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 .
Continued Examination Under 37 CFR 1.114
A request for continued examination under 37 CFR 1.114, including the fee set forth in 37 CFR 1.17(e), was filed in this application after final rejection. Since this application is eligible for continued examination under 37 CFR 1.114, and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114. Applicant's submission filed on February 23, 2026 has been entered.
Response to Arguments
Applicant has amended independent claim 1 to incorporate the previous limitation from dependent claim 9 which recited “wherein the base material is a shrink film” by which claim 9 is canceled. Also, a new independent claim 18 is added.
Applicant argues that the previous combination of prior art references, Yamamuro (US 10,113,088 B2) and Chretien (US 8,916,084 B2), to reject independent claim 1 under 35 U.S.C. § 103 fails to teach or suggest that the base material is a shrink film, as acknowledged in the previous Final Office Action (December 8, 2025). Notwithstanding this, the examiner in this Final Action alleged that this feature is disclosed by an additional prior art reference, Ibbitson (WO 2015/1444757 A1), and, therefore, in combination with Yamamuro and Chretien, would be obvious. Applicant disagrees that it would be obvious to modify Yamamuro in light of Ibbitson.
Applicant maintains that if the shrink film of Ibbetson was applied to Yamamuro, the film would shrink and the recording would not be recorded in the correct position and, in addition, the applicant notes that the invention of
Yamamuro is directed to reliably cutting an adhesive and would be unsatisfactory for its intended purpose because the recording position would no longer be accurate when the film shrank (Applicant arguments/remarks 02/23/2026 p.6).
Examiner counter argues that under broadest reasonable interpretation, there appears to be no reason that the base material, which is a shrink film, would have an adverse effect on the “recordings” which the examiner interprets as constituting an ink-jet printed active energy ray curable composition which is attached in a first step to the base material (See claim 1 and paragraphs [0152]- [0153] which read on it). The examiner determines that the combination of Ibbitson with Yamamuro does not change the mode of operation because the instant case itself as broadly interpreted from the recitation of claim 1 does not recite any limitations that would not allow for the combination of an active energy ray curable composition attached to the base material shrink film to coexist, as it certainly does in the current invention.
Moreover, as to the cutting step, Ibbitson further discloses that the heat application to the heat shrinkable film may be applied after the cutting process or at a separate stage (p. 4 ll. 28-30; p. 10 ll. 34-35).
Regarding new claim 18, new grounds of rejection are provided as necessitated by amendment.
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.
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.
Claim(s) 1-8, 13 and 16 is/are rejected under 35 U.S.C. 103 as being unpatentable over Yamamuro (US 10,113,088 B2), of record, in view of Chretien (US 8,916,084 B2), of record and further in view of Ibbitson (WO 2015/144757 A1), of record.
Regarding Claim 1, Yamamuro discloses a label production method (abs) comprising:
a label peeling portion forming step of attaching an active energy ray curable composition (Col.3 ll. 44-46 acrylate-based bonding adhesive – is an active energy ray-curable type composition) to a base material (Fig. 1 Col. 2 ll. 65-66 adhesive applying step (S1) of applying adhesive to a base sheet to form an adhesive layer) and curing the active energy ray curable composition (Fig. 1 Col. 2 l. 66- Col. 3 l. 2 to form a label peeling portion (Col. 4 ll. 13-15 cured portion located at the edge of the label piece allows the label piece to be easily peeled off from a backing sheet in any direction), wherein
the label peeling portion is formed 10 μm or more higher than the surroundings in the label peeling portion forming step. (Col. 4 ll. 4-6 cured portion preferable has a thickness of 1 µm or more to 50 µm or less and more preferably 10 µm or more to 30 µm or less.).
However, while Yamamuro discloses that the peeling portion is formed at a preferable range of 10 µm to 30 µm, this is of a uniform thickness in a single layer when cured with raised portions subsequently formed from half cutting with a die roll (Col. 5 l. 65-Col. 6 l. 9).
Chretien teaches a method for fabricating three-dimensional objects by depositing amounts of an ultraviolet curable phase change ink composition (abs) applied by ink-jet printing devices (Col. 8 ll. 37-39). These may be used to form raised height objects (Col. 34 ll. 54-59). Moreover, Chretien further teaches from 1 micrometer to about 10,000 micrometers in height can be prepared (Col. 34 ll. 27-30) with each layer of ink adding from about 4 um to about 15 um in height to the image height (Col. 34 ll. 60-61). Thus, these structures can be cured after printing (Col. 36 ll. 18-22 after printing, the markings were cured by exposure to UV light) and formed in an additive fashion instead of in a conventional subtractive fabrication technique (Col. 8 ll. 56-60).
