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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 04/24/2026 has been entered.
The claim status is as follows: claims 1-19 and 21-22 are cancelled; claims 20 and 23-48 pending for examination.
Information Disclosure Statement
The five information disclosure statements (IDS) submitted on 04/28/2026 are considered by the examiner.
Claim Rejections - 35 USC § 102
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 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)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention.
Claims 32, 33, 35, 36, 37, 38, 39, 41 and 47 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Ota et al. (JP 2004-250040, machine translation provided).
Regarding claims 32, 33, 39 and 41, Ota et al. teaches a method of making a label for a container comprising printing (depositing) a first light shielding layer (high opacity layer; 3a) on a heat shrinkable film (1), followed by printing (depositing) a second light shielding layer (light blocking composition; 3b) on the first light shielding layer (high opacity layer) (pg. 2-5, 8-10, Figure 2). The first and second light shielding layers are comprised of a light shielding substance (light blocking particulate) that reflects, diffuses or scatters ultraviolet light and/or visible light, such as powders of titanium dioxide, aluminum silicate, calcium carbonate, alumina, and combinations thereof in a binder solution (i.e. ink) (pg. 3-4). Ota et al. teaches that the heat shrinkable film is comprised of shrinkable films including polyester, polystyrene, polyvinylchloride, polyethylene, polypropylene, ethylene vinyl acetate base heat shrinkable films (pg. 3).
The limitations reciting “wherein the label is configured to block incident light having wavelengths in a range of 200nm to 900 nm” and “wherein the label is configured to be recyclable” are considered functional language related to the intended use of the product and is accorded limited weight as the language does not further limit the structure or the process. The limitations recite properties of the claims light blocking composition layer and the overall label itself.
Ota et al. teaches similar materials for the heat shrink film and the first and second light shielding layers as the heat shrink film, high opacity layer and light blocking composition of the instant application, and further teaches that the first and second light shielding layers, are comprised of a light shielding substance (light blocking particulate) that reflects, diffuses or scatters ultraviolet light and/or visible light (pg. 3-5), therefore, it would inherently have the claimed properties and be capable of performing in the manner recited by the instant claims.
Regarding claims 35 and 36, Ota et al. teaches all the limitations of claim 32 above, and further teaches that the heat shrinkage rate of the heat shrinkable film is preferably 55-80% in the circumferential direction of the bottle to which it is applied (pg. 3). Furthermore, as Ota et al. teaches the same materials used for the heat shrink film and the high opacity layer and light blocking composition of the instant application, it would perform in a similar manner.
Regarding claims 37 and 38, Ota et al. teaches all the limitations of claim 32 above, and further teaches a printed design layer (indicia; 2) is formed on the outer surface of the heat shrinkable film (1), wherein, as shown by Figure 2, the first light shielding layer (high opacity layer; 3a) is disposed between the printed design layer (indicia; 2) and the second light shielding layer (light blocking composition; 3b) (pg. 2-5, 8-10).
Regarding claim 47, Ota et al. teaches all the limitations of claim 32 above. The limitation reciting “wherein the light blocking ink layer is removably in a caustic wash of a recycling process” is a method limitation and does not determine the patentability of the product, unless the method produces a structural feature of the product. The method of using the product is not germane to the issue of patentability of the product itself, unless Applicant presents evidence from which the Examiner could reasonably conclude that the claimed product differs in kind from those of the prior art. See MPEP § 2113. Furthermore, there does not appear to be a difference between the prior art structure and the structure resulting from the claimed method because Ota et al. discloses the structure of claim 32 as described above.
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.
Claims 40 and 43 are rejected under 35 U.S.C. 103 as being unpatentable over Ota et al. (JP 2004-250040, machine translation provided).
Regarding claim 40, Ota et al. teaches all the limitations of claim 32 above, Ota et al. teaches that the thickness of the first light shielding layer (high opacity layer; 3a) and second light shielding layer (light blocking composition; 3b) is in the preferable range of 8-15mm, wherein if the thickness is less than 3mm, it is difficult to maintain the low transmittance of light and if the thickness is about 20mm, it will interfere with the thermal shrinkage of the film (pg. 5-6). While the reference does not expressly teach the ppr ranges recited, such a modification would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the amounts of second light shielding layer (light blocking composition; 3b) such that it falls within the ranges recited by claim 40 while also being present at an amount sufficient to provide the desired reduction in light transmittance.
Regarding claim 43, Ota et al. teaches all the limitations of claim 32 above, and while Ota et al. does not expressly teach that the second light shielding layer (light blocking composition; 3b) has a kinetic coefficient of friction less than 0.22, such a property would inherently be present as Ota et al. teaches the second light shielding layer (light blocking composition; 3b) is an ink layer with similar binder and pigment materials as claimed, and therefore would inherently have the same properties (see MPEP 2112.01(II)).
Claim 34 are rejected under 35 U.S.C. 103 as being unpatentable over Ota et al. (JP 2004-250040, machine translation provided) in view of Williams et al. (US 2022/0389184).
