DETAILED ACTION
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
Summary
The Applicants arguments and claim amendments received on 04/24/2026 are entered into the file. Currently, claims 1-12 and 23 are cancelled; claim 24 is amended; claims 13-22 and 24-42 are pending for examination.
Information Disclosure Statement
The five information disclosure statement (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.
(a)(2) the claimed invention was described in a patent issued under section 151, or in an application for patent published or deemed published under section 122(b), in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention.
Claims 13, 14, 15, 16, 17, 18, 19, 20, 24, 25, 26, 28, 29, 30, 31, 32, 33, 36, 38, 39, 40, 41 and 42 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Kitano et al. (JP 2017114041A, cited on IDS, machine translation via EPO provided).
Regarding claims 13, 14, 15, 16, 19 and 20, Kitano et al. teaches a reflective light-shielding laminate and packaging material (label) comprised of a base layer (1; heat shrink film), a shielding layer (2; high opacity layer) and a light shielding layer (3; light blocking layer) adjacent to the shielding layer (high opacity layer) as shown in Figure 2 ([0006-0009, 0011-0023, 0026, 0029, 0034-0037]). In Example 1, Kitano et al. teaches an embodiment comprised of a shrinkable PET film having a thickness of 30mm, reverse printed to form a pattern layer (indicia), a white ink layer (2; high opacity layer) comprising titanium oxide pigment in a binder resin and a light shielding ink layer (3; light blocking ink layer) comprised of a silver aluminum ink as shown in Figure 2, wherein the silver aluminum ink is comprised of aluminum paste (light blocking component) and a binder component ([0034-0037]).
The limitations reciting “recyclable” in line 1 and “the light blocking ink layer configured to block at least 80% of incident light having wavelengths in a range of 250nm to 900 nm” in lines 9-11 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 aforementioned limitations are functional limitations that are met by the structure of the prior art. There does not appear to be a difference between the structure of Kitano et al. and the structure of the claimed invention of the instant application. Kitano 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 respectively of the instant application see pg-pub [0059-0099]), 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, the heat shrink label taught by Kitano et al. would perform the same function in the same manner as the instant application.
The limitation reciting “wherein the light blocking ink layer is configured to be removed from the recyclable shrink label after a caustic wash cycle of a recycling process” recite a method of using and/or intended use of the claimed label, 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 used in the claimed method because Kitano et al. discloses the structure of claim 13 as described above. Furthermore, Kitano et al. utilizes similar materials to those disclosed by the instant application (see pg-pub [0059-0099]), and would perform the same function in the same manner as the instant application.
Regarding claims 17 and 18, Kitano et al. teaches all the limitations of claim 13 above, and further teaches that the shrinkable PET film is longitudinally stretched, with a heat shrinkage rate of 62% when heated at 90C for 10 seconds ([0035]). Furthermore, Kitano et al. utilizes similar materials to those disclosed by the instant application (see pg-pub [0059-0099]), and would perform the same function in the same manner as the instant application.
Regarding claims 24, 25, 26, 28, 29, 30, 31, 32, 33, 38, and 42, Kitano et al. teaches a reflective light-shielding laminate and packaging material (label) for a packaging containers comprised of a base layer (1; heat shrink film), a shielding layer (2; high opacity layer) and a light shielding layer (3; light blocking ink layer) adjacent to the shielding layer (high opacity layer) as shown in Figure 2 ([0006-0009, 0011-0023, 0026, 0029, 0034-0037]). In Example 1, Kitano et al. teaches an embodiment comprised of a shrinkable PET film having a thickness of 30mm, reverse printed to form a pattern layer (indicia), a white ink layer (2; high opacity layer) comprising titanium oxide pigment in a binder resin and a light shielding ink layer (3; light blocking ink layer) comprised of a silver aluminum ink (light blocking component) as shown in Figure 2, wherein the shrink label is attached to an external surface of a PET bottle, and wherein the silver aluminum ink is comprised of aluminum paste (light blocking component) and a binder component ([0034-0037]).
The limitations reciting “recyclable” with respect to the container and shrink label in lines 2, 3, 18, 19, 20 and “the light blocking ink layer configured to block at least 80% of incident light having wavelengths in a range of 250nm to 900 nm” in lines 13-15 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 aforementioned limitations are functional limitations that are met by the structure of the prior art. There does not appear to be a difference between the structure of Kitano et al. and the structure of the claimed invention of the instant application. Kitano 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 see pg-pub [0059-0099]), 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, the heat shrink label taught by Kitano et al. would perform the same function in the same manner as the instant application.