It would have been obvious to one with ordinary skill in the art before the effective filing date of the invention to have modified the disclosure of Yamamuro with the teaching of Chretien, whereby a label production method comprising a label forming step of attaching an active energy ray curable composition to a base material and curing the composition to form a label peeling section, as disclosed by Yamamuro, would also include the formation of a raised portion surrounded by a surrounding section which is formed 10 um or more higher than the surrounding section in the label peeling portion forming step, as taught by Chretien.
One with ordinary skill in the art would add this feature of a raised portion that is 10 um or more higher than the surrounding section because using this additive technique provides the built-in ability to deliver metered amounts of materials to a precise location in time and space (Col. 9 ll. Ll. 57-62).
However, neither Yamamuro nor Chretien disclose that the base material is a shrink film.
Ibbitson discloses a method of making a peelable label (abs) which involves a laminate having a first and second film where the second film is provided only in the region of a finger lift tab (p. 2 ll. 1-11).
In one embodiment, Ibbitson teaches that the second film may be a heat shrinkable film and acts as a base material to the first film (Fig. 13 p. 4 ll. 28-30; p. 10 ll. 30-34 base layer substrate – 50 heat shrinkable strip – 52).
It would have been obvious to one with ordinary skill in the art before the effective filing date of the invention to have modified the disclosure of the combination of Yamamuro and Chretien by incorporating the teaching of Ibbitson whereby a label production method with a label peeling portion forming step with a base material would have that base material be a shrink film.
This would be considered by the skilled artisan to be an advantage because an application of heat causes the base material to preferentially shrink in a direction parallel to the direction of the extent of a peelable portion being curled out of the main plane of the label allowing a raised finger lift tab to be formed (p. 10 l. 36-p. 11 l. 5).
Regarding Claims 2 and 3, the combination of Yamamuro and Chretien disclose all the limitations of claim 1 and 2, respectively, and Yamamuro further discloses a cutting portion forming step of forming (Fig.1 Col. 3 ll. 2-3 cutting step (S3) of cutting the cured portion), in the base material, a cutting portion for cutting the label and further discloses that the cutting portion is a perforated line or an incision (Figs. 3E-3F Col. 5 ll. 65-67 Col. 6 ll. 5-9 continuous adhesive sheet – 24b is then subjected to half-cutting with the die roll – 81. The half-cut is made through the base sheet – 13 into the cured portion. The cutting blades cut the cured portion – 14 thereby attaining secure cutting.)
Regarding Claim 4, the combination of Yamamuro and Chretien disclose all the limitations of claim 2 and Yamamuro further discloses that the cutting portion is formed adjacently to the label peeling portion (Col. 4 ll. 13-19 the cured portion located at the edge of the label piece allows the label piece to be easily peeled off from a backing sheet in any direction – preferably to form the cured portion within a range in width… including the line to be cut in the cutting step).
Regarding Claim 5, the combination of Yamamuro and Chretien disclose all the limitations of claim 2 and Yamamuro further discloses that a plurality of the cutting portions are formed with the label peeling portion interposed therebetween (Fig. 4 Col. 18-20 ll. 24-28 the label pieces – 4 arranged with constant intervals on the separator – 7…it is possible to easily peel off the label piece from the separator – 7 by simply holding an edge of this label piece – 4).
Regarding Claim 6, the combination of Yamamuro and Chretien disclose all the limitations of claim 2 and Yamamuro further discloses that the cutting portion is formed at least in an edge portion of the label in the cutting portion forming step (Col. 4 ll. 7-13 cured portion is preferably formed on a line to be cut in the cutting step and in the vicinity of the line, cured portion preferably located at an edge of the label piece).
Regarding Claim 7, the combination of Yamamuro and Chretien disclose all the limitations of claim 1 and Yamamuro further discloses that the label peeling portion is formed at least in an edge portion of the label in the label peeling portion forming step (Col. 4 ll. 13-15 the cured portion located at the edge of the label piece allows the label piece to be easily peeled off from a backing sheet in any direction).
Regarding Claim 8, the combination of Yamamuro and Chretien disclose all the limitations of claim 1 and Yamamuro further discloses that the label peeling portion is formed continuously from one end to another end of the label (Fig. 4, Col. 4 ll. 7-15 cured portion formed on a line to be cut in the cutting step and in the vicinity of the line…allows the label piece to be easily peeled off from a backing sheet).
