DETAILED ACTION
Examiner’s Note
The Examiner acknowledges the cancelation of claims 8-10 in the amendments filed 4/13/2026.
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
Applicant’s arguments, see the claim amendments and the remarks filed 4/13/2026, with respect to the objections to claims 4, 6, 9-11, 17, 19-20 and 24 as set forth in paragraphs 4-13 of the action mailed 1/13/2026, have been fully considered and are persuasive. The objections to claims 4, 6, 9-11, 17, 19-20 and 24 have been withdrawn.
Applicant’s arguments, see the claim amendments and the remarks filed 4/13/2026, with respect to the rejection of claims 3-4, 6, 8-11, 13-14, 16-21 and 23-24 under 35 U.S.C. 112(b) as set forth in paragraphs 15-16 of the action mailed 1/13/2026, have been fully considered and are persuasive. The rejection of claims 3-4, 6, 8-11, 13-14, 16-21 and 23-24 has been withdrawn.
Applicant’s arguments, see the claim amendments filed 4/13/2026, with respect to the DP rejection of claims 3-4, 6, 11 and 19 over claims 9 and 13 of copending application No. 19/089531 as set forth in paragraph 26 of the action mailed 1/13/2026, have been fully considered and are persuasive. The DP rejection of claims 3-4, 6, 11 and 19 been withdrawn.
Applicant’s arguments, see the claim amendments filed 4/13/2026, with respect to the DP rejection of claims 3-4, 6, 11 and 17-19 over claims 9-12 of U.S. Patent No. 12269237 B2 as set forth in paragraph 27 of the action mailed 1/13/2026, have been fully considered and are persuasive. The DP rejection of claims 3-4, 6, 11 and 17-19 been withdrawn.
Applicant’s arguments, see the claim amendments filed 4/13/2026, with respect to the DP rejection of claims 3-4, 6, 11 and 17-19 over claims 14-17 of U.S. Patent No. 12269237 B2 as set forth in paragraph 28 of the action mailed 1/13/2026, have been fully considered and are persuasive. The DP rejection of claims 3-4, 6, 11 and 17-19 been withdrawn.
Rejections
The text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action.
Claims 3-4, 6, 11, 13-14, 16-21 and 23-24 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 3-4, 6 and 11, it is unclear from the claim limitations what the Applicant is claiming via the recitation of the non-free surfactant(s) is at least 10 wt.% greater than the free surfactants given that the non-free surfactant(s) are previously recited as being at least 0.8 wt.%, whereas the total amount of surfactants, excluding the surface active polymerization agent(s) (e.g., the non-free surfactant(s)), is 0 to 0.6 wt.%. For example, non-free surfactants at 0.8 wt.% cannot be 10 wt.% greater than any other compositional elements in the claims PSA coating. See also the similar ranges of the dependent claims. The Applicant’s attention is directed to previous claim 10, which recites only “10 %” and not “10 wt.%.”
Claim Rejections - 35 USC § 103
Claim(s) 3-4, 6, 11, 13-14, 16-18, 20 and 24 is/are rejected under 35 U.S.C. 103 as being unpatentable over Mitchell et al. (US 2017/0009108 A1) in view of Guo (US 2018/0230340A1), and in light of the evidence provided by Takashima et al. (WO 2017/064959 A1). The Examiner notes that citations from the ‘959 reference were taken from a machine translation, which was provided with the previous action.
Regarding claims 3 and 13-14, Mitchell teaches a linerless label (title) comprising a face laminate (110) comprising, in order, a release layer (103); a second layer (104); a print layer (106); a second adhesive layer (105); a first layer (101); and a first adhesive layer (102) of a pressure-sensitive adhesive (PSA) (para 0258, Fig. 4b), which said print layer (106) is accomplished via thermal transfer on a coated printable surface (direct thermal linerless label web, direct thermal printable coating) (para 0243).
The Examiner notes that the second layer (104), print layer (106), second adhesive layer (105) and first layer (101) teach the presently claimed face with the outermost surfaces of second layer (104) and first layer (101) respectively teaching first and second sides, and with said first layer (101) teaching a base layer. The first PSA layer (102) is formed on said second side of first layer (101).
