DETAILED ACTION
Examiner’s Note
The Examiner acknowledges the cancelation of claim(s) 2 and the addition of new claim 27 in the amendments filed 8/10/2026.
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 .
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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 8/10/2026 has been entered.
Response to Amendment
Applicant’s arguments, see the claim amendments and the remarks filed 8/10/2026, with respect to the rejection of claims 3-4, 6, 11, 13-14, 16-21 and 23-24 under 35 U.S.C. 112(b) as set forth in paragraph 9 of the action mailed 1/13/2026, have been fully considered and are persuasive. The rejection of claims 3-4, 6, 11, 13-14, 16-21 and 23-24 has been withdrawn.
Claim Objections
Claim 3 is objected to because of the following informalities: the claim should be amended to recite “…wherein the at least one reactive surface active polymerization agent…”. Appropriate correction is required.
Claim 17 is objected to because of the following informalities: the claim should be amended to recite “…calculated from a total area…”. Appropriate correction is required.
Claim 18 is objected to because of the following informalities: the claim should be amended to recite “…calculated from the total dry weight of the water-based acrylic pressure sensitive adhesive coating.” if that was what was intended. Appropriate correction is required.
Claim 19 is objected to because of the following informalities: please amend the claim to distinguish between the “pressure sensitive adhesive coating” and the “water-based acrylic pressure sensitive adhesive coating” (current claim 3) and the “water-based acrylic adhesive coating,” and in regards to the recited wt%. Appropriate correction is required.
Claim 27 is objected to because of the following informalities: the claim should be amended to recite “…wherein the at least one reactive surface active polymerization agent…”. Appropriate correction is required.
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.
Claim Rejections - 35 USC § 112
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.
Claim 3 recites the limitation "the polymerization process" in line 9. There is insufficient antecedent basis for this limitation in the claim as a polymerization process has not been previously introduced.
Claim 3 recites the limitation "the total dry weight" in line 13. There is insufficient antecedent basis for this limitation in the claim a total dry weight has not been previously introduced.
Regarding claims 4 and 11, it is unclear what the difference is, if any, between the total amount of free surfactant(s) recited in current claim 3, and the amount of free surfactants recited in the current claim.
Regarding claim 13, it is unclear if the at least one surface active polymerization agent is the same at least one surface active polymerization agent recited in current claim 3, or if the at least one surface active polymerization agent is in addition to the at least one surface active polymerization agent recited in current claim 3.
Regarding claim 24, it is unclear which side of the face constitutes the “top of the face,” and thus it is unclear as to the layered structure of the label web.
Claim 27 is 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.
Claim 27 recites the limitation "the polymerization process" in line 9. There is insufficient antecedent basis for this limitation in the claim as a polymerization process has not been previously introduced.
Claim 27 recites the limitation "the total dry weight" in line 12. There is insufficient antecedent basis for this limitation in the claim a total dry weight has not been previously introduced.
The following is a quotation of 35 U.S.C. 112(d):
(d) REFERENCE IN DEPENDENT FORMS.—Subject to subsection (e), a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
The following is a quotation of pre-AIA 35 U.S.C. 112, fourth paragraph:
Subject to the following paragraph [i.e., the fifth paragraph of pre-AIA 35 U.S.C. 112], a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
Claim 14 is rejected under 35 U.S.C. 112(d) or pre-AIA 35 U.S.C. 112, 4th paragraph, as being of improper dependent form for failing to further limit the subject matter of the claim upon which it depends, or for failing to include all the limitations of the claim upon which it depends. Applicant may cancel the claim(s), amend the claim(s) to place the claim(s) in proper dependent form, rewrite the claim(s) in independent form, or present a sufficient showing that the dependent claim(s) complies with the statutory requirements.
Regarding claim 14, the recited at least one reactive surface active polymerization agent does not further limit current claim 3, which has already introduced the same agent.
Claim Rejections - 35 USC § 103
Claim(s) 3-4, 6, 11, 13-14, 18, 20-21 and 23-24 is/are rejected under 35 U.S.C. 103 as being unpatentable over Koch et al. (US 6423392 B1) in view of Ma et al. (US 2015/0017427 A1) and in further view of Mitchell et al. (US 2017/0009108 A1), and in light of the evidence provided by Takashima et al. (WO 2017/064959 A1) and Schonrock et al. (US 2022/0073791 A1).
