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 .
Election/Restrictions
Applicant's election with traverse of Group II, claims 4-21 and Species A (claim 12) in the reply filed on December 29, 2025 is acknowledged. The traversal is on the ground(s) that the election requirement is improper because there are two criteria for a proper requirement for restriction (the invention must be independent or distinct, and there must be a serious burden on the examiner). According to applicant, the examiner has not shown that a serious burden would be required to examination both Groups and species together. Further, applicant argues that a national state application including claims to a different categories of invention will be considered to have a unity of invention, if the claims are drawn to a product, a process specifically adapted for the manufacture of the said product and an apparatus or means specifically designed for carrying out said process. Applicant argues that this is precisely the case here.
This is not found persuasive because as set forth in the Office action mailed on November 5, 2025, the examiner has shown why there is a serious burden. See page 2 and page 4 of the Office action. Further, the examiner respectfully submits that the present application is not a national stage application (i.e. application submitted under 35 USC 371). As such, applicant’s argument referring to the unity of invention criteria associated with a national stage application is not found persuasive. See MPEP 823.
The requirement is still deemed proper and is therefore made FINAL.
Claim 1-3 and 13 are withdrawn from further consideration pursuant to 37 CFR 1.142(b), as being drawn to a nonelected invention, there being no allowable generic or linking claim. Applicant timely traversed the restriction (election) requirement in the reply filed on December 29, 2025.
Claim Objections
Claims 4, 5, and 8 are objected to because of the following informalities: replace the recitation “acrylic adhesive” with “acrylic pressure sensitive adhesive” in order to provide consistency with “acrylic pressure sensitive adhesive” recited at the first instance in claim 4 at line 4.
Appropriate correction is required.
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.
Claim(s) 4-12, 14, and 17-20 are rejected under 35 U.S.C. 103 as being unpatentable over Hazen (WO 2022026055 A1; US 12234385 B2 is relied upon as equivalent document in the Office action).
As to claim 4, Hazen discloses a label comprising a carrier (face) and a layer of acrylic pressure sensitive adhesive (PSA) (PSA layer for adhering the label to a surface of an item to be labelled) (column 7, lines 1-15, lines 25-30, lines 40-44). Further, the acrylic PSA of Hazen includes a polymer latex and an aqueous dispersion (claim 13 and column 7, lines 15-25). Further, the aqueous dispersion of Hazen includes an aqueous phase, resin particles made of a resinous material such as hydrocarbon resin, an alkyd resin, a polyamide resin, a rosin resin, and mixture thereof, and a surfactant (wash-off additive) (column 4, line 55 to column 5, lines 1-5). Further, the surfactant of Hazen is a grafted rosin ester which is a rosin ester grafted with a capped polyethylene glycol (PEG), wherein the capped PEG is end-capped by an alkyl ether (claim 1 and abstract).
As to claims 4 and 5, Hazen is silent as to disclosing the amount of the wash-off additive calculated from total dry weight of the acrylic adhesive as claimed. However, the examiner submits that where the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation. See MPEP 2144.05 (II)(A)(B). Hazen as set forth previously discloses identical wash-off additive in the acrylic adhesive. Further, the surfactant (wash-off additive) of Hazen enables preparation of stable dispersion having high solids content and acceptable level of viscosity (column 1, lines 60-65). The examiner submits that a person having ordinary skill in the art before the effective filing date of the claimed invention would have found it obvious to arrive at the claimed amount of wash-off additive, motivated by the desire to form adhesive having stability, high solids content, and acceptable level of viscosity such that it can be applied on carrier to form the label of Hazen.
As to claim 6, this claim is disclosed at column 5, lines 45-50 of Hazen.
As to claim 7, Hazen discloses polyethylene glycol (column 3, lines 15-20).
As to claim 8, Hazen discloses ethyl hexyl acrylate (column 7, line 15), which is understood by one of ordinary skill in the art as “2-ethylhexyl acrylate”.
As to claim 9, Hazen discloses that the resinous material is preferably rosin (column 5, lines 5-6).
As to claim 10, Hazen discloses this claim at column 3, line 40.
As to claim 11, Hazen discloses methyl ether (column 3, lines 15-17).
As to claim 12, Hazen is silent as to disclosing liner (release liner). Thus, Hazen suggests a linerless label.
As to claim 14, Hazen discloses that the carrier is e.g. ethylene or propylene homopolymer (column 7, lines 25-30), which suggests thermoplastic film.
