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 .
Allowable Subject Matter
The indicated allowability of claim 16 is withdrawn in view of the newly discovered reference(s) to Husemann (2007/0059470). Rejections based on the newly cited reference(s) follow.
Claim Rejections - 35 USC § 102
The following is a quotation of the appropriate paragraphs of 35 U.S.C. 102 that form the basis for the rejections under this section made in this Office action:
A person shall be entitled to a patent unless –
(a)(2) the claimed invention was described in a patent issued under section 151, or in an application for patent published or deemed published under section 122(b), in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention.
Claims 13-15 are rejected under 35 U.S.C. 102(a)(2) as being anticipated by Husemann (2007/0059470).
Husemann discloses a release liner, comprising: a paper or a film (40’, Fig. 2) having first and second sides; a first release material (25, Fig. 2) applied to the first side of the paper or film material and a second release material (25’, Fig. 2) is applied to the second side of the paper or film material.
Regarding claim 14, see paragraph 0036.
Regarding claim 15, Husemann discloses an adhesive (30, Fig. 2) applied to the first release material (25, Fig. 2).
Regarding claim 16, the first release material disclosed by Husemann is different from the second release material. See paragraphs 0012-0013.
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.
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 1-6, 8, and 10-12 are rejected under 35 U.S.C. 103 as being unpatentable over Mitchell et al. (2018/0147806) in view of Blackwell et al. (2013/0048221) and Josephy (6,210,524).
Mitchell discloses a substrate (4, Fig. 1) having a first side and a second side; a release liner (2 Fig. 1), the release liner having a release material applied to a side thereof (paragraph 0055); and an adhesive (5, Fig. 1) applied to the release liner on the release material (Fig. 3), wherein the adhesive is between the release liner and substrate (Fig. 3).
However, Mitchell does not disclose that the adhesive is dissolvable from the substrate such that the substrate can be recycled. Blackwell teaches using a dissolvable adhesive in order to make the substrate to which the adhesive is attached recyclable. See paragraph 0037. It would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to use a dissolvable adhesive in the label disclosed by Mitchell, as taught by Blackwell, in order to make the label recyclable.
Further, Mitchell does not disclose an overlay and a second adhesive. Josephy teaches providing an overlay (33, Fig. 1C) and a second adhesive (32, Fig. 1C). It would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to provide the label disclosed by Mitchell with an overlay and a second adhesive, as taught by Josephy, in order to create a composite laminate label. According to the teachings of Blackwell, it would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to make the second adhesive dissolvable, too, in order to recycle the substrate.
Regarding claim 2, see paragraph 0005 of Mitchell.
Regarding claim 3, see paragraph 0081.
Regarding claim 4, see paragraph 0172, which states that the face stock is oriented, and paragraph 0088, which states that the face stock can comprise polypropylene.
Regarding claim 5, Mitchell does not disclose that the recyclable graphic media can comprise biaxially oriented polypropylene (BOPP). However, because the selection of a known material based on its suitability for its intended use is within the level of ordinary skill of a worker in the art, and since a person having ordinary skill in the art would know that BOPP would be suitable for the fabrication of a face stock, it would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to fabricate the face stock disclosed by Mitchell from BOPP. See MPEP § 2144.07.
Regarding claim 6, Blackwell discloses using a pressure-sensitive acrylic emulsion adhesive in a label (paragraph 0026). It would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to use a pressure-sensitive acrylic emulsion adhesive in the label disclosed by Mitchell, as taught by Blackwell, as a matter of design choice.
Regarding claim 10, the recitation that the graphic media is “a floor graphic” is a statement of intended use. A recitation of the intended use of the claimed invention must result in a structural difference between the claimed invention and the prior art in order to patentably distinguish the claimed invention from the prior art. If the prior art structure is capable of performing the intended use, then it meets the claim. In this case, the label disclosed by Mitchell is capable of being secured to a floor.
Regarding claim 11, the release material is applied to a side of the release liner (paragraph 0055). However, it is not known whether the liner is formed from a paper or a film. Because the selection of a known material based on its suitability for its intended use is within the level of ordinary skill of a worker in the art, and since a person having ordinary skill in the art would know that a paper or a film would be suitable for the fabrication of a release liner, it would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to fabricate the release liner disclosed by Mitchell from a paper or a film. See MPEP § 2144.07.
Regarding claim 12, see paragraph 0169.
Claim 17 is rejected under 35 U.S.C. 103 as being unpatentable over Husemann (2007/0059470) in view of Brown (4,177,812).
Husemann discloses the invention substantially as claimed. However, Husemann does not disclose that the first release material on the first side of the paper or film material, and/or the second release material on the second side of the paper or film material is retreated or pre-treated to increase an affinity of the release material to the adhesive.
Brown teaches pretreating part of a release liner to increase the affinity of the adhesive for the liner. See Fig. 2 and column 4, lines 11-17. It would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to pretreat a portion of the liner disclosed by Husemann to increase the affinity of the adhesive for the liner, as taught by Brown, in order to cause that part of the liner to release under a higher pressure than other parts of the liner.
Response to Arguments
Applicant's arguments filed August 28, 2025 have been fully considered but they are not persuasive. Applicant alleges that “there is nothing in the documents themselves, and it is only the Examiner’s speculation and perhaps hindsight, which combines these references.” On the contrary, the teachings from the references, as well as the rationale for combining them, are clearly set forth above.
Conclusion
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 GARY C HOGE whose telephone number is (571)272-6645. The examiner can normally be reached Monday through Friday.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Jonathan Liu can be reached at (571) 272-8227. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/GARY C HOGE/Primary Examiner, Art Unit 3631