Regarding claim 34, Ota et al. teaches all the limitations of claim 32 above, and while the reference teaches that the heat shrink film is a polyester based heat shrinkable film, the reference does not expressly teach that the heat shrink film is PET or PETG.
Williams et al. teaches an recyclable ink printed label, wherein polymeric shrink wrap labels includes PET or PETG as commonly known shrink film used for labels ([0084-0085]). It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to utilize the PET or PETG heat shrink film taught by Williams et al. as the polyethylene based heat shrink film in the label taught by Ota et al., as Williams et al. teaches PET and PETG are commonly known shrink films used for shrinkable labels.
Claims 20, 23, 25, 26, 27, 28, 29, 30, 31, 42, 44, 45, 46 and 48 are rejected under 35 U.S.C. 103 as being unpatentable over Ota et al. (JP 2004-250040, machine translation provided) in view of Tsuchida et al. (US 2006/0275592; previously cited).
Regarding claims 20, 23, 27, 28, 29, 30 and 46, Ota et al. teaches a method of making a label for a container comprising printing (depositing) a first light shielding layer (high opacity layer; 3a) on a heat shrinkable film (1), followed by printing (depositing) a second light shielding layer (light blocking composition; 3b) on the first light shielding layer (high opacity layer) (pg. 2-5, 8-10, Figure 2). The first and second light shielding layers are comprised of a light shielding substance (light blocking particulate) that reflects, diffuses or scatters ultraviolet light and/or visible light, including powders of metals, metal oxides, carbon black, types of mica or reflective pigments in a binder solution (i.e. ink) (pg. 3-4). Ota et al. teaches that the heat shrinkable film is comprised of shrinkable films including polyester, polystyrene, polyvinylchloride, polyethylene, polypropylene, ethylene vinyl acetate base heat shrinkable films (pg. 3). Specific materials used by Ota et al. as the a light shielding substance (light blocking particulate) include titanium dioxide, aluminum silicate, calcium carbonate, alumina, and combinations thereof (pg. 4).
Ota et al. further teaches a printed design layer (indicia; 2) is formed on the outer surface of the heat shrinkable film (1), wherein, as shown by Figure 2, the first light shielding layer (high opacity layer; 3a) is disposed between the printed design layer (indicia; 2) and the second light shielding layer (light blocking composition; 3b) (pg. 2-5, 8-10).
Ota et al. does not expressly teach that the light shielding substance (light blocking particulate) has a particle size of 0.1 mm to 100 mm as recited by claim 20, or 0.1 mm to 25 mm as recited by claim 46.
Tsuchida et al. is in the same field of endeavor directed to heat shrink labels, teaching a heat shrink label comprised of a core layer (2), a white front layer (1) and a white back layer (4) (Figure 1; [0004-0010, 0015, 0021-0022, 0024]). Tsuchida et al. further teaches that the white front layer (1) and white back layer comprise a white pigment (particulate) such as titanium dioxide (light blocking component), wherein the average particle diameter of the white pigment is about 0.01 mm to about 10 mm, wherein if the average particle diameter is less than 0.01 mm, dispersibility may be deteriorated and if it exceeds 10 mm, the film may have a rough surface and show a deteriorated appearance ([0022]). In the case where the claimed ranges “overlap or lie inside ranges disclosed by the prior art” a prima facie case of obviousness exits. The range of about 0.01 mm to about 10 mm taught by Tsuchida et al. overlaps the range of 0.1 mm to 100 mm as recited by claim 20, or 0.1 mm to 25 mm as recited by claim 46; therefore a prima facie case of obviousness exists.
As both Ota et al. and Tsuchida et al. teach heat shrinkable labels, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to utilize the average particle diameter range of about 0.01 mm to about 10 mm of the white pigment taught by Tsuchida et al. for the light shielding substance (light blocking particulate) of the label taught by Ota et al. as Tsuchida et al. teaches that average particle diameter is less than 0.01 mm, dispersibility may be deteriorated and if it exceeds 10 mm, the film may have a rough surface and show a deteriorated appearance ([0022]).
The limitations reciting “wherein the label is configured to block incident light having wavelengths in a range of 200nm to 900 nm” and “wherein the label is configured to be recyclable” are considered functional language related to the intended use of the product and is accorded limited weight as the language does not further limit the structure or the process. The limitations recite properties of the claimed light blocking composition and the overall label itself.
Ota et al. teaches similar materials for the heat shrink film and the first and second light shielding layers as the heat shrink film, high opacity layer and light blocking composition of the instant application, and further teaches that the first and second light shielding layers, are comprised of a light shielding substance (light blocking particulate) that reflects, diffuses or scatters ultraviolet light and/or visible light (pg. 3-5), and the secondary reference to Tsuchida et al. teaches the claimed particle size of a particulate. Therefore, the heat shrink label taught by Ota et al. in view of Tsuchida et al. would inherently have the claimed properties and would be capable of performing in the manner recited by the instant claims.
