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 .
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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 7/30/2026 has been entered.
Response to Amendment
Applicant’s arguments, see the claim amendments and the remarks filed 7/30/2026, 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 4-5 of the action mailed 2/4/2026, have been fully considered and are persuasive. The rejections of claims 9-10 and 12-13 have been withdrawn. However, see the rejection of the claimed invention under 35 U.S.C. 112(a) for new matter issues as set forth below.
Applicant’s arguments, see the claim amendments and the remarks filed 7/30/2026, with respect to the non-statutory, double patenting rejection of claims 9-10 and 12 over claims 13, 15 and 20-21 of US Patent No. 12325207 B2 as set forth in paragraph 6 of the action mailed 2/4/2026, have been fully considered and are persuasive. The rejections of claims 9-10 and 12-13 have been withdrawn. However, see the rejection of the claimed invention under 35 U.S.C. 112(a) for new matter issues as set forth below.
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 9-11 and 13 are rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the written description requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for applications subject to pre-AIA 35 U.S.C. 112, the inventor(s), at the time the application was filed, had possession of the claimed invention.
Regarding claim 9, the claim has been amended to recite that the emulsified silicone additive is “on” the PSA coating, which instructs that the additive is no longer a part of the PSA coating. An emulsified silicone additive “on” a PSA coating is not supported by the specification as originally filed.
Claims 9-11 and 13 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 9, it is unclear from the claim limitations, and in light of the specification as originally filed, what is, and is not, being claimed. The claim requires that the emulsified silicone additive comprises the recited PSA coating via the limitation that the additive is present at 1 to 6 wt% of the dry weight of the PSA coating (i.e., the additive is “in” the PSA coating); and the claim simultaneously requires that the additive is present “on” the PSA coating at a dry weight of 0.1 to 1.7 g/m2.
Response to Arguments
Applicant’s arguments, see the claim amendments, the Declaration filed under 35 C.F.R. 1.132 and the remarks filed 7/30/2026, 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 4-5 of the action mailed 2/4/2026, have been considered but are moot because the new ground of rejection does not rely on any reference applied in a prior rejection for any teaching or matter specifically challenged in the argument.
The Examiner respectfully notes that the Applicant’s arguments and the amendments to the claimed invention are not coherent with the Declaration as the latter’s position is directed to an invention wherein the presently claimed emulsified silicone additive is a part of the PSA coating (at 1 to 6 wt% of the dry weight of said PSA coating); whereas the claimed invention and the remarks address the emulsified silicone additive as being “on” the PSA coating. However, it is respectfully noted that the claims do indeed recite that the additive is “on” the PSA coating, which is not taught or suggested by the cited prior art, or in any earlier-filed priority application.
Turning to the position in Item(s) 4-8 of the Declaration, the Examiner submits that there is no data provided in the specification as originally filed to demonstrate the argued criticality of the claimed coat weight of the PSA coating as not being a routine design choice. That’s is, there is no data demonstrating that the claimed range is not obvious over the previously cited art given that, as argued, the recited coat weight is necessary to simultaneously providing sufficient anchorage, tack and adhesion; difficulty in providing a uniform adhesive coating; thermally sensitivity and the prevention of premature activation of the thermally sensitive facestock, as well as facestock stability and the prevention of curling; water penetration of the paper substrate at higher coat weights; and no demonstrable improvement to adhesion above the upper coat weight limit.
The Examiner is uncertain what is being illustrated in the table in Item 8 of the Declaration as the table is not sufficiently labelled for analysis. For example, it is unclear what the numbers at the bottom (e.g., 120.00) and rightmost designate. Also, the heading of the table lists the adherend as Ricoh paper, which does not provide a card board surface as argued. The Examiner also submits that the presently claimed invention recites that the coat weight of 10 to 25 g/m2 is calculated as the total dry weight of the adhesive coating, but there is no indication as to what the coat weight was prior to drying. The basis for the Applicant’s arguments and the alleged criticality of the coat weight is due, in part, to the adverse effects that caused by the thermal activation of the face at elevated temperatures. Thus, the presently coat weight of 10 to 25 g/m2 is not necessarily critical as no thermal activation will be cause to the post-dried adhesive.
In Items 9-17 of the Declaration, the Applicant argues that the silicone additive present at 0.1 to 1.7 g/m2 is also critical, but again, there is no disclosed data demonstrating conclusive benefits within the claimed ranges, and unfavorable results outside the claimed ranges, in regards to a balance of the reduction of adhesive accumulation and adequate dewetting of the adhesive film (i.e., the formation of voids, pinholes and areas of missing adhesive). As acknowledged by the Applicant, the prior art (i.e., the Norman invention) also recognizes the detriment of higher silicone concentrations. As with coat weight of the adhesive coating of 10 to 25 g/m2, the coat weight of the silicone additive is after drying. Further, it is unclear if the silicone additive is in the PSA coating (at 1 to 6 wt%) or somehow adjacent to it (at a coat weight of 0.1 to 1.7 g/m2), with the former interpretation necessarily proving the latter interpretation given a certain areal coating of the PSA coating as provided in the first full sentence of page 6 of the Declaration.
In Items 18-22, the Applicant argues that one skilled in the art would not have been motivated to select water-based acrylic adhesives. The Examiner respectfully reiterates that, while the inventive example of Mehta employs a rubber hot melt adhesive (i.e., FULLER HM 1547), Mehta also discloses the use of water-based PSA compositions. Also, the Examiner submits that the elevated temperatures during a drying step to remove water would also be present via the application of a hotmelt composition since elevated temperatures would also be necessary to melt the adhesive. Thus, it is unclear why non-water-based adhesives such as the hotmelt adhesives postured b the Applicant, would be preferable over water-based adhesives as applying hotmelt adhesives to a face would also risk activating a thermally sensitive coating.
