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 .
Continued Examination Under 37 CFR 1.114
A request for continued examination under 37 CFR 1.114, including the fee set forth in 37 CFR 1.17(e), was filed in this application after final rejection. Since this application is eligible for continued examination under 37 CFR 1.114, and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114. Applicant's submission filed on May 6, 2026 has been entered.
Summary
The Applicant’s arguments and claim amendments received on May 6, 2026 are entered into the file. Currently, claims 1 and 5 are amended; claims 4, 11, 12, 14-16, and 24 are cancelled; resulting in claims 1-3, 5-10, 13, 17-23, and 25-27 pending for examination.
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, 5-10, 13, and 17-23 are rejected under 35 U.S.C. 103 as being unpatentable over Nitta (EP 0779162 B1, cited on IDS).
Regarding claims 1 and 17, Nitta teaches a recording sheet comprising a support (I; facestock, laminate) and an image-recording/receiving layer (II; topcoat) formed on a surface (first surface) thereof ([0012], Fig. 1). The support has a laminated structure comprising a nonwoven fabric sheet (A’; non-woven layer) as a back layer and a stretched resin film (B; single film layer) bonded to a surface of the nonwoven fabric sheet ([0012], [0017]). An adhesive treatment (adhesive layer) can be applied to the back side of the recording sheet (second surface of the facestock) to convert the recording sheet into an adhesive label (label construction) [0070].
Nitta teaches that the nonwoven fabric sheet (A’) can be formed of fibers of a thermoplastic resin, e.g., polypropylene (second polymer, polypropylene polymer) [0025]. The stretched resin film (B) may be a stretched film of a thermoplastic resin or a microporous synthetic paper comprising a stretched resin film having microvoids therein [0034]. Examples of thermoplastic resins useful as materials for the synthetic paper include polyolefin resins such as ethylene-propylene copolymers (first polymer, polypropylene copolymer), wherein the synthetic papers can include inorganic particles such as calcium carbonate, talc, titanium oxide, barium sulfate, or the like (opacifying agent) ([0035], [0037]-[0038]). Nitta teaches that polyethylene has a melting point of 121-124°C, while polypropylene has a melting point of 164-167°C ([0037]-[0038]), such that the polypropylene homopolymer (second polymer) in the nonwoven fabric sheet has a melting point at least 5°C greater than the melting point of the ethylene-propylene copolymer (first polymer) in the stretched resin film.
Although Nitta teaches that the presence of the nonwoven fabric sheet (A’; non-woven layer) serves to improve the tear resistance and to prevent curling of the recording sheet ([0014]), the reference does not expressly teach a layer configuration in which the laminate comprises one single film layer and two non-woven layers, wherein the single film layer is between the two non-woven layers, and wherein the topcoat is applied to a portion of the facestock which is one of the two non-woven layers.
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 adhesive label of Nitta by providing another nonwoven fabric sheet on the other side of the stretched resin film, such that the stretched resin film is between the two nonwoven fabric sheets and the image-receiving layer is applied to one of the top nonwoven fabric sheets, in order to further improve the tear resistance and curling resistance of the adhesive label. It is well settled that duplication of parts holds no patentable significance unless a new and unexpected result is produced. See MPEP 2144.04(VI)(B).
Nitta further teaches that the thickness of the synthetic paper is from 20 to 300 µm, where microporous synthetic papers having a thickness smaller than 20 µm are difficult to produce, but thicknesses exceeding 300 µm are difficult to supply in the form of a roll [0040]. Nitta teaches an embodiment in which the nonwoven fabric sheet is made of spun bond Unisel (manufactured by Teijin Ltd.), which contains PET and PP fibers and has a thickness of 57 µm ([0025], [0105], Table 1). Therefore, in the case where the support is composed of two nonwoven fabric sheets with a stretched resin film therebetween, the support (facestock) has a total thickness in the approximate range of 134 µm (i.e., 20 µm + 2 x 57 µm) to 414 µm (i.e., 300 µm + 2 x 57 µm), which overlaps the claimed range of 50 µm to 150 µm. In the case where the claimed ranges overlap or lie inside ranges disclosed by the prior art, a prima facie case of obviousness exists. See MPEP 2144.05(I).
Regarding claim 5, Nitta teaches all of the limitations of claim 1 above. As noted above, Nitta teaches that the stretched resin film (B; single film layer) may be a microporous synthetic paper ([0034]-[0035]), such that the stretched resin film and the support (laminate) containing the stretched resin film are microporous.