Regarding claims 25 and 26, Ota et al. in view of Tsuchida et al. teaches all the limitations of claim 20 above, and Ota et al. further teaches that the heat shrinkage rate of the heat shrinkable film is preferably 55-80% in the circumferential direction of the bottle to which it is applied (pg. 3). Furthermore, as Ota et al. teaches the same materials used for the heat shrink film and the high opacity layer and light blocking composition of the instant application, it would perform in a similar manner.
Regarding claim 31, Ota et al. in view of Tsuchida et al. teaches all the limitations of claim 20 above, Ota et al. further teaches that the thickness of the first light shielding layer (high opacity layer; 3a) and second light shielding layer (light blocking composition; 3b) is in the preferable range of 8-15mm, wherein if the thickness is less than 3mm, it is difficult to maintain the low transmittance of light and if the thickness is about 20mm, it will interfere with the thermal shrinkage of the film (pg. 5-6). While the reference does not expressly teach the ppr ranges recited, such a modification would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the amounts of second light shielding layer (light blocking composition; 3b) such that it falls within the ranges recited by claim 31 while also being present at an amount sufficient to provide the desired reduction in light transmittance.
Regarding claims 42 and 48, Ota et al. teaches all the limitations of claim 32, and while the reference teaches a light shielding substance (light blocking particulate) that reflects, diffuses or scatters ultraviolet light and/or visible light, such as powders of titanium dioxide, aluminum silicate, calcium carbonate, alumina, and combinations thereof in a binder solution (i.e. ink) (pg. 3-4), Ota et al. does not expressly teach the light shielding substance (light blocking particulate) has a particle size of 0.1 mm to 100 mm as recited by claim 42, or 0.1 mm to 25 mm as recited by claim 48.
Tsuchida et al. is in the same field of endeavor directed to heat shrink labels, teaching a heat shrink label comprised of a core layer (2), a white front layer (1) and a white back layer (4) (Figure 1; [0004-0010, 0015, 0021-0022, 0024]). Tsuchida et al. further teaches that the white front layer (1) and white back layer comprise a white pigment (particulate) such as titanium dioxide (light blocking component), wherein the average particle diameter of the white pigment is about 0.01 mm to about 10 mm, wherein if the average particle diameter is less than 0.01 mm, dispersibility may be deteriorated and if it exceeds 10 mm, the film may have a rough surface and show a deteriorated appearance ([0022]). In the case where the claimed ranges “overlap or lie inside ranges disclosed by the prior art” a prima facie case of obviousness exits. The range of about 0.01 mm to about 10 mm taught by Tsuchida et al. overlaps the range of 0.1 mm to 100 mm as recited by claim 42, or 0.1 mm to 25 mm as recited by claim 48; therefore a prima facie case of obviousness exists.
As both Ota et al. and Tsuchida et al. teach heat shrinkable labels, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to utilize the average particle diameter range of about 0.01 mm to about 10 mm of the white pigment taught by Tsuchida et al. for the light shielding substance (light blocking particulate) of the label taught by Ota et al. as Tsuchida et al. teaches that average particle diameter is less than 0.01 mm, dispersibility may be deteriorated and if it exceeds 10 mm, the film may have a rough surface and show a deteriorated appearance ([0022]).
Regarding claim 44, Ota et al. in view of Tsuchida et al. teaches all the limitations of claim 20 above, and while Ota et al. does not expressly teach that the second light shielding layer (light blocking composition; 3b) has a kinetic coefficient of friction less than 0.22, such a property would inherently be present as Ota et al. teaches the second light shielding layer (light blocking composition; 3b) is an ink layer with similar binder and pigment materials as claimed, and therefore would have the same properties (see MPEP 2112.01(II)).
Regarding claim 45, Ota et al. in view of Tsuchida et al. teaches all the limitations of claim 20 above. The limitation reciting “wherein the light blocking ink layer is removably in a caustic wash of a recycling process” is a method limitation and does not determine the patentability of the product, unless the method produces a structural feature of the product. The method of using the product is not germane to the issue of patentability of the product itself, unless Applicant presents evidence from which the Examiner could reasonably conclude that the claimed product differs in kind from those of the prior art. See MPEP § 2113. Furthermore, there does not appear to be a difference between the prior art structure and the structure resulting from the claimed method because Ota et al. discloses the structure of claim 20 as described above.
Claim 24 are rejected under 35 U.S.C. 103 as being unpatentable over Ota et al. (JP 2004-250040, machine translation provided) in view of Tsuchida et al. (US 2006/0275592; previously cited) and further in view of Williams et al. (US 2022/0389184).
Regarding claim 24, Ota et al. teaches all the limitations of claim 32 above, and while the reference teaches that the heat shrink film is a polyester based heat shrinkable film, the reference does not expressly teach that the heat shrink film is PET or PETG.
