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 Applicants arguments and claim amendments received on 12/16/2025 are entered into the file. Currently, claim 1 is amended; claims 15-37 are withdrawn; resulting in claims 1-14 pending for examination.
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.
Claim 7 is 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 7, the claim recite the limitation “wherein the plasticizer has a melting point of 50˚C to 150˚C”, however, claim 1 has been amended to include the limitation “a dispersed plasticizer having a melting point between 70 ˚C and 120˚C” in lines 10-11. The range recited in claim 7 is now broader than the range recited by claim 1 from which is depends, thus rendering the claim indefinite.
As the metes and bounds of the claimed invention pertaining to claim 7 in view of 1 are unable to be determined, the scope of the claimed subject matter is unknown and therefore prior art is unable to be applied.
The following is a quotation of 35 U.S.C. 112(d):
(d) REFERENCE IN DEPENDENT FORMS.—Subject to subsection (e), a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
The following is a quotation of pre-AIA 35 U.S.C. 112, fourth paragraph:
Subject to the following paragraph [i.e., the fifth paragraph of pre-AIA 35 U.S.C. 112], a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
Claims 2 and 8 rejected under 35 U.S.C. 112(d) or pre-AIA 35 U.S.C. 112, 4th paragraph, as being of improper dependent form for failing to further limit the subject matter of the claim upon which it depends, or for failing to include all the limitations of the claim upon which it depends.
Regarding claim 2, the claim recites “wherein the non-ionic binder is water-soluble” however, claim 1 has been amended to recite in line 11 “a non-ionic water-soluble polymeric binder. Therefore, claim 2 no longer further limits claim 1.
Regarding claim 8, the claim recites “wherein the plasticizer has a melting point of 70˚C to 120˚C”, however, this limitation has been added to claim 1 in lines 10-11. Therefore, claim 8 no longer further limits claim 1.
Applicant may cancel the claim(s), amend the claim(s) to place the claim(s) in proper dependent form, rewrite the claim(s) in independent form, or present a sufficient showing that the dependent claim(s) complies with the statutory requirements.
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, 5, 8, 9, 10, 11, 12 and 14 are rejected under 35 U.S.C. 103 as being unpatentable over Popat et al. (US 2002/0029843) in view of Mallya et al. (US 10,573,204; cited on IDS).
Regarding claims 1, 2, 3, 4, 5, 8, 9, 10, 12 and 14, Popat et al. teaches an image transfer sheet (106; heat transfer label) comprising a low density polyethylene layer (110; face layer) having a first surface and a second surface; a first and second UV varnish layer (112, 114; optional barrier/primer layer) having a first surface and a second surface, wherein the second surface in direct contact with the first surface of the low density polyethylene layer (110; face layer); an adhesive layer (116; pressure sensitive adhesive) having a first surface and a second surface and comprised of methacrylic or acrylic acid, wherein the adhesive layer (116; pressure sensitive adhesive) is deposited on the first surface of the a first and second UV varnish layer (112, 114; optional barrier/primer layer), and a detack layer (118) deposited on the second surface of the adhesive layer (Figure 2, [0016-0020, 0039-0052).
Popat et al. teaches that the detack layer (118) is comprised of three water soluble ingredients including polyvinyl alcohol (non-ionic water soluble polymer binder), polyacrylic acid (dispersant) and starch ([0045-0052]), however, the reference does not expressly teach that the detack layer (118) comprises a plasticizer having a melting point between 70˚C and 120˚C.
