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 February 20, 2026 are entered into the file. Currently, claims 1 and 2 are amended; claim 3 is canceled; claims 5-8 are new; resulting in claims 1, 2, and 4-8 pending for examination.
Information Disclosure Statement
The information disclosure statement (IDS) submitted on 02/20/2026 has been considered by the examiner.
Claim Objections
Claims 1 and 8 are objected to because of the following informalities: In lines 10-11 of claim 1 and lines 10-11 of claim 8, the phrase “the toral weight of the outer layer” contains a typographical error that should instead read --the total weight of the outer layer--.
Appropriate correction is required.
Claim Rejections - 35 USC § 112
The following is a quotation of the first paragraph of 35 U.S.C. 112(a):
(a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
The following is a quotation of the first paragraph of pre-AIA 35 U.S.C. 112:
The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention.
Claims 1-4, 6, and 7 are rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, because the specification, while being enabling for a shrink label as described in Examples 2-4 and 6-7 which includes an epoxy curing agent in the outer layer at an amount of 2 to 6 wt%, does not reasonably provide enablement for a shrink label including any curing agent in the outer layer at an amount of 2 to 6 wt% and having the claimed coefficient of dynamic friction properties. The specification does not enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the invention commensurate in scope with these claims.
There are many factors to be considered when determining whether there is sufficient evidence to support a determination that a disclosure does not satisfy the enablement requirement and whether any necessary experimentation is undue. See MPEP 2164. These factors include, but are not limited to:
(A) The breadth of the claims;
(B) The nature of the invention;
(C) The state of the prior art;
(D) The level of one of ordinary skill;
(E) The level of predictability in the art;
(F) The amount of direction provided by the inventor;
(G) The existence of working examples; and
(H) The quantity of experimentation needed to make or use the invention based on the content of the disclosure.
Regarding claim 1, upon applying this test to the claim, it is believed that undue experimentation would be required because of the following:
Breadth of the claims: Independent claim 1 broadly recites that the outer layer is a water-based acrylic ink layer which comprises an acrylic resin and a curing agent at an amount of 2 wt% or more and 6 wt% or less. However, claim 1 does not specify the material of the curing agent, which appears to be essential for achieving the claimed properties in which the coefficient of dynamic friction between the outer layer and a polyester surface having a water droplet of 0.1 mL or 0.01 mL is 1.0 or less or 2.5 or less, respectively.
Nature of the invention: Paragraphs [0036]-[0037] of the as-filed specification discloses that the occurrence of defective attachment of a shrink label onto a container can be suppressed when the outer layer (3b) forming the innermost surface of the shrink label (10) (i.e., on the side attached to a container) is formed of a water-based acrylic ink layer containing an acrylic ink and a curing agent. Although paragraph [0037] states that the coefficients of dynamic friction of the outer layer against a polyester surface with water droplets of 0.1 mL and 0.01 mL are tailored to 1.0 or less and 2.5 or less, the specification does not disclose how the dynamic friction coefficient properties are “tailored”. Paragraph [0036] indicates that defective attachment of the shrink label onto a container may occur when the outer layer is a water-based urethane ink layer; however, aside from replacing the urethane resin with an acrylic resin, it is not clear how the dynamic friction coefficient properties are obtained.
Amount of direction provided: As noted above, paragraph [0037] states that the coefficients of dynamic friction of the outer layer against a polyester surface with water droplets of 0.1 mL and 0.01 mL are tailored to 1.0 or less and 2.5 or less, but the instant specification does not provide any further indication as to how the dynamic friction coefficient properties are “tailored”. Paragraph [0036] explains that defective attachment of the shrink label onto a container may occur when the outer layer is a water-based urethane ink layer; however, aside from replacing the urethane resin with an acrylic resin, it is not clear how the dynamic friction coefficient properties are obtained. Paragraphs [0022]-[0025] further disclose acrylic monomers used for the formation of the acrylic resin contained in the water-based acrylic ink of the outer layer, but there is no indication whether these materials are essential to achieving the claimed dynamic friction coefficient properties.
