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 .
Summary
The Applicant arguments and claim amendments received on 12/19/2025 are entered into the file. Currently, claims 1 and 8 are amended; claims 5 and 9-21 are cancelled; claims 22-34 are new; resulting in claims 1-4, 6-8 and 22-34 pending for examination.
Information Disclosure Statement
The information disclosure statement (IDS) submitted on 12/19/2025 is considered by the examiner.
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.
The following is a quotation of 35 U.S.C. 112 (pre-AIA ), second paragraph:
The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.
Claims 26 and 27 are rejected 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.
Regarding claim 26, the limitation “wherein the substrate layer further comprises paper” is indefinite. Independent claim 1 requires that the substrate of the label be composed of “a second polymer” that is different from the polymer of the container. It is not clear how paper would be considered a second polymer. While it is acknowledged that the phrasing of claim 26 is “further comprises paper” this remains indefinite in light of the specification. In looking at paragraph [0024] of the pg-pub, the specification states that the label substrate includes “a polymer selected from the group consisting of….”, followed by a number of different polymers, paper, and mixtures thereof being listed. It is unclear from the specification how paper can be considered to be a polymer, furthermore, it is unclear how a mixture of paper and polymer would be handled during recycling process. Additionally, all the examples provided in the disclosure, see pg-pub [0089-0093] include label substrates of BOPP. There is no discussion in the disclosure for an embodiment wherein the label substrate is comprised of a polymer and paper, and therefore, it is unclear how the label substrate can be comprised of a polymer and paper as required by claims 26 in in view of 1.
As the metes and bounds of the claim are unable to be determined and the scope of the claimed subject matter is not known, prior art is unable to be applied.
Regarding claim 27, there is insufficient antecedent basis for the phrase “the layer”. The claim depends from claim 1 which recites a label comprising a substrate layer, therefore if the phrase “the layer” is intended to refer back the substrate layer, it should be amended to recite “the substrate layer”.
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.
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 1, 2, 3, 4, 6, 7, 8, 24, 27, 28, 29, 31, 32, 33 and 34 are rejected under 35 U.S.C. 103 as being unpatentable over Mitchell et al. (US 2017/0223879) in view of McKillip et al. (US 2020/0031526).
Regarding claims 1, 2, 3, 4, 6, 8, 31, 33 and 34, Mitchell et al. teaches a shrinkable label and a container utilizing the label thereon, wherein the container is a clear PET bottle (first polymer being recyclable) and the label is easily separated from the container during subsequent recycling processes([0003-0005, 0091-0099, 0248-0252]). The shrinkable label is a multilayer film (substrate) comprised of a core layer sandwiched by two skin layers, wherein the shrinkable label is monoaxially (uniaxially) oriented, wherein the shrinkable film comprises a propylene terpolymer or propylene random copolymer (second polymer different from first polymer) ([0091-0099, 0112-0190]). Mitchell et al. teaches that the multilayer film (substrate) forming the shrinkable label has an overall preferable thickness of 50 microns ([0099]), which falls squarely within the ranges recited by claims 1, 3 and 4. The label may be a full body label as shown in Figure 6, wherein the label covers at least 90% of the outer surface of the container ([0236]), thus meeting the coverage range recites by claims 1 and 2.
Mitchell et al. does not expressly teach the shrinkable label is attached to the container by a clear permanent acrylic adhesive. McKillip et al. is directed to a labeled article comprising a shrink sleeve label, wherein a pressure sensitive adhesive is used to attach the label to the container during shrinking [0040-0047]). McKillip et al. teaches that an adhesive, such as clear general purpose permanent acrylic pressure sensitive adhesives, are positioned between the label and the article to which the label is applied ([0040-0048]).
As both Mitchell et al. and McKillip et al. teach heat shrink labels, 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 shrinkable label and a container utilizing the label thereon taught by Mitchell et al. to include the clear general purpose permanent acrylic pressure sensitive adhesives between the label and the container as taught by McKillip et al. to ensure proper placement and adhesion of the label on the container.