Williams et al. teaches an recyclable ink printed label, wherein polymeric shrink wrap labels includes PET or PETG as commonly known shrink film used for labels ([0084-0085]). It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to utilize the PET or PETG heat shrink film taught by Williams et al. as the polyethylene based heat shrink film in the label taught by Ota et al., as Williams et al. teaches PET and PETG are commonly known shrink films used for shrinkable labels.
Claims 32, 33, 34, 35, 36, 37, 38, 39, 40, 41, 43 and 47 are rejected under 35 U.S.C. 103 as being unpatentable over Williams et al. (US 2022/0389184).
Regarding claims 32, 33, 34, 39 and 41, Williams et al. teaches an ink and label combination to facilitate recycling of both the label and the container to which the label is applied, wherein multiple ink layers (high opacity layer and light blocking layer) are printed or coated onto a PET or PETG shrink wrap label, wherein the multiple ink layers (high opacity layer and light blocking layer) comprise inorganic colorants such as titanium dioxide (white pigment), iron oxide, chromium oxide, ferric ammonium, ferric oxide blacks, pigment black and pigment white (white pigment) (light blocking particulate) ([0002-0010, 0024-0062, 0069-0085]).
While the reference teaches many different inorganic colorants, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to utilize any of the inorganic colorants based on the desired coloration of the resultant shrink wrap label. One of ordinary skill in the art would be motivated to utilize the disclosed titanium dioxide as the colorant for the multiple ink layers should a white coloration of the resultant shrink wrap label be desired for the label of Williams et al.
The limitation reciting “wherein the label is configured to block incident light having wavelengths in a range of 200nm to 900 nm” is considered functional language related to the intended use of the product and is accorded limited weight as the language does not further limit the structure or the process. The limitation is recites a property of the claimed light blocking layer. Williams et al. teaches similar materials for the heat shrink film multiple ink layers as the heat shrink film, high opacity layer and light blocking composition of the instant application as stated in the rejection above, therefore, the heat shrink label taught by Williams et al. would inherently have the claimed property and be capable of performing in the manner recited by the instant claims.
Regarding claims 35 and 36, Williams et al. teaches all the limitations of claim 32 above, and teaches a heat shrink film comprised of PET or PETG ([0002-0010, 0024-0062, 0069-0085]). Williams et al. does not expressly teach that the heat shrink film or heat shrink label shrinks or contracts in a transfer direction by about 1% to about 90% when heated to 100˚C as recited by claims 35 and 36, however, such a property would inherently be present in the heat shrink film of Williams et al. Both Williams et al. and the instant application teach a heat shrink film of PET or PETG and an ink layer comprised of inorganic pigments such as titanium dioxide as stated in the rejection of claim 32 above. As stated in MPEP 2112.01(II), it has been held that product of identical composition cannot have mutually exclusive properties, therefore the heat shrink film and heat shrink label taught by Williams et al. would inherently have the heat shrinkable properties recited by claims 35 and 36.
Regarding claims 37 and 38, Williams et al. teaches all the limitations of claim 32 above, and further teaches that the ink layers can be present in multiple layers, such as up to 14 layers ([0074]). Therefore, it would have been obvious to one of ordinary skill in the art to provide additional ink layers as an obvious matter of design choice based upon the desired visual appearance of the resultant shrink wrap label. Furthermore, it would have been obvious to orient the additional layers such that they were in a stacked arrangement as recited by the claims.
Regarding claim 40, Williams et al. teaches all the limitations of claim 32 above, however, the reference does not expressly teach that the multiple ink layers (high opacity layer and light blocking layer) are applied in an amount of 0.5 ppr to 25ppr and the pigment is present in an amount of 0.1ppr to 10ppr of the ink layer, such a modification would have been obvious to one of ordinary skill in the art based upon the desired amount of coloration provided on and the desired visual effect of the resultant heat shrink label.
Regarding claim 43, Williams et al. teaches all the limitations of claim 32 above, and further teaches that to ensure the printed label can be handled, fitted, shipped, stacked, or rubbed against adjacent containers, the dried ink layer has a coefficient of friction at or below 0.3 ([0078]). In the case where the claimed ranges “overlap or lie inside ranges disclosed by the prior art” a prima facie case of obviousness exits.
Regarding claim 47, Williams et al. teaches all the limitations of claim 32 above. The limitation reciting “wherein the light blocking ink layer is removably in a caustic wash of a recycling process” is a method limitation and does not determine the patentability of the product, unless the method produces a structural feature of the product. The method of using the product is not germane to the issue of patentability of the product itself, unless Applicant presents evidence from which the Examiner could reasonably conclude that the claimed product differs in kind from those of the prior art. See MPEP § 2113. Furthermore, there does not appear to be a difference between the prior art structure and the structure resulting from the claimed method because Williams et al. discloses the structure of claim 32 as described above and further teaches that the ink layer is removable from the label in alkaline hot water ([0086-0087]).
Claims 20, 23, 24, 25, 26, 27, 28, 29, 30, 31, 42, 44, 45, 46 and 48 are rejected under 35 U.S.C. 103 as being unpatentable over Williams et al. (US 2022/0389184) in view of Tsuchida et al. (US 2006/0275592; previously cited).