Regarding claims 6-9, Nitta teaches all of the limitations of claim 1 above and further teaches that the microporous synthetic paper of the stretched resin film (B) may be a biaxially stretched film, or a synthetic paper comprising a biaxially stretched base layer and a uniaxially stretched film laminated on at least one side of the base layer [0035]. Either of the biaxially stretched film or the uniaxially stretched film can be taken to correspond to the claimed single film layer, which is oriented in a machine direction or is biaxially oriented. The support (laminate) containing such oriented films is therefore also either oriented in a machine direction or biaxially oriented.
Regarding claim 10, Nitta teaches all of the limitations of claim 1 above. With respect to the limitation requiring that the single film layer is a blown film, it is noted that this limitation is a product-by-process limitation directed to a method of forming the single film layer. The patentability of a product does not depend on its method of production; if the product in a product-by-process claim is the same as a product of the prior art, the claim is unpatentable even though the prior product was made by a different process. See MPEP 2113.
Nitta teaches that the stretched resin film (B; single film layer) may include a biaxially stretched thermoplastic resin film and/or a uniaxially stretched thermoplastic resin film [0035]. Nitta therefore teaches a stretched resin film having a substantially identical structure to that of the claimed single film layer formed by a blown film process, where the biaxially stretched film or the uniaxially stretched film satisfies the limitation requiring that the single film layer is stretched in the machine direction.
Regarding claim 13, Nitta teaches all of the limitations of claim 1 above. As noted above, Nitta teaches that the thermoplastic resins useful as materials for the synthetic paper include polyolefin resins such as ethylene-propylene copolymers (first polymer, polypropylene-polyethylene copolymer) [0037].
Regarding claims 18-21, Nitta teaches all of the limitations of claim 1 above. With respect to the limitations in claims 18-21 directed to the cavitating agent, it is noted that claim 1 sets forth an alternative limitation in which the single film layer comprises at least one of an opacifying agent and a cavitating agent. Given that Nitta teaches that the stretched resin film can contain opaque pigments as inorganic particles, the limitations in claims 1 and 18-21 are satisfied by the presence of an opacifying agent.
Regarding claim 22, Nitta teaches all of the limitations of claim 1 above and further teaches that the ink-receiving layer (II; topcoat) can be applied at a spread rate (coatweight level) of from 5 to 50 g/m2 ([0053]), which overlaps the claimed range of less than 10 gsm. In the case where the claimed ranges overlap or lie inside ranges disclosed by the prior art, a prima facie case of obviousness exists. See MPEP 2144.05(I).
Regarding claim 23, Nitta teaches all of the limitations of claim 1 above and further teaches that the ink-receiving layer (II; topcoat) can contain an ink-setting agent such as an acrylic copolymer, or can contain an acrylurethane resin (urethane acrylic polymer) ([0052], [0071]).
Claims 2 and 3 are rejected under 35 U.S.C. 103 as being unpatentable over Nitta (EP 0779162 B1, cited on IDS) as applied to claim 1 above, and further in view of Jensen et al. (US 5,662,985, previously cited).
Regarding claims 2 and 3, Nitta teaches all of the limitations of claim 1 above. Although Nitta teaches that the recording sheet can include an adhesive on the back side thereof in order to convert the recording sheet into an adhesive label ([0070]), the reference does not teach that a release liner is applied to a portion of the second surface of the adhesive layer.
Jensen et al. teaches a label facestock structure comprising a polymeric film having an adhesive anchor layer on a first side thereof and an ink base layer on a second side thereof (Abstract). A pressure sensitive adhesive is located between the adhesive anchor layer of the facestock and a release surface of a release liner (col 2, Ln 48-54; col 10, Ln 25-28). Release liners contemplated are silicone release coated substrates, where substrates include polyester (such as polyethylene terephthalate, PET), polyethylene coated kraft-brand paper (PCK), or the like (col 10, Ln 52-64). Jensen et al. teaches that when the film is to be secured to an object, the release liner is removed from the film and the exposed adhesive surface is placed onto the object, wherein all of the adhesive remains with the facestock when it is removed from the release liner (col 2, Ln 48-59; col 12, Ln 43-46).
It would have been obvious to one of ordinary skill in the art before the effective 39. filing date of the claimed invention to modify the adhesive label of Nitta by applying a release liner made of PCK or PET to the adhesive layer, as suggested by Jensen et al., for the purpose of temporarily protecting the adhesive layer prior to use.