The recitation of “sustainable, recyclable” in the preamble of claims 1 and 8, “first polymer being recyclable” in line 2 of claims 1 and 8, “recyclable clear permanent acrylic adhesive” in line 3 of claims 1 and 8, “wherein materials forming the container and the label are compatible with recycling streams such that the article is recyclable” in line 7-8 of claims 1 and 8, and “for identification and sorting by new infrared (NIR) sortation equipment” in claim 8 are all considered functional language related to the intended use of the product and are accorded limited weight as the language does not further limit the structure or the process. Furthermore, the heat shrink labeled container taught by Mitchell et al. in view of McKillip et al. teaches all the same materials as the instant invention, and therefore, is capable of performing in the manner claimed.
Regarding claim 7, Mitchell et al. in view of McKillip et al. teaches all the embodiments of claim 1 above, and Mitchell et al. further teaches that the container is a foodstuff container ([0005]).
Regarding claim 24, Mitchell et al. in view of McKillip et al. teaches all the limitations of claim 1 above, and, as previously stated, Mitchell et al. teaches the container is a clear PET bottle (first polymer) and the label is easily separated from the container during subsequent recycling processes([0003-0005, 0091-0099, 0248-0252]).
The recitation of “a virgin polyethylene terephthalate”, “a post-consumer recycled polyethylene terephthalate” and “a post-industrial recycled polyethylene terephthalate” in claim 24 are all considered functional language related to the intended use of the product and are accorded limited weight as the language does not further limit the structure or the process. Furthermore, the heat shrink labeled container taught by Mitchell et al. in view of McKillip et al. teaches all the same materials as the instant invention, and therefore, is capable of performing in the manner claimed.
Regarding claim 27, Mitchell et al. in view of McKillip et al. teaches all the limitations of claim 1 above, and Mitchell et al. further teaches that the multilayer film (substrate) of the shrinkable label may comprising printing on a first skin layer, wherein the printing can be done by an ink-jet printing process (i.e. ink) ([0202-0204]).
Regarding claim 28, 29 and 32, Mitchell et al. in view of McKillip et al. teaches all the limitations of claim 1 above. Mitchell et al. further teaches a broader range for the overall thickness of 25-60 microns ([0099]), which overlaps the claimed range of 51-59 mm recited by claim 28, the claimed range of 51-52 mm recited by claim 29 and the claimed range of 51-59 mm. 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 22, 23, 25 and 30 are rejected under 35 U.S.C. 103 as being unpatentable over Mitchell et al. (US 2017/0223879) in view of McKillip et al. (US 2020/0031526) and further in view of Boswell et al. (US 2011/0120902).
Regarding claims 22 and 23, Mitchell et al. in view of McKillip et al. teaches all the limitations of claim 1 above. While Mitchell et al. teaches that the container is a clear PET bottle (first polymer being recyclable), the reference does not expressly teach that the container is a polyethylene such as high density polyethylene or low density polyethylene.
Boswell et al. teaches sustainable packaging for consumer products, comprising a container, cap and label all comprised of renewable and/or recyclable materials (Abstract, [0007-0015, 0017-0024, 0027-0083, 0096-0103]). Boswell et al. teaches that the container includes at least about 90 wt.% of bio-polymer, recycled polymer ,regrind polymer or mixture thereof, wherein examples of renewable materials include bio-polyethylene, bio-polyethylene terephthalate and bio-polypropylene, wherein polyethylene includes high density polyethylene, low density polyethylene, low density polyethylene, linear low density polyethylene and ultra low density polyethylene ([0008-0012, 0023-0024, 0027-0028]). Boswell et al. further teaches properties of the article can be tuned by varying the amount of bio-based material, recycled material and regrind material used to form the container, cap and label, such as increasing the amount of bio-based material at the expense of recycled material tends to increase the stress crack resistance, impact resistance, decrease opaqueness and increase surface glow ([0023-0024]). Boswell et al. teaches that the ability to tune the composition of the sustainable article, results in a composition that is easier to recycle in typical recycling streams ([0024]).