Regarding Claim 13, the combination of Yamamuro and Chretien disclose all the limitations of claim 1 and Chretien further discloses that the active energy ray curable composition is discharged from an ink jet head to attach the active energy ray curable composition onto the base material in the label peeling portion forming step (Fig. 2 Col. 36 ll. 9-21).
Regarding Claim 16, the combination of Yamamuro and Chretien disclose all the limitations of claim 1 and Yamamuro further discloses a cutting out step of cutting out the label from the base material (Figs. 3E, 4 abs cured portion – 14 is cured …for enabling cutting labels off the laminated base sheet).
Claim(s) 10-12 is/are rejected under 35 U.S.C. 103 as being unpatentable over the combination of Yamamuro (US 10,113,088 B2), of record, and Chretien (US 8,916,084 B2), of record as applied to claim 1 above, and further in view of Bohringer (DE10-2018-220-512 A1) with machine translation, of record.
Regarding Claim 10, the combination of Yamamuro and Chretien disclose all the limitations of claim 1 but does not disclose that the active energy ray curable composition has a filler and/or an inorganic pigment.
Bohringer discloses an invention relating to a UV-curable clearcoat composition for coating or printing of a substrate/substrate surface (abs) used for different direct decoration purposes including a spectrum of adhesion to a variety of different substrate (paragraph [0003]). As a component of a UV-curable clearcoat composition, an inorganic nanoscale pigment is disclosed (paragraph [0043]). One with ordinary skill would include this feature due to its contribution to the transparency of the clearcoat composition (paragraph [0043]).
Regarding Claim 11, the combination of Yamamuro and Chretien disclose all the limitations of claim 1 but does not disclose that the active energy ray curable composition is a clear composition.
Bohringer discloses its entire invention to be an active energy ray curable composition which is a clear composition (abs UV-curable clearcoat composition. One with ordinary skill in the art would incorporate this feature in the disclosure of Yamamuro because it can be used in a direct decorative application that includes excellent resistance of the decoration to mechanical impact and rapid curing of the design/decoration which enables fast production cycles (paragraph [0003]).
Regarding Claim 12, the combination of Yamamuro and Chretien disclose all the limitations of claim 1 but does not disclose that the active energy ray curable composition includes a monofunctional monomer.
Bohringer discloses that its active energy ray curable composition (UV-curable) does include, in at least one embodiment, a monofunctional monomer (abs, paragraph [0010] [0011] monofunctional acrylate monomer). Bohringer further discloses that a content of the monofunctional monomer is 40% by mass or less based on a total amount of a polymerizable compound included in the active energy ray curable composition (paragraphs {0036 [[0036] where 40% wt. or less is disclosed).
One with ordinary skill in the art would use this formulation of a clearcoat composition comprising monofunctional acrylate monomers because they are particularly suitable in UV-curable clearcoat compositions for coating or printing and are advantageously characterized by excellent reactivity and rapid curing, sufficient adhesion to a large number of substrates/substrate surfaces, reduced blocking resistance and – in the UV-cured state – by mechanical robustness and, in particular, weather resistance (paragraph [0021]).
Claim(s) 14-15 is/are rejected under 35 U.S.C. 103 as being unpatentable over the combination of Yamamuro (US 10,113,088 B2), of record, and Chretien (US 8,916,084 B2), of record as applied to claim 1 above, and further in view of Hermann (CN 110047375 B) with machine translation, of record.
Regarding Claim 14, the combination of Yamamuro and Chretien disclose all the limitations of claim 1 but does not disclose an image forming step of an active energy ray curable composition for an image.
Hermann discloses a laminate structure with an adhesive layer for making retail signs with an adhesive layer and an ink layer (abs).
Hermann further discloses an image forming step of attaching, onto the base material, an active energy ray curable composition for an image, and curing the active energy ray curable composition for an image to form a display image (paragraph [0007] both the adhesive layer and the ink layer which includes an image are derived from a photo curable inkjet composition), wherein
the active energy ray curable composition for an image has a composition different from a composition of the active energy ray curable composition. (paragraph [0008] method of forming an adhesive indicia includes providing a base layer, the first composition includes at least one of a photocurable monomer and a photocurable oligomer and has a first viscosity, The second composition is inkjet-printed to form an image on the substrate layer and includes a colorant whereby the first composition defines an exposed adhesive surface having a second viscosity higher than the first viscosity).
It would have been obvious to one with ordinary skill in the art before the effective filing date of the invention to have modified the disclosure of Yamamuro and Chretien whereby it includes an additional image forming step of attaching onto the base material with an active energy ray curable composition for a display image and curing it with a different composition than the active energy ray curable composition of claim 1.