The limitation reciting ; and “wherein the light blocking ink layer is configured to be removed from the recyclable shrink label after a caustic wash cycle of a recycling process such that the recyclable shrink label and the recyclable container are recyclable together” in lines 18-22 recite a method of using and/or intended use of the claimed label, 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 used in the claimed method because Kitano et al. discloses the structure of claim 13 as described above. Furthermore, Kitano et al. utilizes similar materials to those disclosed by the instant application (see pg-pub [0059-0099]), and would perform the same function in the same manner as the instant application.
Regarding claims 39 and 40, Kitano et al. teaches all the limitations of claim 24 above, and further teaches that the shrinkable PET film is longitudinally stretched, with a heat shrinkage rate of 62% when heated at 90C for 10 seconds ([0035]). Furthermore, Kitano et al. utilizes similar materials to those disclosed by the instant application (see pg-pub [0059-0099]), and would perform the same function in the same manner as the instant application.
Regarding claims 36 and 41, Kitano et al. teaches all the limitations of claims 13 and 24 above. Kitano et al. further teaches that the silver aluminum ink is comprised of aluminum paste (light blocking component) in an amount of 10% by mass, a binder resin and solvents ethyl acetate , methyl ethyl ketone and isopropyl alcohol ([0034-0037]).
The instant application discloses materials for the claimed light blocking layer as including metallic pigments such as silver, binder resins, and solvents such as alcohols, esters, ketones or hydrocarbon mixtures, further disclosing an amount of light blocking component in the light blocking ink layer to be 3% by weight or greater and 50% by weight or less (see pg-pub [0090-0094]).
As both Kitano et al. teaches the same components for the light shielding layer (3) as the instant application for the light blocking ink layer, the properties with respect to coefficient of friction would inherently be present. As stated in MPEP 2112.01(II), a chemical composition and its properties are inseparable, therefore, if the prior art teaches the identical structure, the properties the applicant discloses and/or claims are necessarily present.
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 13, 14, 15, 16, 17, 18, 19, 20, 21, 22, 24, 25, 26, 29, 30, 31, 32, 33, 34, 35, 36, 39, 40, 41 and 42 are rejected under 35 U.S.C. 103 as being unpatentable over Ota et al. (JP 2004-250040; machine translation via EPO provided).
Regarding claims 13, 15, 19 and 20, Ota et al. teaches a label for a container, the label comprising a heat shrinkable film (1), a first light shielding layer (high opacity layer; 3a) adjacent to a surface of the heat shrinkable film (1) and a second light shielding layer (light blocking ink layer; 3b) disposed 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 component) that reflects, diffuses or scatters ultraviolet light and/or visible light, such as powders of titanium dioxide, aluminum, aluminum silicate, calcium carbonate, alumina, and combinations thereof in a binder solution (i.e. ink) (pg. 3-4). Ota et al. specifically teaches an example wherein the light shielding layers are comprised of a mixture of titanium dioxide (pigment) and aluminum powder (light blocking component) that provides maximum light shielding properties for both the ultraviolet and visible light (i.e. encompassing 200-900nm wavelengths) (pg. 5). 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 that the heat shrinkable film is comprised of shrinkable films including polyester, polystyrene, polyvinylchloride, polyethylene, polypropylene based heat shrinkable films and has a thickness of 20 to 120mm (pg. 3), which overlaps with the claimed range of 30 to 100mm. 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 limitations reciting “recyclable” in line 1 and “the light blocking ink layer configured to block at least 80% of incident light having wavelengths in a range of 250nm to 900 nm” in lines 9-11 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 aforementioned limitations are functional limitations that are met by the structure of the prior art. There does not appear to be a difference between the structure of Ota et al. and the structure of the claimed invention of the instant application. 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 see pg-pub [0059-0099]), 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, the heat shrink label taught by Ota et al. would perform the same function in the same manner as the instant application.
The limitation reciting “wherein the light blocking ink layer is configured to be removed from the recyclable shrink label after a caustic wash cycle of a recycling process” recite a method of using and/or intended use of the claimed label, 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 13 as described above. Furthermore, Ota et al. utilizes similar materials to those disclosed by the instant application (see pg-pub [0059-0099]), and would perform the same function in the same manner as the instant application.