Mallya et al. teaches a linerless label comprising a detack layer on the pressure sensitive adhesive to render the adhesive non-tacky so that the labels can be rolled without adjacent layers sticking to one another (col. 4 Ln. 30-65). The detack layer of Mallya et al. covers the pressure sensitive adhesive so that the surface is non tacky to the touch, does not migrate into the pressure sensitive adhesive during transport or storage, allows the label roll to be wound and unwound without blocking, is readily converted to tacky under external heat source, does not alter the clarity or aesthetics of the label, forms a strong bond to the product and is compatible with several acrylic pressure sensitive adhesives; wherein the detack layer becomes tacky via external heat source and mixes with the underlying pressure sensitive adhesive without substantially changing the adhesive properties or clarity (col. 21 Ln. 5-col. 22 Ln. 27). Mallya et al. teaches that the detack layer is comprised of a blend of solid plasticizer and solid tackifier, wherein the role of the plasticizer is to lower the Tg of the pressure sensitive adhesive and the role of the tackifier is to raise the Tg of the pressure sensitive adhesive, thus the blend is generally in the ratio range of 75:25 to 25:75 plasticizer to tackifier (col. 21 Ln. 5-col. 22 Ln. 27), which overlaps the claimed ratio recited in claim 3 of “greater than 15:1” and in claim 10 of “1:10 an 10:1”. 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 plasticizer taught by Mallya et al. includes benzoate esters (col. 22 Ln. 5-26). In paragraph [0035] of the pg-pub of the instant application, benzoate plasticizers are one of the exemplary plasticizers disclosed. Therefore, as Mallya et al. teaches the same composition as the instant application for the plasticizer, the benzoate plasticizer of Mallya et al. would inherently possess a melting point within the ranges recites in claims 1 and 8 of 70-120˚C, as it has been held that a chemical composition and its properties are inseparable (see MPEP 2112.01(II)).
As both Popat et al. and Mallya et al. teach labels with detack layers, 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 detack layer taught by Popat et al. to include the plasticizer and tackifier in the claimed ratio as taught by Mallya et al. provide detackifying properties that do not alter the clarity and aesthetics of the label and do not migrate into the pressure sensitive adhesive during transport or storage.
The limitation “wherein upon heating the detack layer above the melting point of the plasticizer, the molten plasticizer combines with the pressure-sensitive adhesive layer” recites functional language related to the method of using the claimed labelstock,
and is accorded limited weight as the language does not further limit the structure or the process. Furthermore, 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. There does not appear to be a difference between the prior art structure and the structure resulting from the claimed method because Popat et al. in view of Mallya et al. discloses the structure of claim 1 as described above.
Regarding claim 11, Popat et al. in view of Mallya et al. teach all the limitations of claim 1 above. The tackifier taught by Mallya et al. solid tackifier Eastman ForalTM 85 (col. 22 Ln. 5-26). In paragraph [0059] of the pg-pub of the instant application, Foral 85 is disclosed as a tackifier used in the instant application. Therefore, as Mallya et al. teaches the same composition as the instant application for the tackifier, the solid tackifier Eastman ForalTM 85 of Mallya et al. would inherently possess a softening point within the range 60-120˚C as recited in claim 11, as it has been held that a chemical composition and its properties are inseparable (see MPEP 2112.01(II)).
Claims 6 and 13 are rejected under 35 U.S.C. 103 as being unpatentable over Popat et al. (US 2002/0029843) in view of Mallya et al. (US 10,573,204; cited on IDS) and further in view of Stogbauer et al. (US 7955678; cited on IDS).
Regarding claim 6, Popat et al. in view of Mallya et al. teaches all the limitations of claim 1 above, however, the references do not expressly teach that the detack layer further comprises an emulsifying surfactant.
Stogbauer et al. teaches heat activated pressure sensitive labels, wherein the linerless labels are comprised of a printable label material and a pressure sensitive adhesive, wherein a thermally activated dead coat layer covers the pressure sensitive adhesive preventing the label stock from exhibiting adhesive tackiness prior to heat activation, thus facilitating the effective handling of the labels (Abstract, col. 3 Ln. 5-col. 4 LN. 35). The deadcoat layer comprises a polymeric binder, micronized plasticizer and a surfactant, wherein surfactants are added to promote complete coverage of the deadcoat layer over the underlying adhesive (col. 3 LN. 25-40, col. 5 Ln. 20-50).
Both Popat et al. and Stogbauer et al. teach labels with detack/dead coat layers over the adhesive layers, therefore, 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 detack layer taught by Popat et al. to include the surfactant of the dead coat layer taught by Stogbauer et al. to promote complete coverage of the detack layer over the adhesive layer (116; pressure sensitive adhesive).
Regarding claim 13, Popat et al. in view of Mallya et al. teaches all the limitations of claim 1 above, however, the references do not expressly teach that the adhesive comprises a tackifier.
