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 .
Response to Amendment
This office action is in response to the Amendment and Remarks/Arguments filed December 3, 2025 wherein claim 1 was amended and claim 21 added. Claims 1-21 are pending and considered below.
In view of the amendment to claim 1, the previous Section 112 rejection is withdrawn as moot.
Claim Rejections - 35 USC § 103
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 (i.e., changing from AIA to pre-AIA ) 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.
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.
The factual inquiries for establishing a background for determining obviousness under 35 U.S.C. 103 are summarized as follows:
1. Determining the scope and contents of the prior art.
2. Ascertaining the differences between the prior art and the claims at issue.
3. Resolving the level of ordinary skill in the pertinent art.
4. 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 1-5, 7-12, 14-17 and 19-21 are rejected under 35 U.S.C. 103 as being unpatentable over Toyo Boseki, JPH11333952 (hereafter Toyo), in view of Lee et al., US 2006/0178442 (hereafter Lee) and Mitsubishi Plastics Ind., JP2007090876 (hereafter Mitsubishi).
Regarding claim 1, Toyo teaches a method of removing ink from labels during a polyethylene terephthalate (PET) bottle recycling process (Abstract and para [0001]). See also para [0007] that describes the method of Toyo as "for recycling labels and bottles from which the ink has been removed")). The method of Toyo includes "producing a resin film" that includes
preparing at least one of a film label having an ink layer and a resin layer, and a resin bottle to which the film label is attached as a starting material (at paras [0035]-[0049], Toyo teaches a method of preparing a film label having an ink layer and a resin layer, the label resin layer is described as a thermoplastic film that is attached to the body of a PET bottle (para [0035]); Toyo teaches a preference for heat-shrinkable polyester film, but also teaches the film may be, for example, polyethylene, polypropylene or polystyrene based films (para [0036]); Toyo includes an example of using styrene-butadiene copolymer heat-shrinkable film at para [0055]; Toyo teaches providing an ink layer on the label (para [0048]); Toyo teaches attaching the label to a bottle in a conventional manner so as to surround at least a body portion of the bottle (para [0051]); Toyo teaches preparation of labeled bottles prior to recycling that includes a step of washing (para [0051])); and
recovering a thermoplastic resin having a specific gravity of less than 1 from the starting material (Toro teaches "the material for the label to be attached to the body of the PET bottle is a polyolefin film, which is easily separated by specific gravity in liquid when crushed" (para [0035]), understood to teach that such thermoplastic resin material separated from the PET bottle material must have a specific gravity of less than one); see para [0005] of Toyo that teaches it is known that labels made from polymers with lower specific gravity than PET, such as polystyrene, polyethylene and polypropylene are easier to separate (i.e., recover) by specific gravity).
A recovery process according to Toyo includes:
cutting the starting material or the resin layer into pieces (Toyo teaches label cut into 1 cm squares at para [0009]) and
separating the ink layer from the film label or pieces of the film label to obtain the resin layer or pieces of the resin layer from which the ink layer has been removed (Toyo teaches putting sample label pieces in alkaline hot water (NaOH solution) for removing ink at paras [0008]- [0009]).
Regarding the recitation of "subjecting the starting material, the resin layer, or the pieces thereof to specific gravity separation, and recovering the starting material, the resin layer, or the pieces thereof having a specific gravity of less than 1," although the example taught in Toyo uses a polyester resin label material that does not require gravity separation (para [0035]), as discussed above, Toyo teaches the resin layer of a label of Toyo may be polyolefin films, such as polyethylene and polypropylene or polystyrene-based non-foamed and foamed films (para [0035]), all of which are known to have a specific gravity of less than 1 and thus float in water. This teaching coupled with the Toyo teaching that such polymers are easy to separate by specific gravity (para [0005]) and the Toyo teaching that "Preferably, the material for the label to be attached to the body of the PET bottle is a polyolefin film, which is easily separated by specific gravity in liquid when crushed" (para [0035]) is understood to suggest that when the label pieces of Toyo are made with such a polyolefin film having specific gravity of less than 1, that after ink is removed from the cut bottle/label pieces according to Toyo, a next step would necessarily be subjecting the bottle/label pieces to a specific gravity separation. In other words, it would have been obvious to one of ordinary skill in the art at the time of filing the claims of the invention to modify the method of Toyo to include such a specific gravity separation step when the label includes a polyolefin film as a predictable, suitable process step for separating the resin layer from the bottle layer in order to recover both the bottle and resin layers in view of all of the teachings in Toyo. It has been held that the combination of familiar elements according to known methods is likely to be obvious when it does no more than yield predictable results. MPEP 2141 discussing KSR International Co. v. Teleflex Inc., 550 U.S. 398, 415-416, 82 USPQ2d 1385, 1395 (2007).
