DETAILED ACTION
Pending Claims
Claims 18-34 are pending.
Priority
Receipt is acknowledged of certified copies of papers required by 37 CFR 1.55.
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 .
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.
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, 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.
Claims 18-34 are rejected under 35 U.S.C. 103 as being unpatentable over {Fukuda et al. (JP 2010-180290 A) and Kuraray Co., Ltd. (Kuraray Polyols Brochure)} in view of Hansen et al. (US Pat. No. 6,642,304).
Note: the Kuraray Polyols Brochure is used to show characteristics of the commercial products used in the exemplary embodiments of Fukuda et al.
Regarding claims 18, 23-28, and 30-32, Fukuda et al. (in view of Kuraray Co., Ltd.) disclose: (18) an adhesive label (Abstract; paragraphs 0087-0092) comprising a backing material having a first side and a second side (paragraphs 0089-0090), a pressure-sensitive adhesive layer attached to the first side of the backing material (paragraphs 0091-0092) and either a release liner attached to the adhesive layer (paragraph 0098), or a release coating on the second side of the backing material (optional component not required),
wherein the pressure-sensitive adhesive layer is made from an aqueous polyurethane dispersion pressure-sensitive adhesive (Abstract; paragraph 0091: see “liquid medium such as water), where at least 60% by weight of the polyurethane (paragraphs 0028 & 0064) is composed of:
(a) at least one diisocyanate (Examples 1, 2, 7, 11, 13, 14, 19 & 23 in Table 1: see “TDI”; see also paragraphs 0029-0034),
(b) at least one polyesterdiol (Examples 1, 2, 7, 11, 13, 14, 19 & 23 in Table 1: see “Kuraray P-6010 & P-4010”; see also paragraphs 0035-0042 and Kuraray Brochure), and
(c) at least one bifunctional carboxylic acid selected from dihydroxy carboxylic acids and diamino carboxylic acids (Examples 1, 2, 7, 11, 13, 14, 19 & 23 in Table 1: see “DMBA & DMPA – dimethylolbutanoic acid & dimethylolpropionic acid”; see also paragraphs 0049-0055);
(23) wherein the polyesterdiol is either made of at least one diacid and at least one branched diol or wherein the polyesterdiol is liquid at 20°C (Examples 1, 2, 7, 11, 13, 14, 19 & 23 in Table 1: see “Kuraray P-6010 & P-4010”; see also “MPD adipates” in product chart on page 9 of the Kuraray Brochure);
(24) wherein the ratio of isocyanate groups to groups reactive with isocyanates is at least 1 when making the polyurethane (paragraph 0063: see “1”; paragraph 0067);
(25) wherein at least 60% by weight of the polyurethane is composed of
(a) at least one aliphatic diisocyanate (Examples 13, 14, 19 & 23 in Table 1: see “TDI”; see also paragraphs 0029-0034),
(b) at least one aliphatic polyesterdiol (Examples 13, 14, 19 & 23 in Table 1: see “Kuraray P-6010 & P-4010”; see also paragraphs 0035-0042 and Kuraray Brochure),
(c) at least one bifunctional carboxylic acid selected from dihydroxycarboxylic acids and diaminocarboxylic acids (Examples 13, 14, 19 & 23 in Table 1: see “DMBA & DMPA – dimethylolbutanoic acid & dimethylolpropionic acid”; see also paragraphs 0049-0055), and
(d) at least one polyfunctional compound which differs from the monomers (a) to (c) and which has at least two reactive groups selected from primary and secondary amino groups (Examples 13, 14, 19 & 23 in Table 1: see “EDA, HMDA & TDA”; see also paragraphs 0064-0065);
(26) wherein at least 80% by weight of the polyurethane is composed of at least one aliphatic polyesterdiol (b) (Examples 11 & 23 in Table 1);
(27) wherein at least 80% by weight of the at least one polyesterdiol (b) is composed of at least one aliphatic dicarboxylic acid and of at least one aliphatic diol (Examples 11 & 23 in Table 1; see “Kuraray P-4010”; see also “MPD adipates” in product chart on page 9 of the Kuraray Brochure);
(28) wherein the polyesterdiol is made of at least 10 mol% based on the sum of diols used for making the polyesterdiol of branched aliphatic diols (Examples 1, 2, 7, 11, 13, 14, 19 & 23 in Table 1: see “Kuraray P-6010 & P-4010”; see also “MPD adipates” in product chart on page 9 of the Kuraray Brochure);
(30) wherein the polyurethane is made of at least 80 wt.% of polyesterols, based on the total weight of the polyurethane, less than 20 wt.% isocyanate compounds, based on the total weight of the polyurethane and comprises less than 100 mmol/kg of urea groups (Example 11 in Table 1); and
(31) wherein the polyurethane dispersion adhesive comprises at least one external crosslinking agent selected from the group consisting of isocyanurates formed from diisocyanates and having at least two isocyanate groups, compounds having at least one carbodiimide group, chemically capped isocyanates, encapsulated isocyanates, encapsulated uretdiones, biurets, allophanates, aziridines, oxazolines, epoxides, and mixtures thereof (paragraphs 0074-0082).
