DETAILED ACTION
This is an Office action based on application number 18/507,291 filed 13 November 2023, which is a CIP of application number 17/724,761 (now abandoned) filed 20 April 2022, which claims priority to provisional application number 63/256,181 filed 15 October 2021. Claims 1-12, 14-24, and 26-27 are pending. Claims 13 and 25 are canceled.
Amendments to the claims, filed 30 January 2026, have been entered into the above-identified application.
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 .
Withdrawn Rejections
The 35 U.S.C. §112(b) rejections made of record in the previous Office action are withdrawn due to Applicant’s amendments.
Claim Rejections - 35 USC § 112
The following is a quotation of 35 U.S.C. 112(b):
(b) CONCLUSION.—The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the inventor or a joint inventor regards as the invention.
The following is a quotation of 35 U.S.C. 112 (pre-AIA ), second paragraph:
The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.
Claims 1-12, 14-24, and 26-27 are rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor (or for applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention.
Independent claims 1, 5, and 6 each recite the limitation “wherein the label construction does not comprise a weld adhesive” in their last lines. It is unclear to what “weld adhesive” refers as it is not a distinct term of art (e.g., what differentiates said weld adhesive from the generic adhesive layer also required by each claim). Applicant’s original disclosure at Specification paragraph [0026] discloses that the construction does not contain a weld adhesive between the facesheet and the first white layer. This disclosure is not considered a definition of the term; furthermore, the disclosure of its position is not imported into the interpretation of the claims.
For the purpose of prosecution, prior art that explicitly omits a “weld adhesive” or does not explicitly disclose a “weld adhesive” as a necessary component of its structure are construed to meet the limitations of the claim.
Claims 2-4, 7-12, 14-24, and 26-27 do not remedy the deficiencies of their parent claims and are rejected under the same rationale.
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 text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action.
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.
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 1-5 and 26-27 are rejected under 35 U.S.C. 103 as being unpatentable over Bilodeau (US Patent Application Publication No. US 2005/0214497 A1) (Bilodeau) in view of Laurash et al. (US Patent No US 6,836,215 B1) (Laurash), Josephy (US Patent No. 6,210,524 B1) (Josephy), and Blackwell (US Patent Application Publication No. US 2017/0174380 A1) (Blackwell).
Regarding instant claim 1:
Bilodeau discloses a label that comprises: (A) a polymer facestock having an upper surface and a lower surface; (B) an adhesive having an upper surface and a lower surface wherein the upper surface of the adhesive is in contact with the lower surface of the facestock; and (C) a release liner in contact with the lower surface of the adhesive (paragraphs [0010-0013]).
Bilodeau further discloses that the polymer facestock is a multilayer film comprising two to ten or more layers. Bilodeau further discloses that the facestock is opaque, wherein opaque facestocks comprise a polymer and one or more pigments to provide the one layer of a multilayer facestock with color. Bilodeau further discloses that white films are prepared by introducing titanium dioxide and other white pigments in the polymer; furthermore, carbon black is introduced to provide a grey film (paragraph [0048]).
Bilodeau further discloses that the polymer film material comprises polyolefin polymers inclusive of ethylene polymers (paragraph [0049-0050]).
Bilodeau is construed to encompass, within its scope, an embodied polymer facestock comprising a first white polyolefin layer, a grey polyolefin layer adjacent to the white polyolefin layer, and a second white polyolefin layer adjacent to the grey polyolefin layer, as required by the claims. Furthermore, it is the Examiner’s position that it is within the ambit of one of ordinary skill in the art, having the structure of Bilodeau as well as the motivation to provide an opaque facestock, to select the number of individual layers of the multilayer polymer facestock and the color of each individual layer. “[W]here 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 In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955). The discovery of an optimum value of a known result effective variable, without producing any new or unexpected results, is within the ambit of a person of ordinary skill in the art. See In re Boesch, 205 USPQ 215 (CCPA 1980). See MPEP § 2144.05(II).
Bilodeau further discloses that other layers are capable of being added to the labels of the invention disclosed inclusive of a print layer (paragraph [0025]).
Bilodeau discloses that the individual layers of the facestock are selected to provide desirable properties (paragraph [0067]).
