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 .
Summary
The Applicant’s arguments and claim amendments received on August 15, 2025 are entered into the file. Currently, claims 1, 7, 9-13, and 20 are amended; claim 2 is canceled; resulting in claims 1 and 3-20 pending for examination.
Claim Objections
Claims 1, 3-7, and 9-13 are objected to because of the following informalities:
Regarding claim 1, it is suggested to amend the reciting “wherein the printing layer mainly includes any of an ester-based resin and a styrene-based resin” to --wherein the printing layer mainly includes or a styrene-based resin-- in order to clarify that the main component of the printing layer is one of the two listed options.
Regarding claims 3-7 and 9-13, in light of the cancellation of claim 2 and the change in dependency of claims 9-13 from claim 2 to claim 1, the limitations presented in claims 9-13 are currently identical to claims 3-7. Applicant is advised that should claims 3-7 be found allowable, claims 9-13, respectively, will be objected to under 37 CFR 1.75 as being substantial duplicates thereof. When two claims in an application are duplicates or else are so close in content that they both cover the same thing, despite a slight difference in wording, it is proper after allowing one claim to object to the other as being a substantial duplicate of the allowed claim. See MPEP § 608.01(m).
Appropriate correction is required.
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.
The following is a quotation of 35 U.S.C. 112 (pre-AIA ), second paragraph:
The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.
Claim 17 is rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor (or for applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention.
Regarding claim 17, the limitation reciting “wherein the ink layer is laminated on the printing surface” is indefinite in view of the limitation in claim 1 reciting “A heat-shrinkable film for receiving an ink layer” because it is not clear exactly what structure is required by the claims.
The preamble in claim 1 recites an intended use limitation “for receiving an ink layer”, which is interpreted to mean that the heat-shrinkable film must be capable of receiving an ink layer, such that the ink layer is not a component of the heat-shrinkable film. Subsequent limitations directed to the ink layer therefore do not further limit the structure of the heat-shrinkable film.
The limitation in claim 17 sets forth that the ink layer is laminated on the printing surface. It is not clear whether this limitation is referring to a structural feature of the heat-shrinkable film (i.e., wherein the heat-shrinkable film further comprises an ink layer disposed on the printing surface of the printing layer), or if this limitation is referring again to an intended use the heat-shrinkable film (i.e., wherein the heat-shrinkable film is used as a substrate for receiving the ink layer via a laminating or printing method).
It is noted that the ink layer is not positively recited with respect to the heat-shrinkable film, wherein the step of adding an ink layer to the heat-shrinkable film does not further limit the heat-shrinkable film itself. It is further noted that claim 7 utilizes the transitional phrase “wherein”, which raises a question as to the limiting effect of the limitations therein. See MPEP 2111.04. Given that claim 1 clearly sets forth the ink layer as an object of the intended use of the heat-shrinkable film, and that claim 17 does not positively recite that the heat-shrinkable film comprises the ink layer as a component thereof, the limitation of claim 17 is interpreted to be satisfied by any heat-shrinkable film according to claim 1 which is capable of receiving (i.e., being printed with) an ink layer on the printing surface.
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 and 3-20 are rejected under 35 U.S.C. 103 as being unpatentable over Maeda et al. (JP 2008-052047, cited on IDS, machine translation previously provided) in view of Amemiya et al. (JP 2014-114413, machine translation previously provided).
Regarding claims 1 and 4, Maeda et al. teaches a shrink label (heat-shrinkable film) comprising a plastic film (printing layer) which serves as a printing substrate on which printing is performed ([0001], [0027]-[0028]). In particular, Maeda et al. teaches that the shrink label can be attached to a PET or glass container and heated to shrink the printed shrink film onto the container ([0060]-[0061]). Maeda et al. teaches that the shrink label is environmentally friendly and addresses the issue of energy resources by replacing the petroleum-derived materials in conventional printing ink compositions with materials obtained from biomass [0001]. Maeda et al. further teaches that plastic films that can be usable as printing substrates include films made of one or a mixture of two or more selected from polyester-based resins, styrene-based resins, olefin-based resins, and other thermoplastic resins and laminate films thereof [0047].
With respect to the preamble limitation reciting “for receiving an ink layer formed by biomass ink” and the limitation in lines 3-4 reciting “configured to allow the ink layer to be applied thereon”, it is noted that these limitations are interpreted as functional language relating to an intended use of the heat-shrinkable film and the printing surface. As set forth in MPEP 2111.03(II), to satisfy an intended use limitation, a prior art structure which is capable of performing the intended use meets the claim. In the instant case, Maeda et al. teaches that the plastic film (printing layer) has a printing surface which is configured to allow an ink layer formed by biomass ink to be applied thereon. The prior art shrink film is capable of performing in the manner claimed, thus satisfying the claimed functional limitations.
Although Maeda et al. teaches that the plastic film may contain additives, such as antioxidants, as necessary ([0058]), the reference is silent to an oxidation induction time property of the plastic film.
