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 .
Response to Amendment
The amendment and response filed on June 04, 2026 has been entered. Claims 1-7 and 12-15 are pending.
Election/Restrictions
Applicant's election with traverse of Group I (claims 1-4 and 8-11) in the reply filed on June 04, 2026 is acknowledged. The traversal is on the grounds that the Office failed to sufficiently establish lack of unity of invention between all of the claim groupings. Specifically, it is argued that, in view of the claim amendments submitted on June 04, 2026, Groups I-IV possess unity of invention and should be searched and examined together. It is agreed that, based on the claim amendments and arguments, Groups I-IV possess unity of invention. Accordingly, the claim groupings are herein modified such that elected Group I, which is directed to a multi-layer device, includes claims 1-7 and 13-15 and non-elected Group II, which is directed to a process for the application of films, includes claim 12. The modified claim groupings share the technical feature of a water-activable base coat layer, i.e., layer (C), which is not a special technical feature, as evidenced by Lux et al. (US Pub 2012/0059103) in the below prior art rejection of claim 1. This requirement is made FINAL.
Claim Objections
Claims 1-7 and 13-15 are objected to because of the following informalities:
The claims include improper capitalization of non-proper nouns. For example, in claim 1, “Multi-Layered Device” (line 1), “Water Activable Self-Adhering Film” (line 1), “Base Layer” (lines 3 and 4), “Release Layer” (line 3), “Water-activable Base Coat Layer” (lines 4 and 5), “Release Liner” (line 7), “Film” (line 8), and “Additional” (line 9). This issue is present in all of the elected pending claims.
The claims include structural limitations that are in quotations. This is unconventional claim punctuation. For example, in claim 1, “Base Layer” (lines 3 and 4), “Release Layer” (line 3), and “Water-activable Base Coat Layer” (lines 4 and 5). This issue is present in all of the elected pending claims.
The use of brackets in the claims, e.g., claim 1 (lines 7 and 9), claim 3 (line 8), claim 5 (lines 6, 7, and 14), claim 6 (lines 6, 7, and 14), claim 7 (lines 6, 7, 14, and 34), is objected to because the use of brackets in claim language indicates the deletion of claim language (see 37 CFR 1.121(c)(2)). Thus, the use of brackets in the claim may result in printing errors or issues.
In claim 4, line 7, and claim 7, line 31, the acronym “SBR” should be spelled out.
In claim 14, the acronyms “PET”, “BO-PET”, “PP”, HDPE”, and “LDPE” should be spelled out.
Claim 15 is objected to under 37 CFR 1.75(c) as being in improper form because a multiple dependent claim does not reference the multiple claims in the alternative only. See MPEP § 608.01(n). Accordingly, the claim 15 has not been further treated on the merits.
Claim Rejections - 35 USC § 112
The following is a quotation of 35 U.S.C. 112(b):
(b) CONCLUSION.—The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the inventor or a joint inventor regards as the invention.
Claims 1-7, 13, and 14 are rejected under 35 U.S.C. 112(b) as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor regards as the invention.
In claim 1, line 15, the phrase “preferably polyvinyl alcohol, and polyvinyl pyrrolidone” is indefinite as to scope because it is unclear if the narrower Markush member listing negates the more expansion Markush member listing. See MPEP 2173.05(c).
In claim 1, lines 17-20, the hydrophobic polymer Markush group is indefinite for the following reasons. First, it is unclear if the “/” denotes separate members or blended members of the Markush listing. Second, the inclusion of “preferably” (two occurrences in line 18) renders the Markush group unclear as to which members are being positively recited (see MPEP 2173.05(c)). Third, the inclusion of additional “groups”, i.e., acrylic polymer (line 19) and synthetic rubbers (line 20), renders the Markush group unclear as to what members are present. Fourth, the inclusion of “epoxy resins” (line 19) is unclear, since epoxy resins are not hydrophobic but rather hydrophilic.
Claims 2-7 are indefinite in that ratio of hydrophilic to hydrophobic polymers in the base coat layer includes a ratio of 1:0, which would include a include no hydrophobic polymer present. However, claims 2-7 are dependent upon claim 1, which requires that the base coat layer comprises both hydrophilic and hydrophobic polymers (see claim 1, lines 10-11). Thus, this ratio is indefinite since dependent claims cannot expand the scope of the subject matter from which they are dependent upon.
Claims 2-7 are indefinite due to the presence of a “preferably” and a “most preferably” range. See MPEP 2173.05(c), which states that a narrow and broad range in the same claim leads to confusion over the intended scope of the claim.
In claim 2, line 4, the term “GSM” is not defined and indefinite. It is not clear what this acronym stands for. This issue is also present in claims 3-7.
In claim 5, line 10, the term “(Rutile)” is indefinite in that it is not clear if this specie of titanium dioxide set forth in parentheses is a positive limitation or merely exemplarily. This issue is also present in claims 6 and 7.
In claim 5, line 19, the term “the film” (in step d) lacks clear antecedent basis.
In claim 14, line 2, the term “(biaxially oriented)” is indefinite in that it is not clear if this term in parentheses is a positive limitation or merely exemplarily.
Claims 13 and 14 are indefinite in the use of the exemplary claim language of “such as” (claim 13, line 2, and claim 14, line 2) and “typically” (claim 14, line 3). See MPEP 2173.05(d).
Claim Rejections - 35 USC § 103
In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis (i.e., changing from AIA to pre-AIA ) for the rejection will not be considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status.
