DETAILED ACTION
Examiner’s Note
Prosecution on the merits of this application is reopened on claim(s) 1-3 considered unpatentable for the reasons indicated below:
See the prior art rejection set forth below over the Kojima reference, which was cited on the IDS filed 5/11/2026.
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 .
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 § 103
Claim(s) 1-3 is/are rejected under 35 U.S.C. 103 as being unpatentable over Kojima et al. (JPH 11296089 A), and in light of the evidence provided by Yoshihara et al. (US 2017/0204262 A1). Citations form the ‘089 reference were taken from a machine translation, which is provided with the current action.
Regarding claim 1, Kojima teaches a PSA label comprising a PSA layer on a surface of a polyester film (base material layer), which is provided with a laminated film on at least one side, and a printing layer provided on the other surface of the laminated film (para 0015). The Examiner notes that the laminated film on at least one side of the polyester film provides the laminated film on both sides of the polyester film.
Kojima also teaches that the laminated film comprises a resin such as, inter alia, a polyester resin (paragraph bridging pages 4-5) such as an aqueous polyester resin comprising a glass transition temperature (Tg) of 10 to 90 ℃, which overlaps that presently claimed (Tg of 0 to 70 ℃), towards a balance of moisture-resistant adhesiveness and film-forming property; and an acid value of 20 mgKOH/g or more (10 mgKOH/g or more) (last two paragraphs of page 7; first two paragraphs of page 8).
As set forth in MPEP 2144.05, in the case where the claimed range “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).
Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the present invention to provide the aqueous polyester resin with the presently claimed Tg based on the balance of moisture-resistant adhesiveness and film-forming property required of the prior art’s intended application as in the present invention.
Kojima instructs that the laminated film is directly disposed on the polyester film (first paragraph of page 12), that the PSA is applied to the surface substrate (para 0097 on page 13). Kojima also teaches that the PSA is formed on a surface of the polyester film on which the laminated film is not provided (abstract; para 0015 on page 3; 2nd full paragraph on page 14). A printing layer is further provided on the laminated film (4th paragraph of para 0097 on page 13). Thus, one skilled in the art would recognize that the PSA label comprises a layered structure of PSA layer, polyester film and laminated film, in this order.
Lastly, the Examiner respectfully notes that,
Where the claimed and prior art products are identical or substantially identical in
structure or composition, a prima facie case of either anticipation or obviousness has
been established. "Products of identical chemical composition cannot have mutually
exclusive properties." A chemical composition and its properties are inseparable.
Therefore, if the prior art teaches the identical chemical structure, the properties applicant
discloses and/or claims are necessarily present. In re Spada, 911 F.2d 705, 709, 15
USPQ2d 1655, 1658 (Fed. Cir. 1990). See MPEP § 2112.01.
Indeed, given that the laminated film of the prior art is formed from a composition identical to that presently claimed, and demonstrating Tg and acid values identical to that presently claimed, it is reasonable to conclude that laminated film of Kojima would demonstrate detachment properties (i.e., a detachment coat layer).
Regarding claim 2, Kojima is silent to the aqueous polyester resin comprising a number-average molecular weight of 1,000 to 15,000.
However, it is established in the art that the number-average molecular weight (Mn) of a polyester is proportion to its viscosity as evidenced via Yoshihara (see paragraph 0061 therein).
Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the present invention to provide the aqueous polyester resin with the presently claimed Mn based on the viscosity required of the prior art’s intended application as in the present invention.
Regarding claim 3, Kojima teaches that the polyester resin comprises carboxylic acids at the terminals or side chains (page 7).
Allowable Subject Matter
Claims 4-6 are allowable over the prior art.
The following is a statement of reasons for the indication of allowable subject matter:
The closest prior art reference is JPH 11296089 A to Kojima et al.:
Kojima teaches the presently claimed invention as set forth above, but Kojima is silent to an alkali-insoluble coat layer interim to the disclosed polyester film (i.e., the presently claimed base material layer) and the laminated film (i.e., the presently claimed detachment coat layer).
Claims 4-6 are objected to as being dependent upon a rejected base claim, but would be allowable if rewritten in independent form including all of the limitations of the base claim and any intervening claims.
Conclusion
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 6/29/2026
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