Bilodeau does not explicitly disclose a “weld adhesive” present for the label to perform its intended use; therefore, Bilodeau meets the claimed construction that does not comprise a weld adhesive.
Bilodeau does not explicitly disclose a face sheet comprising paper.
However, Laurash discloses a face ply material composed of a material that readily accepts writing or printing, wherein said material is inclusive of white paper (col. 11, lines 35-39).
Before the effective filing date of the claimed invention, it would have been obvious to one of ordinary skill in the art, having the teachings of the prior art before him or her, to include the white paper face ply of Laurash on the multilayer facestock of Bilodeau. The motivation for doing so would have been that the white paper face ply provides the print layer desired by Bilodeau.
Bilodeau does not explicitly disclose the thickness of the overall thickness of the multilayer construction.
However, Josephy teaches that in the manufacture and production of PSA construction, a substantial amount of the overall cost involved is attributed to the material costs of the different layer, e.g., the PSA and the facestock, which is one constraint on the selection of the type and thickness of the various layer; furthermore, Josephy teaches that the layer thickness must also be selected to provide desired properties of convertibility, dispensibility, and conformability (col. 2, lines 3-17).
Since the instant specification is silent to unexpected results, the thickness of the overall multilayer label construction is not considered to confer patentability to the claims. As the cost, convertibility, dispensibility, and conformability of the label are variables that can be modified, among others, by adjusting the overall thickness of the label construction, the precise amount would have been considered a result effective variable by one having ordinary skill in the art at the time the invention was made. As such, without showing unexpected results, the claimed amount cannot be considered critical. Accordingly, one of ordinary skill in the art at the time the invention was made would have optimized, by routine experimentation, thickness of the label in the prior art combination to obtain the desired properties (In re Boesch, 617 F.2d. 272, 205 USPQ 215 (CCPA 1980)), since it has been held that where the general conditions of the claim are disclosed in the prior art, discovering the optimum or workable ranges involves only routine skill in the art. (In re Aller, 105 USPQ 223).
Before the effective filing date of the claimed invention, it would have been obvious to one of ordinary skill in the art, having the teachings of the prior art before him or her, to optimize the thickness of the multilayer label construction of Bilodeau as taught by Josephy. The motivation for doing so would have been to optimize properties inclusive of cost, convertibility, dispensibility, and conformability of the produced label.
Bilodeau does not explicitly disclose that the label construction exhibits about 0% dart in either channel length or channel width for a period for time from about 1 to 24 hours of submersion in ice water.
However, Blackwell teaches that label defects inclusive of darts result from the outgassing of polymeric materials, particularly those used in the production of containers on to which said labels are formed/applied (paragraph [0019]).
Blackwell discloses a label that does not cause defects through a combined use of an adhesive having proper co-adhesive strength to allow gas to escape or flow around bubbles of gas in such a way that no visual channel or evidence of emitted gas is visually present, and through the use of films having sufficient gas transmission properties that allow emitted gas to permeate the film rather than be trapped at the interface between the film an adhesive layer (paragraph [0011]).
Before the effective filing date of claimed invention, it would have been obvious to one of ordinary skill in the art, having the teachings of the prior art before him or her, to select adhesives and film materials that sufficiently allow gas to permeate from the label. The motivation for doing so would have been to avoid any label defects inclusive of darting.
It is noted that the prior art combination does not explicitly measure dart formation after 1 to about 24 hours of submersion in ice water. However, absent evidence of criticality regarding how the dart formation is measured and given the dart formation of the prior art (i.e., that darts are substantially avoided) falls within the range presently claimed, it is the Examiner's position that the prior art meets the requirement of the instant claims.
Therefore, it would have been obvious to combine Laurash, Josephy, and Blackwell with Bilodeau to obtain the invention as specified by the instant claim.
Regarding instant claims 2-4:
Bilodeau further discloses that the polymer facestock is a multilayer film comprising two to ten or more layers. Bilodeau further discloses that the facestock is opaque, wherein opaque facestocks comprise a polymer and one or more pigments to provide the one layer of a multilayer facestock with color. Bilodeau further discloses that white films are prepared by introducing titanium dioxide and other white pigments in the polymer; furthermore, carbon black is introduced to provide a grey film (paragraph [0048]).
