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’s arguments and claim amendments received on August 18, 2025 are entered into the file. Currently, claims 1, 3-8, and 10-13 are amended; claims 2 and 9 are cancelled; resulting in claims 1, 3-8, and 10-13 pending for examination.
Information Disclosure Statement
The information disclosure statement (IDS) submitted 08/18/2025 has been 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 1 and 3-8 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Olszowka et al. (EP 3106490, machine translation via EPO provided).
Regarding claim 1, Olszowka et al. teaches a film (1; adhesive element) comprising a carrier layer (11; carrier substrate) and a release layer (12), a lacquer layer (13), a decorative layer (16), and an adhesive layer (14) arranged on the carrier layer ([0059], [0106], see Fig. 3 reproduced below).
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Olszowka et al. teaches that the decorative layer comprises at least one replication layer, into which a surface relief is introduced which forms an optically variable element such as a hologram (security feature) [0050]. Each of the carrier layer, the release layer, the lacquer layer, the replication layer, and the adhesive layer can be made of biodegradable materials ([0050], [0060], [0073], [0078], [0083]).
Regarding claim 3, Olszowka et al. teaches all of the limitations of claim 1 above. As noted above Olszowka et al. teaches that the replication layer may be formed to have a surface relief which forms a hologram (security feature), wherein the replication layer may be made of a biodegradable material [0050].
Regarding claim 4, Olszowka et al. teaches all of the limitations of claim 1 above. As noted above, Olsowka et al. teaches an embodiment in which each of the layers of the film is made of a biodegradable material. Therefore, the film is considered to comprise at least 10% of biologically degradable materials.
Regarding claim 5, Olszowka et al. teaches all of the limitations of claim 1 above and further teaches that the carrier layer may consist of a biodegradable polymer; the release layer may be formed of a wax; the lacquer layer may consist of a sugar, starch, tree resin, or biodegradable polymer; the adhesive may be made of a natural resin and/or shellac, and the replication layer can be made of a polymer, in particular, a biodegradable material having a surface relief incorporated into it ([0050], [0060], [0074], [0079], [0084]). The biologically degradable materials taught by Olszowka et al. are therefore free of cellulose fibers.
Regarding claims 6 and 7, Olszowka et al. teaches all of the limitations of claim 1 above. As noted above, Olszowka et al. teaches that the film comprises a carrier layer (11; plastic film) which comprises a biodegradable material such as polylactide (PLA) or polybutylene adipate terephthalate (PBAT) [0060].
With respect to the limitation in claim 7 requiring that the biologically degradable material comprises a chemically recycled plastic and/or a mechanically recycled plastic, it is noted that this limitation is a product-by-process limitation, which does not determine the patentability of the product unless the process produces a structural feature of the product. The limitation reciting that the material is a chemically recycled plastic and/or a mechanically recycled plastic does not produce a structural feature of the product, as the material resulting from a chemical and/or mechanical recycling process is substantially identical to the same material which has not undergone recycling. The method of forming 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 from that of the prior art. See MPEP 2113.
Regarding claim 8, Olszowka et al. teaches all of the limitations of claim 1 above and further teaches that the film can comprise a non-metallic reflective layer, for example made of transparent or translucent compounds such as ZnS [0044]. Olszowka et al. teaches that ZnS decomposes into oxides and sulfur compounds under the influence of acids and is therefore biodegradable [0044].
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.
This application currently names joint inventors. In considering patentability of the claims the examiner presumes that the subject matter of the various claims was commonly owned as of the effective filing date of the claimed invention(s) absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and effective filing dates of each claim that was not commonly owned as of the effective filing date of the later invention in order for the examiner to consider the applicability of 35 U.S.C. 102(b)(2)(C) for any potential 35 U.S.C. 102(a)(2) prior art against the later invention.
Claims 1, 4-7, and 10 are rejected under 35 U.S.C. 103 as being unpatentable over Stahl et al. (EP 3291210, machine translation via EPO provided) in view of Sargeant et al. (US 2019/0126599, newly cited).
Regarding claims 1, 6, and 10, Stahl et al. teaches a security label (1; adhesive element) comprising a carrier film (1; carrier substrate, plastic film) which is a thermoplastic film, and an adhesive layer (7) with which the security label can be stuck onto an object ([0035]-[0036], Figs. 1a-3b). The security label is provided with a metal layer (8) which can incorporate security features such as holograms, wherein the metal layer (partially metallized layer) is preferably applied partially along the carrier film by printing, vapor deposition, or cold or hot foil stamping ([0014], [0016], [0031]).
Although Stahl et al. teaches that the carrier film may be a thermoplastic film, in particular based on polyethylene terephthalate (PET) or polypropylene (PP) ([0035]), Stahl et al. differs from the claimed invention in that the reference does not expressly teach that the security label comprises a recycled material, a material made from renewable raw materials, a biologically degradable material, or a marine degradable material, or that the PET film is produced with at least 30% post-consumer recycled material.
