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 .
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 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.
Application Status
This is a first action on the merits following applicant’s response to a restriction/election requirement mailed on 24 February 2026. Claims 1-12 are pending.
Information Disclosure Statement
The information disclosure statement (IDS) submitted on 01 November 2024 is in compliance with the provisions of 37 CFR 1.97. Accordingly, the information disclosure statement is being considered by the examiner.
Election/Restrictions
Applicant’s election without traverse of the invention of Group I (product claims 1-11) in the reply filed on 06 April 2026 is acknowledged. Claim 12 is withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected invention, there being no allowable generic or linking claim.
Specification
The abstract of the disclosure is objected to because it uses the word “coasted” rather than “coated” in the phrase “A label with an acrylic binder coated substrate layer and…”. A corrected abstract of the disclosure is required and must be presented on a separate sheet, apart from any other text. See MPEP § 608.01(b).
Double Patenting
The nonstatutory double patenting rejection is based on a judicially created doctrine grounded in public policy (a policy reflected in the statute) so as to prevent the unjustified or improper timewise extension of the “right to exclude” granted by a patent and to prevent possible harassment by multiple assignees. A nonstatutory obviousness-type double patenting rejection is appropriate where the conflicting claims are not identical, but at least one examined application claim is not patentably distinct from the reference claim(s) because the examined application claim is either anticipated by, or would have been obvious over, the reference claim(s). See, e.g., In re Berg, 140 F.3d 1428, 46 USPQ2d 1226 (Fed. Cir. 1998); In re Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993); In re Longi, 759 F.2d 887, 225 USPQ 645 (Fed. Cir. 1985); In re Van Ornum, 686 F.2d 937, 214 USPQ 761 (CCPA 1982); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); and In re Thorington, 418 F.2d 528, 163 USPQ 644 (CCPA 1969).
A timely filed terminal disclaimer in compliance with 37 CFR 1.321(c) or 1.321(d) may be used to overcome an actual or provisional rejection based on a nonstatutory double patenting ground provided the conflicting application or patent either is shown to be commonly owned with this application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement.
Effective January 1, 1994, a registered attorney or agent of record may sign a terminal disclaimer. A terminal disclaimer signed by the assignee must fully comply with 37 CFR 3.73(b).
Claims 1-10 are provisionally rejected on the ground of nonstatutory obviousness-type double patenting as being unpatentable over claims 1-13 of copending Application No. 18/864,743. The claims filed on 11 November 2024 were considered for analysis. This is a provisional obviousness-type double patenting rejection because the conflicting claims have not in fact been patented. Although the conflicting claims are not identical, they are not patentably distinct from each other because of the following reasons:
Regarding claim 1, claim 1 of the ‘742 application also recites a pressure-sensitive adhesive layer comprising a hydrophilic monomer, hydrophobic monomer, neutralizer, and surfactant. The presence of a specialty hydrophilic monomer in claim 1 of the ‘742 application is not excluded by the present claims which are written in open-ended language using the term “comprising” which allows for additional, unrecited components in the adhesive layer. See MPEP § 2111.03(I).
Regarding claim 2, claim 2 of the ‘742 application recites at least 10% of the hydrophilic monomer and at least 50% of the hydrophobic monomer, which overlaps the claimed ranges.
Regarding claim 3, claim 5 of the ‘742 application recites this limitation. Note: claim 5 of the ‘742 application recites “(meth) ethyl acrylate” which should be “ethyl (meth)acrylate”.
Regarding claim 4, claim 6 of the ‘742 application recites this limitation.
Regarding claim 5, claim 7 of the ‘742 application recites NaOH neutralizer.
Regarding claim 6, claim 8 of the ‘742 application recites this limitation.
Regarding claim 7, claim 3 of the ‘742 application recites this limitation.
Regarding claim 8, claim 12 of the ‘742 application recites this limitation.
Regarding claim 9, the ‘742 application does not require a tackifier in the claimed adhesive layer.
Regarding claim 10, claim 13 of the ‘742 application recites a label with a substrate layer and a pressure-sensitive adhesive layer comprising a hydrophilic monomer, hydrophobic monomer, neutralizer, and surfactant.
Claims 1-10 are provisionally rejected on the ground of nonstatutory obviousness-type double patenting as being unpatentable over claims 1-15 of copending Application No. 18/864,808. The claims filed on 11 May 2026 were considered for analysis. This is a provisional obviousness-type double patenting rejection because the conflicting claims have not in fact been patented. Although the conflicting claims are not identical, they are not patentably distinct from each other because of the following reasons:
Regarding claim 1, claim 1 of the ‘808 application recites an article with a pressure-sensitive adhesive layer comprising a hydrophilic monomer (acrylic acid, methacrylic acid, or C1-C3 alkyl acrylate), a hydrophobic monomer (C4-C18 alkyl acrylate), inorganic neutralizer, and surfactant.