Bilodeau further discloses that the polymer facestock material is chosen to provide desired properties such as improved tensile strength, elongation, impact strength, tear strength, and optics (paragraph [0066]). Further, Bilodeau teaches that the individual layers are selected to provide desirable properties (paragraph [0067]).
Bilodeau is construed to encompass, within its scope, an embodied polymer facestock comprising a first white polyolefin layer, a grey polyolefin layer adjacent to the white polyolefin layer, and a second white polyolefin layer adjacent to the grey polyolefin layer, as required by the claims. Furthermore, it is the Examiner’s position that it is within the ambit of one of ordinary skill in the art, having the structure of Bilodeau as well as the motivation to provide an opaque facestock, to select the number of individual layers of the multilayer polymer facestock and the color of each individual layer, and the thickness and coat/weight of each individual layer. “[W]here 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 In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955). The discovery of an optimum value of a known result effective variable, without producing any new or unexpected results, is within the ambit of a person of ordinary skill in the art. See In re Boesch, 205 USPQ 215 (CCPA 1980). See MPEP § 2144.05(II).
Regarding instant claims 26-27:
Bilodeau teaches that the polymer facestock is chosen to provide film structures with desired properties such as improved tensile strength, elongation, impact strength, tear strength, and optics (paragraph [0066]). It is the Examiner’s position that the selection of the polymer facestock includes the selection of polymer type and amount thereof.
The prior art combination does not explicitly disclose the combined coat weight of the polyethylene layers. However, since the instant specification is silent to unexpected results, the specific amount of polyethylene coating is not considered to confer patentability to the claims. As the desired properties of the facestock inclusive of improved tensile strength, elongation, impact strength, tear strength, and optics are variables that can be modified, among others, by adjusting the amount of polyethylene coating, the precise amount would have been considered a result effective variable by one having ordinary skill in the art at the time the invention was made. As such, without showing unexpected results, the claimed amount cannot be considered critical. Accordingly, one of ordinary skill in the art at the time the invention was made would have optimized, by routine experimentation, the amount of polyethylene coating in the prior art combination to obtain the desired properties (In re Boesch, 617 F.2d. 272, 205 USPQ 215 (CCPA 1980)), since it has been held that where the general conditions of the claim are disclosed in the prior art, discovering the optimum or workable ranges involves only routine skill in the art. (In re Aller, 105 USPQ 223).
Regarding instant claim 5:
Bilodeau discloses a label that comprises: (A) a polymer facestock having an upper surface and a lower surface; (B) an adhesive having an upper surface and a lower surface wherein the upper surface of the adhesive is in contact with the lower surface of the facestock; and (C) a release liner in contact with the lower surface of the adhesive (paragraphs [0010-0013]).
Bilodeau further discloses that the polymer facestock is a multilayer film comprising two to ten or more layers. Bilodeau further discloses that the facestock is opaque, wherein opaque facestocks comprise a polymer and one or more pigments to provide the one layer of a multilayer facestock with color. Bilodeau further discloses that white films are prepared by introducing titanium dioxide and other white pigments in the polymer; furthermore, carbon black is introduced to provide a grey film (paragraph [0048]).
Bilodeau further discloses that the polymer film material comprises polyolefin polymers inclusive of ethylene polymers (paragraph [0049-0050]).
Bilodeau is construed to encompass, within its scope, an embodied polymer facestock comprising a first white polyolefin layer, and a grey polyolefin layer adjacent to the white polyolefin layer, as required by the claims. Furthermore, it is the Examiner’s position that it is within the ambit of one of ordinary skill in the art, having the structure of Bilodeau as well as the motivation to provide an opaque facestock, to select the number of individual layers of the multilayer polymer facestock and the color of each individual layer. “[W]here 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 In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955). The discovery of an optimum value of a known result effective variable, without producing any new or unexpected results, is within the ambit of a person of ordinary skill in the art. See In re Boesch, 205 USPQ 215 (CCPA 1980). See MPEP § 2144.05(II).