As to claim 17, Hazen discloses that the carrier is propylene homopolymer (polypropylene) (column 7, lines 25-30).
As to claim 18, Hazen discloses that the carrier is paper (column 7, lines 25-26).
As to claims 19 and 20, where the claimed and prior art products are identical or substantially identical in structure or composition, or are produced by identical or substantially identical processes, a prima facie case of either anticipation or obviousness is established. See MPEP 2112.01 (I). The examiner submits that no unobvious difference is seen between the label of Hazen as set forth previously and the claimed label, as such, the label of Hazen is direct thermal label and wash-off label.
Claim 19 is rejected under 35 U.S.C. 103 as being unpatentable over Hazen (WO 2022026055 A1; US 12234385 B2 is relied upon as equivalent document in the Office action) as applied to claim 4 above, and further in view of Tiainen et al. (EP 3974490 A1; US 20220097337 A1 is relied upon as equivalent document in the Office action).
Hazen is silent as to disclosing the label as direct thermal label.
Tiainen discloses a linerless label comprising face having direct thermal printable coating (0002 and 0010).
It would have been obvious to form a direct thermal label by applying a direct thermal printable coating on the face of Hazen’s label, motivated by the desire to use such label for on-demand printing.
Claim(s) 4-12, 14-17, and 19-21 are rejected under 35 U.S.C. 103 as being unpatentable over Saxberg (WO 2019234305 A1) in view of Hazen (WO 2022026055 A1; US 12234385 B2 is relied upon as equivalent document in the Office action).
As to claims 4 and 20, Saxberg discloses a wash-off label comprising a face film (face) and a layer of PSA such as acrylic adhesive such as acrylic PSA for adhering the label to a surface of an item to be labelled (claim 1, page 12 line 35 to page 13 line 16).
As to claim 4, the difference between the claimed invention and the prior art of Saxberg is that Saxberg is silent as to disclosing an acrylic PSA having a wash-off additive as claimed.
Hazen discloses a label comprising a carrier (face) and a layer of acrylic pressure sensitive adhesive (PSA) (PSA layer for adhering the label to a surface of an item to be labelled) (column 7, lines 1-15, lines 25-30, lines 40-44). Further, the acrylic PSA of Hazen includes a polymer latex and an aqueous dispersion (claim 13 and column 7, lines 15-25). Further, the aqueous dispersion of Hazen includes an aqueous phase, resin particles made of a resinous material such as hydrocarbon resin, an alkyd resin, a polyamide resin, a rosin resin, and mixture thereof, and a surfactant (wash-off additive) (column 4, line 55 to column 5, lines 1-5). Further, the surfactant of Hazen is a grafted rosin ester which is a rosin ester grafted with a capped polyethylene glycol (PEG), wherein the capped PEG is end-capped by an alkyl ether (claim 1 and abstract).
It would have been obvious to a person having ordinary skill in the art before the effective filing date of the claimed invention to select the acrylic PSA of Hazen and use it in the label of Saxberg given that Saxberg desires use of acrylic adhesives and selection of known material based on its suitability for its intended use establishes a prima facie case of obviousness. See MPEP 2144.07.
As to claims 4 and 5, Saxberg as modified by Hazen is silent as to disclosing the amount of the wash-off additive calculated from total dry weight of the acrylic adhesive as claimed. However, the examiner submits that where the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation. See MPEP 2144.05 (II)(A)(B). Hazen as set forth previously discloses identical wash-off additive in the acrylic adhesive. The surfactant (wash-off additive) of Hazen enables preparation of stable dispersion having high solids content and acceptable level of viscosity (column 1, lines 60-65). The examiner submits that a person having ordinary skill in the art before the effective filing date of the claimed invention would have found it obvious to arrive at the claimed amount of wash-off additive, motivated by the desire to form adhesive having stability, high solids content, and acceptable level of viscosity such that it can be applied on carrier to form the label.
As to claim 6, this claim is disclosed at column 5, lines 45-50 of Hazen.
As to claim 7, Hazen discloses polyethylene glycol (column 3, lines 15-20).
As to claim 8, Hazen discloses ethyl hexyl acrylate (column 7, line 15), which is understood by one of ordinary skill in the art as “2-ethylhexyl acrylate”.
As to claim 9, Hazen discloses that the resinous material is preferably rosin (column 5, lines 5-6).
