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 with traverse of Group III and Species (II)(B), directed to claims 3-4, 6, 8-11, 13-14, 16-21 and 23-24, in the reply filed on 12/18/2025 is acknowledged. The traversal is on the ground(s) that the inventions are not independent or distinct, and that there would be no serious burden on the Examiner. This is not found persuasive for the reason(s) set forth in the previous action.
In addition, the instant application is a national stage entry filed under 35 U.S.C. 371 and is therefore not subject to US restriction practice but rather subject to lack of unity practice, see MPEP 1893.03(d). It is noted that undue search burden is not a criterion in lack of unity analysis. The test is whether or not special technical features can be established. It is noted that inventions listed as Groups I-III and Species (II)(A) and (II)(B) do not relate to a single general inventive concept under PCT Rule 13.1 because, under PCT Rule 13.2, they lack the same or corresponding special technical features as set forth in the previous Office Action.
Further, since the limitations of the claims fail to define a contribution over the cited prior art, they fail to constitute a special technical feature and thus, there is a lack of unity of invention between the claims. It is respectfully submitted that the prior art, to include Mehta and Norman, do not need to teach surfactants as current claim 3 does not require them (see the rejection under 35 U.S.C. 112(b) below). As acknowledged by the Applicant, Mehta does not teach or disclose a coating comprising a water-based acrylic adhesive, but Mehta does indeed suggest such an adhesive via its previously cited disclosure that the PSA of the invention is selected from any known classes of compositions such as water-based PSAs such as those conspicuously taught in Norman.
The Examiner respectfully submits that the Applicant’s arguments against the legitimacy of the Mehta/Norman combination are not persuasive given that, as noted above and in the Restriction Requirement, Mehta does indeed contemplate water-based PSAs in addition to the exemplary adhesive given by Fuller HM 1547. In this regard, the Applicant is further respectfully reminded that the “applicant must look to the whole reference for what it teaches. Applicant cannot merely rely on the examples and argue that the reference did not teach others.” (In re Courtright, 377 F.2d 647, 153 USPQ 735,739 (CCPA 1967)).
Moreover, the Examiner respectfully reiterates that the presently claimed invention as recited in at least current claim 3 does not require surfactant(s) given the recited lower limit of 0 wt.%, and thus neither Mehta nor Norman need not teach surfactants of any variety (free, non-free, or otherwise). Also, while the language of current claim 3 recites that the proportions of surfactant(s) exclude surface active polymerization agent(s), the claim does not require surface active polymerization agent(s).
Lastly, it is noted that “the arguments of counsel cannot take the place of evidence in the record”, In re Schulze, 346 F.2d 600, 602, 145 USPQ 716, 718 (CCPA 1965). It is the Examiner’s position that the arguments provided by the Applicant regarding the alleged know problems associated with water-based adhesives and their incompatibility with thermal paper applications due to heat sensitivity must be supported by a declaration or affidavit. As set forth in MPEP 716.02(g), “the reason for requiring evidence in a declaration or affidavit form is to obtain the assurances that any statements or representations made are correct, as provided by 35 U.S.C. 24 and 18 U.S.C. 1001.”
The requirement is still deemed proper and is therefore made FINAL.
Claims 1-2 and 15 are withdrawn from further consideration pursuant to 37 CFR 1.142(b), as being drawn to a nonelected invention(s), there being no allowable generic or linking claim. Applicant timely traversed the restriction (election) requirement in the reply filed on 12/18/2025.
Claim Objections
Claim 4 is objected to because of the following informalities: please amend the claim to recite “…wherein the amount of free surfactant(s)…”. Appropriate correction is required.
Claim 6 is objected to because of the following informalities: please amend the claim to recite “…claim 3, wherein[[,]] from said surfactant(s), an amount of wetting agents…”. Appropriate correction is required.
Claim 9 is objected to because of the following informalities: the Examiner suggests amending the claim to recite “…claim 6, wherein an amount of the non-free surfactant(s)…0.8 wt.% calculated from the total dry weight of the water-based…” if that was what was intended. Appropriate correction is required.
Claim 10 is objected to because of the following informalities: the Examiner suggests amending the claim to recite “…claim 6, wherein an amount of said non-free surfactant(s)…greater than an amount of said free surfactant(s)…”. Appropriate correction is required.
Claim 11 is objected to because of the following informalities: the Examiner suggests amending the claim to recite “…claim 3, wherein the total amount of the free surfactant(s)…2 wt.% calculated from the total dry weight of the water-based…” if that was what was intended. Appropriate correction is required.
Claim 16 is objected to because of the following informalities: the Examiner suggests amending the claim to recite “…tackifier, wherein an amount of the tackifier…”. Appropriate correction is required.
Claim 17 is objected to because of the following informalities: please specify which of the “adhesive coatings” (PSA coating or the acrylic adhesive coating) recited in current claim 3 is being recited in the current claim. Appropriate correction is required.
Claim 19 is objected to because of the following informalities: please specify which of the “adhesive coatings” (PSA coating or the acrylic adhesive coating) recited in current claim 3 is being recited in the current claim. Appropriate correction is required.
Claim 20 is objected to because of the following informalities: please amend the claim to recite “…calculated from the total dry weight…. Appropriate correction is required.
Claim 24 is objected to because of the following informalities: please amend the claim to recite “…release coating[[s]].”. Appropriate correction is required.
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.
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 3-4, 6, 8-11, 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 claim 3, it is unclear from the claim limitations, and in light of the specification as originally filed, what the Applicant is claiming as the invention given that the adhesive coating is first recited as comprising free and/or non-free surfactant(s), which requires the presence of surfactant(s), followed by a recitation that the total amount of surfactant(s), excluding surface active polymerization agent(s), comprise a lower limit of 0 wt.%, which does not require the presence of surfactant(s).