However, in the analogous art of adhesive elements, Sargeant et al. teaches a thermoplastic film including a core layer having a recycled polyethylene terephthalate (PET) based resin, wherein the thermoplastic film comprises about 90% to about 100% by weight of the recycled PET resin (Abstract). Sargeant et al. teaches that these thermoplastic films using such a high content of post-consumer resins (PCR) reduce the carbon footprint typically associated with the production of polyester films used in flexible packaging and labelling applications ([0039], [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 security label of Stahl et al. by substituting the PET carrier film with a thermoplastic film made of 90% to 100% of recycled PET, as taught by Sargeant et al., in order to reduce the carbon footprint of the security label.
Regarding claim 4, Stahl et al. in view of Sargeant et al. teaches all of the limitations of claim 1 above. As noted above, while Stahl et al. does not expressly teach that the security label comprises a recycled material, Sargeant et al. teaches thermoplastic films comprising 90% to 100% recycled PET which may be used for labelling applications. When the recycled PET film of Sargeant et al. is used as the carrier film in the security label of Stahl et al., the security label would be expected to include at least 10% recycled material.
Regarding claims 5 and 7, Stahl et al. in view of Sargeant et al. teaches all of the limitations of claim 1 above. As noted above, the recycled PET film taught by Sargeant et al. corresponds to the claimed recycled material, which is a material free of cellulose fibers.
With respect to the limitation in claim 7 requiring that the recycled material comprises a chemically recycled plastic and/or a mechanically recycled plastic, it is noted that this limitation is a product-by-process limitation, which does not determine the patentability of the product unless the process produces a structural feature of the product. The limitation reciting that the material is a chemically recycled plastic and/or a mechanically recycled plastic does not produce a structural feature of the product, as the material resulting from a chemical and/or mechanical recycling process is substantially identical to the same material which has not undergone recycling. The method of forming 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 from that of the prior art. See MPEP 2113.
Claims 1, 4-7, 11, and 12 are rejected under 35 U.S.C. 103 as being unpatentable over Cote et al. (US 2005/0040641, newly cited) in view of Zeng et al. (US 2024/0409730, newly cited).
Regarding claims 1, 6, 11, and 12, Cote et al. teaches a security device (10; adhesive element) comprising a support layer (12; carrier substrate, plastic film), an information-bearing layer (14; metal layer), and a protective layer (24) ([0033], [0048], Figs. 1-10). The security device may be mounted on the surface of a security paper by applying a pressure-sensitive adhesive (adhesive layer) to a surface of the device and pressing the device onto the surface of the paper [0056]. Cote et al. teaches that the information-bearing layer may be a diffractive, optically variable layer comprising a metallized diffractive film with holographic icon images [0040].
Although Cote et al. teaches that the support layer may be formed from polyethylene ([0028]), such that the support layer and the information-bearing layer together correspond to the claimed plastic film configured as a metallized polyethylene film, Cote et al. differs from the claimed invention in that the reference does not expressly teach that the security label comprises a recycled material, a material made from renewable raw materials, a biologically degradable material, or a marine degradable material, or that the metallized polyethylene film is produced with at least 20% PCR material or PCR and PIR material in a ratio of at least 1:1.
However, in the analogous art of environmentally-friendly articles, Zeng et al. teaches a thermoplastic composition comprising 0.5 wt% to 75 wt% of a post-consumer resin (PCR) comprising a polyethylene recovered from post-consumer material and from 25 wt% to 99.5 wt% of virgin polyethylene (Abstract). Zeng et al. teaches that the thermoplastic composition may be incorporated into at least one layer of a film, such as a monolayer or multilayer film, and may be used in a variety of commercial applications as a more sustainable way of producing a thermoplastic film while minimizing the reduction of the films’ mechanical properties ([0045]-[0046]). Zeng et al. further teaches that the post-consumer resin can be sourced from a variety of commercial products, consumer electronics, household waste, building waste, and industrial molding and extrusion scrap [0022].
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 security device of Cote et al. by forming the polyethylene support layer from a blend of virgin polyethylene and polyethylene sourced from post-consumer recycled material such that the metallized support layer is produced with at least 20% PCR content, as suggested by Zeng et al., in order to produce a more sustainable product while minimizing the reduction of mechanical properties of the support layer.
With respect to the limitation in claim 12 reciting “the metallized PE film being produced with post-consumer recycled material and post-industrial recycled material in a ratio of at least 1:1”, it is noted that this limitation is interpreted as a product-by-process limitation, which does not determine the patentability of the product unless the process produces a structural feature of the product. The limitation reciting that the film is produced with a combination of PCR material and PIR material does not produce a structural feature of the product, as a polyethylene material sourced from consumer waste is substantially identical to the same material sourced from industrial waste. The method of forming 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 from that of the prior art. See MPEP 2113. The metalized PE film taught by Cote et al. in view of Zeng et al. contains post-consumer recycled material, thus satisfying the claimed limitation.