Stogbauer et al. teaches heat activated pressure sensitive labels, wherein the linerless labels are comprised of a printable label material and a pressure sensitive adhesive, wherein a thermally activated dead coat layer covers the pressure sensitive adhesive preventing the label stock from exhibiting adhesive tackiness prior to heat activation, thus facilitating the effective handling of the labels (Abstract, col. 3 Ln. 5-col. 4 LN. 35). Stogbauer et al. further teaches that it is desirable to add one or more solid tackifiers to the adhesive layer in order to improve adhesive performance of the exposed adhesive (col. 6 Ln. 20-30).
Both Popat et al. and Stogbauer et al. teach labels with detack/dead coat layers over the adhesive layers, therefore, 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 adhesive layer (116; pressure sensitive adhesive) taught by Popat et al. to include the tackifiers of the adhesive layer taught by Stogbauer et al. to improve the adhesive performance of the exposed adhesive.
Claims 1, 2, 3, 8, 9, 10, 11, 12, 13 and 14 are rejected under 35 U.S.C. 103 as being unpatentable over Cho et al. (US 2013/0171444) in view of Mallya et al. (US 10,573,204; cited on IDS).
Regarding claims 1, 2, 3, 8, 9, 10, 12, 13, and 14, Cho et al. teaches a multilayer adhesive for liner-free labels comprising a facestock layer (face layer) having a first surface and a second surface, a functional layer, such as an adhesive layer (pressure sensitive adhesive) formed on a first surface of the facestock layer (face layer) and a barrier layer (detack layer) formed on the second surface of the adhesive layer (pressure sensitive adhesive) (Abstract, [0009-0012, 0027-0069, 0102-0105]). The liner-free labels are comprised of a facestock such as paper, thermal paper, polymer films, woven and nonwoven synthetic materials, metal films, composite films, plastics and mylar ([0102-0105]). The adhesive layer (pressure sensitive adhesive) is an emulsion based adhesive comprising various additives, including an additive for increasing quick tack (i.e. tackifier) and/or long term adhesion ([0027-0057]). The barrier layer (detack layer) is comprised of a solid dry film such as polyvinyl alcohol (non-ionic water soluble binder) and discrete particles, and functions to prevent the interaction of the adhesive layer once it has been applied to a substrate with the face of an adjacent label when the labels are stored in coils or stacks ([0058-0069]). Polyvinyl alcohol (non-ionic polymer binder) ([0058-0069]), which is also disclosed by the instant application as a non-ionic water soluble binder (see pg-pub [0052]). Therefore, the polyvinyl alcohol of Cho et al. would inherently be water soluble, as it has been held that a chemical composition and its properties are inseparable (see MPEP 2112.01(II)).
While Cho et al. teaches that the barrier layer (detack layer) is comprised polyvinyl alcohol (non-ionic water soluble polymer binder), the reference does not expressly teach that the barrier layer (detack layer) comprises a plasticizer.
Mallya et al. teaches a linerless label comprising a detack layer on the pressure sensitive adhesive to render the adhesive non-tacky so that the labels can be rolled without adjacent layers sticking to one another (col. 4 Ln. 30-65). The detack layer of Mallya et al. covers the pressure sensitive adhesive so that the surface is non tacky to the touch, does not migrate into the pressure sensitive adhesive during transport or storage, allows the label roll to be wound and unwound without blocking, is readily converted to tacky under external heat source, does not alter the clarity or aesthetics of the label, forms a strong bond to the product and is compatible with several acrylic pressure sensitive adhesives; wherein the detack layer becomes tacky via external heat source and mixes with the underlying pressure sensitive adhesive without substantially changing the adhesive properties or clarity (col. 21 Ln. 5-col. 22 Ln. 27). Mallya et al. teaches that the detack layer is comprised of a blend of solid plasticizer and solid tackifier, wherein the role of the plasticizer is to lower the Tg of the pressure sensitive adhesive and the role of the tackifier is to raise the Tg of the pressure sensitive adhesive, thus the blend is generally in the ratio range of 75:25 to 25:75 plasticizer to tackifier (col. 21 Ln. 5-col. 22 Ln. 27), which overlaps the claimed ratio recited in claim 3 of “greater than 15:1” and in claim 10 of “1:10 an 10:1”. 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 plasticizer taught by Mallya et al. includes benzoate esters (col. 22 Ln. 5-26). In paragraph [0035] of the pg-pub of the instant application, benzoate plasticizers are one of the exemplary plasticizers disclosed. Therefore, as Mallya et al. teaches the same composition as the instant application for the plasticizer, the benzoate plasticizer of Mallya et al. would inherently possess a melting point within the ranges recited in claims 1 and 8 of 70-120˚C, as it has been held that a chemical composition and its properties are inseparable (see MPEP 2112.01(II)).