Mitchell also teaches that the first PSA layer (102) is an acrylic PSA emulsion (water-based acrylic PSA coating) (para 0098), but is silent to the acrylic PSA emulsion comprising:
non-free-surfactants, to include surface active polymerization agent(s), in an amount of at least 0.8 wt.%;
which said non-free surfactant(s) comprise at least 10 wt.% greater than the free surfactant(s), to include surface active polymerization agent(s);
wherein the total amount of surfactants, excluding surface active polymerization agent(s), is 0 to 0.6 wt.% (current claim 3);
wherein the acrylic PSA emulsion comprises an aqueous polymer emulsion of acrylate monomers(s), vinyl aromatic compound(s) and at least one of the surface active polymerization agent(s) (current claim 13);
and wherein said surface active polymerization agent(s) comprise at least one reactive surface active polymerization agent (current claim 14).
However, Guo teaches PSA compositions obtained via emulsion polymerization of (a) acrylate monomer(s), (b) hydroxy functional (meth)acrylates, (c) one or more ureido (meth)acrylates, (d) one or more hydrocarbon monomer(s) and one or more ethylenically unsaturated carboxylic acid(s), which said (a) acrylates have glass transition temperatures (Tg) of -20 to -100 ℃ and which said (d) hydrocarbon monomer(s) comprises, inter alia, styrene (vinyl aromatic compound) (para 0008-0011; 0030).
Guo also teaches PSA compositions comprise surfactants (para 0036) such as, inter alia, reactive surfactants having a reactive carbon-carbon double bond (non-free surfactants) in an amount of 1.0 to 3.0 wt.% (at least 0.8 wt%) (para 0038). The Examiner notes that the (a) acrylate monomer(s) and (d) hydrocarbon monomer(s), in tandem with the reactive surfactants having a reactive carbon-carbon double bond (reactive surface active polymerization agent), teach the presently claimed limitations of current claims 13-14.
Indeed, it would have been obvious to one of ordinary skill in the art before the effective filing date of the present invention to employ the acrylic PSA emulsion composition of Guo, to include an acrylic polymer comprising the presently claimed monomeric components comprising copolymerizable surfactants in the presently claimed proportions having a reactive carbon-carbon double bond, without employing free surfactants (non-free surfactant(a) at least 10 wt.% greater than free surfactant(s)), towards said acrylic PSA emulsion demonstrating a dispersed acrylic polymer produced via emulsion polymerization while preventing free surfactants (i.e., emulsifiers) from contaminating adherends in contact with the PSA layer (see the paragraph bridging pages 7-8 and the first full paragraph of page 15 of Takashima) as in the present invention.
Regarding claims 4, 6 and 11, as noted above, the presently recited surfactants are not required (i.e., present at 0 wt%). Thus, the recited free surfactants and surface active polymerization agent(s), which can still be present at 0 wt% (less than 0.3 wt % and less than 2 wt.% allows for 0 wt%), are not required. Similarly, the wetting agent(s) surfactant(s) are not required.
Regarding claim 16, Mitchell teaches that the first PSA layer (102) comprises tackifiers (para 0098), but is silent to said tackifier in an amount of more than 0 wt% and less than 35 wt.%.
However, Guo teaches that the PSA compositions comprise tackifiers in an amount of 10 to 25 wt% (para 0041).
Indeed, it would have been obvious to one of ordinary skill in the art before the effective filing date of the present invention to employ the tackifiers disclosed in Mitchell in the presently claimed proportions based of the tackifier-provided properties required of the prior art’s intended application as in the present invention.
Regarding claim 17, Mitchell teaches that the PSA layer covers 10 to 90 % of the total area (para 0082).
Regarding claim 18, PSA layer (102) has a coat weight of 10 to 25 g/m2 on first layer (101) (para 0098).
Regarding claim 20, Mitchell contemplates the inclusion of fillers such as calcium carbonate, but Mitchell does not require them (para 0096, 0170, 0193).
Regarding claim 24, Mitchell teaches that the release layer is a silicone layer (para 0095) such as a UV-curable silicone (non-thermally curable release coating) (para 0141).
Claim(s) 19 is/are rejected under 35 U.S.C. 103 as being unpatentable over Mitchell et al. (US 2017/0009108 A1) in view of Guo (US 2018/0230340A1) and in further view of Norman et al. (US 5154974).
Regarding claim 19, Mitchell/Guo are silent to the acrylic PSA emulsion further comprising an emulsified silicone additive in an amount of 1 to 6 wt.%.
However, Norman teaches PSA compositions exhibiting improved cutting properties, and laminates containing the same (column 1, lines 10-16), and comprising a water-based acrylic adhesive further having reduced edge flow and no adhesive build-up on a cutting blade comprising an acrylic polymer and a minor amount, sufficient to improve cutting properties, of polydimethylsiloxane (column 2, line 51 to column 3, line 14).