This method would be considered advantageous to one with ordinary skill in the art because the adhesive layer and the ink layer producing the image can be formed in the same inkjet printing process and cured in a commonly used light curing table and without inserting release liners between the labels (abs).
Regarding Claim 15, the combination of Yamamuro, Chretien and Hermann disclose all the limitations of claim 14, and Hermann further discloses that the active energy ray curable composition for an image includes a monofunctional monomer (paragraph [0031] exemplary monomers for use in the ink composition include monofunctional acrylates, methacrylates, N-vinyl amides, acrylamides, and combinations thereof) and does disclose a content of the monofunctional monomer exceeds 40% by mass based on a total amount of a polymerizable compound included in the active energy ray curable composition for an image (paragraph [0034] where a range of percentage values includes greater than 40% wt. of the ink composition).
Claim(s) 18 is/are rejected under 35 U.S.C. 103 as being unpatentable over Yamamuro (US 10,113,088 B2), of record, in view of Chretien (US 8,916,084 B2), of record.
Regarding Claim 18, Yamamuro discloses a label production method (abs) comprising:
a label peeling portion forming step of attaching an active energy ray curable composition (Col.3 ll. 44-46 acrylate-based bonding adhesive – is an active energy ray-curable type composition) to a base material (Fig. 1 Col. 2 ll. 65-66 adhesive applying step (S1) of applying adhesive to a base sheet to form an adhesive layer) and curing the active energy ray curable composition (Fig. 1 Col. 2 l. 66- Col. 3 l. 2 to form a label peeling portion (Col. 4 ll. 13-15 cured portion located at the edge of the label piece allows the label piece to be easily peeled off from a backing sheet in any direction), wherein
the label peeling portion is formed 10 μm or more higher than the surroundings in the label peeling portion forming step. (Col. 4 ll. 4-6 cured portion preferable has a thickness of 1 µm or more to 50 µm or less and more preferably 10 µm or more to 30 µm or less.).
However, while Yamamuro discloses that the peeling portion is formed at a preferable range of 10 µm to 30 µm, this is of a uniform thickness in a single layer when cured with raised portions subsequently formed from half cutting with a die roll (Col. 5 l. 65-Col. 6 l. 9).
Chretien teaches a method for fabricating three-dimensional objects by depositing amounts of an active energy ray curable composition (abs - ultraviolet curable phase change ink composition) applied by ink-jet printing devices (Col. 8 ll. 37-39). These may be used to form raised height objects (Col. 34 ll. 54-59). Moreover, Chretien further teaches from 1 micrometer to about 10,000 micrometers in height can be prepared (Col. 34 ll. 27-30) with each layer of ink adding from about 4 um to about 15 um in height to the image height (Col. 34 ll. 60-61). Thus, these structures can be cured after printing (Col. 36 ll. 18-22 after printing, the markings were cured by exposure to UV light) and formed in an additive fashion instead of in a conventional subtractive fabrication technique (Col. 8 ll. 56-60).
It would have been obvious to one with ordinary skill in the art before the effective filing date of the invention to have modified the disclosure of Yamamuro with the teaching of Chretien, whereby a label production method comprising a label forming step of attaching an active energy ray curable composition to a base material and curing the composition to form a label peeling section, as disclosed by Yamamuro, would also include the formation of a raised portion surrounded by a surrounding section which is formed 10 um or more higher than the surrounding section in the label peeling portion forming step, as taught by Chretien.
One with ordinary skill in the art would add this feature of a raised portion that is 10 um or more higher than the surrounding section because using this additive technique provides the built-in ability to deliver metered amounts of materials to a precise location in time and space (Col. 9 ll. Ll. 57-62).
Moreover, Chretien also teaches an optional feature in that the active energy ray curable composition includes an optional coloring material (abs, ultraviolet curable phase change ink composition comprising an optional colorant) and that this active energy ray curable composition is a colored composition (Col. 29 l. 66 – Col. 30 l. 3 the optional colorant, if present, may be present in a colored marking material in any desired amount, up to about 75% by weight).
One with ordinary skill would be motivated to include this feature in the label production method because this would provide color on demand for three dimensional objects (Col. 36 ll. 1-2).
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to WAYNE K. SWIER whose telephone number is (571)272-4598. The examiner can normally be reached M-F generally 8:30 am - 5:30 pm PST.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Abbas Rashid can be reached at 571-270-7457. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/WAYNE K. SWIER/ Examiner, Art Unit 1748
/Abbas Rashid/ Supervisory Patent Examiner, Art Unit 1748