DETAILED ACTION
Reissue
The present reissue application is directed to US 10,507,589 B2 (“589 Patent”). 589 Patent issued on December 17, 2019 with claims 1-15 from application 16/201,803 filed on November 27, 2018, which is a continuation of parent application 15/072,169, and claims priority to provisional application 62/133,946 filed on March 16, 2015.
This application was filed on December 15, 2015. Since this date is after September 16, 2012, all references to 35 U.S.C. 251 and 37 CFR 1.172, 1.175, and 3.73 are to the current provisions. Furthermore, the present application is being examined under the first inventor to file provisions of the AIA .
This application presents broadened claims, which are permitted because Applicant filed these claims and demonstrated an intent to broaden within two years of the issue date of 589 Patent.
The most recent amendment was filed on December 15, 2021. The status of the claims is:
Claims 1-8, 10, 11, 14, and 15: Amended
Claims 9, 12, and 13: Original
Claims 16-30: New
This is a first, non-final action.
References and Documents Cited in this Action
589 Patent (US 10,507,589 B2)
US 9,823,642 B1
Mikkelsen (US 2002/0124948 A1)
Stempien (US 6,102,097 A)
Summary of Rejections and Objections in this Action
Claims 1-30 are rejected as being based upon a defective reissue declaration under 35 U.S.C. 251.
Claims 1-30 are rejected under 35 U.S.C. 112(b).
Claims 1 and 16 are rejected on the ground of nonstatutory double patenting as being unpatentable over claim 1 of U.S. Patent No. 9,823,642 B1 in view of Stempien.
Examiner also objects to the claim amendment.
Summary of the Claims
589 Patent is generally directed to a method of manufacturing a substrate with a cut thermal film, including cutting a design into the film, cutting registration holes, and attaching unused portions of the film onto a receiving sheet (and automatically generating instructions for these steps). Claim 16 is representative:
16. (New) A method for manufacturing a tangible substrate with a thermal film, the method comprising:
obtaining an input digital image of a design that is to be transferred to the tangible substrate and storing the input digital image in electronic digital memory of a computer;
using the computer, rendering a plurality of design elements of the design as an output image;
based on the output image, creating, and storing design data defining the design;
automatically determining, in a film, one or more negative areas of the output image that are not to be transferred from the output image;
automatically determining, in the film, one or more positive areas that are to be transferred from the output image;
automatically generating a digitally programmed set of cutting instructions for a cutting device that describe regions of the film to be cut based on the one or more negative areas, the one or more positive areas, and the design data;
automatically generating a digitally programmed set of registration instructions for the cutting device that describe regions of the film to cut to create a registration;
automatically generating a digitally programmed set of attachment instructions for the cutting device that describe regions of the film to be attached to a receiving sheet;
transmitting the attachment instructions, the cutting instructions and the registration instructions to the cutting device to cause the cutting device to perform:
cutting the film on a backing sheet into the design based on the cutting instructions;
cutting the film and the backing sheet to provide a registration based on the registration instructions;
attaching one or more unused portions of the one or more designs to the receiving sheet based on the attachment instructions.
Claims 1 and 16 are the independent claims. All claims recite automatically determining cutting instructions, registration instructions, and attachment instructions; cutting the film based on cutting instructions; cutting the film and backing sheet to provide a registration based on registration instructions; and attaching one or more unused portions based on attachment instructions.
Claim Amendment
Examiner objects to the claim amendment filed on December 15, 2021 because it does not comply with 37 CFR 1.173. Any changes relative to the patent being reissued must be marked. Matter to be omitted by reissue must be enclosed by brackets; and matter to be added by reissue must be underlined. See 37 CFR 1.173(d) and MPEP 1453. More specifically, all deleted words and phrases in claims 1-15 must be marked with brackets instead of strikethrough. The entire text of claims 16-30, which are new relative to the patent, must be underlined. Furthermore, Examiner notes that 37 CFR 1.173(g) requires that all amendments in this reissue application must be made relative to the patent, not the previous amendment, so the text of new claim 16 (for example) would always be fully underlined.
Oath/Declaration
The reissue oath/declaration filed with this application on January 11, 2022 is defective because it fails to identify at least one error which is relied upon to support the reissue application. See 37 CFR 1.175 and MPEP § 1414.