As both Cho et al. and Mallya et al. teach labels with detack/barrier layers, 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 detack layer taught by Cho et al. to include the plasticizer and tackifier in the claimed ratio as taught by Mallya et al. provide detackifying properties that do not alter the clarity and aesthetics of the label and do not migrate into the pressure sensitive adhesive during transport or storage.
Regarding claim 11, Cho et al. in view of Mallya et al. teach all the limitations of claim 1 above. The tackifier taught by Mallya et al. solid tackifier Eastman ForalTM 85 (col. 22 Ln. 5-26). In paragraph [0059] of the pg-pub of the instant application, Foral 85 is disclosed as a tackifier used in the instant application. Therefore, as Mallya et al. teaches the same composition as the instant application for the tackifier, the solid tackifier Eastman ForalTM 85 of Mallya et al. would inherently possess a softening point within the range 60-120˚C as recited in claim 11, as it has been held that a chemical composition and its properties are inseparable (see MPEP 2112.01(II)).
Claim 6 is rejected under 35 U.S.C. 103 as being unpatentable over Cho et al. (US 2013/0171444) in view of Mallya et al. (US 10,573,204; cited on IDS) and further in view of Stogbauer et al. (US 7955678; cited on IDS).
Regarding claim 6, Cho et al. in view of Mallya et al. teaches all the limitations of claim 1 above, however, the references do not expressly teach that the barrier layer (detack layer) further comprises an emulsifying surfactant.
Stogbauer et al. teaches heat activated pressure sensitive labels, wherein the linerless labels are comprised of a printable label material and a pressure sensitive adhesive, wherein a thermally activated dead coat layer covers the pressure sensitive adhesive preventing the label stock from exhibiting adhesive tackiness prior to heat activation, thus facilitating the effective handling of the labels (Abstract, col. 3 Ln. 5-col. 4 LN. 35). The deadcoat layer comprises a polymeric binder, micronized plasticizer and a surfactant, wherein surfactants are added to promote complete coverage of the deadcoat layer over the underlying adhesive (col. 3 LN. 25-40, col. 5 Ln. 20-50).
Both Cho et al. and Stogbauer et al. teach labels with barrier/dead coat layers over the adhesive layers, therefore, 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 barrier layer (detack layer) layer taught by Cho et al. to include the surfactant of the dead coat layer taught by Stogbauer et al. to promote complete coverage of the detack layer over the adhesive layer (116; pressure sensitive adhesive).
Response to Arguments
Response-Drawings
The previous objections to the drawings for failing to comply with 37 CFR 1.84(p)(5) is overcome by Applicants amendments to the specification in the response filed 12/16/2025.
Response-Claim Rejections - 35 USC § 103
Applicant's arguments filed 12/16/2025 have been fully considered but they are not persuasive.
On page 10, the Applicant argues that Popat et al. teaches a water-activatable adhesive system and not a heat activated system. This argument is not persuasive.
The preamble of the claims recites “A heat-activatable labelstock” and do not recite that the adhesive system is “heat activatable”. The adhesive is recited in line 5 as being “a pressure sensitive adhesive”. As stated in the rejections above, Popat et al. teaches a label system comprising an adhesive layer (116; pressure sensitive adhesive) having a first surface and a second surface and comprised of methacrylic or acrylic acid, wherein the adhesive layer (116; pressure sensitive adhesive) is deposited on the first surface of the a first and second UV varnish layer (112, 114; optional barrier/primer layer), and a detack layer (118) deposited on the second surface of the adhesive layer (Figure 2, [0016-0020, 0039-0052).