Regarding claims 14 and 16, Ota et al. teaches all the limitations of claim 13 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 claims 17, 18, 39 and 40, Ota et al. teaches all the limitations of claim 13 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 21 and 22, Ota et al. teaches all the limitations of claim 13 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 claims 21 and 22 while also being present at an amount sufficient to provide the desired reduction in light transmittance.
Regarding claims 24, 29, 32, 33 and 42, Ota et al. teaches a container (article), such as a bottle, having an external surface and a label for a container, the label comprising a first light shielding layer (high opacity layer; 3a) on a heat shrinkable film (1) and a second light shielding layer (light blocking ink layer; 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 component) that reflects, diffuses or scatters ultraviolet light and/or visible light, such as powders of titanium dioxide, aluminum, aluminum silicate, calcium carbonate, alumina, and combinations thereof in a binder solution (i.e. ink) (pg. 3-4).Ota et al. specifically teaches an example the light shielding layers are comprised of a mixture of titanium dioxide (pigment) and aluminum powder (light blocking component) that provides maximum light shielding properties for both the ultraviolet and visible light (i.e. encompassing 200-900nm wavelengths) (pg. 5). 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 that the heat shrinkable film is comprised of shrinkable films including polyester, polystyrene, polyvinylchloride, polyethylene, polypropylene based heat shrinkable films and has a thickness of 20 to 120mm (pg. 3), which overlaps with the claimed range of 30 to 100mm. 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 limitations reciting “recyclable” with respect to the container and the label in lines 2, 3, 19, 20 and “the light blocking ink layer configured to block at least 80% of incident light having wavelengths in a range of 250nm to 900 nm” in lines 13-15 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 aforementioned limitations are functional limitations that are met by the structure of the prior art. There does not appear to be a difference between the structure of Ota et al. and the structure of the claimed invention of the instant application. 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 see pg-pub [0059-0099]), 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. 2-5). Therefore, the heat shrink label taught by Ota et al. would perform the same function in the same manner as the instant application.
The limitation reciting “wherein the light blocking ink layer is configured to be removed from the recyclable shrink label after a caustic wash cycle of a recycling process” in lines 18-22 recite a method of using and/or intended use of the claimed label, 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 13 as described above. Furthermore, Ota et al. utilizes similar materials to those disclosed by the instant application (see pg-pub [0059-0099]), and would perform the same function in the same manner as the instant application.
Regarding claims 25 and 26, Ota et al. teaches all the limitations of claim 24 above, and further teaches that the surface (first surface) of the heat shrink film comprising the first and second light shielding layers is arranged to face the container, wherein the first and second light shielding layers are disposed between the heat shrink film and the external surface of the container (pg. 10).
The limitations reciting “recyclable” with respect to the container and the label in line 2 of claim 25 and lines 2 and 3 of claim 26 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. Ota et al. teaches similar materials for the container, heat shrink film and the first and second light shielding layers (pgs. 2-5) 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 Ota et al. would be capable of performing in the manner recited by the instant claims.
Regarding claims 30 and 31, Ota et al. teaches all the limitations of claim 24 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 claims 34 and 35, Ota et al. teaches all the limitations of claim 24 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 claims 34 and 35 while also being present at an amount sufficient to provide the desired reduction in light transmittance.
Regarding claims 36 and 41, Ota et al. teaches all the limitations of claims 13 and 24 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)).
Claims 27, 28, 37 and 38 are rejected under 35 U.S.C. 103 as being unpatentable over Ota et al. (JP 2004-250040; machine translation via EPO provided) in view of Williams et al. (US 2022/0389184).
Regarding claims 27, 28, 37 and 38, Ota et al. teaches all the limitations of claims 13 and 24 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 13, 14, 15, 16, 17, 18, 19, 20, 21, 22, 24, 25, 26, 27, 28, 29, 30, 31, 32, 33, 34, 35, 36, 37, 38, 39, 40, 41 and 42 are rejected under 35 U.S.C. 103 as being unpatentable over Williams et al. (US 2022/0389184) in view of Ota et al. (JP 2004-250040; machine translation via EPO provided).
Regarding claims 13, 15, 20, 37 and 38, 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 (i.e. recyclable label), wherein multiple ink layers (high opacity layer and light blocking layer) are printed or coated onto a PET or PETG shrink wrap label (heat shrink film), 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 component/particulate) ([0002-0010, 0024-0062, 0069-0085]).