Existence of working examples: Examples 1-7 in Table 1 of the instant specification demonstrate the effects on the coefficients of dynamic friction of adjusting the type of resin and type and amount of curing agent in the outer layer. In particular, Example 1 is the only Experimental Example in which the claimed coefficient of dynamic friction property measured with a 0.01 mL droplet is not satisfied, where Example 1 differs from Examples 2-7 in that the outer layer is formed of a water-based urethane ink layer with an isocyanate curing agent instead of a water-based acrylic ink layer with an epoxy curing agent [0079]. The examples which satisfy the claimed dynamic friction coefficient properties are each formed of a water-based acrylic ink comprising an epoxy curing agent at an amount of 2% to 6%. The type and amount of curing agent both appear to be essential to achieving the claimed dynamic friction coefficient properties in combination with the remaining features of the claimed invention.
Quantity of experimentation needed: In light of the above deficiencies in the claims and the instant disclosure, one of ordinary skill in the art would not be capable of determining exactly what materials other than the materials used in Examples 2-4 and 6-7 (i.e., an outer layer which is a water-based acrylic ink layer formed of an acrylic resin and 2 to 6 wt% of epoxy curing agent) can be used to achieve the claimed coefficient of dynamic friction properties without undue experimentation.
Regarding claims 2-4, 6, and 7, the claims are rejected based on their dependency on claim 1 and do not cure the deficiencies set forth above.
Claim 4 is rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the written description requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for applications subject to pre-AIA 35 U.S.C. 112, the inventor(s), at the time the application was filed, had possession of the claimed invention.
Regarding claim 4, the limitation reciting “further comprising a color ink layer between the base material and the outer layer” in claim 4 fails to comply with the written description requirement when viewed in combination with the newly added limitation in claim 1 reciting “an inner layer between the base material and the outer layer”.
In particular, it is noted that all embodiments of the instant invention which include a base material (1), an outer layer (3b), an inner layer (3a), and a color ink layer (2) have a layer configuration in which the color ink layer is arranged between the base material and the inner layer (see, e.g., Fig. 1). The instant specification does not disclose any other configurations of the color ink layer encompassed by the broad language of claim 4, e.g., where the color ink layer is arranged between the inner layer and the outer layer, and thus does not provide adequate support for the current language of the claim. In order to overcome this rejection, the limitation in claim 4 can be amended to recite --further comprising a color ink layer between the base material and the inner layer--, consistent with the configuration shown in Fig. 1.
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.
Claims 5 and 8 are 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 claims 5 and 8, the limitations reciting “wherein the curing agent in the outer layer is an epoxy-based curing agent” (claim 5) and “the outer layer comprising an acrylic resin and an epoxy-based curing agent (claim 8) are indefinite because it is not clear what is meant by the term “an epoxy-based curing agent”.
In particular, the suffix “-based” means the main component from which a particular substance or object is made (see https://dictionary.cambridge.org/us/ dictionary/english/based). It is not clear, however, whether the “epoxy-based curing agent” used in the present invention is in fact a curing agent made of epoxy, or if the term “epoxy-based” is intended to mean that the curing agent is one that is conventionally used to cure epoxy resins.
In looking to paragraph [0020] of the as-filed specification, the curing agent used in the inner layer is said to correspond to the resins contained therein, where an epoxy-based curing agent is said to be used when the resin contained in the inner layer includes an amino group or a carbonyl group. In paragraph [0026], the curing agent contained in the water-based acrylic ink used for the formation of the outer layer is said to be one of the above-described curing agents, for example, an epoxy-based curing agent. Based on this disclosure, it appears as if the term “epoxy-based curing agent” is intended to refer to a curing agent that is used to cure epoxy resin, as there are no conventional curing agents that can be used to cure acrylic resins and that include epoxy groups. For examination purposes, the above limitations will be interpreted to mean that the curing agent in the outer layer is an epoxy curing agent, which is considered to be satisfied by any curing agent that is capable of curing an epoxy resin.
