DETAILED ACTION
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 .
In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis for the rejection will not be considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status.
Application Status
This is a first action on the merits following applicant’s response to a restriction/election requirement mailed on 24 September 2025. A preliminary amendment was filed on 13 October 2025 amending claims 5 and 15. Claims 1-22 are pending.
Information Disclosure Statement
The information disclosure statement (IDS) submitted on 21 February 2023 is in compliance with the provisions of 37 CFR 1.97. Accordingly, the information disclosure statement is being considered by the examiner.
Note: Citation #6 under U.S. Patent Application Publications has the incorrect document number, which should be U.S. Pub. 2010/0139707 by Boonstra, et al. The Examiner has corrected this on the attached Form 1449 and considered the reference.
Note further than non-patent literature and foreign patent documents cited in the IDS are of record in the file history of parent application 15/115,402.
Election/Restrictions
Applicant’s election without traverse of the invention of Group I (product claims 1-18) in the reply filed on 13 October 2025 is acknowledged. Claims 19-22 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected invention, there being no allowable generic or linking claim.
Specification
The abstract of the disclosure is objected to because it includes the implied phrase “The present invention relates to…”. Correction is recommended. See MPEP § 608.01(b), guideline (C).
Drawings
The drawings received on 21 February 2023 are acceptable.
Claim Objections
Claims 4 and 18 are objected to because of the following informalities. Appropriate correction is required.
Regarding claim 4, the fourth and sixth lines should each recite “… and copolymers and derivatives thereof...” to be grammatically correct.
Regarding claim 18, the term “PET” should be spelled out as “polyethylene terephthalate”.
Double Patenting
The nonstatutory double patenting rejection is based on a judicially created doctrine grounded in public policy (a policy reflected in the statute) so as to prevent the unjustified or improper timewise extension of the “right to exclude” granted by a patent and to prevent possible harassment by multiple assignees. A nonstatutory obviousness-type double patenting rejection is appropriate where the conflicting claims are not identical, but at least one examined application claim is not patentably distinct from the reference claim(s) because the examined application claim is either anticipated by, or would have been obvious over, the reference claim(s). See, e.g., In re Berg, 140 F.3d 1428, 46 USPQ2d 1226 (Fed. Cir. 1998); In re Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993); In re Longi, 759 F.2d 887, 225 USPQ 645 (Fed. Cir. 1985); In re Van Ornum, 686 F.2d 937, 214 USPQ 761 (CCPA 1982); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); and In re Thorington, 418 F.2d 528, 163 USPQ 644 (CCPA 1969).
A timely filed terminal disclaimer in compliance with 37 CFR 1.321(c) or 1.321(d) may be used to overcome an actual or provisional rejection based on a nonstatutory double patenting ground provided the conflicting application or patent either is shown to be commonly owned with this application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement.
Effective January 1, 1994, a registered attorney or agent of record may sign a terminal disclaimer. A terminal disclaimer signed by the assignee must fully comply with 37 CFR 3.73(b).
Claims 1, 2, 4-10, and 12-18 are rejected on the ground of nonstatutory obviousness-type double patenting as being unpatentable over claims 1-29 of U.S. Patent No. 11,624,005. Although the conflicting claims are not identical, they are not patentably distinct from each other because of the following reasons:
Regarding claim 1, Claim 1 of the ‘005 patent also recites a printed linerless face laminate having the following layers in order:
A release layer comprising a release agent,
A second layer comprising a thermoplastic polymer,
A second adhesive layer,
A first layer comprising a thermoplastic polymer,
A first adhesive layer comprising a pressure-sensitive adhesive,
And a print on one or more printable surfaces between the first and second layers.
Claim 6 further recites that the total thickness of the laminate is in the range of 20-100 microns.
The ‘005 patent recites other limitations in claim 1 which are not required by the present claims, but are also not excluded by the present claims and thus are within the scope of the present claims.
Regarding claim 2, Claim 6 of the ‘005 patent recites that the total thickness of the laminate is in the range of 20-100 microns which overlaps the claimed range.
Regarding claim 4, claim 2 of the ‘005 patent recites these limitations for the first layer and claim 4 recites these limitations for the second layer.
Regarding claim 5, claim 2 of the ‘005 patent recites these limitations for the first layer and claim 4 recites these limitations for the second layer.
Regarding claim 6, claim 1 of the ‘005 patent recites these adhesives.
Regarding claim 7, claim 1 of the ‘005 patent recites this limitation.