The 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.
Claims 1-7, 13, and 14 are rejected under 35 U.S.C. 103 as being unpatentable over Lux et al. (US Pub 2012/0059103) in view of Geelink et al. (US Pub 2019/0161652).
Regarding claim 1, Lux discloses labels having multiple layers, i.e., a multi-layered device, comprising a base layer [0017] and a water-activatable adhesive layer which contains a blend of a hydrophilic polymer and a hydrophobic polymer [0014]. The hydrophilic polymer can be a polyvinyl alcohol [0032] and the hydrophobic polymer can be styrene-butadiene rubber, polyacrylate, or polyamide [0038]. While the labels of Lux do not require a release layer or liner, Lux recognizes that it is conventional in the art to include release coatings to adhesive labels to prevent the adhesive composition from gumming or jamming the application equipment [0005]. Geelink, which is also directed to the adhesive label art, discloses a multi-layer label that comprises a release layer and liner (claim 1). Since the adhesive composition, which contains a blend of a hydrophilic polymer and a hydrophobic polymer, would be self-adhesive upon contact with a fluid, i.e., water, it would have been obvious to one of ordinary skill in the art to have further incorporated a release layer/liner to the multi-layer label in order to prevent the adhesive from undesirably being in contact with the application equipment, as taught in Geelink, in the event that, or when, the adhesive is rendered self-adhesive by coming into contact with a liquid medium.
Regarding the claimed ratio of hydrophilic polymer to hydrophobic polymer set forth in claims 2-7, Lux discloses that the hydrophilic polymer and hydrophobic polymer are present in an amount of 20-40 wt% and 40-80 wt%, respectively (claims 5 and 8), which overlaps with the presently claimed ratios. As set forth in MPEP 2144.05.I., “In the case where the claimed ranges ‘overlap or lie inside ranges disclosed by the prior art’ a prima facie case of obviousness exists.” In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976).
Regarding claim 3, Lux recognizes that it is conventional in the art to include a print layer to a multi-layer label [0005] and discloses embodiments wherein a print layer is included onto the label [0090].
Regarding claim 4, Lux does not specifically disclose adding a second water-activatable coating layer. However, this claim does not require that the second water-activatable coating layer, i.e., layer (D), is distinct from the first water-activatable coating layer, i.e., layer (C). An embodiment where an identical composition is used for both the first and second water-activatable coating layers would be indistinguishable from an embodiment where a single water-activatable coating layer is used. Further, the mere duplication of parts of applying a second water-activatable coating layer would have been obvious to one of ordinary skill in the art. See MPEP 2144.04.VI. In the present case, it would have been obvious to have included a second water-activatable coating layer, motivated by the desire to obtain an adhesive which had controllable adhesive properties.
Regarding claims 5-7, these claims are product-by-process claims which correspond to claims 1, 3, and 4, respectively. MPEP 2113 states: “Even though product-by-process claims are limited by and defined by the process, determination of patentability is based on the product itself. The patentability of a product does not depend on its method of production. If the product in the product-by-process claim is the same as or obvious from a product of the prior art, the claim is unpatentable even though the prior product was made by a different process." In re Thorpe, 777 F.2d 695, 698, 227 USPQ 964, 966 (Fed. Cir. 1985). As set forth above in the rejections over claims 1, 3, and 4, Lux as modified by Geelink suggests the claimed multi-layer label having the claimed structural features. The process limitations set forth in claims 5-7 do not appear to impart any structural limitations that would not be present in the invention suggested by Lux as modified by Geelink. Accordingly, claims 5-7 are deemed to be obvious for the reasons set forth for claims 1, 3, and 4 absent some Applicant-provided evidence to establish non-obviousness between the prior art and the claimed invention.
With respect to the GSM limitations in claims 2-7, as noted above it is not clear what this acronym stands for. If it stands for “g/m2”, Lux as modified by Geelink does not disclose the coating weight of the layers. However, the coating weight is directly correlated to the thickness of the layers, and it would have been obvious to one of ordinary skill in the art to have optimized or discovered workable ranges through routine experimentation, motivated by the desire to impart various desired properties, such as tensile, flexural, and adhesive strength to the individual layers and overall multi-layered film. See MPEP 2144.05.II.
Regarding claim 13, Lux discloses that the base layer can be a paper layer [0017].
Regarding claim 14, Lux discloses that the base layer can be a polyethylene terephthalate (PTFE) plastic material [0017].
Claim 13 is rejected under 35 U.S.C. 103 as being unpatentable over Lux et al. (US Pub 2012/0059103) in view of Geelink et al. (US Pub 2019/0161652) as applied to claim 1 above, and further in view of Dayaram (WO2015/128881A2).
This is an alternative rejection to the above rejection under 35 U.S.C. 103 over Lux in view of Geelink. As noted in the above rejection under 35 U.S.C. 112(b), the term “such as” in claim 13 is indefinite as to scope. Nevertheless, while neither Lux nor Geelink specifically disclose using the specific paper types set forth in the “such as” language in claim 13, Dayaram discloses that these paper types are conventional paper types for use as base layers (pg 8, lines 8-14). It would have been obvious to one of ordinary skill in the art to have used one of the paper types, such as a super calandered kraft paper, as the based layer in Lux, motivated by the desire to use a conventionally known base layer material that had predictable and known properties, as taught by Dayaram.
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/BLAINE COPENHEAVER/Primary Examiner, Art Unit 1781
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