Regarding claims 20, 23, 24 and 46, Williams et al. teaches an ink and label combination to facilitate recycling of both the label and the container to which the label is applied, wherein multiple ink layers (high opacity layer and light blocking layer) are printed or coated onto a PET or PETG shrink wrap label, wherein the multiple ink layers (high opacity layer and light blocking layer) comprise inorganic colorants such as titanium dioxide (white pigment), iron oxide, chromium oxide, ferric ammonium, ferric oxide blacks, pigment black and pigment white (white pigment) (light blocking particulate) ([0002-0010, 0024-0062, 0069-0085]).
While the reference teaches many different inorganic colorants, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to utilize any of the inorganic colorants based on the desired coloration of the resultant shrink wrap label. One of ordinary skill in the art would be motivated to utilize the disclosed titanium dioxide as the colorant for the multiple ink layers should a white coloration of the resultant shrink wrap label be desired for the label of Williams et al.
Williams et al. does not expressly teach that the light shielding substance (light blocking particulate) has a particle size of 0.1 mm to 100 mm as recited by claim 20, or 0.1 mm to 25 mm as recited by claim 46.
Tsuchida et al. is in the same field of endeavor directed to heat shrink labels, teaching a heat shrink label comprised of a core layer (2), a white front layer (1) and a white back layer (4) (Figure 1; [0004-0010, 0015, 0021-0022, 0024]). Tsuchida et al. further teaches that the white front layer (1) and white back layer comprise a white pigment (particulate) such as titanium dioxide (light blocking component), wherein the average particle diameter of the white pigment is about 0.01 mm to about 10 mm, wherein if the average particle diameter is less than 0.01 mm, dispersibility may be deteriorated and if it exceeds 10 mm, the film may have a rough surface and show a deteriorated appearance ([0022]). In the case where the claimed ranges “overlap or lie inside ranges disclosed by the prior art” a prima facie case of obviousness exits. The range of about 0.01 mm to about 10 mm taught by Tsuchida et al. overlaps the range of 0.1 mm to 100 mm as recited by claim 20, or 0.1 mm to 25 mm as recited by claim 46; therefore a prima facie case of obviousness exists.
As both Williams et al. and Tsuchida et al. teach heat shrinkable labels, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to utilize the average particle diameter range of about 0.01 mm to about 10 mm of the white pigment taught by Tsuchida et al. for the pigment of the multiple ink layers (high opacity layer and light blocking layer) of the label taught by Williams et al. as Tsuchida et al. teaches that average particle diameter is less than 0.01 mm, dispersibility may be deteriorated and if it exceeds 10 mm, the film may have a rough surface and show a deteriorated appearance ([0022]).
The limitation reciting “wherein the label is configured to block incident light having wavelengths in a range of 200nm to 900 nm” is considered functional language related to the intended use of the product and is accorded limited weight as the language does not further limit the structure or the process. The limitation recites a property of the claimed light blocking layer. Williams et al. teaches similar materials for the heat shrink film multiple ink layers as the heat shrink film, high opacity layer and light blocking composition of the instant application, and the secondary reference to Tsuchida et al. teaches the claimed particle size of a particulate. Therefore, the heat shrink label taught by Williams et al. in view of Tsuchida et al. would inherently have the claimed property and be capable of performing in the manner recited by the instant claims.
Regarding claims 25 and 26, Williams et al. in view of Tsuchida et al. teaches all the limitations of claim 20 above. While Williams et al. teaches a heat shrink film comprised of PET or PETG ([0002-0010, 0024-0062, 0069-0085]). Williams et al. does not expressly teach that the heat shrink film or heat shrink label shrinks or contracts in a transfer direction by about 1% to about 90% when heated to 100˚C as recited by claims 35 and 36, however, such a property would inherently be present in the heat shrink film of Williams et al. Both Williams et al. and the instant application teach a heat shrink film of PET or PETG and an ink layer comprised of inorganic pigments such as titanium dioxide as stated in the rejection of claim 20 above. As stated in MPEP 2112.01(II), it has been held that product of identical composition cannot have mutually exclusive properties, therefore the heat shrink film and heat shrink label taught by Williams et al. would inherently have the heat shrinkable properties recited by claims 25 and 26.
Regarding claims 27, 28, 29 and 30, Williams et al. in view of Tsuchida et al. teaches all the limitations of claim 20 above, and Williams et al. further teaches that the ink layers can be present in multiple layers, such as up to 14 layers ([0074]). As stated above, Williams et al. teaches the multiple ink layers (high opacity layer and light blocking layer) comprise inorganic colorants such as titanium dioxide (white pigment), iron oxide, chromium oxide, ferric ammonium, ferric oxide blacks, pigment black and pigment white (white pigment) (light blocking particulate) ([0002-0010, 0024-0062, 0069-0085]).
