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 .
Response to Amendment
Applicant’s arguments, see the claim amendments and the remarks filed 1/16/2026, with respect to the objection to claim 11 as set forth in paragraph 4 of the action mailed 10/16/2025, have been fully considered and are persuasive. The objection to claim 11 has been withdrawn.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.
Claim Rejections - 35 USC § 103
Claim(s) 9-10 and 12 is/are rejected under 35 U.S.C. 103 as being unpatentable over Mehta et al. (US 5840657) in view of Norman et al. (US 5154974).
Regarding claim(s) 9, Mehta teaches an imageable linerless pressure sensitive adhesive (PSA) (title) comprising a web (11) having a first surface (30) coated with imageable coating (34) (direct thermal printable coating on the first side (111)) and a second surface (32) (a face (110) having a first side (111) and second side (112));
an optional base coating (36) on coating(s) (34) and web (11);
release material (38) on base coating (36);
and PSA coating (40) on the second surface (32) of web (11) (PSA (120) coating on the second side (112), which said PSA is selected from any known classes of compositions to include water-based PSAs (column 4, lines 44-60; column 5, line 54 to column 6, line 25; Figure 3).
The Examiner notes that the laminate of Mehta teaches the presently claimed direct thermal linerless label web (see, for example column 3, lines 8-12 which demonstrate that the invention is thermally activated).
Mehta is silent to the PSA coating (40) comprising the emulsified silicone additive in an amount of 1 to 6 wt% of the PSA coating, but as noted above, Mehta does disclose that the PSA is selected from any known classes of compositions such as water-based PSAs.
In addition, Norman teaches PSA compositions exhibiting improved cutting properties, and laminates containing the same (column 1, lines 10-16), 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 based on the solid content per 100 % by weight of the acrylic polymer (column 3, lines 17-44), which overlaps that presently claimed, and that the siloxane is supplied in the form of an aqueous emulsion (emulsified silicone additive) (column 3, lines 61-62).
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 PSA compositions of Norman for the PSA coating (40) of Mehta, towards said PSA coating (40) providing a balance of improved cutting properties, reduced edge flow, the prevention of adhesive build-up and adhesive properties based on at least the above-noted properties required of the prior art’s intended application as in the present invention.
Regarding claim 10, as noted above, Mehta/Norman teaches release material (38) on base coating (36), but Mehta/Norman also instruct that the base coating (36) is optional. Thus, Mehta/Norman teach that the imageable linerless PSA consists of web (11), PSA coating (40), and release material (38).
Regarding claim 12, Mehta/Norman do not disclose the presently claimed coat weight. However, the coat weight is a measure of “how much” of a substance or composition is disposed on a surface of a substrate, and would be an obvious choice of one skilled in the art based on such a consideration.
Indeed, it is the Examiner’s position that selecting the presently claimed coat weight for the PSA coating (40) would have been an obvious to choice to one skilled in the art based on the coat weight and resultant thick of said PSA coating required (or desired) of the prior art’s intended application as in the present invention.
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.
Claim(s) 13 is/are rejected under 35 U.S.C. 103 as being unpatentable over Mehta et al. (US 5840657) in view of Norman et al. (US 5154974) and in further view of Parr et al. (US 8338516 B1).
Regarding claim 13, Mehta/Norman are silent to the PSA coating (40) further comprising a wetting agent in an amount of 0.3 to 5 wt%. However, Norman teaches that adhesives are applied to a silicone-coated surface of a release liner (column 5, lines 27-36)
However, Parr teaches a PSA composition comprising a wetting agent in an amount of 0.1 to 5 % by weight of the solid PSA (column 5, lines 11-30), which overlaps that presently claimed, wherein the wetting agent is to help the PSA wet out on the silicone release liner (column 5, lines 57-58).
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 wetting agent in the presently claimed amount in the PSA coating (40) of Mehta/Norman towards providing the PSA the degree of wet out on the silicone release coating required of the prior art’s intended application as in the present invention.
