The selection of a known material based on its suitability for its intended use supported a
prima facie obviousness determination in Sinclair & Carroll Co. v. Interchemical Corp.,
325 U.S. 327, 65 USPQ 297 (1945) (Claims to a printing ink comprising a solvent having
the vapor pressure characteristics of butyl carbitol so that the ink would not dry at room
temperature but would dry quickly upon heating were held invalid over a reference
teaching a printing ink made with a different solvent that was nonvolatile at room
temperature but highly volatile when heated in view of an article which taught the desired
boiling point and vapor pressure characteristics of a solvent for printing inks and a
catalog teaching the boiling point and vapor pressure characteristics of butyl carbitol.
“Reading a list and selecting a known compound to meet known requirements is no more
ingenious than selecting the last piece to put in the last opening in a jig-saw puzzle.” 325
U.S. at 335, 65 USPQ at 301.).
Blackwell/Hu teaches a label assembly (410) composed of a multilayer film (10) comprising, in order, first skin layer (20), core layer (40), second skin layer (30), and adhesive layer (450), wherein said first skin layer (20) (i.e., removable skin layer) is formed of a material identical to that presently claimed/disclosed and wherein said core layer (40)/second skin layer (30) laminate (i.e., base overlaminate film layer) is formed of a material identical to that presently claimed/disclosed. Thus, it is reasonable to conclude that the label assembly (410) would demonstrate stretchability to 30% elongation with damage to the core layer (40)/second skin layer (30) laminate, and a first skin layer (20) developing haze while the core layer (40)/second skin layer (30) laminate remains transparent (current claim 2).
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 the HA802A polypropylene of Hu as the skin layer (20) of Blackwell towards said skin layer (20) demonstrating, inter alia, the stiffness required of the prior art’s intended application as in the present invention.
Regarding claim 3, Blackwell teaches that the skin layer(s) comprises thicknesses that are thinner or thicker than the core layer, with the multilayer films having thickness that range from 0.5 to 10 mils (i.e., 12.7 to 254 mm) (para 0045, 0050).
Indeed, it would have been obvious to one of ordinary skill in the art before the effective filing date of the present invention to provide skin layer (20) with the presently claimed thickness range (i.e., 10 to 150 mm) based on the thickness of said skin layer (20) (and the overall thickness of the resultant label assembly (410)) required of the prior art’s intended application as in the present invention.
Regarding claim 6, Blackwell teaches that the inventive compositions are extrudable (para 0045, 0048).
Regarding claim 22, the Examiner respectfully notes that the presently claimed invention is directed to a film stack as recited in at least current claim 1, and not to the graphic film of the present claimed.
Indeed, 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/Hu disclose 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) 4-5, 7-8 and 26 is/are rejected under 35 U.S.C. 103 as being unpatentable over Blackwell et al. (US 2015/0344741 A1) in view of Hu et al. (US 2015/0231862 A1) and in further view of Condon et al. (US 2011/0236648 A1).
Regarding claims 4-5, Blackwell/Hu teaches the label assembly (410) as in the rejection of at least current claim 1 set forth above, but is silent to a tie layer between the outer surface of the skin layer (30) of the core layer (40)/second skin layer (30) laminate and the adhesive layer (450); and label assembly (410) further comprising a liner.
However, Condon teaches overlaminate films (title) comprising a base film with a primer surface treatment on one or both surfaces and an adhesive layer (para 0031-0033). Condon also teaches that an adhesive layer includes a release liner to protect from premature adhesion and dirt or other contaminants (para 0042)
Indeed, it would have been obvious to one of ordinary skill in the art before the effective filing date of the present invention to provide a primer coating (i.e., a tie layer) between skin layer (20) and the adhesive layer (450) towards enhancing the adhesion between two said layers, and to further provide adhesive layer (450) with a protective release liner towards protecting said adhesive layer (450) from premature adhesion and dirt or other contaminants as in the present invention.
Regarding claims 7-8, Condon teaches that the base film comprises thermoplastic polymers such as polyolefin, polyvinyl chloride and polyurethane (para 0030-0032).
Regarding claim(s) 26, as noted above, Blackwell/Hu/Condon teaches the adhesive layer (450) disposed on the core layer (40)/skin layer (30), with a tie layer between the outer surface of the skin layer (30) of the core layer (40)/second skin layer (30) laminate and the adhesive layer (450). Thus, Blackwell/Hu/Condon teaches the tie layer disposed on the base overlaminate film layer.