Claims 25 and 26 are rejected under 35 U.S.C. 103 as being unpatentable over Nitta (EP 0779162 B1, cited on IDS) as applied to claim 1 above, and further in view of Campbell (US 2003/0012911, previously cited).
Regarding claims 25 and 26, Nitta teaches all of the limitations of claim 1 above. Although Nitta teaches that the recording sheet can include an adhesive on the back side thereof in order to convert the recording sheet into an adhesive label ([0070]), the reference does not teach that the adhesive layer comprises an acrylic polymer.
Campbell teaches an adhesive label suitable for processing through a laser printer, comprising a tear resistant layer with a liquid topcoating that dries into a printable layer, wherein the adhesive layer is permanently adhered to the other side of the tear resistant layer (Abstract). Campbell teaches that the adhesive layer includes layers comprising a permanent adhesive or non-permanent adhesive, where the adhesive can be of various types which can withstand the heat generated by a laser printer, wherein examples include acrylic emulsion pressure-sensitive adhesives [0024].
Given that Nitta teaches that its recording sheet may also be used for laser printing ([0002]), 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 label of Nitta by selecting an acrylic emulsion adhesive as the material of the adhesive layer, as suggested by Campbell, in order to ensure that the adhesive layer can withstand the heat generated by a laser printer.
Claim 27 is rejected under 35 U.S.C. 103 as being unpatentable over Nitta (EP 0779162 B1, cited on IDS) in view of Campbell (US 2003/0012911, previously cited).
Regarding claim 27, Nitta teaches a recording sheet comprising a support (I; facestock, laminate) and an image-recording/receiving layer (II; topcoat) formed on a surface (first surface) thereof ([0012], Fig. 1). The image-recording/receiving layer may be a coating layer (IIc) for laser printing, on which a printed image (laser-printed indicia) can be formed with a laser printer ([0046], [0082]). The support has a laminated structure comprising a nonwoven fabric sheet (A’; non-woven layer) as a back layer and a stretched resin film (B; single film layer) bonded to a surface of the nonwoven fabric sheet ([0012], [0017]). An adhesive treatment (adhesive layer) can be applied to the back side of the recording sheet (second surface of the facestock) to convert the recording sheet into an adhesive label (label construction) [0070].
Nitta teaches that the nonwoven fabric sheet (A’) can be formed of fibers of a thermoplastic resin, e.g., polypropylene (second polymer, polypropylene polymer) [0025]. The stretched resin film (B) may be a stretched film of a thermoplastic resin or a microporous synthetic paper comprising a stretched resin film having microvoids therein [0034]. Examples of thermoplastic resins useful as materials for the synthetic paper include polyolefin resins such as ethylene-propylene copolymers (first polymer, polypropylene copolymer), wherein the synthetic papers can include inorganic particles such as calcium carbonate, talc, titanium oxide, barium sulfate, or the like (opacifying agent) ([0035], [0037]-[0038]). Nitta teaches that polyethylene has a melting point of 121-124°C, while polypropylene has a melting point of 164-167°C ([0037]-[0038]), such that the polypropylene homopolymer (second polymer) in the nonwoven fabric sheet has a melting point at least 5°C greater than the melting point of the ethylene propylene copolymer (first polymer) in the stretched resin film.
Although Nitta teaches that the presence of the nonwoven fabric sheet (A’; non-woven layer) serves to improve the tear resistance and to prevent curling of the recording sheet ([0014]), the reference does not expressly teach a layer configuration in which the laminate comprises one single film layer and two non-woven layers, wherein the single film layer is between the two non-woven layers, and wherein the topcoat is applied to a portion of the facestock which is one of the two non-woven layers.
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 adhesive label of Nitta by providing another nonwoven fabric sheet on the other side of the stretched resin film, such that the stretched resin film is between the two nonwoven fabric sheets and the image-receiving layer is applied to one of the top nonwoven fabric sheets, in order to further improve the tear resistance and curling resistance of the adhesive label. It is well settled that duplication of parts holds no patentable significance unless a new and unexpected result is produced. See MPEP 2144.04(VI)(B).
