DETAILED ACTION
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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 2/18/2026 has been entered.
Response to Amendment
Applicant's amendment filed 2/18/2026 has been entered. Currently, claims 1-16 and 19 are pending and claims 17, 18 and 20 are cancelled.
Claim Rejections - 35 USC § 102
Claims 1-3, 10 and 15 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Keeton (8,764,323).
With regard to claims 1-3 and 10, Keeton discloses the label of Figure 5 having a substrate 502, which reads on applicants’ facestock, a print layer 504 that includes a thermally sensitive coating for direct thermal printing, which reads on applicants’ single direct thermal coating layer, and an adhesive layer 506, which reads on applicants’ layer of adhesive directly on the direct thermal coating layer (col. 6, lines 49-59). The print layer 504 may comprise a leuco dye, which reads on applicants’ thermochromic ink (col. 6, lines 58-59 and col. 7, lines 40-45). The substrate in the illustrated examples can be formed from a synthetic material such as polyethylene (col. 9, lines 50-56).
With regard to claim 15, the label of Keeton can be provided in a roll, which means the layer of adhesive of Figure 5 will be attached to another facestock under the layer of adhesive (col. 2, lines 27-33).
Claims 1-3, 10-15 and 19 and are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Iino et al. (US 2008/0113863).
With regard to claims 1-3, Iino et al. teach a thermal label that can comprise a transparent substrate, a rewritable thermal layer, which reads on applicants’ single direct thermal coating layer, and an adhesive layer [0035]. The rewritable thermal layer can be an embodiment (c) having a reversible heat sensitive color developing layer comprising an agent for light absorption, wherein the colorless dye precursor in the color developing layer can include a dye such as 3-(N-ethyl-N-tolyl)amino-6-methyl-7-anilinofluorane, which reads on applicants’ thermochromic ink and leuco dye [0052] and [0067]-[0069]. The adhesive layer can be formed directly on the functional layer, which is the reversible heat sensitive color developing layer [0071] and [0075] and Figure 1.
With regard to claims 10 and 11, the transparent substrate can be a polyester or a blend of resins that include an epoxy resin, which is a thermoset material [0039]-[0041].
With regard to claim 12, the label can also comprise an IC tag, which is the same as an RFID tag and reads on applicants’ wireless communication component [0096].
With regard to claims 13-15, there may be a release sheet on the adhesive layer, which reads on applicants’ release liner or another facestock [0079]. The release sheet can be a clay coated paper coated with a releasing agent, which reads on applicants’ release layer and a support liner [0079]. Alternatively, the adherend that the label is attached to can read on applicants’ another facestock [0035].
With regard to claim 19, the heat sensitive color developing layer is irradiated with laser light through the transparent substrate, which reads on applicants’ heat activating selected zones through the facestock and darkening those zones as the colorless color former will darken to form a color on heating [0095]. The label is attached to an adherend [0035].
Claim Rejections - 35 USC § 103
Claims 9 and 16 are rejected under 35 U.S.C. 103 as being unpatentable over Keeton (8,764,323).
Keeton teaches all of the limitations of claims 1 and 15 above. They also teach that the label can be attached to an adherend such as a windshield, which also reads on applicants’ another facestock (col. 7, lines 1-3); however, they do not specifically teach the thicknesses claimed.
It would have been obvious to one having ordinary skill in the art to have made the thickness of the substrate any amount, including 0.1 to 2.8 mil, such that the thickness of the substrate was large enough to not tear during use while not being so thick as to not be flexible or wasting materials.
It would have been obvious to one having ordinary skill in the art to have made the thickness of the windshield larger than the thickness of the substrate. It would have been obvious to have made the windshield thicker that the substrate of the label such that the windshield would be thick enough such that it would resist damage during driving.
Claims 4-8 are rejected under 35 U.S.C. 103 as being unpatentable over Keeton (8,764,323) in view of Akutsu et al. (5,607,894).