Fukuda et al. fail to explicitly disclose: (18) wherein the polyurethane has a glass transition temperature below 20°C. However, the skilled artisan would have expected the exemplary polyurethanes of Fukuda et al. to satisfy this property because they satisfy all of the material/chemical limitations of the instantly claimed polyurethane. At the very least, the skilled artisan would have expected the teachings of Fukuda et al. to obviously embrace embodiments capable of satisfying this property because the teachings of Fukuda et al. satisfy all of the material/chemical limitations of the instantly claimed polyurethane.
Fukuda et al. fail to explicitly disclose: (18) wherein the polyurethane either has no melting point above 20°C or wherein the polyurethane has a melting point above 20 °C with an enthalpy of fusion lower than 10 J/g. However, the skilled artisan would have expected the exemplary polyurethanes of Fukuda et al. to satisfy this property because they satisfy all of the material/chemical limitations of the instantly claimed polyurethane. At the very least, the skilled artisan would have expected the teachings of Fukuda et al. to obviously embrace embodiments capable of satisfying this property because the teachings of Fukuda et al. satisfy all of the material/chemical limitations of the instantly claimed polyurethane.
Fukuda et al. contemplate a number of sheet-like substrates for their laminate structure, including various resin films (see paragraphs 0089-0090). They fail to explicitly disclose: (18) wherein the backing material is made of paper or home compostable polymer film; and (32) wherein the backing material is home compostable and selected from paper, polylactic acid, lignin, starch, cellulose materials, polyglycolic acid, polyhydroxyalkanoates, polypropylene carbonate, aliphatic polyesters, aliphatic-aromatic copolyesters and mixtures thereof.
Hansen et al. also disclose the use of polyurethane-based adhesives as pressure-sensitive adhesives (see Abstract; column 15, lines 16-28). They demonstrate that paper, in addition to the polymer films of Fukuda et al., are recognized in the art as equally suitable substrates for this type of polyurethane-PSA laminate structure (see column 15, lines 29-38). In light of this, it has been found that substituting equivalents known for the same purpose is prima facie obvious – see MPEP 2144.06.
Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to prepare the laminate structure of Fukuda et al. with the instantly claimed backing material because: (a) Fukuda et al. contemplate a number of sheet-like substrates for their laminate structure, including various resin films; (b) Hansen et al. also disclose the use of polyurethane-based adhesives as pressure-sensitive adhesives and demonstrate that paper, in addition to the polymer films of Fukuda et al., are recognized in the art as equally suitable substrates for this type of polyurethane-PSA laminate; and (c) it has been found that substituting equivalents known for the same purpose is prima facie obvious.
Regarding claim 19, the combined teachings of {Fukuda et al., Kuraray Co., Ltd. & Hansen et al.} are as set forth above and incorporated herein. Fukuda et al. fail to explicitly disclose: (19) wherein a film of the polyurethane adhesive decomposes at home compost conditions to more than 90% by weight into CO2 and water within 360 days. However, the skilled artisan would have expected the exemplary polyurethanes of Fukuda et al. to satisfy this property because they satisfy all of the material/chemical limitations of the instantly claimed polyurethane. At the very least, the skilled artisan would have expected the teachings of Fukuda et al. to obviously embrace embodiments capable of satisfying this property because the teachings of Fukuda et al. satisfy all of the material/chemical limitations of the instantly claimed polyurethane.
Regarding claim 20, the combined teachings of {Fukuda et al., Kuraray Co., Ltd. & Hansen et al.} are as set forth above and incorporated herein. Fukuda et al. disclose the use of a release liner (see paragraph 0098). They fail to explicitly disclose: (20) wherein the surface energy of the release liner or the surface energy of the release coating is less than 30 mN/m; and the release liner is siliconized paper.
As discussed above, Hansen et al. also disclose the use of polyurethane-based adhesives as pressure-sensitive adhesives (see Abstract; column 15, lines 16-28). They demonstrate that siliconized liners are recognized in the art as suitable release liners for this type of polyurethane-PSA laminate structure (see column 15, lines 29-38). In light of this, it has been found that the selection of a known material based on its suitability for its intended use supports a prima facie obviousness determination – see MPEP 2144.07.
Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to provide the instantly claimed release liner in the laminate structure resulting from the combined teachings of {Fukuda et al., Kuraray Co., Ltd. & Hansen et al.} because: (a) Fukuda et al. disclose the use of a release liner; (b) Hansen et al. also disclose the use of polyurethane-based adhesives as pressure-sensitive adhesives and demonstrate that siliconized liners are recognized in the art as suitable release liners for this type of polyurethane-PSA laminate structure; and (c) it has been found that the selection of a known material based on its suitability for its intended use supports a prima facie obviousness determination.
Regarding claims 21 and 22, the combined teachings of {Fukuda et al., Kuraray Co., Ltd. & Hansen et al.} are as set forth above and incorporated herein. They fail to disclose: (21) wherein the loop tack measured as described in the examples is at least 3 N/25 mm; and (22) wherein the 900 peel adhesion measured after 24 hours contact time as described in the examples is at least 3 N/25 mm. However, the skilled artisan would have expected the laminate structure resulting from the combined teachings of {Fukuda et al., Kuraray Co., Ltd. & Hansen et al.} to obviously embrace embodiments capable of satisfying these properties because the laminate structure resulting from the combined teachings of {Fukuda et al., Kuraray Co., Ltd. & Hansen et al.} obviously satisfies all of the material/chemical and structural limitations of the instantly claimed label.
Regarding claim 29, the combined teachings of {Fukuda et al., Kuraray Co., Ltd. & Hansen et al.} are as set forth above and incorporated herein. Fukuda et al. disclose: (29) wherein the polyurethane is composed of
(a) at least one diisocyanate (Examples 2, 11, 14 & 23 in Table 1: see “TDI”; see also paragraphs 0029-0034),
(b) at least one diol, where, of these, b1) from 10 to 100 mol%, based on the total amount of the diols (b), are polyesterdiols with a molar mass of from 500 to 5000 g/mol (Examples 2, 11, 14 & 23 in Table 1: see “Kuraray P-4010”; see also “MPD adipates” in product chart on page 9 of the Kuraray Brochure), b2) from 0 to 90 mol%, based on the total amount of the diols (b), have a molar mass of from 60 to 500 g/mol (optional component not required),
(c) at least one bifunctional carboxylic acid selected from dihydroxycarboxylic acids and diaminocarboxylic acids (Examples 2, 11, 14 & 23 in Table 1: see “DMBA & DMPA – dimethylolbutanoic acid & dimethylolpropionic acid”; see also paragraphs 0049-0055),
(d) optionally other polyfunctional compounds which differ from the monomers (a) to (c) and which have reactive groups, where these are alcoholic hydroxy groups, primary or secondary amino groups, or isocyanate groups (optional component not required; see also Examples 14 & 23 in Table 1: see “EDA, HMDA & TDA” and paragraphs 0064-0064), and
(e) optionally monofunctional compounds which differ from the monomers (a) to (d) and which have a reactive group which is an alcoholic hydroxy group, a primary or secondary amino group, or an isocyanate group (optional component not required; see also “combination” in paragraph 0065).
They fail to explicitly disclose: (29) wherein the polyurethane comprises bio-based materials. However, it is important to note that this is a product-by-process limitation (see pages 14-15 of the instant specification – see also paragraph 0084 of the pre-publication). In light of this, it has been found that, “[E]ven though product-by-process claims are limited by and defined by the process, determination of patentability is based on the product itself. The patentability of a product does not depend on its method of production. If the product in the product-by-process claim is the same as or obvious from a product of the prior art, the claim is unpatentable even though the prior product was made by a different process,” – In re Thorpe, 777 F.2d 695, 698, 227 USPQ 964, 966 (Fed. Cir. 1985) (see MPEP 2113). In the instant case, the starting materials in the product-by-process claim appear to be the same as or obvious from the starting materials of the prior art, regardless of how they are sourced.
Regarding claims 33 and 34, the combined teachings of {Fukuda et al., Kuraray Co., Ltd. & Hansen et al.} are as set forth above and incorporated herein to obviously satisfy claims (33 & 34).
Communication
Any inquiry concerning this communication or earlier communications from the examiner should be directed to MICHAEL J FEELY whose telephone number is (571)272-1086. The examiner can normally be reached Monday-Friday 8am-5pm.
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/MICHAEL J FEELY/Primary Examiner, Art Unit 1766
April 4, 2026