DETAILED ACTION
Applicant’s amendment submitted on July 6, 2026 (“amendment”) in response to the Office action (OA) mailed on April 3, 2026 (“previous OA”) have been fully considered.
Support for the amendment to claims can be found in original claim 20.
In view of the amendment, the objection to claims 4, 5, and 8 as set forth in the previous OA is withdrawn.
In view of the amendment, the art rejections of record as set forth in the previous OA are modified.
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.
Claim(s) 4-12, 14, and 17-19 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 4 preamble “wash-off label”, 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 a wash-off 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, 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 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 Hazen as set forth previously and the claimed label, as such, the label of Hazen is direct thermal 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, 19, and 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 claim 4, Saxberg discloses a wash-off label comprising a face film (face) and a layer of PSA 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 14-19, and 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.
Response to Arguments
Applicant's arguments submitted with the amendment have been fully considered but they are not persuasive.
With respect to applicant’s arguments against the provisional double patenting rejection as set forth in the previous OA on page 5 of the amendment, the examiner respectfully submits that the double patenting rejection is maintained until it can properly overcome.
With respect to the rejection of claims under 35 USC 103 as being unpatentable over Hazen (WO 2022026055 A1), applicant argues that Hazen fails to teach or suggest a wash-off label. According to applicant, Hazen groups label applications with packaging tapes such that the labels disclosed by Hazen are not wash-off label as claimed. According to applicant, one of ordinary skill in the art reading Hazen would not conclude that the adhesive of Hazen exhibits a wash-off behavior; instead, a skilled artisan reading Hazen would only conclude that Hazen’s adhesive, when placed on labels, are intended to permanently hold the label on the item, which is the function of packaging tape. Page 6 of the amendment.
The examiner respectfully disagrees. Applicant’s argument relating to the adhesive of Hazen not exhibiting wash-off behavior is not commensurate in scope with the claimed invention. Because claims do not require that the adhesive is wash-off adhesive. Further, as to applicant’s argument that Hazen’s labels are not wash-off labels, the examiner respectfully submits that this argument is presented without any factual evidence on the record and as such it is based on applicant’s personal opinion. See MPEP 716.01(c)(II). Further, the examiner respectfully submits that at present, claims do not set forth any quantitative meaning of what constitutes “wash-off label”. As such, applicant’s argument is not found persuasive. The examiner respectfully submits that the term “wash-off label” is broad without setting forth specific attributes that would clarity what constitutes “wash-off”. Accordingly, applicant’s arguments are not found persuasive.
Applicant argues that Hazen fails to teach the claimed amount of the wash-off additive. Applicant points to Examples 4B and 5B in the specification. According to applicant, Examples 4B and 5B show that a conventional rosin ester dispersion did not improve washability (and in fact decreased washability), while a conventional PEG solution likewise did not improve washability. According to applicant, compared to Examples 4B and 5B, the claimed grafted rosin ester additive clearly improves washability in low-temperature washing conditions. Page 7 of the amendment.
The examiner respectfully disagrees. Applicant’s argument referring to Examples 4B and 5B disclosed in the present specification re not commensurate in scope with the basis of the rejection, because Hazen teaches claimed wash-off additive comprising resinous material and a grafted rosin ester. See current and the previous OA (page 4 “Further, the aqueous dispersion of Hazen includes an aqueous phase…and a surfactant (wash-off additive) …”). Accordingly, applicant’s argument is not found persuasive.
Applicant points to Table 1 and Example 1 of the specification and argues that the present application teaches that there is a threshold concentration of the wash-off additive in which there is an improvement once the additive amount exceeds certain level. According to applicant. Hazen does not offer any direction or motivation to achieve these beneficial results related to washability due to the concentration levels. Page 7 of the amendment.
The examiner respectfully disagrees. The examiner submits that whether the unexpected results are the result of unexpectedly improved results or a property not taught by the prior art, the objective evidence of nonobviousness must be commensurate in scope with the claims which the evidence is offered to support. See MPEP 716.02(d). Additionally, the examiner submits that to establish unexpected results over a claimed range, applicants should compare enough tests both inside and outside the claimed range to show the criticality of the claimed range. See MPEP 716.02(d)(II). Furthermore, the examiner submits that applicant has the burden of explaining the proffered data. See MPE 716.02(b)(I). Specifically, the examiner submits that applicant has not explained what specific “wash-off additive” was used in Table 1 and Example 1 of the present specification. Furthermore, Table 1 of the present specification discloses the amount of wash-off additive data points of 0 wt%, 4 wt%, 5 wt%, 10 wt%, 15 wt%, and 20 wt%. The claimed invention recites a broad range of wash-off additive of 5 to 25 wt% (see claim 4). Therefore, applicant’s alleged improved results are not commensurate in scope with the claimed invention. Accordingly, applicant’s arguments are not found persuasive.
Applicant argues that the examiner is equating any surfactant as being “wash-off” additive that creates a wash-off label. Pages 7-8 of the amendment.
The examiner respectfully disagrees. As set forth in the current and in the previous OA, Hazen discloses identical wash off additive comprising a resinous material and a grafted rosin ester. Accordingly, applicant’s argument is not found persuasive.
With respect to the rejection of claims under 35 USC 103 as being unpatentable over Saxberg (WO 2019234305 A1) in view of Hazen (WO 2022026055 A1), applicant argues same points with respect to Hazen as set forth previously (see page 8 of the amendment).
In response, the examiner incorporates his comments as set forth previously with respect to Hazen here by reference.
Applicant further argues that the rejection of Saxberg in view of Hazen is based on impermissible hindsight, because Saxberg already discloses wash-off label. Pages 8-9 of the amendment.
The examiner respectfully disagrees. In response to applicant's argument that the examiner's conclusion of obviousness is based upon improper hindsight reasoning, it must be recognized that any judgment on obviousness is in a sense necessarily a reconstruction based upon hindsight reasoning. But so long as it takes into account only knowledge which was within the level of ordinary skill at the time the claimed invention was made, and does not include knowledge gleaned only from the applicant's disclosure, such a reconstruction is proper. See In re McLaughlin, 443 F.2d 1392, 170 USPQ 209 (CCPA 1971).
The examiner submits that the primary reference of Saxberg desires use of acrylic adhesives (page 12 line 35 to page 13 line 16). Saxberg is silent as to disclosing specific acrylic adhesive. 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).
Based on the above, 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. Accordingly, nothing was relied on that could be gleaned only from the applicant’s disclosure. That is what is required for improper hindsight. As such, applicant’s argument relating to hindsight is not found persuasive.
Conclusion
THIS ACTION IS MADE FINAL. 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 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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/ANISH P DESAI/ Primary Examiner, Art Unit 1788
September 8, 2026
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