Bilodeau further discloses that other layers are capable of being added to the labels of the invention disclosed inclusive of a print layer (paragraph [0025]).
Bilodeau discloses that the individual layers of the facestock are selected to provide desirable properties (paragraph [0067]).
Bilodeau does not explicitly disclose a “weld adhesive” present for the label to perform its intended use; therefore, Bilodeau meets the claimed construction that does not comprise a weld adhesive.
Bilodeau does not explicitly disclose a face sheet comprising paper.
However, Laurash discloses a face ply material composed of a material that readily accepts writing or printing, wherein said material is inclusive of white paper (col. 11, lines 35-39).
Before the effective filing date of the claimed invention, it would have been obvious to one of ordinary skill in the art, having the teachings of the prior art before him or her, to include the white paper face ply of Laurash on the multilayer facestock of Bilodeau. The motivation for doing so would have been that the white paper face ply provides the print layer desired by Bilodeau.
Bilodeau does not explicitly disclose the thickness of the overall thickness of the multilayer construction.
However, Josephy teaches that in the manufacture and production of PSA construction, a substantial amount of the overall cost involved is attributed to the material costs of the different layer, e.g., the PSA and the facestock, which is one constraint on the selection of the type and thickness of the various layer; furthermore, Josephy teaches that the layer thickness must also be selected to provide desired properties of convertibility, dispensibility, and conformability (col. 2, lines 3-17).
Since the instant specification is silent to unexpected results, the thickness of the overall multilayer label construction is not considered to confer patentability to the claims. As the cost, convertibility, dispensibility, and conformability of the label are variables that can be modified, among others, by adjusting the overall thickness of the label construction, the precise amount would have been considered a result effective variable by one having ordinary skill in the art at the time the invention was made. As such, without showing unexpected results, the claimed amount cannot be considered critical. Accordingly, one of ordinary skill in the art at the time the invention was made would have optimized, by routine experimentation, thickness of the label in the prior art combination to obtain the desired properties (In re Boesch, 617 F.2d. 272, 205 USPQ 215 (CCPA 1980)), since it has been held that where the general conditions of the claim are disclosed in the prior art, discovering the optimum or workable ranges involves only routine skill in the art. (In re Aller, 105 USPQ 223).
Before the effective filing date of the claimed invention, it would have been obvious to one of ordinary skill in the art, having the teachings of the prior art before him or her, to optimize the thickness of the multilayer label construction of Bilodeau as taught by Josephy. The motivation for doing so would have been to optimize properties inclusive of cost, convertibility, dispensibility, and conformability of the produced label.
Bilodeau does not explicitly disclose that the label construction exhibits about 0% dart in either channel length or channel width for a period for time from about 1 to 24 hours of submersion in ice water.
However, Blackwell teaches that label defects inclusive of darts result from the outgassing of polymeric materials, particularly those used in the production of containers on to which said labels are formed/applied (paragraph [0019]).
Blackwell discloses a label that does not cause defects through a combined use of an adhesive having proper co-adhesive strength to allow gas to escape or flow around bubbles of gas in such a way that no visual channel or evidence of emitted gas is visually present, and through the use of films having sufficient gas transmission properties that allow emitted gas to permeate the film rather than be trapped at the interface between the film an adhesive layer (paragraph [0011]).
Before the effective filing date of claimed invention, it would have been obvious to one of ordinary skill in the art, having the teachings of the prior art before him or her, to select adhesives and film materials that sufficiently allow gas to permeate from the label. The motivation for doing so would have been to avoid any label defects inclusive of darting.
It is noted that the prior art combination does not explicitly measure dart formation after 1 to about 24 hours of submersion in ice water. However, absent evidence of criticality regarding how the dart formation is measured and given the dart formation of the prior art (i.e., that darts are substantially avoided) falls within the range presently claimed, it is the Examiner's position that the prior art meets the requirement of the instant claims.
Therefore, it would have been obvious to combine Laurash, Josephy, and Blackwell with Bilodeau to obtain the invention as specified by the instant claim.
Claims 6-12, 14-24 are rejected under 35 U.S.C. 103 as being unpatentable over Bilodeau in view of Mazini et al. (US Patent Application Publication No. US 2011/0281041 A1) (Mazini) and Blackwell.
