DETAILED ACTION
Response to Amendment
Applicant's amendment filed 4/28/2026 has been entered. Currently, claims 1, 3-14 and 45-47 are pending, claims 2 and 15-44 are canceled and claims 45-47 are new.
Claim Rejections - 35 USC § 112
Claims 1, 3-14 and 45-47 are rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the written description requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for applications subject to pre-AIA 35 U.S.C. 112, the inventor(s), at the time the application was filed, had possession of the claimed invention.
In claim 1, the Examiner does not find support for the limitations that the “topcoat comprises a binder or binder mixture in a proportion of at least 40% by weight of the topcoat” in the specification as originally filed. The closest support for these limitations is at page 33, lines 1-4, but there is no teaching that the topcoat “comprises the binder or binder mixture in a proportion of at least 40%” or that the 40% is “by weight of the topcoat”.
In claim 11, the Examiner does not find support for the limitations that “the proportion of the main constituent in the carrier film is more than 97% by weight” in the specification as originally filed. The closest support for these limitations is at page 31, lines 5-10, but there is no teaching that this proportion is “by weight”.
Claim Rejections - 35 USC § 102
Claims 1, 3, 6, 7, 10-14 and 46 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Ishii et al. (WO 2020/166474), wherein AU 2020223598 is the Australian national stage application and will used as a translation.
With regard to claims 1, 3, 10-12 and 46, the embodiment (2) of a release film having a decorative layer and an adhesive layer thereon that is alkali-soluble and reads on applicants’ transfer film [0016] and [0081]. The release film reads on applicants’ carrier film, the decorative layer reads on applicants’ detachment layer as it is capable of being detached, and the adhesive layer that is alkali-soluble reads on applicants’ alkali-soluble topcoat and transfer ply arranged on the detachment layer [0016]. The release film can be a polyethylene terephthalate film, which reads on applicants’ carrier film made 100% of PET as a main constituent and will inherently be colorless [0053] and [0081]. The decorative layer can have dyes, which reads on the detachment layer being a dyed layer [0039], [0040] and [0081]. The release film can have a thickness of 20 to 100 microns, which reads on the carrier film thickness of claim 10 [0054]. The adhesive layer of the example is made entirely from a binder, and therefore it will inherently have a binder or binder mixture be present in a proportion of at least 40% by weight as claimed and will be transparent or semitransparent [0081].
Given the fact that the structure and materials of the prior are the same as claimed and preferentially disclosed, the alkali-soluble adhesive layer will inherently be at least 50% soluble in an alkaline washing liquid with a pH greater than 8.5.
With regard to claims 6, 13 and 14, in an alternative reading of the reference, the release film can be surface-treated with a release agent, wherein the release agent would also read on applicants’ detachment layer [0053] and [0081]. The release agent may be a silicone compound, which is a resin that will intrinsically be transparent or translucent [0053]. In this reading, the embodiment (2) comprises two layers in the transfer ply, i.e. the decorative and adhesive layer [0016]. Given the fact that the structure and materials of the prior are the same as claimed and preferentially disclosed, the transfer ply will inherently have the detachment forces between each other and between the transfer ply and the carrier layer as claimed.
With regard to claim 7, there can be another embodiment (3) of a release film having a surface protective layer, a decorative layer and an adhesive layer thereon [0016]. The surface protective layer reads on applicants’ at least one protective layer.
Claim Rejections - 35 USC § 103
Claim 1, 3, 4, 6-14 and 45 are rejected under 35 U.S.C. 103 as being unpatentable over Ishii et al. (WO 2020/166474), wherein AU 2020223598 is the Australian national stage application and will used as a translation.
With regard to claims 1, 4, 6, 10-12 and 45, the embodiment (1) of a release film having a decorative layer thereon that is alkali-soluble reads on applicants’ transfer film [0016]. The decorative layer reads on applicants’ transfer ply and alkali-soluble topcoat, and the release film can be a polyethylene terephthalate film, which reads on applicants’ carrier film made 100% of PET as a main constituent, that has been surface-treated with a release agent, which reads on applicants’ detachment layer [0053] and [0081]. The release agent may be a silicone compound, which is a resin that will intrinsically be transparent or translucent [0053]. The decorative layer can have dyes, which reads on it being a dyed layer, and can be 0.1 to 15 microns in thickness and in one example is 2 microns, which teaches the topcoat thickness of claim 4 [0039], [0040] and [0081]. The release film can have a thickness of 20 to 100 microns, which reads on the carrier film thickness of claim 10 [0054]. The release film of polyethylene terephthalate will intrinsically be colorless [0053]. Ishii et al. also teach that in the embodiment where the decorative layer is dissolved by an alkaline solution, the decorative layer has a resin having an acidic group having an acid number of 150 mg KOH/g or more and a colorant such as a dye [0040] and [0043]-[0045]; however, Ishii et al. do not specifically teach the proportion by weight percent of binder in the topcoat.