Furthermore, the phrase “heat-activatable” recites functional language related to the intended use of the claimed labelstock, and is accorded limited weight as the language does not further limit the structure or the process. The labelstock taught by Popat et al. in view of Mallya et al. teaches all the structural features recited by claim 1, and therefore, would be capable of performing in the manner claimed.
The Applicant further argues on page 10 that Popat et al. does not teach or suggest a dispersed plasticizer having a melting point between 70C and 120C, that upon heating above its melting point, combines with the pressure sensitive adhesive layer. This argument is not persuasive. The secondary reference to Mallya et al. was used to teach a plasticizer, wherein the plasticizer taught by Mallya et al. includes benzoate esters (col. 22 Ln. 5-26). In paragraph [0035] of the pg-pub of the instant application, benzoate plasticizers are one of the exemplary plasticizers disclosed. Therefore, as Mallya et al. teaches the same composition as the instant application for the plasticizer, the benzoate plasticizer of Mallya et al. would inherently possess a melting point within the ranges recited in claims 1 and 8 of 70-120˚C, as it has been held that a chemical composition and its properties are inseparable (see MPEP 2112.01(II)).
The Applicant argues on page 10 that Mallya et al. does not teach or suggest a non-ionic water soluble polymeric binder comprising polyvinyl alcohol as recited by amended claim 1. This argument is not persuasive.
Mallya et al. was not used in the above rejection to teach a non-ionic water soluble polymeric binder, the primary reference to Popat et al. was used to address this feature.
Regarding Cho et al. the Applicant argues on pages 10 and 11 that Cho et al. teaches a fluid activatable system and teaches that the activating fluid composition provides optimal activation of adhesive components. It is believed that the Applicant is making the same argument as with Popat et al. in that Cho et al. does not teach a heat-activatable adhesive system, although it is not entirely clear.
The argument is not persuasive for the same reasons expressed above with respect to Popat et al.
The Applicant further agues on page 11 that Cho et al. does not teach a dispersed plasticizer in the barrier layer and that Mallya et al. does not teach a non-ionic water soluble polymeric binder comprising polyvinyl alcohol. This argument is not persuasive.
In response to applicant's arguments against the references individually, one cannot show nonobviousness by attacking references individually where the rejections are based on combinations of references. See In re Keller, 642 F.2d 413, 208 USPQ 871 (CCPA 1981); In re Merck & Co., 800 F.2d 1091, 231 USPQ 375 (Fed. Cir. 1986).
As stated in the rejections above, Cho et al. was used to teach a barrier layer (detack layer) is comprised of a solid dry film such as polyvinyl alcohol (non-ionic water soluble binder) and discrete particles, and functions to prevent the interaction of the adhesive layer once it has been applied to a substrate with the face of an adjacent label when the labels are stored in coils or stacks ([0058-0069]). Polyvinyl alcohol (non-ionic polymer binder) ([0058-0069]), which is also disclosed by the instant application as a non-ionic water soluble binder (see pg-pub [0052]). Therefore, the polyvinyl alcohol of Cho et al. would inherently be water soluble, as it has been held that a chemical composition and its properties are inseparable (see MPEP 2112.01(II)).
Mallya et al. was used to teach a detack layer comprised of a blend of solid plasticizer and solid tackifier, wherein the role of the plasticizer is to lower the Tg of the pressure sensitive adhesive and the role of the tackifier is to raise the Tg of the pressure sensitive adhesive, thus the blend is generally in the ratio range of 75:25 to 25:75 plasticizer to tackifier (col. 21 Ln. 5-col. 22 Ln. 27), which overlaps the claimed ratio recited in claim 3 of “greater than 15:1” and in claim 10 of “1:10 an 10:1”. In the case where the claimed ranges “overlap or lie inside ranges disclosed by the prior art” a prima facie case of obviousness exits. Mallya et al. teaches a plasticizer comprised of benzoate esters (col. 22 Ln. 5-26). In paragraph [0035] of the pg-pub of the instant application, benzoate plasticizers are one of the exemplary plasticizers disclosed. Therefore, as Mallya et al. teaches the same composition as the instant application for the plasticizer, the benzoate plasticizer of Mallya et al. would inherently possess a melting point within the ranges recited in claims 1 and 8 of 70-120˚C, as it has been held that a chemical composition and its properties are inseparable (see MPEP 2112.01(II)).
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