Regarding claim 4, Cote et al. in view of Zeng et al. teaches all of the limitations of claim 1 above. As noted above, while Cote et al. does not expressly teach that the security device comprises a recycled material, Zeng et al. teaches thermoplastic blends comprising 0.5 wt% to 75 wt% of polyethylene recovered from post-consumer material. When the thermoplastic material containing 75 wt% recycled polyethylene taught by Zeng et al. is used to form the polyethylene support layer in the security device of Cote et al., the security device would be expected to include at least 10% recycled material.
Regarding claims 5 and 7, Cote et al. in view of Zeng et al. teaches all of the limitations of claim 1 above. As noted above, the polyethylene (PE) recovered from post-consumer material taught by Zeng et al. corresponds to the claimed recycled material, which is a material free of cellulose fibers.
With respect to the limitation in claim 7 requiring that the recycled material comprises a chemically recycled plastic and/or a mechanically recycled plastic, it is noted that this limitation is a product-by-process limitation, which does not determine the patentability of the product unless the process produces a structural feature of the product. The limitation reciting that the material is a chemically recycled plastic and/or a mechanically recycled plastic does not produce a structural feature of the product, as the material resulting from a chemical and/or mechanical recycling process is substantially identical to the same material which has not undergone recycling. The method of forming 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 from that of the prior art. See MPEP 2113.
Claim 13 is rejected under 35 U.S.C. 103 as being unpatentable over Ewing (US 5,236,749, newly cited).
Regarding claim 13, Ewing teaches a blister packaging system that is designed to be easily recycled and may be of materials that have a high recycled content without degradation in performance (Abstract). The blister package (10) is composed of a front blister layer (12) made from recycled polyethylene terephthalate (R-PET) sealed to a back layer (16) made from polyethylene (PE), wherein the R-PET of the front blister layer and the PE of the back layer may each have a significant pre- or post-consumer recycled content (Abstract; Fig. 1).
Ewing teaches that the back layer is coated on one side with an adhesive layer (18) which bonds it to the PET blister layer (col 2, Ln 48-57). A line of weakening (22) may be present in the blister layer to allow easier access to an item (14) contained in the package (10) (col 2, Ln 45-47; Fig. 1). The line of weakening therefore imparts tamper evidence to the blister package, wherein the blister layer or the back layer can be taken to correspond to the claimed carrier substrate which has an adhesive layer arranged thereon. Although Ewing teaches that the front blister layer and the back layer may each have a significant post-consumer recycled content, and further teaches that R-PET is widely available and that using such recycled and recyclable materials enhances the environmental and economic value of the product (col 2, Ln 12-14, 35-43), Ewing differs from the claimed invention in that the reference does not expressly teach that the adhesive element is produced with at least 90% post-consumer recycled content.
It would, however, have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the blister package of Ewing by including a high content of post-consumer recycled material, such as within the claimed range, in order to increase the environmental and economic value of the product. Given that Ewing teaches that its blister pack can be made of materials that have a high recycled content without degradation in performance, one of ordinary skill in the art would have a reasonable expectation of success in formulating the product with a post-consumer recycled content within the range of 90% or more.
Response to Arguments
Response-Claim Objections
The previous objections to claims 1-13 are overcome by the Applicant’s amendments to the claims in the response filed August 18, 2025.
Response-Claim Rejections - 35 USC § 112
The previous rejections of claims 4 and 6-13 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 are overcome by the Applicant’s amendments to the claims in the response filed August 18, 2025.
Response-Claim Rejections - 35 USC § 102 and 103
Applicant’s arguments, see pages 6-7 of the remarks filed August 18, 2025, with respect to amended claims 1 and 13 have been considered but are moot because they do not address the new ground of rejection does not rely on any reference applied in the prior rejection of record for any teaching or matter specifically challenged in the argument.
In light of the amendments to claims 1 and 13, the previous rejections based on Schlee and Van Vynckt et al. are withdrawn, and new rejections based on Olszowka et al., Stahl et al. in view of Sargeant et al., Cote et al. in view of Zeng et al., and Ewing are presented in the office action above to address the new combination of limitations set forth in the claims.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
Boswell et al. (US 2011/0120902) teaches a sustainable article which is substantially free of virgin petroleum-based compounds and is instead made entirely from renewable and/or recycled materials such as PE, PET, or PP (Abstract). In particular, Boswell et al. teaches a container and a label which may each be made of at least about 95%, for example about 100%, post-consumer recycled or post-industrial recycled polyethylene, polypropylene, or polyethylene terephthalate ([0011], [0016]). The articles are advantageous because they have the same look and feel and performance characteristics as articles made from virgin petroleum-based sources while having improved sustainability [0020].
Hantel et al. (WO 2019/192651, machine translation via EPO provided) teaches an adhesive label comprising PET, PE, or PP with a bio-based content of at least 90% based on post-consumer recycled (PCR), post-industrial recycled (PIR), recycled, or regrind materials ([0003], [0047]-[0049]).
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). 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.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to REBECCA L GRUSBY whose telephone number is (571) 272-1564. The examiner can normally be reached Monday-Friday, 8:30 AM-5:30 PM.
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/Rebecca L Grusby/Examiner, Art Unit 1785
/MARK RUTHKOSKY/Supervisory Patent Examiner, Art Unit 1785