Therefore, it would have been obvious to one of ordinary skill in the art to provide additional ink layers as an obvious matter of design choice based upon the desired visual appearance of the resultant shrink wrap label. Furthermore, it would have been obvious to orient the additional layers such that they were in a stacked arrangement as recited by the claims.
Regarding claim 31, Williams et al. in view of Tsuchida et al. teach all the limitations of claim 20 above, however, the reference does not expressly teach that the multiple ink layers (high opacity layer and light blocking layer) are applied in an amount of 0.5 ppr to 25ppr and the pigment is present in an amount of 0.1ppr to 10ppr of the ink layer, such a modification would have been obvious to one of ordinary skill in the art based upon the desired amount of coloration provided on and the desired visual effect of the resultant heat shrink label.
Regarding claims 42 and 48, Williams et al. teaches all the limitations of claim 32 above, however, the reference does not expressly teach that the light shielding substance (light blocking particulate) has a particle size of 0.1 mm to 100 mm as recited by claim 42, or 0.1 mm to 25 mm as recited by claim 48.
Tsuchida et al. is in the same field of endeavor directed to heat shrink labels, teaching a heat shrink label comprised of a core layer (2), a white front layer (1) and a white back layer (4) (Figure 1; [0004-0010, 0015, 0021-0022, 0024]). Tsuchida et al. further teaches that the white front layer (1) and white back layer comprise a white pigment (particulate) such as titanium dioxide (light blocking component), wherein the average particle diameter of the white pigment is about 0.01 mm to about 10 mm, wherein if the average particle diameter is less than 0.01 mm, dispersibility may be deteriorated and if it exceeds 10 mm, the film may have a rough surface and show a deteriorated appearance ([0022]). In the case where the claimed ranges “overlap or lie inside ranges disclosed by the prior art” a prima facie case of obviousness exits. The range of about 0.01 mm to about 10 mm taught by Tsuchida et al. overlaps the range of 0.1 mm to 100 mm as recited by claim 42, or 0.1 mm to 25 mm as recited by claim 48; therefore a prima facie case of obviousness exists.
As both Williams et al. and Tsuchida et al. teach heat shrinkable labels, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to utilize the average particle diameter range of about 0.01 mm to about 10 mm of the white pigment taught by Tsuchida et al. for the pigment of the multiple ink layers (high opacity layer and light blocking layer) of the label taught by Williams et al. as Tsuchida et al. teaches that average particle diameter is less than 0.01 mm, dispersibility may be deteriorated and if it exceeds 10 mm, the film may have a rough surface and show a deteriorated appearance ([0022]).
Regarding claim 44, Williams et al. in view of Tsuchida et al. teaches all the limitations of claim 20 above, and Williams et al. further teaches that to ensure the printed label can be handled, fitted, shipped, stacked, or rubbed against adjacent containers, the dried ink layer has a coefficient of friction at or below 0.3 ([0078]). In the case where the claimed ranges “overlap or lie inside ranges disclosed by the prior art” a prima facie case of obviousness exits.
Regarding claim 45, Williams et al. in view of Tsuchida et al. teaches all the limitations of claim 20 above. The limitation reciting “wherein the light blocking ink layer is removably in a caustic wash of a recycling process” is a method limitation and does not determine the patentability of the product, unless the method produces a structural feature of the product. The method of using the product is not germane to the issue of patentability of the product itself, unless Applicant presents evidence from which the Examiner could reasonably conclude that the claimed product differs in kind from those of the prior art. See MPEP § 2113. Furthermore, there does not appear to be a difference between the prior art structure and the structure resulting from the claimed method because Williams et al. discloses the structure of claim 20 as described above and teaches that the ink layer is removable from the label in alkaline hot water ([0086-0087]).
Response to Arguments
Response-Claim Rejections - 35 USC § 102
Applicant's arguments filed 04/24/2026 have been fully considered but they are not persuasive.
With respect to the rejection of independent claim 32 under 35 USC § 102(a)(1) as anticipated by Ota et al., the Applicant argues on pages 7-8 that Ota et al. does not explicitly teach “the label is configured to block incident light having wavelengths of 200nm to 900 nm” and is silent regarding the shrink label being “recyclable”. Additionally, the Applicant argued that the office has not asserted that the features are inherent, and has not identified any structures that of Ota et al. that necessarily mean the label is “recyclable”. These arguments are not persuasive.
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.
Section 2173.05(g) of the MPEP discusses functional language, stating that “A claim term is functional when it recites a feature ‘by what it does rather than what it is”, further stating that function claiming often involves the recitation of some structure followed by its function.
Regarding the light blocking layer of independent claim 32, the structural requirements are:
depositing a high opacity layer on a heat shrinkable film to form a light blocking layer;
the high opacity layer comprises a white pigment;
depositing a light blocking composition on the heat shrinkable film or high opacity layer or intervening layer ;
the light blocking composition comprises a light blocking particulate.