Nitta further teaches that the thickness of the synthetic paper is from 20 to 300 µm, where microporous synthetic papers having a thickness smaller than 20 µm are difficult to produce, but thicknesses exceeding 300 µm are difficult to supply in the form of a roll [0040]. Nitta teaches an embodiment in which the nonwoven fabric sheet is made of spun bond Unisel (manufactured by Teijin Ltd.), which contains PET and PP fibers and has a thickness of 57 µm ([0025], [0105], Table 1). Therefore, in the case where the support is composed of two nonwoven fabric sheets with a stretched resin film therebetween, the support (facestock) has a total thickness in the approximate range of 134 µm (i.e., 20 µm + 2 x 57 µm) to 414 µm (i.e., 300 µm + 2 x 57 µm), which overlaps the claimed range of 50 µm to 150 µm. In the case where the claimed ranges overlap or lie inside ranges disclosed by the prior art, a prima facie case of obviousness exists. See MPEP 2144.05(I).
Although Nitta teaches an adhesive label having an adhesive layer on a back side thereof, Nitta differs from the claimed invention in that the reference does not expressly teach a storage drum comprising a container and the label.
Similar to Nitta, Campbell teaches an adhesive label suitable for processing through a laser printer, comprising a tear resistant layer with a liquid topcoating that dries into a printable layer, wherein the adhesive layer is permanently adhered to the other side of the tear resistant layer (Abstract). Campbell teaches that the label can comprise permanent or non-permanent adhesive which allows the label to be adhered to various surfaces, such as steel (metal), fiber, and plastic drums ([0025]-[0026], Fig. 3). Campbell further teaches that such labels may be attached to large containers or drums in which bulk chemicals are packaged in order to display hazard warnings and properties of the chemicals therein [0008].
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 label of Nitta by selecting an appropriate adhesive to allow the label to be adhered to the surface of a storage drum made of plastic or metal, as taught by Campbell. One of ordinary skill in the art would be motivated to apply the adhesive label taught by Nitta to a storage drum, as suggested by Campbell, in order to enable hazard warnings and properties of the chemicals stored within the drum to be displayed on an outer surface thereof.
Claims 1-3, 13, 18-21, 23, 25, and 26 are rejected under 35 U.S.C. 103 as being unpatentable over Tan et al. (US 2023/0392051, newly cited).
Regarding claims 1 and 13, Tan et al. teaches an adhesive assembly (label construction) which can be used in various applications such as in removable labels (e.g., notes, price tags, or identification labels on containers) ([0157]-[0158]). The adhesive assembly (300) may include a carrier (310; single film layer) arranged between first and second exterior adhesive constructions (200, 220) each comprising a consolidated nonwoven core (204, 224; two non-woven layers) located on first and second major surfaces (311, 312) of the carrier ([0034], [0064], see Fig. 2 and Fig. 4 reproduced below).
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The carrier and the nonwoven cores together correspond to the claimed facestock which comprises a laminate. The carrier is formed of a carrier backing which can include a synthetic polymer film, where representative examples of materials suitable for the carrier backing can include ethylene/propylene copolymers or plastic blends such as polypropylene/polyethylene (first polymer) ([0035], [0074]). Fibrous material that can be used for the nonwoven cores include synthetic thermoplastic fibers including polyolefins, such as polypropylene (second polymer) [0108]. The polypropylene homopolymer in the nonwoven core therefore has a melting point at least 5°C greater than the melting point of the ethylene/propylene copolymer in the carrier.
Tan et al. further teaches that each exterior adhesive construction (200, 220) includes an adhesive layer (202, 222) affixed to a nonwoven core (204, 224) ([0034], Fig. 2), such that one adhesive layer (202) can be taken to correspond to the claimed topcoat which is applied to the first surface of the facestock which is one of the two non-woven layers, and the other adhesive layer (222) can be taken to correspond to the claimed adhesive layer which is applied to the second surface of the facestock.
Tan et al. teaches that the carrier backing can be formed of a film with any suitable thickness, composition, and opaqueness or clarity, where in some embodiments, the carrier is flexible and can include dyes or pigments therein ([0035], [0073]). Tan et al. further teaches that the nonwoven cores may have any suitable thickness that is desired for a particular application ([0115]), but the reference does not expressly teach a total thickness of the carrier and nonwoven cores (facestock) or that the carrier (single film layer) includes an opacifying agent or a cavitating agent.
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 adhesive assembly of Tan et al. by setting a total thickness of the carrier and nonwoven cores to an appropriate value, such as within the claimed range, in order to enable the adhesive assembly to have the desired flexibility or rigidity for use in a particular application. Moreover, it would have been obvious to one of ordinary skill in the art to include an opacifying pigment in the carrier, given that Tan et al. teaches that the carrier may have any suitable opaqueness or clarity and expressly suggests including dyes or pigments therein.