The limitation reciting “the light blocking ink layer configured to block at least 80% of 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. 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, therefore, the heat shrink label taught by Williams et al. would be capable of performing in the manner recited by the instant claims.
The limitation reciting “wherein the light blocking ink layer is configured to be removed from the recyclable shrink label after a caustic wash cycle of a recycling process” recite a method of using and/or intended use of the claimed label, 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 used in the claimed method because Williams et al. discloses the structure of claim 13 as described above. Furthermore, Williams et al. utilizes similar materials to those disclosed by the instant application (see pg-pub [0059-0099]), and would perform the same function in the same manner as the instant application.
Williams et al. does not expressly teach the thickness of the shrink wrap label (heat shrink film). Ota et al. is in the same field of endeavor, heat shrinkable labels, and teaches a wraparound heat shrinkable label for a bottle, the heat shrinkable label comprising a first light shielding layer (high opacity layer; 3a) on a heat shrinkable film (1) and 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). 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. teaches that the thickness of the heat shrinkable film will vary depending on the material and size of the bottle to which the label is applied, but is generally in the range of 20 to 120mm (pg. 3), which overlaps with the claimed range of 30 to 100mm. In the case where the claimed ranges “overlap or lie inside ranges disclosed by the prior art” a prima facie case of obviousness exits.
As both Williams et al. and Ota et al. are directed to heat shrinkable films with ink layers applied thereon, it would have been obvious to one of ordinary skill in the art to modify the thickness of the label taught by William’s et al. to fall within the range taught by Ota et al. as Ota et al. teaches such thicknesses are generally used for heat shrink labels.
Regarding claims 14 and 16, Williams et al. in view of Ota et al. teaches all the limitations of claim 13 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 (indicia) 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 claims 17, 18, 39 and 40, Williams et al. in view of Ota et al. teaches all the limitations of claim 13 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 17, 18, 39 and 40, 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 17, 18, 39 and 40.
Regarding claim 19, Williams teaches all the limitations of claims 13 above, and while Williams et al. teaches that the multiple ink layers (high opacity layer and light blocking layer) comprise inorganic colorants, the reference does not expressly teach the inorganic pigments are metals. Ota et al., however, further teaches that the light shielding material used in the light shielding layers can be metals oxides such as titanium dioxide and iron oxide, also taught by Williams et all, but can also include metals such as aluminum and copper ([0014]).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the inorganic pigments of the ink layers taught by Williams et al. to include the metal particles such as aluminum and copper as taught by Ota et al. as Ota et al. teaches the metals to be obvious variants to the metal oxides. Furthermore, it would have been an obvious modification based upon the desired visual appearance and coloration of the ink layers as an obvious design choice.
Regarding claims 21 and 22, Williams et al. in view of Ota et al. teach all the limitations of claim 20 above, however, Williams et al. 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 24, 27, 28, 29, 33 and 42, 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 (i.e. recyclable label), wherein multiple ink layers (high opacity layer and light blocking layer) are printed or coated onto a PET or PETG shrink wrap label (heat shrink film), 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]). The label is attached to a polymeric beverage container such as a PET bottle ([0084]).
The limitation reciting “the light blocking ink layer configured to block at least 80% of 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. 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, therefore, the heat shrink label taught by Williams et al. would be capable of performing in the manner recited by the instant claims.
The limitation reciting “wherein the light blocking ink layer is configured to be removed from the recyclable shrink label after a caustic wash cycle of a recycling process” recite a method of using and/or intended use of the claimed label, 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 used in the claimed method because Williams et al. discloses the structure of claim 13 as described above. Furthermore, Williams et al. utilizes similar materials to those disclosed by the instant application (see pg-pub [0059-0099]), and would perform the same function in the same manner as the instant application.
Williams et al. does not expressly teach the thickness of the shrink wrap label (heat shrink film). Ota et al. is in the same field of endeavor, heat shrinkable labels, and teaches a wraparound heat shrinkable label for a bottle, the heat shrinkable label comprising a first light shielding layer (high opacity layer; 3a) on a heat shrinkable film (1) and 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). 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. teaches that the thickness of the heat shrinkable film will vary depending on the material and size of the bottle to which the label is applied, but is generally in the range of 20 to 120mm (pg. 3), which overlaps with the claimed range of 30 to 100mm. In the case where the claimed ranges “overlap or lie inside ranges disclosed by the prior art” a prima facie case of obviousness exits.