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 clear PET bottle (first polymer being recyclable) taught by Mitchell et al. in view of McKillip et al. to further comprise the bio-polymer, recycled polymer ,regrind polymer or mixture thereof, wherein examples of renewable materials of Boswell et al., including bio-polyethylene such as high density polyethylene, low density polyethylene, low density polyethylene, linear low density polyethylene and ultra low density polyethylene to varying the properties of the container to have the desired stress crack resistance, impact resistance, decrease opaqueness and increase surface glow as taught by Boswell et al. Furthermore, Boswell et al. teaches that PET and PE are obvious variants of each other for materials used in a container.
The recitation of “a virgin polyethylene”, “a post-consumer recycled polyethylene” and “a post-industrial recycled polyethylene” in claim 22 are all considered functional language related to the intended use of the product and are accorded limited weight as the language does not further limit the structure or the process. Furthermore, the heat shrink labeled container taught by Mitchell et al. in view of McKillip et al. and Boswell et al. teaches all the same materials as the instant invention, and therefore, is capable of performing in the manner claimed.
Regarding claim 25, Mitchell et al. in view of McKillip et al. teaches all the limitations of claim 1 above. While Mitchell et al. teaches that the container is a clear PET bottle (first polymer being recyclable), the reference does not expressly teach that the container is a polypropylene.
Boswell et al. teaches sustainable packaging for consumer products, comprising a container, cap and label all comprised of renewable and/or recyclable materials (Abstract, [0007-0015, 0017-0024, 0027-0083, 0096-0103]). Boswell et al. teaches that the container includes at least about 90 wt.% of bio-polymer, recycled polymer ,regrind polymer or mixture thereof, wherein examples of renewable materials include bio-polyethylene, bio-polyethylene terephthalate and bio-polypropylene ([0008-0012, 0023-0024, 0027-0028]). Boswell et al. further teaches properties of the article can be tuned by varying the amount of bio-based material, recycled material and regrind material used to form the container, cap and label, such as increasing the amount of bio-based material at the expense of recycled material tends to increase the stress crack resistance, impact resistance, decrease opaqueness and increase surface glow ([0023-0024]). Boswell et al. teaches that the ability to tune the composition of the sustainable article, results in a composition that is easier to recycle in typical recycling streams ([0024]).
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 clear PET bottle (first polymer being recyclable) taught by Mitchell et al. in view of McKillip et al. to further comprise the bio-polymer, recycled polymer ,regrind polymer or mixture thereof, wherein examples of renewable materials of Boswell et al., including bio-polypropylene to vary the properties of the container to have the desired stress crack resistance, impact resistance, decrease opaqueness and increase surface glow as taught by Boswell et al. Furthermore, Boswell et al. teaches that PET and PP are obvious variants of each other for materials used in a container.
The recitation of “a virgin polypropylene”, “a post-consumer recycled polypropylene” and “a post-industrial recycled polypropylene” in claim 25 are all considered functional language related to the intended use of the product and are accorded limited weight as the language does not further limit the structure or the process. Furthermore, the heat shrink labeled container taught by Mitchell et al. in view of McKillip et al. and Boswell et al. teaches all the same materials as the instant invention, and therefore, is capable of performing in the manner claimed.
Regarding claim 30, Mitchell et al. in view of McKillip et al. teaches all the limitations of claim 1 above, however, Mitchell et al. does not expressly teach that the cap (28) is comprised of polypropylene.
Boswell et al. teaches sustainable packaging for consumer products, comprising a container, cap and label all comprised of renewable and/or recyclable materials (Abstract, [0007-0015, 0017-0024, 0027-0083, 0096-0103]). Boswell et al. further teaches that the cap of the article can be comprised of polypropylene, wherein the sustainable packaging is free from virgin petroleum-based compounds allowing for ease in recycling in typical recycling streams because issues concerning contamination of polyethylene terephthalate streams during floatation separation can be avoided ([0012, 0023-0024, 0072, 0077-0078]).