However, in the analogous art of plastic films, Amemiya et al. teaches a resin composition and film which are excellent in oxidation resistance and discoloration resistance [0001]. Similar to Maeda et al., Amemiya et al. teaches that its resin composition may be used for a range of applications including packaging for foods and miscellaneous goods [0002]. The resin composition contains a thermoplastic resin, an antioxidant, and an antiblocking agent, wherein the thermoplastic resin can be selected from various types, including polyolefin resins, polyester resins such as polyethylene terephthalate, ABS resin, ABS resin, polystyrene, etc. ([0018]-[0019]).
Amemiya et al. teaches that the antioxidants are added to improve oxidation resistance, wherein an antioxidant (A) having a phosphite structure and a hindered phenol structure in the same molecule and a phosphorous-based antioxidant (B) are used in combination to achieve the desired discoloration resistance and oxidation resistance ([0032], [0037], [0053]). As shown in Examples 1-3 and Comparative Example 1, a film having an oxidation induction time (OIT) measured at 230°C in the range of 3.1 to 6.5 minutes can be achieved by adjusting the amounts of each of the antioxidants used in the resin composition (Table 1, [0046], Table 1).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the shrink label of Maeda et al. by including an antioxidant or a combination of antioxidants in the plastic film so as to obtain an oxidation induction time (OIT) measured at 230°C of the plastic film within the claimed ranges, as suggested by Amemiya et al., in order to achieve the desired resistance to oxidation necessary for a particular application of the shrink label. One of ordinary skill in the art would have had a reasonable expectation of success in arriving at an ester-based or styrene-based printing layer having an OIT value within the claimed range given the predictability with which the oxidation induction time of a resin film can be adjusted by increasing or decreasing the amount of antioxidants included therein.
Regarding claims 3 and 9, Maeda et al. in view of Amemiya et al. teaches all of the limitations of claim 1 above. As noted above, Maeda et al. teaches that plastic films that can be usable as printing substrates include materials such as polyester-based resins, olefin-based resins, styrene-based resins, and other thermoplastic resins and laminate films thereof [0047]. In particular, polyester-based films using polyester-based resin such as polyethylene terephthalate (PET) or polylactic acid, and laminate films having a polyester-based film as a surface layer are preferred [0047]. Therefore, in the case where the plastic film is a laminate film comprising a thermoplastic resin layer and a polyester-based film as a surface layer, according to the teachings of Maeda et al., the thermoplastic resin layer corresponds to the claimed base material layer which is laminated on a surface of the polyester-based film opposite the printing surface.
Regarding claims 5, 6, 11, 12, 15, 16, 18, and 19, Maeda et al. in view of Amemiya et al. teaches all of the limitations of claims 1, 3, and 4 above. As explained above with respect to claim 1, the limitations directed to an ink layer formed by biomass ink are considered functional limitations relating to an intended use of the claimed heat-shrinkable film. Subsequent limitations directed to the ink layer therefore do not further limit the structure of the heat-shrinkable film.
Any heat-shrinkable film which is capable of performing in the manner claimed (i.e., capable of being printed with an ink layer formed by biomass ink) is considered to satisfy the claimed functional limitations. Maeda et al. teaches that the plastic film (printing layer) has a printing surface which is configured to allow an ink layer formed by biomass ink to be printed thereon. The prior art shrink film is capable of performing in the manner claimed, thus satisfying the claimed functional limitations.
Regarding claims 7, 8, 13, and 20, Maeda et al. in view of Amemiya et al. teaches all of the limitations of claims 1, 3, and 4 above, and Maeda et al. further teaches that the shrink label is obtained by applying the printing ink on the heat-shrinkable plastic film, which is the printing substrate [0060]. The shrink label can be used for shrink labels by tubing by means of solvent sealing or the like [0061]. The printing inks can include materials made from biomass ([0008]-[0009]).
Regarding claims 10 and 14, Maeda et al. in view of Amemiya et al. teaches all of the limitations of claims 1 and 3 above. As explained above with respect to claims 1 and 4, Maeda et al. is silent to an oxidation induction time of the plastic film, and Amemiya et al. is used to address the claimed oxidation induction time property. As explained above, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the shrink label of Maeda et al. by including an antioxidant or a combination of antioxidants in the plastic film so as to obtain an oxidation induction time (OIT) measured at 230°C of the plastic film within the claimed ranges, as suggested by Amemiya et al., in order to achieve the desired resistance to oxidation necessary for a particular application of the shrink label.
Regarding claim 17, Maeda et al. in view of Amemiya et al. teaches all of the limitations of claim 3 above. As explained in the indefiniteness rejection above, it is not clear exactly what structure is required by the claims. As explained above with respect to claim 1, Maeda et al. teaches that the shrink label addresses environmental issues by replacing the petroleum-derived materials in conventional printing ink compositions with materials obtained from biomass, such that the shrink film is capable of being printed with an ink layer formed by biomass ink on the printing surface of the printing substrate ([0001], [0009], [0027]). The prior art shrink label is capable of performing in the manner claimed, thus satisfying the claimed functional limitations.