Response to Arguments
Response-Claim Rejections - 35 USC § 112
In light of the Applicant’s arguments and amendments to claim 1 in the response filed February 20, 2026, the previous rejection of claims 1-4 under 35 U.S.C. 112(a) as failing to comply with the enablement requirement has been modified in the office action above. In particular, the Applicant submits of page 4 of the remarks that the claimed rage for the amount of curing agent in the outer layer corresponds directly to the working examples in Table 1 (e.g., Examples 2-4 and 6-7) that achieve the claimed properties. The previous enablement rejection has therefore been modified to a scope of enablement rejection, where the claimed coefficient of dynamic friction properties are enabled only in combination with the specific materials used in the outer layer of Examples 2-4 and 6-7 (i.e., an outer layer comprising water-based acrylic ink including 2 wt% to 6 wt% of an epoxy curing agent).
Response-Claim Rejections - 35 USC § 102 and 103
Applicant’s arguments, see pages 5-6 of the remarks filed February 20, 2026, with respect to the previous rejections of claims 1 and 3 have been fully considered and are persuasive. The following rejections have therefore been withdrawn:
Claims 1, 2, and 4 under 35 U.S.C. 102(a)(1) and 35 U.S.C. 102(a)(2) as being anticipated by Zha et al. (US 2022/0145090); and
Claim 3 under 35 U.S.C. 103 as being unpatentable over Zha et al. (US 2022/0145090) as applied to claim 2, and further in view of Takahashi et al. (JP 2017-067928).
Please refer to the Allowable Subject Matter section below for further explanation.
Allowable Subject Matter
Claims 1, 2, and 4-8 would be allowable if rewritten or amended to overcome the rejections under 35 U.S.C. 112(a) and 35 U.S.C. 112(b) set forth in this Office action.
As allowable subject matter has been indicated, applicant's reply must either comply with all formal requirements or specifically traverse each requirement not complied with. See 37 CFR 1.111(b) and MPEP § 707.07(a).
The following is a statement of reasons for the indication of allowable subject matter: The prior art does not teach or render obvious the claimed invention of the instant application.
Independent claim 1 recites a shrink label comprising a heat-shrinkable base material, an outer layer, and an inner layer between the base material and the outer layer. The outer layer is a water-based acrylic ink layer comprising an acrylic resin and a curing agent, wherein the content percentage of the curing agent contained in the water-based acrylic ink is 2 wt% or more and 6 wt% or less based on the total weight of the outer layer. The inner layer comprises a resin and a curing agent, wherein the content percentage of the curing agent in the outer layer is smaller than the content percentage of the curing agent in the inner layer. The outer layer has a coefficient of dynamic friction of 1.0 or less against a polyester surface having a 0.1 mL water droplet and a coefficient of dynamic friction of 2.5 or less against a polyester surface having a 0.01 mL water droplet.
Independent claim 8 recites a shrink label comprising a heat-shrinkable base material, an outer layer, and an inner layer between the base material and the outer layer. The outer layer is a water-based acrylic ink layer comprising an acrylic resin and an epoxy curing agent, wherein the content percentage of the epoxy curing agent contained in the water-based acrylic ink is 2 wt% based on the total weight of the outer layer. The inner layer comprises a resin and a curing agent having a content percentage of 3 wt% or more and 5 wt% or less based on the total weight of the inner layer, such that the content percentage of the curing agent in the outer layer is smaller than the content percentage of the curing agent in the inner layer. The outer layer has a coefficient of dynamic friction of 1.0 or less against a polyester surface having a 0.1 mL water droplet and a coefficient of dynamic friction of 2.5 or less against a polyester surface having a 0.01 mL water droplet.
The closest prior art to the claimed invention is Zha et al. (US 2022/0145090), which teaches a primer coating, overprint varnish, and seaming solution for application to substrates such as those used to make wrap around and sleeve labels, such as shrink wrap labels (Abstract). Zha et al. teaches that suitable substrates include PET-G shrink film (heat-shrinkable base material), and that the shrink films are formed into sleeves and shrunk to fit on the outside of an article, such as a plastic container ([0005], [0109], [0154]).
