DETAILED ACTION
Claims 1-2, 7, 9-10 & 12-13 are pending as amended on 08/10/26.
Response to Amendment
This non-final action is a response to the amendment filed August 10, 2026 & RCE filed on September 10, 2026. Claims 1 & 9 have been amended as a result of the previous action; the rejections have been redone accordingly.
Claim Rejections - 35 USC § 112
The following is a quotation of the first paragraph of 35 U.S.C. 112(a):
(a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
The following is a quotation of the first paragraph of pre-AIA 35 U.S.C. 112:
The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention.
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 1-2, 7, 9-10 & 12-13 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. Claims 1 & 9 have been amended to recite that the rounded end of the inner label projects beyond the edge of the master label; no text or drawing in the original disclosure has been identified which clearly sets forth or suggests such a limitation. Appropriate correction is required.
Claims 1-2, 7, 9-10 & 12-13 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. Claims 1 & 9 recite the limitations "the corresponding edge of the label substrate at an opposite end" & “the edge of the label substrate at an opposite end”; there is insufficient antecedent basis for these limitations in the claim. Appropriate correction is required.
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 of this title, 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.
Claims 1-2, 7, 9-10 & 12-13 are rejected under 35 U.S.C. 103 as being unpatentable over Grosskopf et al., US 6,035,568 in view of Vidler et al., US 7,758,080 and Hong et al., US 2010/0129583.
With regard to claims 1 & 9, Grosskopf teaches a known type of label roll comprising a continuous release liner substrate web (802) which is continuous and not die-cut, and which has a plurality of adhesive label substrates adhered to the liner and substantially in line with & spaced from its side edges, wherein each of these labels comprises a master label (840/810A), as well as partially perforated inner tab labels (850) from the same material and extending horizontally across said master label, with a convex/’half-circle’ rounded end (859) as a graspable edge of the label substrate, said end remaining inward of an edge of the liner, and projecting outward from a straight side edge of the master label, said inner tab label having various backside discontinuous patterns of adhesive deadener (852) over the adhesive, leaving adhesive patches in uncovered areas which are evenly spaced and situated along a perimeter of the inner label, such that the deadener would prevent a substantial portion of the inner tab label from adhering to an object, and wherein this label roll is capable of being fed through a machine, for example from a winding rod (892) toward an automated applicator in a typical fashion (e.g. [Col. 17-18 & FIGS.18-20]).
While this reference does not show that this embodiment has an insert label which partially extends horizontally across the main label, such that there is an offset between a first end of the insert label and the edge of the main label, and that there are ‘gaps’ created at the other, rounded graspable end of the insert label where it meets the main label edge, this is a conventional alternate design for such graspable insert labels, as shown for example by the previously cited Vidler, which shows another known design for an insert label which extends partially horizontally across a master label, with a curved, graspable end shape, which is delineated by gaps at an edge of the master label (throughout, e.g. [Col. 4, 34-37 & FIG. 1]). It would have been obvious for one of ordinary skill in the art to combine the graspable ‘at the edge of the master label, with gaps’ orientation of Vidler with the teachings of Grosskopf, in order to provide an easily grasped convex insert label, offset from one edge of the master label and with gaps at another, according to a well-known alternative design configuration that still separates from the master label in essentially the same manner with predictable success. In such a combination, a first end is offset from a label edge, and its opposite forms its circular, graspable edge with gaps between insert & master labels at their shared edge (and which would also exist next to/spaced from the liner & label edges as well).
While Grosskopf has insert labels without perforated ends, and Vidler does not expressly disclose whether its first end is perforated, Vidler at least teaches that one may fully die cut or perforate (e.g. [Col. 4, 21-23]), wherein it would have been prima facie obvious for one of ordinary skill to try full cuts or perforations as one of the limited combinations of possibilities of prior art teachings, or to predictably yield a duplicate grasping region.
While these references do not discuss what the labels/liner are comprised of, it was nevertheless well-known in this art to manufacture either of these components from a paper or a plastic film or the like as needed, as shown for example by Hong [0068-0069, 0086], any of which would have been obvious to try from this group of common materials for labels & liners, as desired for a given application. It would have been obvious for one of ordinary skill in this art to combine the teachings of Hong with those of Grosskopf & Vidler, in order to yield a useful label/liner assembly using only art-conventional materials with predictable success.
With regard to claims 2 & 12-13, again, Vidler at least teaches that one may fully die cut or perforate (e.g. [Col. 4, 21-23]), wherein it would have been prima facie obvious for one of ordinary skill to try full cuts or perforations as one of the limited combinations of possibilities of prior art teachings, or to predictably yield a duplicate grasping region.
With regard to claim 7, Grosskopf teaches insert labels proximate a bottom edge of the master label [FIG. 18] (as does Vidler).
With regard to claim 10, Grosskopf teaches insert labels having opposing parallel edges which are perforated [FIG. 18] (as does Vidler).
Examiner also notes US 6,423,391 & US 5,172,936 as relevant to the pending claims
Response to Arguments
Applicant’s arguments, see response, “Remarks,” filed August 10, 2026 with respect to the prior art rejections of the claims are primarily directed to the claims as amended and have been fully considered but are moot in light of the new grounds of rejection. Applicant’s new amendment toward an insert label which projects beyond an edge of the master label does not seem to appear in the original disclosure and thus would constitute new matter (further, both Grosskopf [FIG. 18] & Vidler [FIG. 3] each clearly teach such a configuration, which also would not have been considered a non-obvious invention relative to similar designs cited previously).
While Applicants have argued that Grosskopf does not teach gaps at the junction between master label & insert label, these were known at the time of invention as noted previously, for example as taught by Vidler [FIG. 1], which would be prima facie obvious to incorporate with the designs of Grosskopf to predictably aid in separation of one label from another at its graspable end. Applicant does not argue this, but rather argues against a die-cut liner of Vidler which is not relied upon for the rejection. Grosskopf already teaches the “projecting” new matter feature (as does the Figure 3 embodiment of Vidler). With regard to additional arguments that the die cut liner of Vidler would fail to meet claim to an uncut liner, this reference is not relied upon for teaching any limitations with respect to a liner; Grosskopf already teaches an uncut liner. The various known label shapes of Vidler are noted in the action, but the entire reference is not being bodily incorporated into Grosskopf. The test for obviousness is not whether the features of a secondary reference may be bodily incorporated into the structure of the primary reference; nor is it that the claimed invention must be expressly suggested in any one or all of the references. Rather, the test is what the combined teachings of the references would have suggested to those of ordinary skill in the art. See In re Keller, 642 F.2d 413, 208 USPQ 871 (CCPA 1981).
Reels of label-liner material, carrying master labels which feature additional insert labels having a deadened adhesive backing, wherein the label liner material is not die cut to peel away with the insert label were also well-known at the time of Applicant’s invention, as shown for example by Grosskopf (and other minor alterations in shape/size/positioning of such insert label components were also well-known as shown previously by other cited prior art). It would require only ordinary skill to make minor adjustments in the shape of the master/insert labels, such as conventional gaps at the junction between the two labels which predictably aid in cleanly peeling them apart. The instant claims as written are still not considered to be patentably distinguishable over the teachings & suggestions of the prior art.
Conclusion
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/JOHN BLADES/
Examiner
Art Unit 1746
/PHILIP C TUCKER/Supervisory Patent Examiner, Art Unit 1745