Norman also teaches that the amount of the siloxane is chosen to sufficiently reduce the amount of adhesive oozing without impairing the adhesive properties of the composition, which said amount of the siloxane is 2 to 10 % by weight (column 3, lines 17-44), and that the siloxane is supplied in the form of an aqueous emulsion (emulsified silicone additive) (column 3, lines 61-62).
Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the present invention to employ the silicone emulsion of Norman in the acrylic PSA emulsion of Mitchell/Guo, towards first adhesive layer (102) providing a balance of improved cutting properties, reduced edge flow, the prevention of adhesive build-up and adhesive properties required of the prior art’s intended application as in the present invention.
Claim(s) 21 and 23 is/are rejected under 35 U.S.C. 103 as being unpatentable over Mitchell et al. (US 2017/0009108 A1) in view of Guo (US 2018/0230340A1), and in light of the evidence provided via Schonrock et al. (US 2022/0073791 A1).
Regarding claims 21 and 23, as noted above, Mitchell/Guo teaches that the linerless label (110) comprises the second layer (104) (i.e., a top coating) provided over print layer (106), and comprises the second adhesive layer (105), which teaches an intermediate layer disposed between print layer (106) and first layer (101).
While Mitchell/Guo does not disclose the coat weight (i.e., the grammage) of the layers (104 and (105), the Examiner submits that the coat weight is a measure of “how much” of a substance or composition is disposed on a surface. In addition, as evidenced via Schonrock (para 0153), the coat weight is equivalent to the thickness of a layer.
See also MPEP 2141(I) and MPEP 2143.01 in regards to “common sense”, in addition to knowledge available to the skilled artisan as a rationale in considering the obviousness of a claimed limitation over the specific disclosure(s) of the prior art.
Indeed, it is the Examiner’s position that selecting the presently claimed grammage for the layers (104) and (105) would have been an obvious choice for one skilled in the art based on the resultant thickness of said layers (104) and (105), and the overall thickness of the linerless label, required (or desired) of the prior art’s intended application as in the present invention.
Response to Arguments
Applicant’s arguments, see the claim amendments and the remarks filed 4/13/2026, with respect to the rejection of claims 3-4, 6, 11, 17-18, 20 and 24 over Mitchell et al. under 35 U.S.C. 102(a)(1); claims 8-10, 13-14 and 16 over Mitchell et al. in view of Guo et al. under 35 U.S.C. 103; claim 19 over Mitchell et al. in view of Guo et al. and in further view of Norman et al. under 35 U.S.C. 103; and claims 21 and 23 over Mitchell et al. under 35 U.S.C. 103; as set forth in paragraphs 18 and 21-23 and of the action mailed 1/13/2026, have been fully considered but they are not persuasive.
The Applicant has canceled claims 8-10 and imported the limitations contained therein into independent claim 3. Thus, the rejection of at least claim 3 under 35 U.S.C. 102(a)(1) of the previous action has been withdrawn, and the Examiner will respond to the Applicant’s arguments directed at the prior art rejection(s) set forth above under 35 U.S.C. 103 as directed to current claim 3 and, when applicable, to its dependent claims.
In regards to the Applicant’s alleged benefits of the presently claimed invention as outlined on pages 4-5 of the current remarks (e.g., the benefits of non-free surfactants), the Examiner respectfully reminds the Applicant that,
“[T]he discovery of a previously unappreciated property of a prior art composition, or of
a scientific explanation for the prior art’s functioning, does not render the old
composition patentably new to the discoverer.” Atlas Powder Co. v. Ireco Inc., 190 F.3d
1342, 1347, 51 USPQ2d 1943, 1947 (Fed. Cir. 1999). Thus the claiming of a new use,
new function or unknown property which is inherently present in the prior art does not
necessarily make the claim patentable. In re Best, 562 F.2d 1252, 1254, 195 USPQ 430,
433 (CCPA 1977).
Also, in addition to the present limitations of current claim 3, and to Mitchell’s silence thereto as outlined above, the Applicant submits that Mitchell does not disclose any distinction between non-free and free surfactants in its disclosed acrylic PSA emulsion. However, the analogous Guo reference (both Mitchell are directed to acrylic emulsion PSA compositions) remedying Mitchell in regards to the presently claimed non-free surfactants comprising surface active polymerization agent(s) and their attendant proportions, the evidential Takashima disclosure demonstrates that it is established in the art that free surfactants contaminate adherends in contact with the PSA layer.