Keeton teaches all of the limitations of claim 3 above. They also teach that thermally sensitive coating can include the leuco dye, a developer and a sensitizer (col. 7, lines 37-45); however, they do not specifically teach all the materials claimed.
Akutsu et al. teach a heat-sensitive recording material comprising a fluoran color former, a combination of developers such as bisphenol A, a phenol stabilizer and a sensitizer such as 1,2-bis-(3-methylphenoxy)ethane or 2-benzyloxynaphthalene (col. 4, lines 60-67 and col. 5, line 27 to col. 6, line 36). This heat-sensitive recording material can be used in labels (col. 7, lines 1-5).
Since Keeton and Akutsu et al. are drawn to thermal recording labels, it would have been obvious to one having ordinary skill in the art to have substituted the heat-sensitive recording layer materials of Akutsu et al. for the thermally sensitive coating materials of Keeton. The results of such a substitution would have been predictable to one having ordinary skill as both references are for thermal recording media known for use in labels.
Claim 11 is rejected under 35 U.S.C. 103 as being unpatentable over Keeton (8,764,323) in view of Iino et al. (US 2008/0113863).
Keeton teaches all of the limitations of claim 10, including that the substrate may be polyester (col. 9, lines 50-56); however, they do not specifically teach that their substrate can be a thermoset material.
Iino et al. teach a thermal label having a substrate that can be polyethylene terephthalate, i.e. polyester, or a blend of resins that include an epoxy resin, which is a thermoset material [0039]-[0041].
Since Keeton and IIno et al. are drawn to thermal recording labels, it would have been obvious to one having ordinary skill in the art to have substituted the known epoxy containing substrate materials of Iino et al. for the substrate materials in Keeton. The results of such a substitution would have been predictable to one having ordinary skill. These are known equivalents used for the same purpose as both references teach overlapping resinous materials for the support/substrate.
Claim 12 is rejected under 35 U.S.C. 103 as being unpatentable over Keeton (8,764,323) in view of Shimbo et al. (US 2005/0014645).
Keeton teaches all of the limitations of claim 1 above; however, they do not specifically teach a wireless communication component.
Shimbo et al. teach a thermosensitive recording medium/label that can have an RF-ID tag, which read on applicants’ wireless communication component, either on or in the structure of the thermosensitive recording medium [0324] and [0325].
Since Keeton and Shimbo et al. are both drawn to thermosensitive recording media labels, it would have been obvious to one having ordinary skill in the art to have combined in the RF-ID tag of Shimbo et al. into the heat-activated label of Keeton. The results of such a combination would have been predictable; further, each of the elements would have performed the same in combination as they had separately. The rationale to include this is to provide various other information being stored on the recording medium.
Claims 9 and 16 are rejected under 35 U.S.C. 103 as being unpatentable over Iino et al. (US 2008/0113863).
Iino et al. teach all of the limitations of claims 1 and 15 above. They also teach that the thickness of the transparent substrate can be from 10 to 300 microns, which overlaps with the range claimed, and the label can be attached to an adherend such as a card board box [0002] and [0044]; however, they do not specifically teach the thicknesses claimed.
Since there is an overlap in the thickness of the transparent support of the prior art and the thickness of the facestock claimed, a prima facie case of obviousness exists. 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 is noted that 0.10 mil to 2.8 mil of the claim is approximately 2.54 to 71.1 microns.
It would have been obvious to one having ordinary skill in the art to have made the thickness of the card board box adherend larger than the thickness of the transparent substrate. It would have been obvious to have made the card board box thicker that the transparent substrate of the label such that the card board box would be thick enough such that it would resist damage during shipping.
Response to Arguments
Applicant's arguments filed 2/18/2026 have been fully considered but they are not persuasive.
Applicants argue on page 4 of their Remarks that since Keeton states that the print layer 504 “can include one or more layers of thermal imaging materials”, this means “at least one other layer would be present” and would not teach the “single direct thermal coating layer” claimed.