As to the new recitation in claim 1 of "using water having a temperature of 20°C or more to 45°C or less as a liquid of the specific gravity separation," Toyo teaches using "hot" water for removing ink (paras [0008]-[0009]) and that a polyolefin film may be easily separated by specific gravity in liquid (paras [0005] and [0035]), but is silent as to using water for specific gravity separation at the temperature range now recited in the claim.
Lee teaches a method of reclaiming multilayered film waste (Title) wherein such reclaiming method is performed on a multilayered film that comprises a plastic layer including polyester (PET), polypropylene (PP) and polyethylene (PE) as main components (Abstract). The film of Lee further includes an aluminum layer (Abstract).
In a process according to Lee, first the multilayered film is pulverized, i.e., cut into pieces, followed by immersing the pieces into an alkali aqueous solution set between a normal temperature and a boiling point (para [0013]), the term "normal" understood to mean at about 20°C. Thus, Lee teaches using water at a temperature range overlapping the recited range of a "temperature of 20°C or more to 45°C or less." In the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists. 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); MPEP 2144.05. Thereafter, Lee teaches a separation step using specific gravity difference, wherein the pulverized pieces having a specific gravity of less than 1, that includes the PP and PE layers as main components, float on the water while the components (PET film pieces) sink in the water due to having a specific gravity higher than 1 (paras [0016]-[0017]). Lee teaches that "if the specific gravity of the alkali aqueous solution used in the process for dissolving aluminum is 1.0-1.33, the separation process using the specific gravity difference can be conducted immediately after the process for dissolving aluminum" (para [0016]; emphasis added), understood to predictably teach/suggest that the water is also at the same processing temperature used for removing the aluminum. The separated pulverized pieces are then washed until the water becomes pH neutral (para [0016]). Lee further teaches that an extruder may be used to process the separated PE and PP into pellets or extrudates (paras [0018]-[0019]).
It would have been obvious to one of ordinary skill in the art at the time of effective filing of the claims of the invention to modify the method of Toyo to perform specific gravity separation of any polyethylene and/or polypropylene components using water at a "normal" temperature as taught by Lee, as predictable and suitable as it has been held that the combination of familiar elements according to known methods is likely to be obvious when it does no more than yield predictable results. MPEP 2141 discussing KSR International Co. v. Teleflex Inc., 550 U.S. 398, 415-416, 82 USPQ2d 1385, 1395 (2007).
As to the amended claim 1 step of "extrusion molding a resin film having a specific gravity of less than 1 including the recovered thermoplastic resin in a raw material," this limitation is understood to require a step of combining recovered resin obtained from the specific gravity separation step with non-recycled resin (i.e., a raw material) as part of an extrusion molding process. Toyo is silent as to performing such a step. As discussed above, Lee teaches using an extrusion step to form a polyethylene/propylene mixture into pellets or extrudate, but is silent as to including a raw material.