Regarding claims 3-4, 6 and 11, Koch teaches a linerless PSA construction (linerless label web) comprising a PSA comprising a emulsion polymerization product coated on a facestock (face with first and second sides; base layer) towards minimizing adhesive build-up on a printer (column 2, lines 19-23 and lines 38-43), which said polymerization comprises (a) 25 to 35% by weight of at least one alkyl acrylate (acrylic monomers), (b) 30 to 50% by weight of a diester of a dicarboxylic acid, (c) 20 to 30% by weight of a vinyl ester, (d) 0.5 to 5% by weight of an ethylenically unsaturated C3 to C5 carboxylic acid, (e) 0.15 to 1% by weight of a crosslinking monomer, and (f) 1 to 5% by weight of a carboxy acrylate of methacrylate monomer (column 2, lines 24-37).
Koch’s PSA comprising an emulsion polymerization product coated on a facestock teaches a water-based acrylic PSA coating (which is obtained from a water-based acrylic adhesive coating), and which is provided on a second side of the face. The emulsion acrylic PSA polymers are prepared in the presence of emulsifiers (or surfactants) (column 5, lines 16-19). The emulsifiers include anionic surfactants, cationic surfactants and reactive surfactants, the latter of which teaches at least one reactive surface active polymerization agent polymerized with acrylic monomers during a polymerization process, all of which are in an amount sufficient to form stable monomer emulsions (column 5, lines 52-64).
Koch is silent to the presently claimed proportions of the reactive surfactants (at least 0.8 wt.%) based on the dry weight of the water-based acrylic PSA coating based on the dry weight of the water-based acrylic PSA coating, and to the amount of the reactive surfactant being at least 10% greater than the non-reactive surfactants; and to the amount of the non-reactive surfactants (0 to 0.6 wt.%; equal to or less than 0.3 wt.%, current claim 4; equal to or less than 0.3 wt.%, current claim 6; equal to or less than 11 wt.%, current claim 11), such as the disclosed alkyl phenol ethyloxylates (column 5, lines 52-64), based on the dry weight of the water-based acrylic PSA coating;. However, the Examiner respectfully notes that the presently claimed invention of current claims 3-4, 6 and 11 does not require the presence of the free surfactant(s) (and thus, the wetting agents) given that the compound(s) are recited as present 0 wt.%, or equal to or less than 0.3 wt.%, or equal to or less than 2 wt.%, and thus the prior art need not teach these limitations.
In addition, Ma teaches a PSA composition comprising,
(a) 30 to 70 wt% of a polymer phase, based on the total weight of the aqueous based PSA, comprising the reaction product of: (i) (meth)acrylates, (ii) acid functional monomers, (iii) non-acid functional polar monomers, (iv) vinyl monomers, and (v) a chain transfer agent; and,
(b) 70 to 30 wt% of an aqueous phase comprising 0.5 to 8 wt% of a surfactant
towards minimizing the aqueous phase and conserving energy on the drying process, to minimizing storage and shipping costs, and towards maximizing plant productivity (para 0025-0033; 0060). The Examiner notes that 70 to 30 wt% of 0.5 to 8 wt% of the surfactant provides the total amount of solid surfactant ranging from 0.30 × 0.5 wt% = 0.15 wt% to 0.70 × 8 wt% = 5.6 wt%, which overlaps that proportions of the presently claimed reactive surface active polymerization agent (at least 0.8 wt.%).
Ma continues to teach that the surfactants are anionic, cationic and/or nonionic (para 0051-0055); and that the surfactant is an ionic copolymerizable surfactant that reacts with the copolymerizable monomer mixture (para 0056-0058). Ma envisions an embodiment where the surfactants comprise the copolymerizable surfactant at 40 to 99.5 wt% based on the total surfactant mixture and noncopolymerizable surfactants (i.e., free surfactants) at 0.5 to 60 wt% based on the total surfactant mixture (para 0059), wherein the proportion of the copolymerizable surfactant also demonstrates an overlap with the presently claimed amount of the recited at least one reactive surface active polymerization agent (at least 0.8 wt%).
The relative proportions of copolymerizable surfactant and of the noncopolymerizable surfactants, and their total solid content comprising the PSA composition, further demonstrates an overlap of 10% or greater in the amount of the copolymerizable surfactants versus the amount of the noncopolymerizable surfactants.
As set forth in MPEP 2144.05, in the case where the claimed range “overlap or lie inside ranges disclosed by the prior art”, a prima facie case of obviousness exists, In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990).
