DETAILED ACTION
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.
Claims 1, 10-11, and 13-15 are rejected under 35 U.S.C. 103 as being unpatentable over Sullivan et al. (US 5,172,936) in view of Kawamura et al. (WO 2014/122801) (See NPL for English Translation).
In respect to claim 1 and 10-11, Sullivan et al. disclose a label comprising: a substrate 1 having a front and back side; a first area 2 defined on the front side; and a second area 3 defined on the front and back side representing a removable-independent label from the label (Figs. 2-3), the second area being delineated by a die cut (Fig. 1); the back side may contain a uniform coating of adhesive, with the back side of the second area 3 being provided with an adhesive contaminant (“deadener”), to render the entire “removable portion” (second area 3) less adhesive compared to the “permanent portion” (first area 2) (Col. 2, 45-63). It is notable that Figure 3 shows that the second area 3 contains an area 15 free of adhesive, however, this is optional, as “the label…may also have its removable portion(s) disposed on an edge of the label with a region of the adhering side of such removable portion(s) nearest the label’s edge maintained free of adhesion [emphasis added]” (Col. 2, 65 – Col. 3, 1). Thus, without the adhesive free portion included, the entire removable portion (second area 3) would include the adhesive and deadener, including the edge (forming a “pull tab’). Sullivan et al. disclose that the removable portion (second area) is “at least one” (Abstract). One of ordinary skill in the art will readily ascertain the disclosure of a second removable label (third area), with the same properties.
Sullivan et al. disclose a second label, but not explicitly that it is of the same orientation and same dimension, however, a mere duplication of parts has no patentable significance unless a new and unexpected result is produced. In re Harza. 274 F.2d 669, 124 USPQ 378 (CCPA 1960). In the instant case, it is the same exact label with the same use. In respect to the spacing between the labels, this would be readily gleaned by one of ordinary skill as the labels are to be independently removed. If they were directly attached, they could not be removed from the base substrate, individually, as intended by Sullivan et al. Regardless, the claim would have been obvious because a person of ordinary skill has good reason to pursue the known options within his or her technical grasp. If this leads to the anticipated success, it is likely the product not of innovation but of ordinary common sense. The spacing of the labels to avoid removal of both labels is common sense, as some substrate (with adhesive) must be surrounding the labels in order for them to be independent removed. The recitation of “to provide structural integrity” does not delineate any further structure, but is rather an intended benefit of spacing the between the independent labels, which has previously been found obvious in the previous rejection.
Sullivan et al. do not disclose the removable portions containing a plurality of adhesive patches spaced apart and substantially centered on the back side, however, Kawamura et al teach providing a similar area of reduced adhesion, which may be embodied in several forms of several patches (e.g. 7a-7c). It would have been obvious to substitute the deadened adhesive in the removable portion taught in Sullivan with strips of adhesive in view of Kawamura et al as a suitable reduced adhesive area which also reduces curl caused by full adhesive (like that in Sullivan) (0017). Furthermore, the claim would have been obvious because the substitution of one known element for another would have yielded predictable results to one of ordinary skill in the art at the time of the invention, namely, providing sections of adhesive, such as strips, in lieu of a deadener weakened adhesive, both resulting in reduced adhesion.
Sullivan in view of Kawamura et al. do not teach that the first area includes “non-confidential indicia” and the second area includes “confidential indicia” however the distinction between the general indicia in the first area of Sullivan and “non-confidential indicia” and the distinction between the general indicia in the second area of Sullivan and “confidential indicia” is drawn to non-functional printed matter. Where the only difference between a prior art and a claimed product is printed matter that is not functionally related to the product, the content of the printed matter will not distinguish the claimed product from the prior art. In re Ngai, 367 F.3d 1336,70 USPQ2d 1862, 1864 (Fed. Cir. 2004). In the instant case the distinction in the printer matter is solely drawn to content of the printed matter. The functional relationship with the substrate is the same, regardless of the content, namely that the second area of printed matter is removed.
In respect to the amended subject matter, Sullivan et al. in view of Kawamura et al. do not disclose the added language including a “confidential print manager”, “a hardware processor”, and association and/or formatting between these structures. However, all of the amended subject matter is not within the scope of an article as claimed, but rather is drawn to a system and method of processing data in forming the article. Although 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).
As noted detailed above, the indica and its relationship to the substrate is the same whether it is deemed “confidential”, as it is a matter of content. Furthermore, how this data is derived, or what it is “based on” is a product by process limitation.
The independent claims were further amended to include “wherein the fields are identified by field-identifiers or descriptors assigned to the confidential data types within a table, wherein the field-identifiers or descriptors include at least one of “name, address, date of birth, age, phone number, fax number, email, health plan number, medical diagnosis, medical diagnosis code, and social security number” which does not provide a patentable distinction for reasons detailed in the Response to Arguments below.