Mitsubishi teaches the preparation of a heat-shrinkable film, a molding using the film and a container fitted with a heat-shrinkable label made from the film (Abstract). The heat-shrinkable film has a bulk density of 0.50 or more and less than 1 such that it can be separated by a liquid density method from plastics for containers such as PET (para [0019]), Mitsubishi teaching that therefore the film is excellent in recyclability (para [0019]). Mitsubishi teaches that when the film is used as a heat-shrinkable label for a PET bottle, it is in a shrunk state when recycled, but is still separatable by a liquid density method even after shrinkage (para [0109]). Mitsubishi also teaches the film is excellent in printability (para [0020]). A component of the film is polylactic acid, which is derived from plants, such as corn, and thus is taught by Mitsubishi as having advantages including sustainability, does not emit harmful gases when burned and has a low combustion calorie content and thus does not damage a combustion furnace (para [0004]). The film of Mitsubishi may include a plurality of layers (para [0012]) and other resin components including polyolefin resins such as polyethylene and polypropylene (para [0046]). Mitsubishi further teaches that its film contains a recycled film resin of the invention of Mitsubishi, the content of which is desirably 50 parts by weight or less per 100 parts by weight of the resin constituting the layer to be contained (para [0086]). The film of Mitsubishi is produced by feeding selected components or mixtures into an extruder and subjecting the mixture to melt extrusion molding (para [0089]). Thus, Mitsubishi is understood to teach the claim limitation of "extrusion molding a resin film having a specific gravity of less than 1 including the recovered thermoplastic resin in a raw material."
It would have been obvious to one of ordinary skill in the art at the time of effective filing of the claims of the invention to modify the method of Toro/Lee to include in its method and film label, the inclusion of a layer or layer of film material made from the resin materials according to Mitsubishi and the re-use of recovered resin materials as taught by Mitsubishi, for the advantages taught in Mitsubishi including a resulting heat shrinkable film for use as a label that is made from biomass such as corn, is excellent in printability, can be easily separated from PET and thus recycled using specific gravity separation and can be re-used in subsequent label preparation.
Regarding claim 2, please see the rejection of claim 1 above, the method of Toyo/Lee/Mitsubishi discussed therein teaches the recited steps in the order recited in claim 2.
Regarding claims 3 and 10, Mitsubishi teaches printing on the film of Mitsubishi using a bar coater and gravure ink, understood to result in a film label having an ink layer and a resin layer (para [0116]).
Regarding claims 4 and 11, by teaching the use of "recycled resin" in a film layer (para [0086]), Mitsubishi is necessarily teaching repeating the method "one or more times" as recited in the claim. Mitsubishi teaches a "bulk specific gravity" range at para [0099] understood to require a specific gravity of less than 1.0 in all embodiments of Mitsubishi, including those having the "recycled resin" of Mitsubishi.
Regarding claims 5, 12 and 17, please see the rejection of claim 1 above that discusses the Toyo teaching at paras [0008]-[0009] of putting label pieces in alkaline hot water that teaches the recitation of "wherein the obtaining the resin layer or the pieces of the resin layer from which the ink layer has been removed comprises immersing the film label or the pieces of the film label in an alkaline aqueous solution to separate the ink layer."
Regarding claims 7, 14 and 19, the teaching of putting label pieces in alkaline hot water (NaOH solution) at paras [0008]- [0009] of Toyo inherently teaches the recitation of "wherein the obtaining the resin layer or the pieces of the resin layer from which the ink layer has been removed comprises immersing the film label or the pieces of the film label in water to separate the ink layer."
Regarding claims 8, 15 and 20, Toyo teaches a step of washing after the step of ink removal during immersion in an NaOH solution at para [0009].
Regarding claims 9 and 16, Toyo teaches a step of drying after the step of washing in para [0009], such step necessarily before the extrusion step of Toyo/Mitsubishi wherein the recovered resin is used to prepare a new label.
Regarding new claim 21, Toyo teaches "Preferably, the material for the label to be attached to the body of the PET bottle is a polyolefin film, which is easily separated by specific gravity in liquid when crushed" (para [0035]). Lee teaches a method of reclaiming a multilayered film which comprises a plastic layer that includes polyester, polypropylene and polyethylene as main components (Abstract) with polypropylene and polyethylene being recovered via specific gravity separation (paras [0016]-[0017]), followed by an extrusion process of making a pellet or extrudate of the polypropylene/polyethylene material (para [0019]). Mitsubishi teaches a resin film that is extrusion molded that has a main component that is a recycled resin (para [0086]). Although Mitsubishi teaches a recycled resin component of Mitsubishi is polyactic acid, thus suggesting the recycled resin of Mitsubishi does not include an olefin-based resin as a "main component," Mitsubishi teaches other layers may include polyolefin resins, such as polyethylene and polypropylene (para [0046]).