Further, as previously rebutted, while Mehta discloses a rubber hotmelt in the inventive example, Mehta also contemplates the employment of other classes of adhesives such as water-based PSAs. Indeed, “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)). Thus, and contrary to the Applicant’s assertion, one skilled in the art would have had clear motivation to look to Norman in the manner set forth in the previous action.
The Examiner acknowledges that Norman does not address thermal sensitivity, but Norman does not need to recognize such properties to remedy Mehta as set forth in previous rejections. The Applicant has not persuasively argued via disclosed data that the presently claimed invention, to include its coat weight and additive proportions are exclusively required to provide the results that allegedly renders the presently claimed invention nonobvious over the previously cited prior art.
“[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, the entirety of Norman need not be considered in qualifying Norman as a legitimate secondary reference simply because the invention of Norman is not directed to linerless labels. 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).
Turning now to Items 23-24 and 26-27 of the Declaration, the Applicant is respectfully directed to the Examiner’s responses noted above. Also, the Applicant’s remarks about adding a silicone additive to an adhesive being counterintuitive (Item 25) are contrary to the Applicant’s own acknowledgement that the Norman reference teaches just that. Moreover, the Applicant’s assertions state that the adhesion is maintained and not enhanced; Norman was not cited as “enhancing” adhesion. Norman also teaches that the adhesives have no adhesive build-up. Thus, the invention of Norman simultaneously provides adhesiveness without contaminating devices employing the inventive labels.
In response to the Applicant’s remarks (in addition to the those of the Declaration), the Examiner respectfully maintains the position that the coat weight, including those presently claimed, are related to the “how much” of a substance is to be applied, and is thus an obvious and adjustable parameter recognizable as such to one of ordinary skilled in the art. The Examiner also submits that one skilled in the art would not be dissuaded from the presently claimed coat weights simply because the working examples are limited to specific values. It is noted that the 21.7 g/m2 as one the coat weights calculated by the Applicant is within the claimed range. The Examiner reiterates (see the previous action) that the decision to select a specific coat weight is an obvious choice based on the amount of the substance (and layer thickness) to be coated as required for a particular application, and requires no impermissible hindsight and no guidance from the instant application.
Respectfully, Norman does not teach away from the claimed “reduced” coat weight and Norman’s specific objective does not provide any evidence to this effect. One skilled in the art would have been apprised to select a coat weight based on the adhesion required of said application. Nowhere in Norman does the reference instruct “away” from the presently claimed coat weight(s). Nowhere in Norman is there a specific disclosure that teaches that the claimed coat weight jeopardizes Norman’s reduced edge flow, cuttability and adhesive properties.
As provided in the Examiner’s response to the Declaration, the Applicant’s allegations that the presently claimed coat weights are provided towards non-routine and conflicting requirements are not persuasive. The Examiner respectfully acknowledges the addition of the coat weight limitations in describing the emulsified silicone additive, but the Examiner maintains that said coat weight is still a measure of the amount of said additive, and is an obvious selection recognizable to one of ordinary as would be the additive concentration expressed in wt%. The absolute silicone loading element provides the concentration of the additive, except that it depends on the surface area coated, which is also an obvious choice as it simply requires one skilled in the art to determine how much surface area of a substrate is to be coated.
The Applicant’s position that the concentration of PDMS in the coating formulation and the amount of silicone present per unit area on the finished web are distinct from each other requires support in the specification that the silicone additive is localized on the surface of the PSA coating, which as noted in rejection of the claimed invention under 35 U.S.C. 112(a) set forth above, is not provided in the specification as originally filed. Thus, given that the content of the silicone additive is relative to the adhesive coating as a whole, and not restricted to its surface, the weight% of the additive and its coat weight are measuring the same property; namely, the amount of the silicone additive comprising the PSA coating. In this light, the Examiner requests evidence that the amendments to the presently claimed invention are supported under the noted statute, in which case the Applicant’s assertions against the cited prior art teaching as rendering obvious the claimed invention would potentially be persuasive.
Continuing, the Examiner respectfully requests that the Applicant provide the steps in calculating a silicone grammage of 0.43 to 3.0 g/m2. The Examiner also requests that the Applicant elaborate on the “cherry-picking” position, and why such an analysis is impermissible if the reference actually discloses an apparent overlap with presently claimed coat weight. The Examiner submits that, while Norman may not disclose, recognize or claim the grammage as a relevant or result-effective parameter, one skilled in the art would certainly recognize its presence as a result-effective variable given that, as argued by the Examiner, the grammage and the weight% of an additive are different measures of the amount of the additive. Again, this does not include the Applicant demonstrating that the silicone additive is in a surficial relationship with the PSA coating rather than simply a part of the PSA coating, which has not yet been established as supported under 35 U.S.C 112(a).
In regards to the Araki reference, the publication was not cited to remedy any of the deficiencies of the cited prior art references, but only employed to demonstrate what is known in the art; that is, the proportionality between a PSAs coat weight and its adhesion properties. Thus, the Examiner submits that the evidential Araki need not be analogous to the claimed invention or Mehta or Norman. Indeed, in its limited capacity, Araki is a reasonable pertinent reference, and as noted by the Applicant, Araki demonstrates that the coat weight and the adhesion are related.
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 8/17/2026
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