Furthermore, while Guo discloses that the surfactants comprise, inter alia, anionic, cationic, nonionic and amphoteric emulsifiers (i.e., free surfactants), Guo provides an embodiment employing reactive surfactants (i.e., non-free surfactants). As noted by the Applicant, and as provided in the prior art rejections set forth above, the surfactants of Guo, to include the reactive surfactants, are present art 1.0 to 3.0 wt.%. The Examiner respectfully submits that one skilled in the art would recognize employing all or a portion of the reactive surfactants in the prescribed amount of 1.0 to 3.0 wt.% based on the specific requirement(s) (e.g., polymerizable versus non-polymerizable surfactants) of the emulsion polymerization.
Since the limitations of at least current claim 3 do not require the free surfactants given the lower recited limit of 0 wt.%, Mitchell/Guo need not teach that the surfactant(s) comprises free reactants, and thus need not teach that the reactive surfactants (i.e., the non-free surfactant(s)) are at least 10 wt.% greater than the amount of free surfactants. In addition, Guo need not teach the criticality of “pushing the optional free surfactant down” as Guo does not require free surfactants (instead uses reactive surfactants as noted previously), and the recited claim language of at least current claim 3 provides for the free surfactants to comprise the water-based acrylic PSA coating or to not comprise the water-based acrylic PSA coating.
It is significant to note that the current claim 3 does not require that the PSA coating demonstrate drying behavior, long-term print quality or the reduction of adhesive build-up. Also, there is nothing of record to demonstrate a lack of compatibility between the PSAs of Mitchell and those of the analogous Guo invention. Indeed, as evidenced via Takashima’s discussion of free surfactants contaminating adherends in contact with the PSA layer, the disclosure of Guo would commend itself to the PSA compositions designated to be washed off the adherends to which they are attached.
Turning now to Takashima, Takashima was employed only as an evidential reference demonstrating the established motivations for including reactive surfactants, like those disclosed in Guo, into the acrylic PSA emulsion compositions of Mitchell. Further, it is noted that the,
"test for obviousness is not whether the features of a secondary reference may be bodily
incorporated into the structure of the primary reference... Rather, the test is what the
combined teachings of the references would have suggested to those of ordinary skill in
the art", In re Keller, 642 F.2d 413,208 USPQ 871,881 (CCPA 1981) and that
"combining the teachings of references does not involve an ability to combine their
specific structures", In re Nievelt, 482 F.2d 965, 179 USP 224, 226 (CCPA).
Lastly, in regards to the Applicant’s assertions of unexpected results, the Examiner respectfully submits that, as set forth in MPEP 716.02(d), whether unexpected results are the result of unexpectedly improved results or a property not taught by the prior art, “objective evidence of nonobviousness must be commensurate in scope with the claims which the evidence is offered to support.” In other words, the showing of unexpected results must be reviewed to see if the results occurred over the entire claimed range, In re Clemens, 622 F.2d 1029, 1036, 206 USPQ 289, 296 (CCPA 1980).
The Applicant has not provided data to show that the unexpected results do in fact occur over the entire claimed ranges of:
at least 0.8 wt.% for the non-free surfactant(s), including the surface active polymerization agent(s);
the non-free surfactant(s) is present at least 10 wt.% greater than the free surfactant(s);
and the total amount of surfactant(s), excluding the surface active polymerization agent(s) is 0 to 0.6 wt.%.
Example 1 provides the wetting agents in an amount up to 1.3% (presumable wt.%). Assuming that that wetting agents are included in the presently claimed “total amount of surfactant(s), excluding the surface active polymerization agent(s),” 1.3 wt.% is well outside the upper limit of 0.6 wt.% recited in current claim 3. Also, the is no data provided to compare the results of the drying effect of employing the wetting agent(s) within the presently claimed ranges versus those outside it. Furthermore, there is not data demonstrating the results within and without the presently claimed ranges for the non-free surfactant(s) (at least 0.8 wt.%) or the non-free surfactants relative to the free surfactants (at least 10 wt.% or greater).
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 FRANK D DUCHENEAUX whose telephone number is (571)270-7053. The examiner can normally be reached 8:30 PM - 5:00 PM.
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/FRANK D DUCHENEAUX/Primary Examiner, Art Unit 1788 5/8/2026
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