It would have been obvious to one having ordinary skill in the art to have made the binder any proportion of the decorative layer, including at least 40% by weight, such that the decorative layer had enough binder to keep the colorant together and form a coherent layer while having enough dye to clearly see a color in the decorative layer.
Given the fact that the structure and materials of the prior are the same as claimed and preferentially disclosed, the decorative ink made form a resin compound having an acidic group will inherently be at least 50% soluble in an alkaline washing liquid with a pH greater than 8.5.
With regard to claims 3 and 7, there can be another embodiment (3) of a release film having a surface protective layer, a decorative layer and an adhesive layer thereon [0016]. In this embodiment, the release film, which reads on applicants’ carrier film, has been surface-treated with a release agent, which reads on applicants’ detachment layer [0053]. The surface protective layer is alkali-soluble and reads on applicants’ alkali-soluble topcoat, and the adhesive layer reads on applicants’ at least one primer layer or adhesion-promoter layer [0016]. The materials of the surface protective layer can be a resin, such as polyester, which would be intrinsically transparent or semitransparent [0052].
Since the entirety of the surface protective layer is formed from a binder or binder mixture, it necessarily has these materials present in a proportion of at least 40% by weight of the topcoat as claimed. Given the fact that the structure and materials of the prior are the same as claimed and preferentially disclosed, the surface protective layer made form a resin compound having an acidic group will intrinsically be at least 50% soluble in an alkaline washing liquid with a pH greater than 8.5.
With regard to claims 8 and 9, Ishii et al. also teach in an example that the adhesive layer is coated at 2 g/m2 [0081]; however, they do not specifically teach the thickness of the adhesive layer.
It is known that at a density of 1 g/cm3 a coat weight of 1 g/m2 would have a thickness of 1 micron. It would have been obvious to one having ordinary skill in the art to have made the thickness of the adhesive layer any amount, including from 0.1 to 5 microns or 0.1 to 0.5 microns as claimed, such that the layer had the proper amount of adhesiveness, while not being so thick as to waste materials.
With regard to claim 13, the release agent can be silicone-based compound [0053]. Given the fact that the structure and materials of the prior are the same as claimed and preferentially disclosed, the release agent will intrinsically have the detachment force claimed.
With regard to claim 14, the embodiment (3) comprises two layers in the transfer ply, wherein the term “comprises” does not exclude more than two layers [0016]. Given the fact that the structure and materials of the prior are the same as claimed and preferentially disclosed, the layers of the embodiment (3) will intrinsically have the detachment force claimed.
Claims 5 and 47 are rejected under 35 U.S.C. 103 as being unpatentable over Ishii et al. (WO 2020/166474) in view of Ortmann (WO 2021/213856) of which US 2023/0202151 is the US national stage equivalent and will be used as a translation.
Ishii et al. render obvious all of the limitations of claim 1 in section 4 above; however, they do not specifically teach the thickness of the release agent composition on the release film or a dyed carrier film.
Ortmann teaches a detachment layer for a transfer product, wherein the detachment layer reads on the release agent layer of Ishii et al. [0196] and [0197]. The detachment layer can have a thickness of from 0.05 to 0.3 microns, which overlaps with the thickness claimed [0199]. The carrier film can be dyed [0036].
Since Ishii et al. and Ortmann are both drawn to transfer films for use in stamping processes on containers, it would have been obvious to one having ordinary skill in the art to have made the thickness of the release agent layer of Ishii et al. the same as that taught in Ortmann, including making the thickness from 0.05 to 0.08 microns as claimed as it would be prima facie obvious to make the thickness any amount within the overlapping ranges of the prior art.