Regarding claim 8, claim 1 of the ‘005 patent recites this limitation.
Regarding claim 9, claim 1 of the ‘005 patent recites this limitation.
Regarding claim 10, claims 9 and 10 of the ‘005 patent recite these limitations.
Regarding claim 12, claim 11 of the ‘005 patent recites that the second layer is a biaxially oriented film.
Regarding claim 13, claim 7 of the ‘005 patent recites this density limitation.
Regarding claim 14, claim 8 of the ‘005 patent recites this density limitation.
Regarding claim 15, claim 1 of the ‘005 patent recites a continuous label web with a plurality of labels which are attached to each other by an uncut bridge between the individual labels. Claim 14 further recites that the uncut bridge has a width smaller than the largest width of an individual label along the length of the continuous label web. Claim 15 recites that the bridge is weakened by perforating, thinning, kiss cutting, or partial cutting.
Regarding claims 16-18, claim 20 of the ‘005 patent recites that the label is attached to a plastic bottle exhibiting heat shrinkage during washing. Claim 21 specifies that the bottle is a polyethylene terephthalate bottle exhibiting heat shrinkabe during washing. Claim 19 specifies wash conditions of aqueous alkaline solution at 65 °C.
Claim Rejections - 35 USC § 112
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.
Claims 17-18 are rejected under 35 U.S.C. 112(b) as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor regards as the invention.
Regarding claim 17, the claim refers to “the item” which lacks sufficient antecedent basis in claim 15, upon which claim 17 depends. See MPEP § 2173.05(e). The Examiner suggests that claim 17 should instead depend on claim 16 which does provide antecedent basis for this term.
Claim 18 depends on claim 17 and thus incorporates the above-noted indefinite subject matter.
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 of this title, 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 35 U.S.C. 103 are summarized as follows:
Determining the scope and contents of the prior art.
Ascertaining the differences between the prior art and the claims at issue.
Resolving the level of ordinary skill in the pertinent art.
Considering objective evidence present in the application indicating obviousness or nonobviousness.
This application currently names joint inventors. In considering patentability of the claims the examiner presumes that the subject matter of the various claims was commonly owned as of the effective filing date of the claimed invention(s) absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and effective filing dates of each claim that was not commonly owned as of the effective filing date of the later invention in order for the examiner to consider the applicability of 35 U.S.C. 102(b)(2)(C) for any potential 35 U.S.C. 102(a)(2) prior art against the later invention.
Claims 1-8 and 12 and 15-18 are rejected under 35 U.S.C. 103(a) as being unpatentable over Schneider (U.S. Pub. 2011/0215018) in view of Khatib (U.S. Pat. 5,674,626) and Boonstra (U.S. Pub. 2010/0139707).
Regarding claim 1, Schneider discloses a multilayer label to be applied to a reusable container. FIGS. 3 and 4 show representative labels disposed on curved containers. FIG. 4 contains the following layers in order, see description at p. 4, [0045]:
27 – mono- or bi-axially oriented polymeric film, reading on the claimed second layer
25 – laminating adhesive, reading on the second adhesive layer
11b – printed decorative layer, reading on the print located on printable surfaces between the first and second layer
19b (described as 9b in the description) – biaxially oriented polymeric film, reading on the claimed first layer
13b – pressure-sensitive adhesive layer which is adapted to be detached in a washing liquid at a temperature between about 50 °C and about 95 °C, see p. 1, [0007], reading on the claimed first adhesive layer.
Schneider does not specify a release layer comprising a release agent formed over the second layer (layer 27).
Khatib describes a release composition for printable linerless labels, see title and abstract. The release composition is applied to the opposite side of the substrate as the pressure-sensitive adhesive layer, see abstract and col. 3, lines 44-67. The release coating composition is a polysiloxane material, see id. Khatib teaches a continuous label well and roll having a plurality of individual precut labels attached to each other by a web, see FIGS. 4, 5, and 6 and description at col. 6, lines 24-64.
Schneider and Khatib are analogous because they are similar in structure and function, as each describes linerless pressure-sensitive adhesive layers.
It would have been obvious to one of ordinary skill in the art at the time of the invention to apply a release coating composition to the outermost, opposite side of the multilayer label as the pressure-sensitive adhesive layer as taught in Khatib in order to arrive at the claimed invention. One of ordinary skill in the art would have been motivated to include such a release coating to allow the labels to be unrolled from a roll of labels without the need for a liner web to be torn off and discarded when a label is used. See col. 1, lines 11-28 of Khatib.