More specifically, the declaration does not describe an error upon which this reissue is based and is blank in this section of the declaration. In this broadening reissue, the reissue oath or declaration must also identify a claim that the application seeks to broaden in the identification of the error that is relied upon to support the reissue application. A general statement, e.g., that all claims are broadened, is not sufficient to satisfy this requirement. In specifically identifying the error as required by 37 CFR 1.175(a), it is sufficient that the reissue oath/declaration identify the claim being broadened and a single word, phrase, or expression in the specification or in an original claim, and how it renders the original patent wholly or partly inoperative or invalid. For example, Applicant may state that claim 1 is being broadened and identify a phrase from claim 1 that is no longer recited in the reissue claims.
Applicant must file a new reissue declaration (instead of merely correcting the error statement in remarks) because no proper declaration has yet been entered in this reissue application.
Claim Rejections - 35 USC § 251
Claims 1-30 are rejected as being based upon a defective reissue declaration under 35 U.S.C. 251 as set forth above. See 37 CFR 1.175.
The nature of the defect(s) in the declaration is set forth in the discussion above in this Office action.
Claim Interpretation
The following is a quotation of 35 U.S.C. 112(f):
(f) Element in Claim for a Combination. – An element in a claim for a combination may be expressed as a means or step for performing a specified function without the recital of structure, material, or acts in support thereof, and such claim shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof.
The following is a quotation of pre-AIA 35 U.S.C. 112, sixth paragraph:
An element in a claim for a combination may be expressed as a means or step for performing a specified function without the recital of structure, material, or acts in support thereof, and such claim shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof.
The claims in this application are given their broadest reasonable interpretation using the plain meaning of the claim language in light of the specification as it would be understood by one of ordinary skill in the art. The broadest reasonable interpretation of a claim element (also commonly referred to as a claim limitation) is limited by the description in the specification when 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is invoked.
As explained in MPEP § 2181, subsection I, claim limitations that meet the following three-prong test will be interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph:
(A) the claim limitation uses the term “means” or “step” or a term used as a substitute for “means” that is a generic placeholder (also called a nonce term or a non-structural term having no specific structural meaning) for performing the claimed function;
(B) the term “means” or “step” or the generic placeholder is modified by functional language, typically, but not always linked by the transition word “for” (e.g., “means for”) or another linking word or phrase, such as “configured to” or “so that”; and
(C) the term “means” or “step” or the generic placeholder is not modified by sufficient structure, material, or acts for performing the claimed function.
Use of the word “means” (or “step”) in a claim with functional language creates a rebuttable presumption that the claim limitation is to be treated in accordance with 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. The presumption that the claim limitation is interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is rebutted when the claim limitation recites sufficient structure, material, or acts to entirely perform the recited function.
Absence of the word “means” (or “step”) in a claim creates a rebuttable presumption that the claim limitation is not to be treated in accordance with 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. The presumption that the claim limitation is not interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is rebutted when the claim limitation recites function without reciting sufficient structure, material or acts to entirely perform the recited function.
Claim limitations in this application that use the word “means” (or “step”) are being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, except as otherwise indicated in an Office action. Conversely, claim limitations in this application that do not use the word “means” (or “step”) are not being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, except as otherwise indicated in an Office action.
Claims 1 and 7-14 recite the following limitations that use the word “means” and are being interpreted under 35 U.S.C. 112(f): “registration means,” “cutting means,” “attachment means,” “positioning means,” and “motion control means.”
Furthermore, this application includes one or more claim limitations that do not use the word “means,” but are nonetheless being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, because the claim limitation(s) uses a generic placeholder that is coupled with functional language without reciting sufficient structure to perform the recited function and the generic placeholder is not preceded by a structural modifier.
Such claim limitations are:
“a registration” in claim 16;
“an attachment” in claims 22, 23, and 25;
“a motion control system” in claim 23;
“a positioning” in claims 23, 24, 27, and 28;
“a cutting” in claims 26 and 27; and
“a motion control” in claims 27-29.
In the case of “a motion control system” in claim 23, “system” is a generic placeholder. In the case of the other limitations, Applicant appears to be avoiding the interpretation these limitations under 35 U.S.C. 112(f) by deleting the word “means” after each function, but the absence of any word after the function of “positioning” or after the function of “cutting,” etc., is considered a substitute for “means” that is a generic placeholder. These are limitations that are described only terms of their function rather than any mechanical structure.
Note that Examiner interprets “a positioning” and “a motion control” as separate elements because 589 Patent consistently refers to “a motion control means” and “a positioning means” as distinct elements and does not describe the two functions (positioning; motion control) as being performed by the same element.