Regarding instant claims 6-11 and 23-34:
Bilodeau discloses a label that comprises: (A) a polymer facestock having an upper surface and a lower surface; (B) an adhesive having an upper surface and a lower surface wherein the upper surface of the adhesive is in contact with the lower surface of the facestock; and (C) a release liner in contact with the lower surface of the adhesive (paragraphs [0010-0013]).
Bilodeau further discloses that the polymer facestock is a multilayer film comprising two to ten or more layers. Bilodeau further discloses that the facestock is opaque, wherein opaque facestocks comprise a polymer and one or more pigments to provide the one layer of a multilayer facestock with color. Bilodeau further discloses that white films are prepared by introducing titanium dioxide and other white pigments in the polymer; furthermore, carbon black is introduced to provide a grey film (paragraph [0048]).
Bilodeau further discloses that the polymer film material comprises polyolefin polymers inclusive of ethylene polymers (paragraph [0049-0050]).
Bilodeau is construed to encompass, within its scope, an embodied polymer facestock comprising a first white polyolefin layer, a grey polyolefin layer adjacent to the white polyolefin layer, and a second white polyolefin layer adjacent to the grey polyolefin layer, as required by the claims. Furthermore, it is the Examiner’s position that it is within the ambit of one of ordinary skill in the art, having the structure of Bilodeau as well as the motivation to provide an opaque facestock, to select the number of individual layers of the multilayer polymer facestock and the color of each individual layer. “[W]here 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 In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955). The discovery of an optimum value of a known result effective variable, without producing any new or unexpected results, is within the ambit of a person of ordinary skill in the art. See In re Boesch, 205 USPQ 215 (CCPA 1980). See MPEP § 2144.05(II).
Bilodeau further discloses that other layers are capable of being added to the labels of the invention disclosed inclusive of a print layer (paragraph [0025]).
Bilodeau does not explicitly disclose a “weld adhesive” present for the label to perform its intended use; therefore, Bilodeau meets the claimed construction that does not comprise a weld adhesive.
Bilodeau does not explicitly disclose a face sheet comprising paper.
However, Mazini discloses labels (paragraph [0001]). Said labels comprise facestock layers formed from a paper material such as plain paper, synthetic paper, and cellulose derivatives (paragraph [0028]).
Before the effective filing date of the claimed invention, it would have been obvious to one of ordinary skill in the art, having the teachings of the prior art before him or her include the synthetic paper or cellulose-derivative paper facestock of Mazini on to the upper surface of the polymer facestock of Bilodeau. The motivation for doing so would have been that such Mazini recognizes that a paper material is an art recognized layer for the formation of label constructions and the label structure of Bilodeau is readily acceptable of additional layers added to the facestock layer. The combination of familiar elements is likely to be obvious when it does no more than yield predictable results. See KSR International Co. v. Teleflex Inc., 550 U.S. 398, 415-421, 82 USPQ2d 1385, 1395 – 97 (2007). See MPEP § 2143(A).
Bilodeau does not explicitly disclose that the label construction exhibits about 0% dart in either channel length or channel width for a period for time from about 1 to 24 hours of submersion in ice water.
However, Blackwell teaches that label defects inclusive of darts result from the outgassing of polymeric materials, particularly those used in the production of containers on to which said labels are formed/applied (paragraph [0019]).
Blackwell discloses a label that does not cause defects through a combined use of an adhesive having proper co-adhesive strength to allow gas to escape or flow around bubbles of gas in such a way that no visual channel or evidence of emitted gas is visually present, and through the use of films having sufficient gas transmission properties that allow emitted gas to permeate the film rather than be trapped at the interface between the film an adhesive layer (paragraph [0011]).
Before the effective filing date of claimed invention, it would have been obvious to one of ordinary skill in the art, having the teachings of the prior art before him or her, to select adhesives and film materials that sufficiently allow gas to permeate from the label. The motivation for doing so would have been to avoid any label defects inclusive of darting.
