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 .
Election/Restrictions
Applicant’s election without traverse of Group II (claims 19-28) in the reply filed on May 04, 2026 is acknowledged. Claims 1-6 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected group.
Claim Interpretation
In claim 19, lines 6 and 7, the phrase “the substrate is configured for receiving a pressure-sensitive adhesive” is being given a broadest reasonable interpretation that the substrate is capable of receiving a pressure-sensitive adhesive.
In claim 28, lines 1 and 2, the phrase “the adhesive has a surface with peaks and troughs” is being given a broadest reasonable interpretation that there is at least some surface irregularities or unevenness. Note that no adhesive surface is considered absolutely flat; therefore, any adhesive surface will implicitly have some structure or unevenness to the surface.
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 28 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.
In line 1, the term “the adhesive” lacks antecedent basis. Claim 19 does not require the presence of an adhesive material, but rather only requires that a surface of the substrate is configured for receiving an adhesive layer. Further, in lines 2 and 3, the phrase “the water-soluble film comes into contact only with the peaks” is unclear, since, as set forth in claim 19, the water-soluble film is on an opposing side of the substrate than the adhesive. That is, there is no water-soluble film to adhesive interface recited in claim 19. This rejection can be overcome by changing the dependency of from claim 19 to claim 20.
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 19-21, 23-24, and 27-28 are rejected under 35 U.S.C. 102(a)(1)/(a)(2) as being anticipated by Wild (US Pub 2015/0161915).
Regarding claim 19, Wild discloses a label material (Fig 2, [0021]) comprising a substrate (#102), a print receptive coating applied to a side of the substrate (#104), a water-soluble release coating applied to the print receptive coating (#108), and an adhesive layer (#106). Wild disclose that the adhesive can be a heat-activated [0019] or pressure-sensitive adhesive ([0002], [0017], [0019]).
Regarding claims 20 and 21, Wild discloses that the label can be wound into a roll so that the adhesive layer comes into contact with the water-soluble release coating, thereby minimizing the adhesion between the adhesive layer and the print layer [0023]. Further, Wild discloses that the adhesive can form bonds with the water-release coating (when wound into a roll) such that the adhesive will transfer to the surface of the release coating [0034]. Moreover, since Wild uses the same materials in the same arrangement as the present claims, the property limitations set forth in claims 20 and 21 are implicitly disclosed in Wild. See MPEP 2112.
Regarding claim 23, Wild discloses the print receptive coating includes materials that result in sufficient adhesion to the substrate ([0024], [0028]).
Regarding claim 24, Wild discloses that the substrate can be paper or a film [0034].
Regarding claim 27, Wild discloses that the water-soluble film can comprise polyvinyl alcohol (claim 4).
Regarding claim 28, as set forth above in the Claim Interpretation section of this Office action, the phrase “the adhesive has a surface with peaks and troughs” is being given a broadest reasonable interpretation that there is at least some surface irregularities or unevenness. Note that no adhesive surface is considered absolutely flat; therefore, any adhesive surface will implicitly have some structure or unevenness, i.e., peaks and troughs, to the surface.
Claim Rejections - 35 USC § 102/103
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.
Claim 22 is rejected under 35 U.S.C. 102(a)(1)/(a)(2) as anticipated by or, in the alternative, under 35 U.S.C. 103 as obvious over Wild (US Pub 2015/0161915).
The limitation that the “pressure sensitive adhesive is activated by solubilization of a portion of the water-soluble film” is a process limitation that does not appear to impart any patentably distinct structure limitations to the laminate material. MPEP 2113 states “Even though product-by-process claims are limited by and defined by the process, determination of patentability is based on the product itself. The patentability of a product does not depend on its method of production. If the product in the product-by-process claim is the same as or obvious from a product of the prior art, the claim is unpatentable even though the prior product was made by a different process." In re Thorpe, 777 F.2d 695, 698, 227 USPQ 964, 966 (Fed. Cir. 1985). And, "Once the examiner provides a rationale tending to show that the claimed product appears to be the same or similar to that of the prior art, although produced by a different process, the burden shifts to applicant to come forward with evidence establishing a nonobvious difference between the claimed product and the prior art product. In re Marosi, 710 F.2d 799, 803, 218 USPQ 289, 292-33 (Fed. Cir. 1983).
Claim Rejections - 35 USC § 103
Claim 22 is rejected under 35 U.S.C. 103 as being unpatentable over Wild (US Pub 2015/0161915) in view of Drew et al. (US Pub 2021/0024239).
This is an alternative rejection to the above rejection of claim 22 over Wild alone.
Drew discloses a similar label laminate wherein a water-soluble film and a pressure sensitive adhesive layer are bonded together by activating through solubilization of the water-soluble film [0129]. This results in a bond wherein the water-soluble coating flows into surface imperfections to provide a smoother surface for presentation of the article. It would have been obvious to have bonded the water-soluble coating and adhesive material of Wild through solubilization of the water-soluble film, as taught in Drew, motivated by the desire to provide a smoother surface for presentation of the article.
Claims 25 and 26 are rejected under 35 U.S.C. 103 as being unpatentable over Wild (US Pub 2015/0161915) in view of Drew et al. (US Pub 2021/0024239) or Patel et al. (US Pub 2012/0061014).
Wild is silent as to the thickness of water-soluble film. Drew discloses that it is conventional in the art to use water-soluble films having a thickness of 3 to 7 microns [0038]. Additionally, Patel discloses that it is conventional in the self-adhesive label art to use a water-soluble film having a thickness of less than 5 microns, preferably 2 to 3 microns [0023]. It would have been obvious to one of ordinary skill in the art to have prepared the laminate of Wild wherein the water-soluble film has a thickness of less than 5 microns (claim 25) or less than 3 microns (claim 26), as taught by both Drew and Patel, motivated by the desire to obtain a label laminate that is useful in known self-adhesive label processes.
Claim 28 is rejected under 35 U.S.C. 103 as being unpatentable over Wild (US Pub 2015/0161915) in view of Speeney (US Patent No. 6,074,745).
This is an alternative rejection to the above rejection of claim 28 over Wild alone.
Speeney discloses that it is known in the adhesive laminate art to provide an adhesive layer that has peaks and valleys (Figure 2A). Speeney discloses that such an adhesive layer provides substantially equivalent adhesive properties but significantly reduces the amount of material being used (col 2, lines 60-67). It would have been obvious to one of ordinary skill in the art to have used an adhesive layer in Wild that has peaks and valleys, as taught in Speeney, motivated by the desire to obtain a laminate that exhibited sufficient adhesion properties and used less adhesive 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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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Frank Vineis can be reached at (571)270-1547. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/BLAINE COPENHEAVER/Primary Examiner, Art Unit 1781
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