As both Williams et al. and Ota et al. are directed to heat shrinkable films with ink layers applied thereon, it would have been obvious to one of ordinary skill in the art to modify the thickness of the label taught by William’s et al. to fall within the range taught by Ota et al. as Ota et al. teaches such thicknesses are generally used for heat shrink labels.
Regarding claims 25 and 26, Williams et al. in view of Ota et al. teaches all the limitations of claim 24 above, and while Williams et al. does not expressly teach that the ink layers are disposed between the heat shrink film and the external surface of the container, such a modification would have been obvious to one of ordinary skill in the art based upon the desired use of the label. It is within the level of skill for an ordinary person in the art to print the ink layers on a surface of the heat shrink film that will face the container for enhanced protection against environmental elements.
Regarding claims 30 and 31, Williams et al. in view of Ota et al. teaches all the limitations of claim 24 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 (indicia) 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 32, Williams teaches all the limitations of claims 24 above, and while Williams et al. teaches that the multiple ink layers (high opacity layer and light blocking layer) comprise inorganic colorants, the reference does not expressly teach the inorganic pigments are metals. Ota et al., however, further teaches that the light shielding material used in the light shielding layers can be metals oxides such as titanium dioxide and iron oxide, also taught by Williams et all, but can also include metals such as aluminum and copper ([0014]).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the inorganic pigments of the ink layers taught by Williams et al. to include the metal particles such as aluminum and copper as taught by Ota et al. as Ota et al. teaches the metals to be obvious variants to the metal oxides. Furthermore, it would have been an obvious modification based upon the desired visual appearance and coloration of the ink layers as an obvious design choice.
Regarding claims 34 and 35, Williams et al. in view of Ota et al. teach all the limitations of claim 20 above, however, Williams et al. 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 36 and 41, Williams et al. in view of Ota 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.
Claims 21, 22, 34 and 35 are rejected under 35 U.S.C. 103 as being unpatentable over Kitano et al. (JP 2017114041A, cited on IDS, machine translation via EPO provided).
Regarding claims 21, 22, 34 and 35, Kitano et al. teaches all the limitations of claims 13 and 24 above, and further teaches that the silver aluminum ink is comprises the aluminum paste (light blocking component) in an amount of 10% by mass and a binder component is present in an amount of 15% by mass, wherein the remainder of the ink is comprised of additive and solvents ([0034-0037]).
While the reference does not expressly teach that the light blocking ink layer comprises from 0.1 to 10ppr of the light blocking component, nor that the light blocking ink layer is present in an amount of 0.5ppr to 25ppr, such a modification would have been obvious to one of ordinary skill in the art as an obvious matter of design choice based upon the desired amount of coloration provided on the heat shrink label and the desired visual effect over the resultant heat shrink label.
Response to Arguments
Response-Claim Rejections - 35 USC § 112
The previous rejection of claim 24 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 is overcome by Applicants amendments in the response filed 04/24/2026.
Response-Claim Rejections - 35 USC § 102 and 103
Applicant's arguments filed 04/24/2026 have been fully considered but they are not persuasive.
With respect to the rejections of claim 13 over Kitano et al., the Applicant argues on pages 7-8 that the office action improperly disregards the limitations “recyclable” and “configured to block at least 80% of incident light having wavelengths in the range of 250 nm to 900nm”, and Kitano et al. does not explicitly teach these limitations. The Applicant further argues on pages 8-9 that the office action fails to provide a showing that necessarily means that the light blocking layer is configured to perform in the manner claimed, that the aforementioned features are inherent or that the structures of Kitano et al. necessarily mean that it is recyclable. These arguments are not persuasive.
As detailed in the above rejections, Kitano et al. teaches a similar structure for the reflective light shielding laminate and packaging material as required by the claims of the instant application. Kitano 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 respectively of the instant application see pg-pub [0059-0099]), 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). There does not appear to be a difference between the structure of Kitano et al. and the structure of the claimed invention of the instant application, therefore, the heat shrink label taught by Kitano et al. would perform the same function in the same manner as the instant application.
The claimed intended use limitations describe properties of the claimed recyclable heat shrink label. As Kitano et al. teaches a similar structure and materials used 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 respectively of the instant application see pg-pub [0059-0099]), the laminate of Kitano et al. would inherently have the claimed properties, and thus, would be capable of performing in the manner claimed.