Regarding claims 2 and 3, Tan et al. teaches all of the limitations of claim 1 above and further teaches that the adhesive article includes a release liner on either or both of the major surfaces of the adhesive layers to protect the adhesive during manufacturing, transit, and before use [0122]. Examples of suitable liners include paper (e.g., kraft paper) or polymeric films (e.g., polyester) (polyethylene terephthalate, PET) [0122].
Regarding claims 18-21, Tan et al. teaches all of the limitations of claim 1 above. With respect to the limitations in claims 18-21 directed to the cavitating agent, it is noted that claim 1 sets forth an alternative limitation in which the single film layer comprises at least one of an opacifying agent and a cavitating agent. Given that Tan et al. renders obvious the carrier (single film layer) comprising an opacifying pigment, the limitations in claims 1 and 18-21 are satisfied by the presence of an opacifying agent.
Regarding claim 23, Tan et al. teaches all of the limitations of claim 1 above and further teaches that the exterior adhesive layers can include an acrylic based adhesive ([0120]), such that the exterior adhesive layer (202; topcoat) comprises an acrylic polymer.
Regarding claims 25 and 26, Tan et al. teaches all of the limitations of claim 1 above and further teaches that the exterior adhesive layers can include an acrylic based adhesive, wherein the acrylic adhesives can be polymerized by radiation, solution, suspension, or emulsion techniques ([0120]), such that the exterior adhesive layer (222; adhesive layer) comprises an acrylic polymer as claimed.
Response to Arguments
Response-Claim Objections
The previous objections to claims 5 and 10 are overcome by the Applicant’s amendments to the claims in the response filed May 6, 2026.
Response-Claim Rejections - 35 USC § 103
Applicant's arguments, see pages 6-7 of the remarks filed May 6, 2026, have been fully considered but they are not persuasive.
The Applicant argues that Nitta fails to teach or suggest the new limitations of claim 1 requiring that the facestock comprises a single film layer and two non-woven layers, wherein the single film layer is between the two non-woven layers, and wherein a topcoat is applied to the first surface of the facestock which is one of the two non-woven layers. Instead, the Applicant argues, Nitta teaches a facestock having a stretched resin film (IB) on a support (IA), where the image recording/receiving layer (II) is applied to the stretched resin film layer (IB), such that Nitta fails to teach that the film layer is positioned between two non-woven layers and applying a topcoat to the surface of the facestock which is one of the two non-woven layers.
This argument is not persuasive. As explained in the prior art rejections above, while Nitta does not expressly teach the claimed layer arrangement, it would have been obvious to one of ordinary skill in the art to modify Nitta to arrive at the claimed layer configuration. In particular, it would have been obvious to one of ordinary skill in the art to include a second nonwoven fabric sheet (A’) in the support (I; facestock, laminate), such as on a surface of the stretched resin film (B; single film layer) opposite the first nonwoven fabric sheet (A’), in order to improve the tear resistance and curling resistance of the adhesive label. In doing so, the image-recording/receiving layer (II; topcoat) would be applied to a surface of the facestock which corresponds to the second nonwoven fabric sheet.
As evidenced by Zhou (US 2016/0332471), one of ordinary skill in the art would have a reasonable expectation of success in forming the image-receiving layer (II) on a non-woven fabric sheet as suggested above. Similar to Nitta et al., Zhou teaches a printable recording medium (100) comprising a composite supporting base substrate (110) above which is applied an image receiving layer (120) ([0012], Fig. 1). The image receiving layer is applied on a surface of a first fabric layer (112) of the composite base substrate (110), wherein the first fabric layer may be a woven or nonwoven fabric made of synthetic fibers such as polypropylene or the like ([0012], [0021], [0025]). Alternatively, Zhou teaches that a tie layer (140) may be applied on the second layer (112) in order to provide better adhesion between the fibers of the second layer and the image receiving layer ([0012], [0040]). Given the similarities in materials used for the ink-receiving layer (IIa) taught by Nitta et al. ([0049]-[0052]) and the image receiving layer (120) taught by Zhou ([0043]-[0047]), one of ordinary skill in the art would reasonably expect that the ink-receiving layer taught by Nitta et al. could be predictably applied to the nonwoven fabric sheet rather than to the stretched resin film. Nitta et al. does not teach away from such a configuration.
In light of the amendments to claim 1, a new ground of rejection under 35 U.S.C. 103 based on Tan et al. is also presented in the office action above in order to address the new combination of limitations in the claim.
Conclusion
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/Primary Examiner, Art Unit 1785