Because the claim limitations identified above are being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, they are being interpreted to cover the corresponding structure described in the specification as performing the claimed function, and equivalents thereof.
A review of the specification shows that the following appears to be the corresponding structures described in the specification for the 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph limitations:
“Cutting means” or “a cutting”: “a sharp implement such as a needle or knife blade attached to a gantry robot that is controlled by a microcontroller” (589 Patent, column 20, lines 14-17). Note that cutting means is not cutting device 150 in Figure 1A because 589 Patent discloses that cutting device 150 comprises multiple elements including a cutting means (589 Patent, column 19, lines 56-58);
“Registration means” or “a registration”: “registration holes 310” in combination with “a flat aluminum platen with upwardly protruding registration pins that may engage or snugly grip corresponding holes in the film and sheets” or “a set of rollers that hold the thermal transfer film against a platen and which determines the position of the transfer film by optically detecting holes” (589 Patent, column 20, lines 1-12; column 22, lines 54-57; see also column 6, lines 7-23);
“Attachment means” or “an attachment”: “a thermal point source. The thermal point source may be a heat conductive material, such as copper, shaped to have a smooth point.” (589 Patent, column 20, lines 28-30);
“Positioning means” or “a positioning”: “an X, Y, Z gantry with servo motors” or “a set of rollers…a Carriage…and a servo mechanism” (589 Patent, column 6, lines 44-51); and
“Motion control means,” “motion control system,” or “a motion control”: “a microcontroller” (589 Patent, column 6, line 66).
If Applicant wishes to provide further explanation or dispute Examiner' s interpretation of the corresponding structure, Applicant must identify the corresponding structure with reference to the specification by page and line number, and to the drawing, if any, by reference characters in response to this Office action.
If Applicant does not intend to have this/these limitation(s) interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, Applicant may: (1) amend the claim limitation(s) to avoid it/them being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph (e.g., by reciting sufficient structure to perform the claimed function); or (2) present a sufficient showing that the claim limitation(s) recite(s) sufficient structure to perform the claimed function so as to avoid it/them being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph.
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 1-30 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 claims 1-30, as discussed above under “Claim Interpretation,” the limitations “registration means” and “a registration” in the claims are 112(f) limitations. However, the claims are indefinite because the use of the term “registration means” in the claims does not fully align with the corresponding structure for “registration means” described in 589 Patent.
Claims 1, 7, and 11 generally recite cutting “to create a registration means” or “to provide a registration means” (see claim 1, lines 28 and 36; claim 7, line 4; claim 11, line 4); similarly, claims 16, 22, and 26 recite cutting to create or provide a registration.
These limitations align with 589 Patent’s description of a structure corresponding to “registration means”/“registration” as comprising registration holes: “Thermal transfer film cutting device 150 may use the registration means, such as registration holes 310 for example, and the instructions generated in step 208 to determine the placement of receiving sheet 312.” 589 Patent, column 22, lines 54-57.
However, 589 Patent also clearly describes a corresponding structure for “registration means” further comprising solid elements that make use of holes: “In an embodiment, the registration means is a flat aluminum platen with upwardly protruding registration pins…. In an alternative embodiment, the registration means is a set of rollers that hold the thermal transfer film against a platen….” 589 Patent, column 20, lines 1-12.
The claims are indefinite because the term “registration means” is interpreted under 35 U.S.C. 112(f) as the structure, material or act described in the specification as performing the entire claimed function (or equivalents), but the recited steps of cutting “to provide a registration means” can only provide holes, not e.g., a flat aluminum platen with upwardly protruding registration pins. It is unclear whether the claims include only holes (or equivalents to holes that can be provided by cutting) or include the rest of the corresponding structure for registration means (i.e., the platen and pins, or rollers, etc.).
Claims 2-6, 8-10, and 12-15 depend on claim 1 (if not also claim 7 or claim 11) and are also indefinite for the same reason as claim 1; likewise, claims 17-21, 23-25, and 27-30 depend on claim 16 (if not also claim 22 or claim 26) and are also indefinite for the same reason as claim 16.
Further regarding claims 16-30, as discussed above under “Claim Interpretation,” Examiner interprets the following limitations under 35 U.S.C. 112(f): “a registration” in claim 16; “an attachment” in claims 22, 23, and 25; “a positioning” in claims 23, 24, 27, and 28; “a cutting” in claims 26 and 27; and “a motion control” in claims 27-29. Again, the absence of any word after the function of “positioning” or after the function of “cutting,” etc., is considered a substitute for “means” that is a generic placeholder. These are limitations that are described only terms of their function rather than any mechanical structure.