Response to Arguments
Response-Claim Rejections - 35 USC § 112
The previous rejections of claims 1, 7, 13, and 20 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 are overcome by the Applicant’s amendments to claims 1, 7, 13, and 20 in the response filed August 15, 2025.
Although the Applicant states on page 6 of the remarks that claims 7, 13, 17, and 20 have been amended to more clearly positively recite the presence of the ink layer, it is noted that claim 17 was not amended in the most recent claim set. The previous rejection under 35 U.S.C. 112(b) is therefore maintained over claim 17.
Response-Claim Rejections - 35 USC § 102 and 103
In light of the amendment to claim 1 requiring that the printing layer mainly includes an ester-based resin or a styrene-based resin, the previous rejections under 35 U.S.C. 102 based on Willems et al. have been withdrawn.
With respect to the previous rejections under 35 U.S.C. 103 based on Maeda et al. in view of Amemiya et al., the Applicant’s arguments, see pages 7-9 of the remarks filed August 15, 2025, have been fully considered but they are not persuasive. In particular, the Applicant argues that Amemiya discloses polyolefins having certain OITs but does not prepare or measure the OIT of any other resin compositions. The Applicant further argues that the only way a person of ordinary skill in the art could have “set an oxidation time” as alleged in the Office Action would have been to import Amemiya’s polyolefin with known OIT into the article of Maeda.
These arguments are not persuasive. In light of the amendments to claim 1, the previous rejections based on Maeda et al. in view of Amemiya et al. have been modified to address the new limitation requiring that the printing layer mainly includes an ester-based resin or a styrene-based resin. In particular, as explained in the rejections above, Maeda et al. teaches that examples of materials for the plastic films include films made of one or a mixture of two or more selected from polyester-based resins, styrene-based resins, olefin-based resins, and the like [0047]. Amemiya et al. similarly teaches a resin composition which contains a thermoplastic resin selected from various types, including polyolefin resins, polyester resins such as polyethylene terephthalate, ABS resin, ABS resin, polystyrene, etc. ([0018]-[0019]). Although Amemiya et al. teaches that polyolefin resins, in particular polyethylene resins, are preferred and teaches embodiments in which the oxidation induction time (OIT) values are shown for films made of polyethylene resin ([0019], [0051]), the teachings of Amemiya et al. are not limited to olefin-based films, as the reference explicitly mentions that ester-based resins and styrene-based resins can also be used. Disclosed examples and preferred embodiments do not constitute a teaching away from a broader disclosure or nonpreferred embodiments. See MPEP 2123(II).
Amemiya et al. further provides substantial guidance as to how a resin film having good oxidation resistance is achieved, i.e., by including a combination of antioxidants (A) and (B) in amounts necessary to obtain a desired OIT value in the range of 3.1 to 5.0 minutes ([0032], [0037], [0053], Table 1)1. One of ordinary skill in the art would readily appreciate that the amount of antioxidant suitable for achieving a desired OIT value in combination with one type of thermoplastic resin may not be identical to the amount of antioxidant necessary to achieve the same OIT value when used with a different thermoplastic resin. However, it is well within the level of ordinary skill in the art to adjust the amounts of antioxidant in a resin film as necessary to obtain the desired oxidation resistance as measured by the OIT value of the resin film.
In this case, the level of disclosure in the instant specification is informative as to the level of ordinary skill in the art. In looking to paragraph [0059] of the as-filed specification, the oxidation induction time is said to be controlled by adjusting the addition amount of an antioxidant or modifying the production step of the heat-shrinkable film. The instant specification, however, is silent on how specific antioxidant materials or amounts thereof are selected based on the type of thermoplastic material used in the printing layer. If the specification is entirely silent on how a certain step of function is achieved, that silence may suggest that figuring out how to achieve that step or function is within the level of ordinary skill in the art, provided that the specification complies with 35 U.S.C. 112. See MPEP 2141.03(I). Therefore, the Applicant’s argument that the only way a person of ordinary skill in the art could have “set an oxidation time” as alleged in the Office Action would have been to import Amemiya’s polyolefin with known OIT into the article of Maeda is not persuasive, as one of ordinary skill in the art would have been capable of modifying, and would have been motivated to modify, the ester-based or styrene-based plastic film of Maeda by adjusting the OIT to a value within the claimed range based on the teachings of Amemiya et al.
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 REBECCA L GRUSBY whose telephone number is (571) 272-1564. The examiner can normally be reached Monday-Friday, 8:30 AM-5:30 PM.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Mark Ruthkosky can be reached at (571) 272-1291. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/Rebecca L Grusby/Examiner, Art Unit 1785
/LAURA C POWERS/Primary Examiner, Art Unit 1785
1 A machine translation of Table 1 in Amemiya et al. is attached.