It is noted that the prior art combination does not explicitly measure dart formation after 1 to about 24 hours of submersion in ice water. However, absent evidence of criticality regarding how the dart formation is measured and given the dart formation of the prior art (i.e., that darts are substantially avoided) falls within the range presently claimed, it is the Examiner's position that the prior art meets the requirement of the instant claims.
Therefore, it would have been obvious to combine Mazini and Blackwell with Bilodeau to obtain the invention as specified by the instant claims.
Regarding instant claim 12:
Bilodeau further discloses that the multilayer film facestocks are prepared by extrusion of a continuous film to form one layer followed by the application of one or more additional layers on the extruded layer by extrusion of one or more additional layers (paragraph [0069]).
The prior art combination does not explicitly disclose that the first white layer, the gray layer, and the second white layer are extruded on to the paper; however, such a limitation is considered a product-by-process limitation. “[E]ven though product-by-process claims are limited by and defined by the process, determination of patentability is based on the product itself. The patentability of a product does not depend on its method of production. If the product in the product-by-process claim is the same as or obvious from a product of the prior art, the claim is unpatentable even though the prior product was made by a different process”, In re Thorpe, 777 F.2d 695, 698, 227 USPQ 964, 966 (Fed. Cir. 1985). Further, “although produced by a different process, the burden shifts to applicant to come forward with evidence establishing an unobvious difference between the claimed product and the prior art product”, In re Marosi, 710 F.2d 798, 802, 218 USPQ 289, 292 (Fed. Cir.1983). See MPEP § 2113.
Therefore, absent evidence of criticality regarding the presently claimed extrusion process of the individual white and gray layers onto the paper face sheet, and given that the prior art combination meets the requirements of the claimed structure, the prior art combination meets the requirements of the instant claim.
Regarding instant claim 14:
Bilodeau further discloses that a tackifier is added to induce or enhance pressure sensitive properties of the adhesive (paragraph [0045]) (i.e., the adhesive layer necessarily comprises a pressure-sensitive adhesive when compounded with said tackifier).
Regarding instant claim 15:
Bilodeau further discloses that the adhesive is a mixture comprising at least a resin system, wherein said resin system is based on acrylates (paragraphs [0036; 0039]).
Regarding instant claims 16-21:
Bilodeau discloses a desire to produce opaque facestock materials (paragraph [0048]).
Bilodeau’s disclosure of an opaque facestock material is construed to encompass those materials having an opacity up to and inclusive of 100% opacity.
The prior art combination is silent with regard to the specific dry opacity of the label construction, the specific wet opacity of label construction, and the specific delta opacity between the wet and dry label construction.
However, Bilodeau is construed to encompass, within its scope, an embodied polymer facestock comprising a first white polyolefin layer, a grey polyolefin layer adjacent to the white polyolefin layer, and a second white polyolefin layer adjacent to the grey polyolefin layer, as required by the claims. Furthermore, it is the Examiner’s position that it is within the ambit of one of ordinary skill in the art, having the structure of Bilodeau as well as the motivation to provide an opaque facestock, to select the number of individual layers of the multilayer polymer facestock, the color of each individual layer, and the coating amount of each layer in order to achieve the desired opaque structure under any and all conditions encountered during the intended use of the label structure. “[W]here 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 In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955). The discovery of an optimum value of a known result effective variable, without producing any new or unexpected results, is within the ambit of a person of ordinary skill in the art. See In re Boesch, 205 USPQ 215 (CCPA 1980). See MPEP § 2144.05(II).
Regarding instant claim 22:
Bilodeau discloses a desire to produce opaque facestock materials (paragraph [0048]).
Bilodeau’s disclosure of an opaque facestock material is construed to encompass those materials having an opacity up to and inclusive of 100% opacity.