The Applicant further argues on pages 9 and 10 that the office improperly disregards the limitation “wherein the light blocking ink layer is configured to be removed from the recyclable shrink label after a caustic wash cycle of a recycling process”, and improperly fails to consider the functional limitations of independent claim 13. The Applicant argues that Kitano et al. is silent regarding this limitation and the office action has not asserted that the features are inherent. This argument is not persuasive.
As stated in the rejections above, the aforementioned limitations are directed to a method of using and/or intended use of the claimed label, 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, as previously stated, Kitano et al. teaches a similar structure and materials used 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 respectively of the instant application see pg-pub [0059-0099]), the laminate of Kitano et al. would inherently have the claimed properties, and thus, would be capable of performing in the manner claimed.
It is maintained for the reasons presented above that there does not appear to be a difference between the prior art structure and the structure used in the claimed method because Kitano et al. discloses the structure of claim 13 as described above. Furthermore, Kitano et al. utilizes similar materials to those disclosed by the instant application (see pg-pub [0059-0099]), and would perform the same function in the same manner as the instant application.
With respect to the rejections of independent claim 24 over Kitano et al., the Applicant argues on pages 11-12 that the office action improperly disregards the limitations “recyclable” and “configured to block at least 80% of incident light having wavelengths in the range of 250 nm to 900nm”, and Kitano et al. does not explicitly teach these limitations. The Applicant further argues that the office action fails to provide a showing that necessarily means that the light blocking layer is configured to perform in the manner claimed, that the aforementioned features are inherent or that the structures of Kitano et al. necessarily mean that it is recyclable. These arguments are not persuasive.
As detailed in the above rejections, Kitano et al. teaches a similar structure for the reflective light shielding laminate and packaging material as required by the claims of the instant application. Kitano 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 respectively of the instant application see pg-pub [0059-0099]), 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). There does not appear to be a difference between the structure of Kitano et al. and the structure of the claimed invention of the instant application, therefore, the heat shrink label taught by Kitano et al. would perform the same function in the same manner as the instant application.
The claimed intended use limitations describe properties of the claimed recyclable heat shrink label. As Kitano et al. teaches a similar structure and materials used 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 respectively of the instant application see pg-pub [0059-0099]), the laminate of Kitano et al. would inherently have the claimed properties, and thus, would be capable of performing in the manner claimed.
The Applicant further argues on pages 12 and 13 that the office improperly disregards the limitation “wherein the light blocking ink layer is configured to be removed from the recyclable shrink label after a caustic wash cycle of a recycling process”, and improperly fails to consider the functional limitations of independent claim 13. The Applicant argues that Kitano et al. is silent regarding this limitation and the office action has not asserted that the features are inherent. This argument is not persuasive.
As stated in the rejections above, the aforementioned limitations are directed to a method of using and/or intended use of the claimed label, 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, as previously stated, Kitano et al. teaches a similar structure and materials used 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 respectively of the instant application see pg-pub [0059-0099]), the laminate of Kitano et al. would inherently have the claimed properties, and thus, would be capable of performing in the manner claimed.
It is maintained for the reasons presented above that there does not appear to be a difference between the prior art structure and the structure used in the claimed method because Kitano et al. discloses the structure of claim 24 as described above. Furthermore, Kitano et al. utilizes similar materials to those disclosed by the instant application (see pg-pub [0059-0099]), and would perform the same function in the same manner as the instant application.
With respect to the rejections of independent claim 13 over Ota et al., the Applicant argues on pages 14-15 that the office action improperly disregards the limitations “recyclable” and “configured to block at least 80% of incident light having wavelengths in the range of 250 nm to 900nm”, and Ota et al. does not explicitly teach these limitations. The Applicant further argues that the office action fails to provide a showing that necessarily means that the light blocking layer is configured to perform in the manner claimed, that the aforementioned features are inherent or that the structures of Ota et al. necessarily mean that it 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 13, the structural requirements are:
a light blocking ink layer comprising a light blocking ink component
the light blocking ink component is comprised of at least one of: metal, metal oxide, a reflective pigment, carbon black, mica and combinations thereof.
The limitations reciting “configured to block at least 80% of incident light having wavelengths in the range of 205nm to 900nm” and “configured to be removed from the recyclable shrink label after a caustic wash cycle of a recycling process” is functional language pertaining to properties of the light blocking ink layer. Therefore, should a light blocking ink layer comprise the claimed components, it would inherently function in the manner claimed.