Neither Schneider not Khatib specifies the thickness of the laminate to be in the range of 20-100 microns.
However, Boonstra describes a washable pressure-sensitive adhesive laminate which can be removed from a bottle at appropriate conditions, see abstract and p. 1, [0002]. The laminates may be washed completely off of the labeled bottle after exposure to a washing solution of sodium hydroxide in demineralized water having a temperature above 50 °C or above 65 °C, see p. 9, [0113-0116]. Boonstra teaches that the thickness of the pressure-sensitive adhesive laminate is in the range of 35 to 400 microns, most preferably about 50 to 150 microns, see p. 6, [0079]. The thickness is chosen to be suitable for the particular adhesive laminate application, see p. 3, [0039].
This thickness overlaps the claimed thickness of 20-100 microns. As set forth in MPEP § 2144.05, in the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art", a prima facie case of obviousness exists. See 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).
Schneider, Khatib, and Boonstra are analogous because they each disclose laminate printed label materials which are debondable upon exposure to a washing liquid at elevated temperature.
It would have been obvious to have selected a printed linerless laminate with a thickness within the range disclosed in Boonstra as this provides a suitable label thickness for the desired intended use of the label. There is a reasonable expectation of success in the combination as each reference discloses using the label laminates on bottles.
Regarding claim 2, Boonstra teaches that the thickness of the pressure-sensitive adhesive laminate is in the range of 35 to 400 microns, most preferably about 50 to 150 microns, see p. 6, [0079]. This overlaps the claimed range of 20-80 microns.
Regarding claim 3, Boonstra further teaches that the thickness of a facestock layer of the label can be from 10 to 200 microns, preferably from 20 to 100 microns to 30-90 microns. See p. 3, [0039]. It would have been obvious to have formulated each polymeric layer with this thickness to arrive at the claimed printed linerless face laminate.
Regarding claims 4 and 5, Schneider discloses that the biaxially stretched polymeric film layer 9 (shown as layer 19 in FIG. 4) is preferably composed of polyethylene terephthalate (PET), see p. 3, [0032]. Other suitable polymers include polyvinyl chloride, polystyrene, polypropylene, polyethylene, polylactic acid, or cycloolefin copolymers, see p. 2, [0019]. This reads on the materials of the first layer as claimed.
Schneider describes the layer 27 in FIG. 4 as a “further polymeric film layer”, see p. 4, [0045]. Thus, one would look to the disclosure of Schneider for suitable materials for such a layer. Page 2, [0019] and p. 3, [0032] describe suitable materials for the polymeric layer to be polyethylene terephthalate (PET), polyvinyl chloride, polystyrene, polypropylene, polyethylene, polylactic acid, or cycloolefin copolymers. This reads on the materials of the second layer as claimed.
Regarding claim 6, Schneider teaches that the interlayer laminating adhesive is preferably a two-component polyurethane adhesive which is crosslinkable by use of ultraviolet light, see p. 2, [0022]. This reads on the second adhesive layer made from one of the specified materials.
Regarding claim 7, Boonstra notes that one requirement for the washable adhesive laminates is that the label laminate is completely removed from the bottle during the washing process and that the adhesive layer does not de-bond from the facestock layer, see p. 9, [0109-0110]. Thus the art teaches that it is desirable for the adhesion of the second adhesive to not decrease so that the laminate may remain intact while fully debonding from the attached bottle during wash conditions. Note that Boonstra teaches using a washing solution of sodium hydroxide in demineralized water having a temperature above 65 °C, see p. 9, [0113-0116].
Regarding claim 8, Schneider teaches that the pressure-sensitive adhesive layer is adapted to be detached in a washing liquid at a temperature between about 50 °C and about 95 °C, see p. 1, [0007], reading on the claimed first adhesive layer exhibiting a reduction in adhesive force at 65 °C. Although Schneider does not teach an acrylic pressure-sensitive adhesive, Khatib teaches that a coating of pressure-sensitive adhesive is associated with the label, and a particularly desirable pressure-sensitive adhesive is a water-based acrylic adhesive, reading on an acrylic based adhesive as claimed. See col. 3, lines 6-30. A copolymer of 2-ethylhexyl acrylate, acrylic acid, and vinyl acetate is described in the reference, see id.
Regarding claim 12, Schneider teaches that layer 9 is biaxially oriented, see p. 3, [0031].