Double Patenting
Claim(s) 9-10 and 12 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 13, 15 and 20-21 of U.S. Patent No. 12325207 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 presently claimed invention except for at least the present claims specifically states that the direct thermal printable coating is on a first side. However, one skilled in the art would interpret the claims of the patent that the patent’s direct thermal printable coating is on the outer surface of the intermediate layer opposite the side on which the PSA coating is disposed, with the laminate of the recited base/intermediate layer teaching the presently claimed face (110), and thereby arrive at the presently claimed invention from claims of the patent.
Claims 9-10 and 12 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 3, 13, 17-19 of copending Application No.18/864459.
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 presently claimed invention except for at least the present claims specifically state that the water-based acrylic adhesive is dried. However, it would have been obvious to one skilled in the art to dry the acrylic adhesive following application to a substrate, and thereby arrive at the presently claimed invention from claims of the copending.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Response to Arguments
Applicant’s arguments, see the remarks filed 1/16/2026, with respect to the nonstatutory double-patenting rejection of claims 9-10 and 12 over claims 13, 15 and 20-21 of U.S. Patent No. 12325207 B2 and the provisional nonstatutory double-patenting rejection of claims 9-10 and 12 over claims 13, 15 and 20-21 of copending Application No. 18/864459 as set forth in paragraphs 10-11 of the action mailed 10/16/2025, have been fully considered but they are not persuasive.
The Examiner submits that the cited claims of the ‘207 patent, while reciting other limitations not positively recited in the instant claims (e.g., the intermediate layer), the cited claims of the patent teach or render obvious the claims noted in said rejection. Thus, the rejection is maintained and repeated above.
The Examiner submits that the cited claims of the ‘459 copending, while reciting other limitations not positively recited in the instant claims (e.g., the surfactants), the cited claims of the copending teach or render obvious the claims noted in said rejection. Thus, the rejection is maintained and repeated above.
Applicant’s arguments, see the Declaration under 37 C.F.R. 1.132 and the remarks filed 1/16/2026, with respect to the rejections of claims 9-10 and 12 over Mehta et al. in view of Norman et al. under 35 U.S.C. 103 and claim 13 over Mehta et al. in view of Norman et al. and in further view of Parr et al. under 35 U.S.C. 103 as set forth in paragraphs 7-8 of the action mailed 10/16/2025, have been fully considered but they are not persuasive.
The Examiner respectfully reminds the Applicant 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)). Additional insight is available via adjacent case law providing that “nonpreferred disclosures can be used. A nonpreferred portion of a reference disclosure is just as significant as the preferred portion in assessing the patentability of claims.” In re Nehrenberg, 280 F.2d 161, 126 USPQ 383 (CCPA 1960).
Indeed, while Mehta does indeed disclose an example employed as the PSA is Fuller HM 1547 (i.e., a rubber-based hot melt adhesive), Mehta also clearly instructs the skilled artisan that other PSA’s are appropriate for the disclosed invention such as those disclosed in the analogous Norman invention. The Examiner also submits that, while Norman is not directed to “thermal linerless label webs,” that both Mehta and Norman are directed to labels, and further with labels that are intended to be cut (see column 2, lines 40 to 45 of Mehta).
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).
Moreover, Applicant is reminded that according to MPEP 2141.01 (a), a reference may be relied on as a basis for rejection of an Applicant’s invention if it is “reasonably pertinent to the particular problem with which the inventor is concerned.” A reasonably pertinent reference is further described as one which “even though it may be in a different field of endeavor, it is one which, because of the matter with which it deals, logically would have commended itself to an inventor’s attention in considering his problem.”
Turning now to the Declaration, the Examiner respectfully submits that the Applicant’s arguments against the Mehta/Norma combination in this light are not persuasive for at least three reasons. First, the Declaration is asserting an opinion without any supporting evidence to buttress the assertions. Second, there is nothing is the Mehta that would convince, or otherwise persuade, one skilled in the art that the PSAs employed in Mehta positively exclude water-based adhesives. Third, as cited above in the prior art rejections, and as conspicuously disclosed in the cited portions of Mehta, the reference discloses that water based PSAs are appropriate for use in the invention in addition to the Fuller HM 1547 rubber-based hot melt adhesives.
Conclusion
THIS ACTION IS MADE FINAL. 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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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Alicia A Chevalier can be reached at 571-272-1490. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/FRANK D DUCHENEAUX/Primary Examiner, Art Unit 1788 2/2/2026