Ota et al., as stated above, teaches first and second light shielding layers are comprised of a light shielding substance (light blocking component) that reflects, diffuses or scatters ultraviolet light and/or visible light, such as powders of titanium dioxide, aluminum, aluminum silicate, calcium carbonate, alumina, and combinations thereof in a binder solution (i.e. ink) (pg. 3-4). Ota et al. specifically teaches an example wherein the light shielding layers are comprised of a mixture of titanium dioxide (pigment) and aluminum powder (light blocking component) that provides maximum light shielding properties for both the ultraviolet and visible light (i.e. encompassing 200-900nm wavelengths) (pg. 5). 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 inherently perform the same function in the same manner as the instant application.
The Applicant argues on pages 15-16 that the office improperly disregards the limitation “wherein the light blocking ink layer is configured to be removed from the recyclable shrink label after a caustic wash cycle of a recycling process”, and improperly fails to consider the functional limitations of independent claim 13. The Applicant argues that Ota et al. is silent regarding this limitation and the office action has not asserted that the features are inherent. This argument is not persuasive.
As stated in the rejections above, the aforementioned limitations are directed to a method of using and/or intended use of the claimed label, 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, as previously stated, Ota et al. teaches a similar structure and materials used 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]), therefore the label of Ota et al. would inherently have the claimed properties, and thus, would be capable of performing in the manner claimed.
It is maintained for the reasons presented above that there does not appear to be a difference between the prior art structure and the structure used in the claimed method because Ota et al. discloses the structure of claim 13 as described above. Furthermore, Ota et al. utilizes similar materials to those disclosed by the instant application (see pg-pub [0059-0099]), and would perform the same function in the same manner as the instant application.
With respect to the rejections of independent claim 24 over Ota et al., the Applicant argues on pages 17-18 that the office action improperly disregards the limitations “recyclable” and “configured to block at least 80% of incident light having wavelengths in the range of 250 nm to 900nm”, and Ota et al. does not explicitly teach these limitations. The Applicant further argues that the office action fails to provide a showing that necessarily means that the light blocking layer is configured to perform in the manner claimed, that the aforementioned features are inherent or that the structures of Ota et al. necessarily mean that it 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 13, the structural requirements are:
a light blocking ink layer comprising a light blocking ink component
the light blocking ink component is comprised of at least one of: metal, metal oxide, a reflective pigment, carbon black, mica and combinations thereof.
The limitations reciting “configured to block at least 80% of incident light having wavelengths in the range of 205nm to 900nm” and “configured to be removed from the recyclable shrink label after a caustic wash cycle of a recycling process” is functional language pertaining to properties of the light blocking ink layer. Therefore, should a light blocking ink layer comprise the claimed components, it would inherently function in the manner claimed.
Ota et al., as stated above, teaches first and second light shielding layers are comprised of a light shielding substance (light blocking component) that reflects, diffuses or scatters ultraviolet light and/or visible light, such as powders of titanium dioxide, aluminum, aluminum silicate, calcium carbonate, alumina, and combinations thereof in a binder solution (i.e. ink) (pg. 3-4). Ota et al. specifically teaches an example wherein the light shielding layers are comprised of a mixture of titanium dioxide (pigment) and aluminum powder (light blocking component) that provides maximum light shielding properties for both the ultraviolet and visible light (i.e. encompassing 200-900nm wavelengths) (pg. 5). 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 inherently perform the same function in the same manner as the instant application.
The Applicant argues on pages 18-19 that the office improperly disregards the limitation “wherein the light blocking ink layer is configured to be removed from the recyclable shrink label after a caustic wash cycle of a recycling process”, and improperly fails to consider the functional limitations of independent claim 24. The Applicant argues that Ota et al. is silent regarding this limitation and the office action has not asserted that the features are inherent. This argument is not persuasive.
As stated in the rejections above, the aforementioned limitations are directed to a method of using and/or intended use of the claimed label, 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, as previously stated, Ota et al. teaches a similar structure and materials used 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]), therefore the label of Ota et al. would inherently have the claimed properties, and thus, would be capable of performing in the manner claimed.
It is maintained for the reasons presented above that there does not appear to be a difference between the prior art structure and the structure used in the claimed method because Ota et al. discloses the structure of claim 24as described above. Furthermore, Ota et al. utilizes similar materials to those disclosed by the instant application (see pg-pub [0059-0099]), and would perform the same function in the same manner as the instant application.
