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 February 17, 2026 has been entered. Claims 1-9 and 11-18 are pending. Claims 16-18 are withdrawn from further consideration pursuant to 37 CFR 1.142(b), as being drawn to a nonelected invention.
Election/Restrictions
Applicant's election with traverse of Group I (claims 1-9 and 11-15) in the reply filed on February 17, 2026 is acknowledged. The traversal is on the grounds that the Applicants have amended the independent claims of each claim grouping so that they now share the special technical feature of a paper layer being applied to the biodegradable polymer layer. Accordingly, it is argued that Shuhmann does not disclose the use of a release liner that includes a paper layer, so Shuhumann cannot be relied upon to establish lack of unity a posteriori. While this argument is persuasive, the below prior art rejection establishes that the use of a paper layer being applied to a biodegradable polymer layer does not make a contribution over the prior art. Thus, the claims do not share a special technical feature. Upon the finding of allowable subject matter of the elected article claims, rejoinder of the method claims will be considered if the method claims include the special technical features of an allowable article claim.
The requirement is still deemed proper and is therefore made FINAL.
Claim Objections
Claims 1 and 13 are objected to because of the following informalities:
In claim 1, line 5, the term “lsyer” should be changed to “layer”.
In claim 13, the polymer acronyms PVC, PET and PLA should be spelled out.
In claim 13, line 2, the term “or” should be inserted before the last member of the polymer listing, i.e., polylactic acid (PLA).
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.
Claim 15 is 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.
Claim 15 sets forth an average peel force range but does not set forth the conditions in which this property is measured. Peel force values vary based on the conditions, such as temperature, peel angle, peel speed, etc., of the measurement test or standard used. Thus, the metes and bounds of this claim is not clear.
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, 11, 12, 14, and 15 are rejected under 35 U.S.C. 103 as being unpatentable over Takano et al. (U.S. Patent No. 5,658,646) in view of JP 2002-219778. An English language machine translation of JP ‘778 is attached to this Office action and relied upon in the below rejection.
Note that based on the present specification, i.e., page 8, line 18 to page 9, line 25, the term “structured surface” in claim 1, line 6 is being given a broadest reasonable interpretation as being a surface that is not smooth or flat but has some roughness or surface unevenness.
Regarding claim 1, Takano discloses an adhesive article (Figure 27) comprising an adhesive layer (#2) and a releasable liner (#30). The releasable liner comprising a release layer (#3), a biodegradable polymer layer (#4a) applied to the release layer, and a paper layer (#4b) applied to the biodegradable polymer layer. Takano does not disclose that the release layer has a structured surface. JP ‘778 discloses an adhesive article comprising a release layer having a roughened, i.e., structured, surface (Figure 1, ref no. 3; lines 143-144). JP ‘778 discloses that the roughened release layer provides enhanced release properties such as the ability to control the peel force of the release liner (lines 64-74). It would have been obvious to the skilled artisan to have prepared the adhesive article of Takano, wherein the release layer is provided with a structured surface, as taught in JP ‘778, motivated by the desire to obtain an adhesive article having a release layer that exhibited enhanced peel force release properties.
Regarding claim 2, Takano discloses that the biodegradable polymer layer is compostable (col 3, lines 54-58).
Regarding claim 3, JP ‘778 discloses that the structured surface of the release layer has raised features (Figure 1, ref no. 3).
Regarding claims 4 and 5, Takano discloses that the release layer can contained non-biodegradable material, such as silicone (col 4, line 52).
Regarding claim 6, Takano discloses Example 1 shows an embodiment wherein the release layer is 0.05 microns and the biodegradable layer is 40 microns, which would result in an article having the claimed ratio.
Regarding claim 7, Takano does not disclose that the ratio of a weight of the release layer to a total weight of the releasable liner is less than 1%. However, Takano discloses that the release layer can be 0.01 to 1 micron (col 4, lines 60-61) and the biodegradable polymer layer can be 12 to 125 microns (col 4, lines 39-41). As set forth in MPEP 2144.05, “[W]here the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation." In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955). In the present case, it would have been obvious to limit the amount of non-biodegradable material, i.e., the release layer, in the releasable liner to an amount of less than 1 wt% of the total weight of the liner, motivated by the desire to obtain a releasable liner that can be more thoroughly degraded in landfill.
Regarding claim 11, Takano discloses an embodiment wherein a second biodegradable polymer (Figure 27, bottom 4a) layer is applied opposite the side of the paper layer of the first biodegradable polymer layer.
Regarding claim 12, Takano discloses a main body, i.e. substrate, attached to the adhesive layer (Figure 27, ref no. 20).
Regarding claim 14, it is conventional in the adhesive label art to provide a printed or ink layer to the substrate. It would have been within the level of ordinary skill to provide a printed ink layer onto the label substrate motivated by the desire to obtain an adhesive label having desired printed matter, i.e., appearance.
Regarding claim 15, Takano as modified by JP ‘778 does not disclose the average peel force between the adhesive layer and the releasable liner of less than 135 grams of force. However, JP ‘778 discloses that the structured surface of the release layer allows for controlled peeling force properties (lines 54-73) and Table 1 appears to show embodiments of adhesive articles having a low peeling force (lines 347-359; Table 1). Accordingly, it would have been obvious to one of ordinary skill in the art to have discovered a workable peel force range of less than 135 grams of force through routine experimentation, motivated by the desire to control the peeling force through the use of a roughened release layer, as taught in JP ‘778.
Claims 8 and 9 are rejected under 35 U.S.C. 103 as being unpatentable over Takano et al. (U.S. Patent No. 5,658,646) in view of JP 2002-219778 as applied to claim 1 above, and further in view of Yang et al. (U.S. Pub. 2015/0307671).
Regarding claims 8 and 9, Takano as modified by JP ‘778 does not disclose a biodegradable layer comprising PBS and a plant-based wax. However, Takano discloses that any biodegradable polymer may be used (col 3, lines 54-60) and can include a natural wax (col 4, line 50). Yang discloses a biodegradable polymer film that can be used in film tapes and covering films [0018] that comprises PBS (claim 19) and a plant-based wax, i.e., erucamide [0107], which exhibits excellent soil degradation properties [0018]. It would have been obvious to one of ordinary skill in the art to have prepared the adhesive article of Takano as modified by JP ‘778, wherein the biodegradable polymer layer comprises PBS and a plant-based wax, as taught in Yang, motivated by the desire to obtain an adhesive article that exhibited excellent soil degradation properties.
Claim 13 is rejected under 35 U.S.C. 103 as being unpatentable over Takano et al. (U.S. Patent No. 5,658,646) as applied to claim 1 above, and further in view of KR2016-0138668. An English language machine translation of KR ‘668 is attached to this Office action and relied upon in the below rejection.
Regarding claim 13, Takano as modified by JP ‘778 does not disclose a substrate comprising PVC, PET, or PLA. KR ‘668 discloses a similar adhesive article wherein the substrate is a synthetic resin film, such as PET or PLA [0018]. It would have been obvious to one of ordinary skill in the art to have prepared the adhesive article of Takano as modified by JP ‘778, wherein the substrate is a conventionally known synthetic resin film, as taught in KR ‘668, motivated by the desire to obtain an adhesive article having a conventional adhesive label backing material.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Blaine Copenheaver whose telephone number is (571)272-1156. The examiner can normally be reached M-F 8-5.
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/BLAINE COPENHEAVER/Primary Examiner, Art Unit 1781