In the original disclosure, Applicant describes “show through” as a qualitative, visual observation of the amount/area of a facestock or construction that is wet, wherein a lower percentage observation indicates greater opacity (see Specification at paragraph [0046]). However, Bilodeau is construed to encompass, within its scope, an embodied polymer facestock comprising a first white polyolefin layer, a grey polyolefin layer adjacent to the white polyolefin layer, and a second white polyolefin layer adjacent to the grey polyolefin layer, as required by the claims. Furthermore, it is the Examiner’s position that it is within the ambit of one of ordinary skill in the art, having the structure of Bilodeau as well as the motivation to provide an opaque facestock, to select the number of individual layers of the multilayer polymer facestock and the color of each individual layer in order to achieve the desired opaque structure under any and all conditions encountered during the intended use of the label structure. “[W]here 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 In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955). The discovery of an optimum value of a known result effective variable, without producing any new or unexpected results, is within the ambit of a person of ordinary skill in the art. See In re Boesch, 205 USPQ 215 (CCPA 1980). See MPEP § 2144.05(II).
Answers to Applicant’s Arguments
In response to Applicant’s arguments regarding the previous 35 U.S.C. §112(b) rejections of record, the previous grounds are withdrawn due to Applicant’s amendments.
Applicant’s arguments regarding the prior art rejections of record are fully considered, but are unpersuasive.
Applicant first contends that Bilodeau teaches away from the absence of a weld adhesive. Applicant contends that Bilodeau requires an aneaerobic weld adhesive and cites paragraph [0035] of Bilodeau as support.
Applicant’s argument is unpersuasive. Paragraphs [0035+] Bilodeau is reproduced below:
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Bilodeau does not explicitly recite a “weld adhesive” as required by the claims. Further, the disclosed anaerobic adhesive meets requisite adhesive layer required by the claims. Therefore, since Bilodeau does not explicitly require a weld adhesive necessary for the disclosed structure to adequately perform its intended use, Bilodeau meets the claimed absence of the weld adhesive.
Applicant further argues that Bilodeau fails to teach the claimed thickness and Josephy teaches away from it. Specifically, Applicant contends that Josephy discloses the preparation of very thin polymer films (e.g., less than 1 mil and even less than 0.5 mil), which is outside of the claimed range.
Applicant’s arguments are unpersuasive. Disclosed examples and preferred embodiments do not constitute a teaching away from a broader disclosure or nonpreferred embodiments. See MPEP §2123(II). In the instant case, the very thin range of less than 1 mil disclosed by Josephy is a preferred range that does not teach away from the generic teachings relied upon in the prior art rejections of record. Further, Josephy teaches that the overall thickness of the facestock and adhesive composite is from 0.2 mil to 3.0 mils (i.e., 5.08 to 76.2 μm), which overlaps the claimed range (i.e., the disclosure of Josephy does not teach away from the claimed range.
Applicant further argues that the references fail to teach the claimed coat weight. Applicant traverses the Examiner’s position that it is within the ambit of the person of ordinary skill in the art to select the thickness and coat weight of each individual layer by arguing that this is simply a blanket statement that is unsupported by the text of Bilodeau because Bilodeau does not even mention coat weight. Applicant contends that the original disclosure provides evidence of unexpected results attributed to the claimed coat weights.
Applicant’s arguments are unpersuasive. Bilodeau teaches that the polymer facestock is chosen to provide film structures with desired properties such as improved tensile strength, elongation, impact strength, tear strength, and optics (paragraph [0066]). It is the Examiner’s position that the selection of the polymer facestock includes the selection of polymer type and amount thereof, as discussed above. Therefore, it is the Examiner’s position that one of ordinary skill in the art would readily optimize, through routine experimentation, the selection of the type and amount of polymeric coatings to obtain the described benefits.
As to Applicant’s arguments attributing unexpected results attributed to the claimed invention, 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." In other words, the showing of unexpected results must be reviewed to see if the results occur over the entire claimed range. See MPEP 716.02(d). In the instant case, the evidence on which Applicant relies to show unexpected results are much narrower in scope that the claimed structure; therefore, the evidence does not provide support that the entirety of the scope of Applicant’s claimed invention would have the alleged unexpected results.
Applicant further contends that the Examiner’s rejection relies upon improper hindsight. Applicant alleges that the Office is picking and choosing features from among disparate references based on the teachings of the specification without acknowledging the full context of these features.
Applicant’s arguments are unpersuasive. 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).
Conclusion
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). 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.
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/TAM/Examiner, Art Unit 1788 05/19/2026
/HUMERA N. SHEIKH/Supervisory Patent Examiner, Art Unit 1784
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