Regarding claim 2, claim 6 of the ‘808 application recites using 50-71 wt. % of ethylhexyl acrylate which reads on the hydrophobic monomer and 25-40 wt. % of ethyl acrylate and 1-10 wt. % of acrylic acid which each read on the claimed hydrophilic monomer. These are within the claimed ranges.
Regarding claim 3, claim 4 of the ‘808 application recites these monomers. Additionally, claim 6 recites using both ethyl acrylate and acrylic acid.
Regarding claim 4, claims 1 and 3 of the ‘808 application recite alkyl acrylates.
Regarding claim 5, claim 7 of the ‘808 application recites NaOH neutralizer.
Regarding claim 6, claim 8 of the ‘808 application recites this limitation.
Regarding claim 7, claim 9 of the ‘808 application recites using from 0.1 to 5 wt. % of the surfactant which overlaps the claimed range.
Regarding claim 8, the claims of the ‘808 application do not require vinyl acetate or vinyl acetate derivatives in the adhesive layer composition.
Regarding claim 9, the ‘808 application does not require a tackifier in the claimed adhesive layer. See, e.g. claim 9 which does not include a tackifier.
Regarding claim 10, claim 1 of the ‘808 application recites an article with a substrate layer and a pressure-sensitive adhesive layer comprising a hydrophilic monomer, hydrophobic monomer, neutralizer, and surfactant. This reads on the claimed label. See also claim 10 in which one of the substrates is a label.
Claim Rejections - 35 USC § 102
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.
Claims 1-4, 6, and 8-10 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by WO 97/11946 A1.
Regarding claims 1-4, WO ‘946 discloses pressure-sensitive adhesive polymers, see p. 4, lines 1-4. Example 5 of the reference combines 287.4 g of 2-ethylhexyl acrylate (reading on the claimed hydrophobic monomer), 59 g of methyl methacrylate, 6.3 g of methacrylic acid, and 9 g of acrylic acid (each reading on hydrophilic monomers), ammonium hydroxide reading on the claimed neutralizer, and Disponil FES-32 which is a sodium lauryl ether sulfate reading on the surfactant. See p. 15, lines 8-16 and lines 30-33 as well as the table on p. 18 describing the Disponil FES-32 ingredient. These amounts are about 79.4 wt. % of the hydrophobic monomer (2-ethylhexyl acrylate) and about 20.5 wt. % of the hydrophilic monomers (methyl methacrylate, methacrylic acid, and acrylic acid). This example anticipates the claims.
Regarding claim 6, WO ‘946 notes that Disponil FES-32 is a sodium salt of lauryl ether sulfate, see table on p. 18. This is a fatty alcohol ether sulfate.
Regarding claims 8 and 9, Example 5 of WO ‘946 does not include any vinyl acetate, vinyl acetate derivatives, or tackifier component.
Regarding claim 10, The adhesive of Example 5 of WO ‘946 is applied to a substrate to form a label. See p. 15, line 34 through p. 16, line 2 and p. 3, lines 3-5.
Claim Rejections - 35 USC § 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 of this title, 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 set forth in Graham v. John Deere Co., 383 U.S. 1, 148 USPQ 459 (1966), that are applied for establishing a background for determining obviousness under 35 U.S.C. 103 are summarized as follows:
Determining the scope and contents of the prior art.
Ascertaining the differences between the prior art and the claims at issue.
Resolving the level of ordinary skill in the pertinent art.
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.
Claim 5 is rejected under 35 U.S.C. 103 as being unpatentable over WO 97/11946 A1.
Regarding claim 5, WO ‘946 discloses pressure-sensitive adhesive polymers, see p. 4, lines 1-4. Example 5 of the reference combines 287.4 g of 2-ethylhexyl acrylate (reading on the claimed hydrophobic monomer), 59 g of methyl methacrylate, 6.3 g of methacrylic acid, and 9 g of acrylic acid (each reading on hydrophilic monomers), ammonium hydroxide reading on the claimed neutralizer, and Disponil FES-32 which is a sodium lauryl ether sulfate reading on the surfactant. Although this example uses ammonium hydroxide as the neutralizer, WO ‘946 also teaches that sodium hydroxide (NaOH) is a suitable pH adjuster along with ammonia, see p. 6, lines 1-8. It would have been obvious to have substituted sodium hydroxide for ammonium hydroxide as WO ‘946 teaches that either material is a suitable pH adjuster.