The overprint varnish (outer layer) is applied to the substrate over one or both of the print composition and inks and serves to provide one or more of increased chemical resistance, rub resistance, scratch resistance, and heat resistance [0127]. Zha et al. teaches that the overprint varnish comprises (meth)acrylic homopolymers or (meth)acrylic copolymers present as an aqueous dispersion (water-based acrylic ink) and may further include a crosslinking agent to improve or enhance the resistance properties of the composition ([0128], [0136], [0143], Table 2). The overprint varnish also serves to control the static and dynamic coefficients of friction of the substrate that is in contact with other components, such as rollers on the press, substrate in contact with other substrate, and between label and article (e.g., container) [0127].
Although Zha et al. teaches that a crosslinking agent may be included in the primer composition (inner layer) and in the overprint varnish (outer layer) in order to improve or enhance the resistance properties of the compositions, wherein the amount of crosslinking agent included in the compositions may be about 0.05 wt% to 15 wt% ([0143]), the reference does not expressly teach that a content percentage of the crosslinking agent in the primer composition is smaller than a content percentage of the crosslinking agent in the overprint varnish in combination with the limitations requiring that a content percentage of the curing agent contained in the outer layer is 2 wt% or more and 6 wt% or less, or that a content percentage of the curing agent contained in the outer layer is 2 wt% while the content percentage of the curing agent contained in the inner layer is 3 wt% to 5 wt%.
Takahashi et al. (JP 2017-067928) was previously relied upon to address the limitation directed to the content percentage of the curing agent in the outer layer being smaller than the content percentage of the curing agent in the inner layer. However, as explained by the Applicant on page 6 of the remarks filed February 20, 2026, Takahashi et al. teaches a configuration in which the printing layer (inner layer) preferably substantially does not contain a curing agent, while the protective layer (outer layer) contains a curing agent. Although Takahashi et al. teaches that the content of the curing agent in the protective layer may be 1 to 50% by weight (p. 2), which overlaps the claimed range of 2 wt% to 6 wt%, the reference fails to cure the deficiencies of Zha et al. noted above with respect to the relative content of curing agent in the inner and outer layers.
In looking to paragraphs [0028]-[0031] of the as-filed specification, when the content percentage of the curing agent in the outer layer is made smaller than the content percentage of the curing agent in the inner layer, the anti-blocking property and the water resistance of the shrink label can be improved. Although Zha et al. teaches incorporating a curing agent in both the inner layer and the outer layer, the prior art does not specifically teach or recognize the advantages associated with using an amount of curing agent in the outer layer that is less than the amount of curing agent in the inner layer.
Tiessen et al. (US 2019/0389236, newly cited) teaches a method for applying multiple ink and/or coating layers on a substrate (Abstract). In particular, Tiessen et al. teaches a printed article comprising a substrate and one or more energy-curable ink or coating layers containing one or more photoinitiators, where one or more of the ink or coating layers may be a primer coating and/or a topcoat ([0021]-[0025]).
Tiessen et al. teaches exemplary embodiments in which the substrate is a polypropylene or polyethylene terephthalate film (heat-shrinkable base material) (Examples 13-14, [0217]-[0219]), in which the topcoat is a water-based acrylic hybrid topcoat containing a photoinitiator (curing agent) (Example 18, [0241]), and in which the amount of photoinitiator in the primer (inner layer) is less than the amount of photoinitiator in the topcoat (outer layer) (Examples 10E-10I, Table 10). However, Tiessen et al. does not expressly teach or render obvious the claimed configuration of a shrink label comprising an inner layer containing a resin and a curing agent formed between a heat-shrinkable base material and an outer layer formed of a water-based acrylic ink containing an acrylic resin and a curing agent, wherein the weight percentage of the curing agent in the outer layer is less than the weight percentage of the curing agent in the inner layer.
Conclusion
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
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