It has been held that “[i]n the case where the claimed ranges “overlap or lie inside ranges disclosed by the prior art” a prima facie case of obviousness exists.” Please see MPEP 2144.05, In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); and In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990).
It would also have been obvious to have dyed the release film of Ishii et al. as taught in Ortmann in order to provide a desired visual appearance to the laminate and to provide a color contrast to the decorative layer so as to make it more viewable.
Response to Arguments
Applicant’s arguments, see Remarks, filed 4/28/2026, with respect to the claim objection, the 112(b) rejections and the 112(d) rejections have been fully considered and are persuasive. The relevant objections/rejections have been withdrawn.
Applicant's arguments filed 4/28/2026 have been fully considered but they are not persuasive.
Applicants argue on page 7 that the release layer 1 is always the topmost layer thus the reference is does not teach or suggest a detachment layer arranged between the carrier film and the transfer ply.
The Examiner respectfully disagrees and notes that the orientation in a Figure does not mean that only the layer 1 is topmost as the figure could be viewed upside down. Second, the claims do not require the topcoat to be “topmost layer in the layer structure”, it is noted that the features upon which applicant relies (i.e., “topmost layer in the layer structure”) are not recited in the rejected claim(s). Although the claims are interpreted in light of the specification, limitations from the specification are not read into the claims. See In re Van Geuns, 988 F.2d 1181, 26 USPQ2d 1057 (Fed. Cir. 1993).
Lastly, the Examiner notes that the retaining layer will be peeled off well before thermal transfer processing [0022]. This means the remaining layers of embodiment (1) will exist as a coherent film and will read on applicants’ transfer film [0016]. As stated in the rejection above, there may be a release agent on the release film, which reads on applicants’ detachment layer on the carrier film [0053]. The decorative layer, which reads on applicants’ transfer ply and topcoat, is on the release film, which means the detachment layer is between the transfer ply and the carrier film as claimed.
Applicants argue on pages 7-8 of their Remarks that the prior art does not teach or suggest the new limitations that the binder or binder mixture is present in the topcoat “in a proportion of at least 40% by weight of the topcoat”.
The Examiner notes that these new limitations necessitated the new rejections above as Ishii would anticipate these limitations and would render obvious them obvious for the reasons noted above.
Applicants argue on pages 8-10 of their Remarks that their transfer film is used in a different method of recycling than that of Ishii et al.
The Examiner notes that applicants’ claims are not drafted to a recycling method. The claims are to a product and the product of Ishii et al. renders obvious the product claimed for the reasons noted above. Applicants have not pointed to an unobvious structural difference, and therefore applicants’ arguments are unpersuasive.
Applicants argue on page 11 of their Remarks that the outermost layer of the transfer ply is the surface protection layer, which means separating the decorative layer from the plastic container would not be possible.
The Examiner respectfully disagrees and notes that the simplest embodiment of Ishii has only a decorative layer on the release film, which means applicants are arguing an embodiment that the Examiner is not relying upon in the rejection of claim 1. Also, the embodiment (3) of Ishii can have the adhesive layer be alkali-soluble, which means the entire label can be removed from a bottle and applicants’ argument is unpersuasive.
Applicants argue on page 11 of their Remarks that there is no reason to combine Ishii and Ortmann because Ortmann has a different principle than that of the present application and a different technical field than Ishii.
The Examiner respectfully disagrees and notes that the question is not whether the principle of operation of Ortmann is different than the present invention, but rather whether the combination of Ortmann and Ishii would change the principle of operation of Ishii, see MPEP 2143.01(VI). Ortmann would not change the principle of operation of Ishii as they are both used in stamping films, see [0198] of Ortmann and [0015] of Ishii, which means they are from the same technical field.
Applicants argue on page 12 of their Remarks that the combination of Ishii and Ortmann would result in a water-soluble release layer.
The Examiner respectfully disagrees and notes that this is not the rejection that was made. The Examiner was only looking to the thickness of the detachment layer in the art of stamping films. In this way, Ortmann is a reasonably pertinent reference to Ishii and the Examiner maintains that the combination is proper.
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.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to GERARD T HIGGINS whose telephone number is (571)270-3467. The examiner can normally be reached M-F 9:30-6pm.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Mark Ruthkosky can be reached at (571) 272-1291. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/Gerard Higgins/Primary Examiner, Art Unit 1785
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