Claim 7 is rejected under 35 U.S.C. 103 as being unpatentable over WO 97/11946 A1 in view of Zhang (U.S. Pub. 2019/0225844).
Regarding claim 7, WO ‘946 discloses pressure-sensitive adhesive polymers, see p. 4, lines 1-4. Example 5 of the reference combines 287.4 g of 2-ethylhexyl acrylate (reading on the claimed hydrophobic monomer), 59 g of methyl methacrylate, 6.3 g of methacrylic acid, and 9 g of acrylic acid (each reading on hydrophilic monomers), ammonium hydroxide reading on the claimed neutralizer, and Disponil FES-32 which is a sodium lauryl ether sulfate reading on the surfactant.
WO ‘946 does not employ at least 0.5 wt. % of surfactant in its examples, and does not disclose a suitable range of surfactant to be used in the formulations.
However, Zhang also describes emulsion polymerized acrylic pressure-sensitive adhesives used for labels, see p. 1, [0002]. See also p. 2, [0018] describing the acrylic component. A suitable surfactant is introduced for stabilizing the monomers prior to polymerization and stabilizing the emulsion polymer after it is formed. The amount of surfactant used is from 0.01 to 10 wt. % based on the total dry weight of the monomer components, see p. 2, [0019].
Zhang and WO ‘946 are analogous as they each disclose acrylic emulsion pressure-sensitive adhesive polymers used for labels.
Thus it would have been obvious to have used at least 0.5 wt. % of surfactant when formulating the adhesive composition of WO ‘946 to arrive at the claimed invention, as Zhang teaches that this is a suitable amount of surfactant to be used when formulating an acrylic emulsion pressure-sensitive adhesive polymer.
Claim 11 is rejected under 35 U.S.C. 103 as being unpatentable over WO 97/11946 A1 in view of Brumbaugh (U.S. Pub. 2018/0346222) as evidenced by Guerry (U.S. Pub. 2019/0021962).
Regarding claim 11, WO ‘946 describes a label comprising the adhesive as described in the rejection above. WO ‘946 does not specify that the label substrate includes an acrylic binder with a glass transition temperature of greater than 5°C.
Brumbaugh describes packaging containers with labels. The label comprises a facestock, optional release coating, removable adhesive, base layer, and seal layer, see FIG. 2A and description at p. 11, [0108]. The adhesive layer may be a water based acrylic emulsion pressure sensitive adhesive, see p. 6, [0062]. The release coating is formed on the facestock layer, see p. 7, [0069]. The facestock layer may be one of several materials but most preferably is polyethylene terephthalate (PET) or biaxially oriented polypropylene (BOPP), see p. 6, [0053]. Suitable release coatings include the acrylic emulsion ACRYGEN 27 from Omnova Solutions, see p. 7, [0073].
Guerry is relied upon for the limited evidentiary purpose of teaching that ACRYGEN 27 form Omnova Solutions is an acrylic binding agent having a glass transition temperature of 30 °C, see p. 5, [0062].
Thus including ACRYGEN 27 as an optional release coating on the facestock reads on the claimed acrylic binder applied to the substrate.
WO ‘946 and Brumbaugh are analogous as they each disclose label materials having acrylic emulsion pressure sensitive adhesives on a facestock. Thus they are similar in structure and function.
It would have been obvious to one of ordinary skill in the art at the time of the invention to employ an acrylic binder such as ACRYGEN 27 on the label facestock of WO ‘946 to arrive at the claimed invention. One of ordinary skill in the art would have been motivated to include this material as Brumbaugh teaches that the release coating allows the “matrix” or waste or excess label material to be stripped from the label without damaging or breaking the matrix, see p. 1, [0007] and p. 7, [0071].
Prior Art of Record
Prior art made of record and not relied upon is considered pertinent to applicant's disclosure:
Binder (U.S. Pub. 2021/0071042, now U.S. Pat. 11,905,353) describes pressure sensitive adhesive compositions having an acrylic copolymer, surfactant, and sodium hydroxide. The reference is co-owned by the same assignee as the present application and has a common inventor.
Conclusion
All claims are rejected.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Scott R. Walshon whose telephone number is (571)270-5592. The examiner can normally be reached Mon-Fri from 9am - 6pm.
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/Scott R. Walshon/ Primary Examiner, Art Unit 1759
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