Claim(s) 25 is/are rejected under 35 U.S.C. 103 as being unpatentable over Blackwell et al. (US 2015/0344741 A1) in view of Hu et al. (US 2015/0231862 A1) and in further view of Condon et al. (US 2011/0236648 A1) and Jozuka et al. (WO 2018/199739 A1).
Regarding claim 25, Blackwell/Hu/Condon are silent to the primer surface treatment comprising a polyamide or a copolyamide, but Condon does teach primer layers comprising, inter alia, urethanes, epoxy resins and vinyl acetate resins (para 0031).
In addition, Jozuka teaches a PSA sheet (1) comprising, in order, PSA layer (14), anchor layer (12) and carrier film (10) (para 0022; Fig. 1), which said anchor layer (12) comprises one or more of, inter alia, urethane-based resins, polyvinyl acetate-based resins, epoxy-based resins and polyamide-based resins (para 0033). Further, case law holds that the mere substitution of an equivalent (something equal in value or meaning, as taught by analogous prior art) is not an act of invention; where equivalency is known to the prior art, the substitution of one equivalent for another is not patentable. See In re Ruff 118 USPQ 343 (CCPA 1958).
Indeed, it would have been obvious to one of ordinary skill in the art before the effective filing date of the present invention to provide a primer coating of Blackwell/Hu/Condon with a polyamide, or a polyamide in tandem with the urethanes, epoxy resins or vinyl acetate resins of Condon, and thereby arrive at the presently claimed invention from the disclosures of the cited prior art.
Claim(s) 11-13 and 27 is/are rejected under 35 U.S.C. 103 as being unpatentable over Blackwell et al. (US 2015/0344741 A1) in view of Hu et al. (US 2015/0231862 A1).
Regarding claims 11-13 and 27, Blackwell/Hu teaches the label assembly (410) as in the rejection of claims 1-3, 6, 9-10 and 21-22 as set forth above, which is equally applicable to the presently claimed invention.
Response to Arguments
Applicant’s arguments, see the claim amendments and the remarks filed 1/26/2026, with respect to the rejections of claims 1-3, 6, 9-10 and 21 over Blackwell et al. in view of Hu et al. under 35 U.S.C. 103; claims 4-5 and 7-8 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 claims 11-13 over Blackwell et al. in view of Hu et al. under 35 U.S.C. 103 as set forth in paragraphs 22-24 of the action mailed 10/24/2025, have been fully considered but they are not persuasive.
The Examiner respectfully acknowledges the Applicant’s citation of paragraph 0055 of Blackwell, but also respectfully disagrees with the Applicant’s apparent assertions that the “overlaminate film layer” of Blackwell, used in conjunction with the cited invention of Blackwell employed to teach the presently claimed invention, necessarily negates the prior art’s teaching of the presently claimed invention as set forth in the previous action and above in the current action.
In this respect, given that the cited prior art teaches or renders obvious the presently claimed invention, irrespective of word choice, in regards to the layered structure of the prior arts’ invention, and their respective materials, the Examiner submits that said prior art teaches or render obvious the presently claimed invention. The Examiner does not dispute that the specifically disclosed “overlaminate film layer” of Blackwell is a consideration presented in the reference, but the Examiner further asserts that the other portions of its disclosure, to include the inventive portions cited in the rejection, are also relevant to teaching the presently claimed invention. That is, it is reasonable to interpret that the “overlaminate film layer” of Blackwell is employed with the film stack comprising the layered structure of the instant claims as further taught by Blackwell/Hu.
Turning now to the tie layer presently claimed, the Examiner respectfully acknowledges that the disclosure of Blackwell teaches that “generally” the adhesive layer is in contact with the films of the present subject matter (para 0052). However, Blackwell does not teach against employing an intervening layer towards adjusting the adhesion between the adhesive layer and said films. In addition, the Examiner respectfully submits that it is well established in the art that tie layers (a.k.a., primer layers) are employed to adjust the bonding between adhesive layers and the underlying layers. See, for example, paragraph 0093 of US 2009/0117379 A1 to Toyoshima et al.; paragraph 0027 of US 2003/0091777 A1 to Jones et al.; and paragraph 0012 of US 2002/0132966 A1 to Griffith, Jr. et al.
Indeed, the decision to employ a tie layer between and adhesive layer and an underlying support or substrate, such as the adhesive layer and films of the Blackwell disclosure, would have been an obvious choice based for one of ordinary skill in the art in consideration of the materials comprising the adhesive layer, the materials comprising the substrate or support, and the level of adhesion between the two layers based on the requirements of the prior art’s intended application as in the present invention
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 3/7/2026