The limitations reciting “configured to block incident light having wavelengths in the range of 200nm to 900nm” and “wherein the label is configured to be recyclable” are both functional language pertaining to properties of the label. Therefore, should a label comprise the claimed structural components, it would function in the manner claimed and inherently comprise those properties.
Ota et al., as stated above, teaches a method of making a label for a container comprising printing (depositing) a first light shielding layer (high opacity layer; 3a) on a heat shrinkable film (1), followed by printing (depositing) a second light shielding layer (light blocking composition; 3b) on the first light shielding layer (high opacity layer) (pg. 2-5, 8-10, Figure 2). The first and second light shielding layers are comprised of a light shielding substance (light blocking particulate) that reflects, diffuses or scatters ultraviolet light and/or visible light, such as powders of titanium dioxide, aluminum silicate, calcium carbonate, alumina, and combinations thereof in a binder solution (i.e. ink) (pg. 3-4). Ota et al. teaches that the heat shrinkable film is comprised of shrinkable films including polyester, polystyrene, polyvinylchloride, polyethylene, polypropylene, ethylene vinyl acetate base heat shrinkable films (pg. 3). Ota et al. teaches that the first and second light shielding layers are formed by dispersing or dissolving various light shielding substances in a binder solution (i.e. ink) to prepare a coating liquid and applying the layer by printing or coating (pg. 4). Ota et al. teaches similar materials for the heat shrink film and the first and second light shielding layers (see pgs. 3-5), as the heat shrink film, high opacity layer and light blocking composition of the instant application see pg-pub [0059-0099]). Thus Ota et al. would perform the same function in the same manner as the instant application. Furthermore, it has been held that products of identical chemical composition can not have mutually exclusive properties (see MPEP 2112.01), and as Ota et al. teaches the same materials used for the disclosed label as the instant invention, it would inherently comprise the claimed properties.
Dependent claims 33, 35-39, 41 and 47 depend from claim 32, and therefore, the rejections are maintained for the reasons expressed above.
With respect to the rejection of independent claim 20 under 35 USC § 103 as obvious over Ota et al. in view of Tsuchida et al., the Applicant argues on pages 8-9 that the functional language of independent claim 20 as improperly been given limited weight and fails to show any structure or features in Ota et al. that necessarily mean that the label taught in Ota et al. is both “configured to block incident light having wavelengths of 200nm to 900 nm” and is “recyclable”. Furthermore, the Applicant argues that it has not been asserted that the aforementioned limitations are inherent. This argument is not persuasive.
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.
Section 2173.05(g) of the MPEP discusses functional language, stating that “A claim term is functional when it recites a feature ‘by what it does rather than what it is”, further stating that function claiming often involves the recitation of some structure followed by its function. Regarding the light blocking layer of independent claim 13, the structural requirements are:
depositing a light blocking composition directly or indirectly on a heat shrinkable film to form a light blocking ink layer;
the light blocking composition comprises a light blocking particulate having a particle size of 0.1mm to 100mm and comprises a metal, metal oxide, reflective pigment, carbon black, mica, or combinations thereof;
The limitations reciting “configured to block incident light having wavelengths in the range of 200nm to 900nm” and “wherein the label is configured to be recyclable” are both functional language pertaining to properties of the label. Therefore, should a label comprise the claimed structural components, it would function in the manner claimed.
Ota et al., as stated above, teaches a method of making a label for a container comprising printing (depositing) a first light shielding layer (high opacity layer; 3a) on a heat shrinkable film (1), followed by printing (depositing) a second light shielding layer (light blocking composition; 3b) on the first light shielding layer (high opacity layer) (pg. 2-5, 8-10, Figure 2). The first and second light shielding layers are comprised of a light shielding substance (light blocking particulate) that reflects, diffuses or scatters ultraviolet light and/or visible light, such as powders of titanium dioxide, aluminum silicate, calcium carbonate, alumina, and combinations thereof in a binder solution (i.e. ink) (pg. 3-4). Ota et al. teaches that the heat shrinkable film is comprised of shrinkable films including polyester, polystyrene, polyvinylchloride, polyethylene, polypropylene, ethylene vinyl acetate base heat shrinkable films (pg. 3). Ota et al. teaches that the first and second light shielding layers are formed by dispersing or dissolving various light shielding substances in a binder solution (i.e. ink) to prepare a coating liquid and applying the layer by printing or coating (pg. 4). Ota et al. teaches similar materials for the heat shrink film and the first and second light shielding layers (see pgs. 3-5), as the heat shrink film, high opacity layer and light blocking composition of the instant application see pg-pub [0059-0099]) and the secondary reference to Tsuchida et al. is used to address the particle size limitation. Therefore, the heat shrink label taught by Ota et al. in view of Tsuchida et al. would inherently have the claimed properties and would be capable of performing in the manner recited by the instant claims.
Dependent claims 23, 25-31, 42, 44, 45, 46 and 48 depend from claim 20, and therefore, the rejections are maintained for the reasons expressed above.