It is well settled that where the prior art describes the components of a claimed compound or compositions in concentrations within or overlapping the claimed concentrations a prima facie case of obviousness is established. See In re Harris, 409 F.3d 1339, 1343, 74 USPQ2d 1951, 1953 (Fed. Cir 2005); In re Peterson, 315 F.3d 1325, 1329, 65 USPQ 2d 1379, 1382 (Fed. Cir. 1997); In re Woodruff, 919 F.2d 1575, 1578 16 USPQ2d 1934, 1936-37 (CCPA 1990); In re Malagari, 499 F.2d 1297, 1303, 182 USPQ 549, 553 (CCPA 1974).
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 reactive surfactants (i.e., the copolymerizable surfactants) and the free surfactants (i.e., the noncopolymerizable surfactants) as disclosed in Koch/Ma, and in the presently claimed proportions, towards the water-based acrylic PSA coating of the cited prior art demonstrating a dispersed acrylic polymer produced via emulsion polymerization while mitigating 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.
Koch/Ma are silent to the facestock (i.e., base layer) further comprising a direct thermal printable coating, but as noted above, Koch is conspicuously directed to labels for use in printers.
Mitchell teaches a linerless label (title) comprising a face laminate (110) comprising a second layer (104) and a print layer (106) (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, 0590).
Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the present invention to provide the side of the facestock of Koch opposite to the side comprising the PSA coating with a print layer as disclosed in Mitchell for label applications employing a thermal printer as in the present invention.
Regarding claim 13, as noted above, Koch teaches that the emulsion acrylic PSA polymerization comprises (a) 25 to 35% by weight of at least one alkyl acrylate (acrylate monomers) and reactive surfactants, (i.e., at least one reactive surface active polymerization agent). While the body-text of Koch does not specify that the monomers comprise a vinyl aromatic compound, Koch’s inventive Example 2 discloses styrene (i.e., a vinyl aromatic) as a monomer (column 7, line 65).
Regarding claim 14, as noted above, Koch teaches that the emulsion acrylic PSA polymerization comprises reactive surfactants, (i.e., at least one reactive surface active polymerization agent).
Regarding claim 18, Koch teaches that the PSA is coated on the facestock at a dry coat weight of 17 to 25 g/m2 (column 6, lines 37-40).
Regarding claim 20, Koch/Ma does not teach the inclusion of minerals in the PSAs, nor does Koch teach and/or require the inclusion of minerals in the polymeric face stocks (column 6, lines 20-32).
Regarding claim 21, as noted above, Koch/Ma/Mitchell teaches the print layer (106) on the face stock for thermal printing.
While Koch/Ma/Mitchell does not disclose the coat weight (i.e., the grammage) of the print layer (106) (i.e., 1 to 5 g/m2), 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 print layer (106) would have been an obvious choice for one skilled in the art based on the resultant thickness of said print layer (106), and the overall thickness of the linerless PSA construction, required (or desired) of the prior art’s intended application as in the present invention.
Regarding claim 23, Mitchell teaches that the print layer (106) is adhered to the first layer (101 via a second adhesive layer (105) (para 0253, 0258; Fig. 4b). The Examiner respectfully submits that the grammage of the second adhesive layer (105) (i.e., 0.9 to 7 g/m2) would have been an obvious choice for the reason set forth in the rejection of current claim 21 noted above.
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 adhesive layer (105) interim (intermediate layer) to the print layer (106) and the face stock towards securing the print layer to the face stock as in the present invention.
Regarding claim 24, Mitchell instructs that linerless laminates comprise a release agent layer on top of the laminate, thus allowing the label to be releasably wound onto itself (para 0053), which release layer is a silicone layer (para 0095) such as a UV-curable silicone (non-thermally curable release coating) (para 0141). The linerless label without a separate release liner decreases the amount of waste (para 0054).
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 a release layer on a top surface of the linerless PSA construction towards the ability to releasably wind the linerless PSA construction onto itself into a roll as in the present invention.
Claim(s) 16 is/are rejected under 35 U.S.C. 103 as being unpatentable over Koch et al. (US 6423392 B1) in view of Ma et al. (US 2015/0017427 A1) and in further view of Mitchell et al. (US 2017/0009108 A1) and Guo (US 2018/0230340A1), and in light of the evidence provided via Kanner et al. (US 7070051 B2).
Regarding claim 16, Koch/Ma/Mitchell teaches the presently claimed water-based acrylic PSA coating as in the rejection of at least current claim 3 set forth above. Ma also teaches that the PSA latex comprises conventional additives such as tackifiers (para 0061), but Ma is silent to the presently claimed tackifier proportions.
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 tackifiers disclosed in the PSA compositions of Koch/Ma in the presently claimed proportions based of the tackifier-provided properties (see column 9, line 58 to column 9, line 19 of Kanner) required of the prior art’s intended application as in the present invention.