The Examiner respectfully disagrees and notes that the reasonable interpretation of Figure 5 and col. 6, lines 55-59 of Keeton would be that the print layer 504 can be one thermally sensitive coating for direct thermal printing. This is clear when one looks at Figure 5 which shows one layer as the print layer 504. This one layer would read on applicants’ single direct thermal coating layer. It is not reasonable to interpret this section as requiring one thermally sensitive coating for direct thermal printing with some other non-thermal imaging material layer. As such, applicants’ arguments are unpersuasive to show that the Examiner clearly erred in his factual findings, and therefore the Examiner maintains that the rejection based on Keeton was proper.
Lastly, the Examiner takes the position that the phrases “a single direct thermal coating layer” and “a direct thermal coating layer” are patentably indistinct. The phrase “a single direct thermal coating layer” does not exclude other layers as the claim is drafted in open comprising language.
Applicants argue that Figure 5 is incomplete as Figure 7-9 provide details on the print layer.
The Examiner respectfully disagrees and notes that col. 6, lines 49-58 describe a complete embodiment as would be understood by one having ordinary skill. Figure 7-9 are further examples/embodiments of labels as would be clear to one having ordinary skill. For example, in Figure 7 the adhesive and thermally sensitive coating are on opposite sides of the substrate, while in Figure 5 they are on the same side of the substrate. Additionally, the description of the thermally sensitive coating per se in Figures 7-9 do not teach away from the Examiner’s factual finding that the print layer 504 can be one thermally sensitive coating for direct thermal printing. The sentence at col. 6, lines 58-59 is not requiring the layer order of Figure 5 to take on the layer structure of Figures 7-9. This is not a reasonable reading by applicants if one reads the columns 6-9 in context. As such, applicants’ arguments are unpersuasive to show that the Examiner clearly erred in his factual findings, and therefore the Examiner maintains that the rejection based on Keeton was proper.
Applicants argue on page 5 and 6 that the Examiner is using applicants’ own specification to reject their claims using Iino et al.
The Examiner respectfully disagrees and notes that he was not rejecting applicants’ claims using their specification, but rather was interpreting applicants’ claims using the principles of broadest reasonable interpretation. It has been held that the claims must be “given their broadest reasonable interpretation consistent with the specification”, see MPEP 2111.
The Examiner reviewed the entire specification, including [0003], [0004], [0065] and [0067]. At [0065], it says that “the color of the leuco dye can be activated by laser beam”. The leuco dye being referred to is the leuco dye of the “direct thermal coating layer” taught inter alia at [0049]. Reading these paragraphs in context with one another and with the rest of the specification would lead to the broadest reasonable interpretation that “a direct thermal coating layer” is one that may be colored by laser beam. Therefore, the Examiner maintains that his rejection over Iino et al. was proper.
Alternatively, even assuming arguendo that the term “direct thermal coating layer” has the broadest reasonable interpretation put forth by applicants on pages 5-6 of their Remarks, the Examiner notes that applicants’ arguments as to claim 1 would then concern how the label is to be used, which is an intended use limitation/functional limitation of the label. Given the fact that the structure and materials of the thermal label of Iino et al. are identical to that claimed, the label of the prior art would be capable of printing with a thermal printhead. Just because Iino et al. have designed a non-contact type label, the structure of the thermal label is identical to that claimed, and therefore it anticipates claim 1.
Conclusion
All claims are identical to or patentably indistinct from, or have unity of invention with claims in the application prior to the entry of the submission under 37 CFR 1.114 (that is, restriction (including a lack of unity of invention) would not be proper) and all claims could have been finally rejected on the grounds and art of record in the next Office action if they had been entered in the application prior to entry under 37 CFR 1.114. Accordingly, THIS ACTION IS MADE FINAL even though it is a first action after the filing of a request for continued examination and the submission under 37 CFR 1.114. See MPEP § 706.07(b). 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.
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, 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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