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With respect to the rejection of independent claim 20 under 35 USC § 103 as obvious over Williams et al. in view of Tsuchida et al., the Applicant argues on pages 10-11 that the functional language of claim 20 was improperly given limited weight and the Office Action fails to show any structures or features in Williams that necessarily means the label taught by the references are “configured to block incident light having wavelengths in a range of 200 nm to 900 nm”, nor has is been assert that the feature is inherent in Williams et al. in view of Tsuchida et al. These arguments are not persuasive.
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.
Section 2173.05(g) of the MPEP discusses functional language, stating that “A claim term is functional when it recites a feature ‘by what it does rather than what it is”, further stating that function claiming often involves the recitation of some structure followed by its function. Regarding the light blocking layer of independent claim 20, the structural requirements are:
depositing a light blocking composition directly or indirectly on a heat shrinkable film to form a light blocking ink layer;
the light blocking composition comprises a light blocking particulate having a particle size of 0.1mm to 100mm and comprises a metal, metal oxide, reflective pigment, carbon black, mica, or combinations thereof;
The limitations reciting “configured to block incident light having wavelengths in the range of 200nm to 900nm” and “wherein the label is configured to be recyclable” are both functional language pertaining to the properties of the label. Therefore, should a label comprise the claimed structural components, it would function in the manner claimed and inherently comprise those properties.
Williams et al. teaches an ink and label combination to facilitate recycling of both the label and the container to which the label is applied, wherein multiple ink layers (high opacity layer and light blocking layer) are printed or coated onto a PET or PETG shrink wrap label, wherein the multiple ink layers (high opacity layer and light blocking layer) comprise inorganic colorants such as titanium dioxide (white pigment), iron oxide, chromium oxide, ferric ammonium, ferric oxide blacks, pigment black and pigment white (white pigment) (light blocking particulate) ([0002-0010, 0024-0062, 0069-0085]).
Williams et al. teaches similar materials for the heat shrink film and the multiple ink layers (high opacity layer and light blocking layer) ([0002-0010, 0024-0062, 0069-0085]), as the heat shrink film, high opacity layer and light blocking composition of the instant application see pg-pub [0059-0099]) and the secondary reference to Tsuchida et al. is used to address the particle size limitation. Therefore, the heat shrink label taught by Williams et al. in view of Tsuchida et al. would inherently have the claimed property and be capable of performing in the manner recited by the instant claims.
Dependent claims 23-31, 42, 44, 45, 46 and 48 depend from claim 20, and therefore, the rejections are maintained for the reasons expressed above.
With respect to the rejection of independent claim 32 under 35 USC § 103 as obvious over Williams et al., the Applicant argues on pages 11-12 that the office action fails to show any structures or features in Williams et al. that necessarily mean that the label taught in Williams is “configured to block incident light having wavelengths in a range of 200nm to 900 nm” and has not asserted that the aforementioned properties is inherent in Williams. This argument is not persuasive.
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.
Section 2173.05(g) of the MPEP discusses functional language, stating that “A claim term is functional when it recites a feature ‘by what it does rather than what it is”, further stating that function claiming often involves the recitation of some structure followed by its function. Regarding the light blocking layer of independent claim 32, the structural requirements are:
depositing a high opacity layer on a heat shrinkable film to form a light blocking layer;
the high opacity layer comprises a white pigment;
depositing a light blocking composition on the heat shrinkable film or high opacity layer or intervening layer ;
the light blocking composition comprises a light blocking particulate.
The limitations reciting “configured to block incident light having wavelengths in the range of 200nm to 900nm” and “wherein the label is configured to be recyclable” are both functional language pertaining to properties of the label. Therefore, should a label comprise the claimed structural components, it would function in the manner claimed and inherently comprise those properties.
Williams et al. teaches an ink and label combination to facilitate recycling of both the label and the container to which the label is applied, wherein multiple ink layers (high opacity layer and light blocking layer) are printed or coated onto a PET or PETG shrink wrap label, wherein the multiple ink layers (high opacity layer and light blocking layer) comprise inorganic colorants such as titanium dioxide (white pigment), iron oxide, chromium oxide, ferric ammonium, ferric oxide blacks, pigment black and pigment white (white pigment) (light blocking particulate) ([0002-0010, 0024-0062, 0069-0085]).
Williams et al. teaches similar materials for the heat shrink film and the multiple ink layers (high opacity layer and light blocking layer) ([0002-0010, 0024-0062, 0069-0085]), as the heat shrink film, high opacity layer and light blocking composition of the instant application see pg-pub [0059-0099]). Therefore, the heat shrink label taught by Williams et al. would inherently have the claimed property and be capable of performing in the manner recited by the instant claims
Dependent claims 33-41, 43 and 47 depend from claim 32, and therefore, the rejections are maintained for the reasons expressed above.
The remaining rejections of the dependent claims are maintained for the reasons expressed above.
Conclusion
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LAURA POWERS
Examiner
Art Unit 1785
/LAURA C POWERS/Primary Examiner, Art Unit 1785
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