Claim(s) 17 is/are rejected under 35 U.S.C. 103 as being unpatentable over Koch et al. (US 6423392 B1) in view of Ma et al. (US 2015/0017427 A1) and in further view of Mitchell et al. (US 2017/0009108 A1) and Sorenson et al. (US 4889234).
Regarding claim 17, Koch/Ma/Mitchell teaches the presently claimed water-based acrylic PSA coating as in the rejection of at least current claim 3 set forth above, but is silent to the PSA coating covering 10 to 90% of the face stock surface.
However, Sorenson teaches self-adhesive labels having less coverage percentages such as 30% where less adhesion is desired (abstract; column 2, line 47 to column 3, line 1).
Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the present invention to provide the PSA coating of Koch/Ma/Mitchell on the surface of the face stock in the presently claimed coverage percentage based on the adhesion required of the prior art’s intended application as in the present invention.
Claim(s) 19 is/are rejected under 35 U.S.C. 103 as being unpatentable over Koch et al. (US 6423392 B1) in view of Ma et al. (US 2015/0017427 A1) and in further view of Mitchell et al. (US 2017/0009108 A1) and Norman et al. (US 5154974).
Regarding claim 19, Koch/Ma/Mitchell teaches the presently claimed water-based acrylic PSA coating as in the rejection of at least current claim 3 set forth above, but is silent to the PSA composition 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 PSA compositions of Koch/Ma, towards said PSA composition 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) 27 is/are rejected under 35 U.S.C. 103 as being unpatentable over Koch et al. (US 6423392 B1) in view of Ma et al. (US 2015/0017427 A1) and in further view of Mitchell et al. (US 2017/0009108 A1).
Regarding claim 27, Koch/Ma/Mitchell teaches the linerless PSA construction as in the rejection of at least current claim 3 set forth above, which is equally applicable to the presently claimed invention.
Also, as noted above, Koch/Ma teaches that the surfactants comprise the copolymerizable surfactant at 40 to 99.5 wt% based on the total surfactant mixture and noncopolymerizable surfactants (i.e., free surfactants) at 0.5 to 60 wt% based on the total surfactant mixture. The resultant amount of the noncopolymerizable surfactants further provides an overlap with presently claimed proportions of the free surfactants (i.e. greater than 0 wt.% and less than 0.6 wt.%).
While Ma does not disclose that the noncopolymerizable surfactants are added following polymerization to form the acrylate polymer, the noncopolymerizable surfactants do not become a part of the acrylate polymer, and are thus left as free surfactants in the resultant PSA.
It is noted that “[E]ven 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).
Further, “although produced by a different process, the burden shifts to applicant to come forward with evidence establishing an unobvious difference between the claimed product and the prior art product”, In re Marosi, 710 F.2d 798, 802, 218 USPQ 289, 292 (Fed. Cir.1983). See MPEP 2113. Therefore, absent evidence of criticality regarding the presently claimed process (i.e., post-polymerization addition of the free surfactant(s), and given that the cited prior art meets the requirements of the claimed composition, the cited prior art clearly meet the requirements of the presently claimed product.
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 considered but are moot because the new ground of rejection does not rely on any reference applied in the prior rejection of record for any teaching or matter specifically challenged in the argument.
The Applicant’s attention is respectfully directed to the prior art rejections set forth above, wherein it is noted that the combination of Koch/Ma/Mitchell teach or render obvious all the limitations of at least current claim 3 and current claim 27. It is further noted that the Mitchell reference was only cited to remedy Koch/Ma in regards to the direct thermal printable coating of said current claims 3 and 27.
As acknowledged by the Applicant, Takashima was only cited to demonstrate the knowledge available to the skilled artisan in regards to the employment of reactive surfactants and the benefit obtained therefrom. Takashima’s invention is conspicuously directed to a PSA composition comprising an acrylic polymer. Takashima was not cited to demonstrate any quantitative of the claimed teaching to the claimed thresholds, nor was the reference cited to teach a direct thermal linerless label.
The “rationale underpinning” of the Takashima is inherent in its demonstration as to what the skilled artisan would understand relating to the benefits of providing reactive surfactants in PSA compositions comprising acrylic polymers. It is also the Examiner’s position that an evidential reference, indeed any supporting prior art reference, need not be identical in is teaching to the presently claimed invention, or the cited prior art, in order for its citations to be relevant in the manner employed in the current action.
Conclusion
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 8/20/2026
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