Claim 3 recites the limitation "the surfactant(s)" in 8. There is insufficient antecedent basis for this limitation in the claim as a surfactant or surfactants has or have not been previously introduced given that it is unclear if “the surfactants” are limited only to the free and/or non-free surfactant(s) previously recited, or if “the surfactants” further comprise a third, fourth, etc. class of surfactants not previously recited.
Regarding claim 10, it is unclear what is intended by the proportional limitation of “10 %” given that it is unclear if the percentage is directed to wt%, mol%, volume%, etc.
Regarding claim 21, it is unclear what is intended, and not intended, via the recitation that the top coating “preferably” comprises the recited grammage.
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.
Claim(s) 3-4, 6, 11, 17-18, 20 and 24 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Mitchell et al. (US 2017/0009108 A1).
Regarding claim 3, 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). While Mitchell does not specify emulsifiers (i.e. surfactants) comprising the disclosed acrylic PSA emulsion, the presently recited surfactants are not required (i.e., present at 0 wt%); nor is there any positive recitation that the surface active polymerization agent(s) are also required to comprise the claimed invention (see also the rejection of current claim 3 under 35 U.S.C 112(b) set forth above).
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 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 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, 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 for establishing a background for determining obviousness under 35 U.S.C. 103 are summarized as follows:
1. Determining the scope and contents of the prior art.
2. Ascertaining the differences between the prior art and the claims at issue.
3. Resolving the level of ordinary skill in the pertinent art.
4. Considering objective evidence present in the application indicating obviousness or nonobviousness.
Claim(s) 8-10, 13-14 and 16 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 is provided with the current action.
Regarding claims 8-10 and 13-14, Mitchell teaches the linerless label (110) comprising the first PSA layer (102) comprising an acrylic PSA emulsion as in the rejection of at least claims 3 and 6 set forth above. Mitchell is silent to:
emulsifiers (i.e. surfactants) 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% greater than the free surfactant(s);
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);
and which said surface active polymerization agent(s) comprise at least one reactive surface active polymerization agent.
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 0008-0011-0035).
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, current claim 8) in an amount of 1.0 to 3.0 wt.% (at least 0.8 wt%, current claim 9) (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 (current claim 10) 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 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, Gao 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.
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), and in light of the evidence provided via Schonrock et al. (US 2022/0073791 A1).
Regarding claims 21 and 23, as noted above, Mitchell 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 Michell 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.
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 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); 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 nonstatutory double patenting provided the reference application or patent either is shown to be commonly owned with the examined application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. See MPEP § 717.02 for applications subject to examination under the first inventor to file provisions of the AIA as explained in MPEP § 2159. See MPEP § 2146 et seq. for applications not subject to examination under the first inventor to file provisions of the AIA . A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
The filing of a terminal disclaimer by itself is not a complete reply to a nonstatutory double patenting (NSDP) rejection. A complete reply requires that the terminal disclaimer be accompanied by a reply requesting reconsideration of the prior Office action. Even where the NSDP rejection is provisional the reply must be complete. See MPEP § 804, subsection I.B.1. For a reply to a non-final Office action, see 37 CFR 1.111(a). For a reply to final Office action, see 37 CFR 1.113(c). A request for reconsideration while not provided for in 37 CFR 1.113(c) may be filed after final for consideration. See MPEP §§ 706.07(e) and 714.13.
The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The actual filing date of the application in which the form is filed determines what form (e.g., PTO/SB/25, PTO/SB/26, PTO/AIA /25, or PTO/AIA /26) should be used. A web-based eTerminal Disclaimer may be filled out completely online using web-screens. An eTerminal Disclaimer that meets all requirements is auto-processed and approved immediately upon submission. For more information about eTerminal Disclaimers, refer to www.uspto.gov/patents/apply/applying-online/eterminal-disclaimer.
Claims 3-4, 6, 11 and 19 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 9 and 13 of copending Application No. 19/089531.
Although the claims at issue are not identical, they are not patentably distinct from each other because the claims of the copending teach all the limitations of the current claims except that the wetting agent(s) (i.e., the free surfactant(s)) of copending claims is present in a range that overlaps that presently claimed.
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).
Indeed, it would have been obvious to one skilled in the art to adjust the proportions of the wetting agent(s) of the claims of the copending based on the substrate wettability required of the copending’s intended application as in the present invention.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Claims 3-4, 6, 11 and 17-19 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 9-12 of U.S. Patent No. 12269237 B2.
Although the claims at issue are not identical, they are not patentably distinct from each other because the claims of the patent teach all the limitations of the current claims except that the wetting agent(s) (i.e., the free surfactant(s)) of copending claims is present in a range that overlaps that presently claimed.
Indeed, it would have been obvious to one skilled in the art to adjust the proportions of the wetting agent(s) of the claims of the patent based on the substrate wettability required of the patent’s intended application as in the present invention.
Claims 3-4, 6, 11 and 17-19 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 14-17 of U.S. Patent No. 12269237 B2.
Although the claims at issue are not identical, they are not patentably distinct from each other because the claims of the patent teach all the limitations of the current claims except that the wetting agent(s) (i.e., the free surfactant(s)) of copending claims is present in a range that overlaps that presently claimed.
Indeed, it would have been obvious to one skilled in the art to adjust the proportions of the wetting agent(s) of the claims of the patent based on the substrate wettability required of the patent’s intended application as in the present invention.
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 1/8/2026