In respect to claims 13-15, Sullivan et al. disclose that the labels may be formed out of a web, and die cut therefrom (Col. 3, 17-25). Furthermore, Sullivan discloses that the removable label is “at least one”, which infers a second removable label, regardless, a mere duplication of parts has no patentable significance unless a new and unexpected result is produced. In re Harza. 274 F.2d 669, 124 USPQ 378 (CCPA 1960). As for the location of the two labels, one on opposite sides of the substrate (although not clearly claimed), it would have been obvious to provide any of the the labels (and pull tab) taught in Sullivan along any edge of the substrate. The claim would have been obvious because a particular known technique was recognized as part of the ordinary capabilities of one skilled in the art, namely, providing the duplicate labels taught or suggested by Sullivan along any edge, as any edge is appropriate for the intended faction of enabling a grabbing of the pull tab.
Claim 2 is rejected under 35 U.S.C. 103 as being unpatentable over Sullivan et al. (US 5,172,936) and Kawamura et al. (WO 2014/122801) (See NPL for English Translation) in view of Dehlinger et al. (2012/0018332).
In respect to claim 2, Sullivan et al. and Kawamura et al. teach printing on the label (Fig. 2), but do not disclose the type of printing. Dehlinger et al. teach a very similar label assembly which may further comprise thermal-printing, and thus a thermal print coating (0041). It would have been obvious to provide the printing taught in Sullivan et al. and Kawamura et al. via thermal printing (requiring a thermal print coating) in view of Dehlinger et al. as an extremely well-known method of printing in the label arts. The claim would have been obvious because a particular known technique was recognized as part of the ordinary capabilities of one skilled in the art, namely, selection of one of the most widely used methods of printing on a label.
Claims 1-2, 10-11, and 13-15 are additionally rejected under 35 U.S.C. 103 as being unpatentable over Sullivan et al. (US 5,172,936) in view of Kawamura et al. (WO 2014/122801) (See NPL for English Translation) and Dehlinger et al. (US 2012/0018332).
In respect to claims 1, 10-11, and 13-15, Sullivan et al. in view of Kawamura et al. teach the claimed invention for the reasons stated above, since the difference is solely drawn to the content of the printed matter. However, Dehilnger et al. further teach a very similar label concept with a static portion (first area) 26 and a removal portion (second area) 24. The first area 26 contains non-confidential indicia 32 and the second area 26 contains confidential indicia 28 completely within the confines of second area 26 (0011; Fig. 1). It would have been obvious to one of ordinary skill in the art to provide the indicia taught in Sullivan et al. and Kawamura et al. as confidential and non-confidential indicia in view of Dehlinger et al. to secure confident information e.g. patient data by removal from the label after receipt (0011). It is notable that Sullivan et al. in view of Kawamura et al. are drawn to e.g. a removal coupon, however, the structure is basically the same in operation. If the container in Sullivan et al. in view of Kawamura et al. was to be of medical nature (e.g. pill bottle, serum, etc.), Dehlinger et al. teach provision of confidential indicia in the removal (second area) portion).
In respect to claim 2, Sullivan et al. and Kawamura et al. teach printing on the label (Fig. 2), but do not disclose the type of printing. Dehlinger et al. teach a very similar label assembly which may further comprise thermal-printing, and thus a thermal print coating (0041). It would have been obvious to provide the printing taught in Sullivan et al. and Kawamura et al. via thermal printing (requiring a thermal print coating) in view of Dehlinger et al. as an extremely well-known method of printing in the label arts. The claim would have been obvious because a particular known technique was recognized as part of the ordinary capabilities of one skilled in the art, namely, selection of one of the most widely used methods of printing on a label.
Claim 3 is rejected under 35 U.S.C. 103 as being unpatentable over Sullivan et al. (US 5,172,936), Kawamura et al. (WO 2014/122801) (See NPL for English Translation), and Dehlinger et al. (US 2012/0018332) in view of Hoffmann (US 5,874,142).
In respect to claim 3, Sullivan et al., Kawamura et al., and Dehlinger et al. substantially teach the claimed invention, including a plurality of labels in a web (Fig. 2), but do not disclose providing a release coating on the top surface of the labels, however, Hoffmann teaches a similar label assembly, wherein the labels comprise a release material on the opposite surface from the adhesive (top face) (Abstract). It would have been obvious to one of ordinary skill at the time the invention was made to provide the top surface of the labels taught in Sullivan et al., Kawamura et al., and Dehlinger et al. with release coating in view of Hoffmann, to allow the labels to be wound into a roll in a well-known “liner-less” assembly (Col. 1, 6-33), which is advantageous with reduction in material waste.
Response to Arguments
Applicant's arguments filed 03/16/26 have been fully considered but they are not persuasive.
The entire amendment is drawn to a system and/or method of formatting data, processing, and detection of data, none of which is drawn to the article as claimed. The claims are product-by-process limitations, wherein the resultant product taught by the prior art, above, is capable of being made with such a process.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to KYLE ROBERT GRABOWSKI whose telephone number is (571)270-3518. The examiner can normally be reached M-F 8am-6pm.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Daniel Troy, can be reached at 571-270-3742. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/KYLE R GRABOWSKI/Primary Examiner, Art Unit 3637
Prosecution Insights