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 cap (28) of the shrinkable label and a container taught by Mitchell et al. in view of McKillip et al. to be comprised of polypropylene as taught by Boswell et al. to increase the ease of recycling.
Response to Arguments
Response-Claim Rejections - 35 USC § 103
Applicant's arguments filed 11/13/2025 have been fully considered but they are not persuasive.
The Applicant argues on page 7 that the newly added amendments to independent claims 1 and 8 require that the materials forming the container and the label be compatible with recycling streams such that the article is recyclable. The Applicant further argues that the word “recyclable” defines a structural property and is not intended use as previously stated by the Examiner. The Applicant additionally argues at the bottom of page 7 that Mitchell et al. expressly teaches separating and removing the label at the time of recycling and therefore the labeled item is not compatible with established recycling streams. These argument is not persuasive.
The term “recyclable” is a relative term related to the intended use of the article, therefore, the references are required to teach an article, container and label that are capable of being recycled. The Applicant points to paragraph [0016] of the specification, wherein it is stated that the term “recyclable” typically means the ability of components of an article (e.g. bottle, cap, labels) to enter the current recycling streams established for petroleum derived resins (e.g. HDPE, PET, PP) or paper without compromising the suitability of recycled resin or paper output for use in remaking components”.
The label taught by Mitchell et al. is taught as being easily separated from the container during subsequent recycling processes, the label is a shrinkable label with a substrate comprised of a core layer sandwiched by two skin layers, wherein the shrinkable label is monoaxially (uniaxially) oriented, wherein the shrinkable film comprises a propylene terpolymer or propylene random copolymer ([0003-0005, 0091-0099, 0112-0190, 0248-0252]). Propylene is disclosed by the instant application as a material used in the label of the instant invention (see [0016, 0024-0026]). Mitchell et al. teaches that the label is easily removed from the container during recycling, therefore, it would be compatible with recycling streams, as it would not compromise the suitability of the resin of the container from being recycled. Furthermore, as the label is easily removed during recycling, it is not compromised to be recycled and used again as a label.
The Applicant argues on page 8 that the thickness taught by Mitchell et al. in view of McKillip et al. is preferably around 50 microns or less or around 40 microns or less, and there is no motivation to select a narrow range of 40mm to 60 mm as claimed. This argument is not persuasive.
The thickness range taught by Mitchell et al. of preferably around 50 microns or less or around 40 microns or less overlaps with the claimed range, which is sufficient for establishing obviousness. It has been held that in the case where the claimed ranges “overlap or lie inside ranges disclosed by the prior art” a prima facie case of obviousness exits. See MPEP 2144.05
The Applicant further presents arguments related to unexpected results from the combination of claimed label thickness, coverage and variance of NIR capture accuracy being ≤5%. The Applicant includes the table found in [0092] of the pg-pub to support their arguments. From the table, the Applicant argues that it is shown that when the label substrate has a thickness of 40 microns with 80% label coverage as shown in Example 1, the labeled article is captured at a rate of 95% with a variance of 2%. The Applicant argues that in a different example, when the label substrate thickness exceeds 60 microns, such as Example 9 at 66 microns, at the same label coverage of 80%, labeled article is captured at a rate of 56% and the variance is 45%. Therefore, the Applicant concludes that when the label coverage is 70% or more, maintaining a label thickness within the range claimed of 40-40 microns results in superior capture and low variance rate.
These arguments are not persuasive because they are not commensurate in scope with the claims of the instant application. The claims currently do not recite or require a desired variance of NIR capture accuracy. Mitchell et al. teaches that the label thickness is “preferably around 50 microns” which falls squarely within the range recited by claim 1 of the instant application.
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