In view of the teaching in Lee of the suitability of both polyethylene and propylene for recycling pursuant to a specific gravity separation process and the suitability of using an extrusion process for forming the polyethylene/propylene material into a pellet or extrudate, it would have been obvious to one of ordinary skill in the art at the time of effective filing of the claims of the invention to predictably perform a process of Toyo/Lee/Mitsubishi with a resin film for extrusion molding wherein the main component of the resin film is a recycled polypropylene/polyethylene material (i.e., an olefin-based resin). It has been held that the combination of familiar elements according to known methods is likely to be obvious when it does no more than yield predictable results. MPEP 2141 discussing KSR International Co. v. Teleflex Inc., 550 U.S. 398, 415-416, 82 USPQ2d 1385, 1395 (2007).
Claims 6, 13 and 18 are rejected under 35 U.S.C. 103 as being unpatentable over Toyo/Lee/Mitsubishi as applied to respective claims 5, 12 and 17 and further in view of Klenk, US 2003/0010360 (hereafter Klenk) and Gomes et al., "Alkaline Residues and the Environment: A review of Impacts, Management Practices and Opportunities," Journal of Cleaner Production, 112 (2016); pages 3571-3582; published by Elsevier Ltd (hereafter Gomes).
Regarding each of claims 6, 13 and 18, Toyo teaches a step of washing and drying after the step of immersion in an alkaline aqueous solution (para [0009]), but is silent as to whether the washing includes a step of "neutralizing the resin layer or the pieces of the resin layer after being immersed in the alkaline aqueous solution." It is noted that although Lee does not discuss ink removal, Lee does discuss a step of aluminum removal and teaches either performing both aluminum removal and specific gravity separation using an alkali aqueous solution, followed by washing until the water becomes pH neutral (para [0016]), or washing pulverized pieces after aluminum removal until water becomes pH neutral, followed by the specific gravity separation process (para [0015]).
Klenk teaches a process of recycling PET bottles wherein cut bottle pieces in the form of flakes are subjected to a washing treatment that includes washing with a cleaning solution containing caustic soda, i.e., an alkaline aqueous solution (Abstract and para [0037]). The flakes are then moved to a float/sink separator wherein floating components such as labels are removed from the PET flakes (para [0037]), followed by a neutralizer equipped with a fresh water feed wherein pH is measured and a neutralizing acid, such as phosphoric acid or CO2, is used to adjust pH, followed by drying the flakes (para [0039]). Klenk is silent as to why the pH is adjusted. Generally it is known to neutralize a recycle stream after alkaline washing to ensure the waste water is safe for discharge (see Gomes (page 3575) for teaching of some of the detrimental environmental impacts of alkaline pH (pH 8.5-10)).
It would have been obvious to one of ordinary skill in the art at the time of effective filing of the claims of the invention to modify the method of Toyo/Lee/Mitsubishi to provide a neutralization process after removing ink in an alkaline aqueous solution as a part of the washing step taught by Toyo as predictable in a process for recycling PET as taught by Klenk and for the benefit of neutralizing the recycle stream so that waste water is safe for discharge and avoids detrimental environment impact as taught by Gomes. It has been held that the combination of familiar elements according to known methods is likely to be obvious when it does no more than yield predictable results. MPEP 2141 discussing KSR International Co. v. Teleflex Inc., 550 U.S. 398, 415-416, 82 USPQ2d 1385, 1395 (2007).
Response to Arguments
Applicant’s arguments with respect to claims 1 and 21 have been considered but are moot because the new ground of rejection does not rely on any reference applied in the prior rejection of record for any teaching or matter specifically challenged in the argument.
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 CYNTHIA L SCHALLER whose telephone number is (408)918-7619. The examiner can normally be reached Monday-Friday 8 - 4:30.
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/CYNTHIA L SCHALLER/Primary Examiner, Art Unit 1746