As to claim 10, Hazen discloses this claim at column 3, line 40.
As to claim 11, Hazen discloses methyl ether (column 3, lines 15-17).
As to claim 12, Saxberg is silent as to disclosing a liner (see Figure 2, page 5, line 30 to line 35).
As to claims 14, 15, and 17, Saxberg discloses these claims at page 7, lines 4-10 and on page 1, lines 25-30.
As to claim 16, Saxberg discloses that oriented face layer can be provided by uniaxial or biaxial stretching (page 5, lines 4-5). The examiner submits that uniaxial (monoaxial) stretching of the face layer would be recognized by one of ordinary skill in the art as including orienting the face layer in MD or TD.
As to claim 19, where the claimed and prior art products are identical or substantially identical in structure or composition, or are produced by identical or substantially identical processes, a prima facie case of either anticipation or obviousness is established. See MPEP 2112.01 (I). The examiner submits that no unobvious difference is seen between the label of Saxberg as modified by Hazen as set forth previously and the claimed label, as such, the label of Saxberg is direct thermal label.
As to claim 21, Saxberg discloses a beverage bottle (e.g. beer and wine bottles) comprising the wash-off label (page 4, lines 20-22). Saxberg is silent as to disclosing “the label and the beverage bottle have such densities wherein one has density of more than water and the other has a density of less than water”. However, where the claimed and prior art products are identical or substantially identical in structure or composition, or are produced by identical or substantially identical processes, a prima facie case of either anticipation or obviousness is established. See MPEP 2112.01 (I). The examiner submits that no unobvious difference is seen between the label of Saxberg as modified by Hazen as set forth previously and the claimed label, as such it is reasonable to presume that the aforementioned property of density would inherently be present in the invention of Saxberg as modified by Hazen.
Claim(s) 19 is rejected under 35 U.S.C. 103 as being unpatentable over Saxberg (WO 2019234305 A1) in view of Hazen (WO 2022026055 A1; US 12234385 B2 is relied upon as equivalent document in the Office action) as applied to claim 4 above, and further in view of Tiainen et al. (EP 3974490 A1; US 20220097337 A1 is relied upon as equivalent document in the Office action).
Saxberg is silent as to disclosing the label as direct thermal label.
Tiainen discloses a linerless label comprising face having direct thermal printable coating (0002 and 0010).
It would have been obvious to form a direct thermal label by applying a direct thermal printable coating on the face of the label of Saxberg, motivated by the desire to use such label for on-demand printing.
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 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); 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 nonstatutory double patenting provided the reference application or patent either is shown to be commonly owned with the examined application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. See MPEP § 717.02 for applications subject to examination under the first inventor to file provisions of the AIA as explained in MPEP § 2159. See MPEP § 2146 et seq. for applications not subject to examination under the first inventor to file provisions of the AIA . A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
The filing of a terminal disclaimer by itself is not a complete reply to a nonstatutory double patenting (NSDP) rejection. A complete reply requires that the terminal disclaimer be accompanied by a reply requesting reconsideration of the prior Office action. Even where the NSDP rejection is provisional the reply must be complete. See MPEP § 804, subsection I.B.1. For a reply to a non-final Office action, see 37 CFR 1.111(a). For a reply to final Office action, see 37 CFR 1.113(c). A request for reconsideration while not provided for in 37 CFR 1.113(c) may be filed after final for consideration. See MPEP §§ 706.07(e) and 714.13.
The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The actual filing date of the application in which the form is filed determines what form (e.g., PTO/SB/25, PTO/SB/26, PTO/AIA /25, or PTO/AIA /26) should be used. A web-based eTerminal Disclaimer may be filled out completely online using web-screens. An eTerminal Disclaimer that meets all requirements is auto-processed and approved immediately upon submission. For more information about eTerminal Disclaimers, refer to www.uspto.gov/patents/apply/applying-online/eterminal-disclaimer.
Claims 4-12 and 14-21 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-21 of copending Application No. 18880428 (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other because claims 1-21 of the copending application generally render obvious claims of the present application .
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. Pirkkanen et al. (US 20250388786 A1) discloses a wash-off label.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to ANISH P DESAI whose telephone number is (571)272-6467. The examiner can normally be reached Mon-Fri 8:00 am ET to 4:30 PM ET.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Alicia Chevalier can be reached at 571-272-1490. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/ANISH P DESAI/Primary Examiner, Art Unit 1788 March 31, 2026
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