Regarding claim 15, Khatib teaches a continuous label well and roll having a plurality of individual precut labels attached to each other by a web, see FIGS. 4, 5, and 6 and description at col. 6, lines 24-64. Khatib in FIG. 4 shows a weakened, uncut bridge 37 between individual labels 36. See description at col. 6, lines 24-34 in which die cuts or fine perforations are used to form the line of weakness. This reads on perforating or partial cutting as claimed.
Regarding claims 16-18, Schneider teaches applying the label to beverage bottles, see p. 1, [0007]. Boonstra also teaches applying the label to beverage bottles, see abstract and p. 1, [0002]. While neither reference specifies a plastic or polyethylene terephthalate bottle, the labels of modified Schneider are capable of being applied to such shrinkable plastic bottles as claimed.
Claims 9, 10, 11, and 13 are rejected under 35 U.S.C. 103 as being unpatentable over Schneider (U.S. Pub. 2011/0215018) and Khatib (U.S. Pat. 5,674,626) and Boonstra (U.S. Pub. 2010/0139707) in further view of Patel (U.S. Pub. 2009/0220757, now U.S. Pat. 8,541,077). The rejection of claim 109 is in alternative to the above rejection of this claim over Schneider, Khatib, and Boonstra alone.
Claims 9, 10, and 11, Schneider and Khatib and Boonstra are relied upon as described above to disclose a laminate meeting the limitations of claim 1. Schneider does not specify all of the machine direction and biaxially orientations for the first and second film layers as specified in the claims.
Patel describes oriented multi-layer shrink labels. The films are uniaxially oriented or biaxially oriented with preferential orientation in either the machine or the cross direction, see p. 1, [0001] and p. 3, [0040]. Patel does not require annealing of the uniaxially oriented films. This allows for the use of a machine direction oriented film for either or both polymeric films of a laminate (reading on claims 109 and 110), or the use of a machine direction oriented film and a biaxially oriented film which has preferential orientation for the polymeric films of the laminate (reading on claim 111).
Schneider, Khatib, Boonstra, and Patel are analogous because they each disclose laminate printed label materials.
It would have been obvious to one of ordinary skill in the art at the time of the invention to employ a shrinkable monoaxially machine direction oriented layer and cross direction oriented layer in the laminate as taught in Patel to arrive at the desired shrinkage condition in the machine and cross directions, see p. 4, [0053].
Regarding claim 13, Schneider, Khatib, and Boonstra do not specify the density of the overall laminate.
However, Patel describes oriented multi-layer shrink labels. The films are uniaxially oriented or biaxially oriented with preferential orientation in either the machine or the cross direction, see p. 1, [0001] and p. 3, [0040]. Patel teaches that the overall film has a density of less than 1.0 g/cm3, and preferably less than 0.98 g/cm3. See p. 3, [0039].
Schneider, Khatib, Boonstra, and Patel are analogous because they each disclose laminate printed label materials.
It would have been obvious to develop a label with a density of less than 1.0 g/cm3 as Patel teaches that densities less than 1.0 g/cm3 allow for floatation separation techniques during recycling operations, see p. 1, [0009].
Claim 14 is rejected under 35 U.S.C. 103 as being unpatentable over Schneider (U.S. Pub. 2011/0215018) and Khatib (U.S. Pat. 5,674,626) and Boonstra (U.S. Pub. 2010/0139707) in further view of Mitchell (WO 2012/136895 A1).
Regarding claim 14, Schneider, Khatib, and Boonstra are relied upon as described above to disclose a laminate meeting the limitations of claim 1. Schneider does not specify the density of the overall laminate.
Mitchell describes plastic, removable labels, see abstract and p. 1, lines 6-7. The facestock of the label may be a laminated, multilayer structure, see p. 5, line 11 to p. 6, line 3. Mitchell teaches that when recycling of the label in a wash process, the label will most likely sink due to its specific gravity being greater than 1. See p. 8, lines 4-13. Thus the density of the overall label is greater than 1.0 g/cm3. Note that the specific gravity of a liquid is measured relative to the density of water (1.0 g/cm3).
Schneider, Khatib, Boonstra, and Mitchell are analogous because they each disclose laminate printed label materials.
It would have been obvious to one of ordinary skill in the art at the time of the invention to form a label having a density higher than 1.0 g/cm3 to allow for separation of the label from a washing liquid during a recycling process in which the label is removed from its adherend.
Conclusion
All claims are rejected.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Scott R. Walshon whose telephone number is (571)270-5592. The examiner can normally be reached Mon-Fri from 9am - 6pm.
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/Scott R. Walshon/ Primary Examiner, Art Unit 1759