With respect to the rejections of independent claim 13 over Williams et al. in view of Ota et al., the Applicant argues on pages 20-21 that the office action fails to disclose or teach all the limitations of claim 13, however, Williams et al. does not explicitly teach “a light blocking ink layer configured to block at least 80% of incident light having wavelengths in the range of 250 nm to 900nm” or “wherein the light blocking ink layer is configured to be removed from the recyclable shrink label after a caustic wash cycle of a recycling process”. The Applicant further argues that the office action does not assert that the aforementioned features are inherent or that the structures of Williams et al. necessarily mean that the light blocking ink layer is configured to perform in the manner claimed by the instant claims. 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.
As stated above, 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:
a light blocking ink layer comprising a light blocking ink component
the light blocking ink component is comprised of at least one of: metal, metal oxide, a reflective pigment, carbon black, mica and combinations thereof.
In the rejections above, Williams et al. is described as teaching a shrinkable label of PET or PETG comprising multiple ink layers (high opacity layer and light blocking layer) with components of 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 component/particulate) ([0002-0010, 0024-0062, 0069-0085]). Iron oxide, ferric oxide and chromium oxide meet the limitation of claim 13 requiring that the light blocking component is a metal oxide and/or a reflective pigment.
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 (see pg-pub [0059-0099]), therefore, the heat shrink label taught by Williams et al. would inherently have the same properties and be capable of performing in the manner recited by the instant claims.
The Applicant additionally argues on pages 21-24 that one of ordinary skill in the art would not be motivated to combine Ota et al. with Williams et al., as the labels have completely different constructions.
In response to applicant’s argument that there is no teaching, suggestion, or motivation to combine the references, the examiner recognizes that obviousness may be established by combining or modifying the teachings of the prior art to produce the claimed invention where there is some teaching, suggestion, or motivation to do so found either in the references themselves or in the knowledge generally available to one of ordinary skill in the art. See In re Fine, 837 F.2d 1071, 5 USPQ2d 1596 (Fed. Cir. 1988), In re Jones, 958 F.2d 347, 21 USPQ2d 1941 (Fed. Cir. 1992), and KSR International Co. v. Teleflex, Inc., 550 U.S. 398, 82 USPQ2d 1385 (2007).
In this case, Williams et al. teaches a shrink wrap label of PET or PETG shrink wrap film having multiple ink layers disposed on the film, 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 component/particulate) (claim 26-28,33,40; ([0002-0010, 0024-0062, 0069-0085]), as described in the rejection above. Williams et al. , however, does not expressly teach the thickness of the shrink wrap label (heat shrink film).
Ota et al. is in the same field of endeavor, heat shrinkable labels, and teaches a wraparound heat shrinkable label for a bottle, the heat shrinkable label comprising a first light shielding layer (high opacity layer; 3a) disposed on a heat shrinkable film (1) and 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). 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. teaches that the thickness of the heat shrinkable film will vary depending on the material and size of the bottle to which the label is applied, but is generally in the range of 20 to 120mm (pg. 3), which overlaps with the claimed range of 30 to 100mm. In the case where the claimed ranges “overlap or lie inside ranges disclosed by the prior art” a prima facie case of obviousness exits.
Both Williams et al. and Ota et al. teach heat shrink labels with multiple ink layer disposed thereon comprising similar components therein, therefore, it is maintained that it would have been obvious to one of ordinary skill in the art to modify the thickness of the label taught by William’s et al. to fall within the range taught by Ota et al. as Ota et al. teaches such thicknesses are generally used for heat shrink labels.
With respect to the rejections of independent claim 24 over Williams et al. in view of Ota et al., the Applicant argues on pages 24-26 that the office action improperly fails to properly consider the functional language limitations of independent claim 24 and a person of ordinary skill in the art would not be motivated to combine Williams et al. with Ota et al. The Applicant states that for substantially the same reasons discussed with regard to the rejections of independent claim 13, the office action fails to teach the features required by claim 24. These arguments are not persuasive for the same reasons presented above with respect to independent claim 13.
The remaining dependent claims remain rejected over the cited references for the reasons expressed above regarding independent claims 13 and 24.
Conclusion
THIS ACTION IS MADE FINAL. 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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LAURA POWERS
Examiner
Art Unit 1785
/LAURA C POWERS/Primary Examiner, Art Unit 1785
Prosecution Insights