However, the claims are indefinite because the above function words alone can also be interpreted as words referring to steps or other elements in the claims, albeit ambiguously. Claim 26, for example, recites “driving a cutting to cut.” Examiner interprets this phrase as equivalent to “driving a cutting means to cut” because some structure must be driven to cut, but Examiner acknowledges that the phrase could also be interpreted as merely a step of “cutting.” Similarly, claim 27 recites “automated by a positioning.” Examiner interprets this phrase as equivalent to “automated by a positioning means” because the automating is done by some structure, but Examiner acknowledges that the phrase could also be interpreted as referring to a further step of positioning (although no positioning step is clearly recited). Furthermore, the limitation “attaching a film portion…using…an attachment” in claim 22 is interpreted as “attaching a film portion using an attachment means.” Although Examiner acknowledges that the word “attachment” might be for example, a spot of adhesive, claim 25 later refers to “motion control of the attachment,” requiring that “attachment” be an element that provides attachment and is capable of motion rather than merely an attachment/adhesive itself.
Claims 16-30 are indefinite because it is unclear whether these limitations fall within the scope of 35 U.S.C. 112(f); even if they do not, the claims are indefinite due to the ambiguous phrasings.
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 1 and 16 are rejected on the ground of nonstatutory double patenting as being unpatentable over claim 1 of U.S. Patent No. 9,823,642 B1 in view of Stempien.
As can be seen in the below comparison, reissue claim 16 recites steps that correspond to steps recited in claim 1 of US 9,823,642 B1, including generating cutting instructions; generating registration instructions; generating attachment instructions; cutting a design based on cutting instructions; cutting a registration based on registration instructions; and attaching unused portions of the design to a receiving sheet based on attachment instructions. Reissue claim 1 further recites “One or more non-transitory computer-readable storage media storing one or more computer instructions for manufacturing a tangible substrate with a thermal film, and which, when executed by one or more processors, cause the one or more processors to perform…” but essentially recites the same method recited in reissue claim 16 and likewise recites steps that correspond to steps recited in claim 1 of US 9,823,642 B1.
Claim 1 of US 9,823,642 B1
Reissue claim 16
1. A method comprising:
1. A method for manufacturing a tangible substrate with a thermal film,
the method comprising:
receiving, at a service provider computer over a network, design data defining one or more designs;
obtaining an input digital image of a design that is to be transferred to the tangible substrate and storing the input digital image in electronic digital memory of a computer;
using the computer, rendering a plurality of design elements of the design as an output image;
based on the output image, creating, and storing design data defining the design;
automatically determining, in a film, one or more negative areas of the output image that are not to be transferred from the output image;
automatically determining, in the film, one or more positive areas that are to be transferred from the output image;
generating, at the service provider computer, a digitally programmed set of cutting instructions for a cutting device that describe regions of a film to be cut based on the design data;
automatically generating a digitally programmed set of cutting instructions for a cutting device that describe regions of the film to be cut based on the one or more negative areas, the one or more positive areas, and the design data;
generating, at the service provider computer, a digitally programmed set of registration instructions for the cutting device that describe regions of a film to cut to create a registration means;
automatically generating a digitally programmed set of registration instructions for the cutting device that describe regions of the film to cut to create a registration;
generating, at the service provider computer, a digitally programmed set of attachment instructions for the cutting device that describe regions of a film to be attached to a receiving sheet;
automatically generating a digitally programmed set of attachment instructions for the cutting device that describe regions of the film to be attached to a receiving sheet;
transmitting, from the service provider computer, the attachment instructions, the cutting instructions and the registration instructions to the cutting device; wherein executing the cutting instructions and registration instructions using one or more processors of the cutting device causes performing:
transmitting the attachment instructions, the cutting instructions and the registration instructions to the cutting device to cause the cutting device to perform:
causing a cutting means of the cutting device to cut a film on a backing sheet into the one or more designs based on the cutting instructions;
cutting the film on a backing sheet into the design based on the cutting instructions;
causing the cutting means of the cutting device to cut the film and the backing sheet to provide a registration means based on the registration instructions;
cutting the film and the backing sheet to provide a registration based on the registration instructions;
causing the cutting device to attach one or more unused portions of the one or more designs to the receiving sheet using an attachment means based on the attachment instructions;
attaching one or more unused portions of the one or more designs to the receiving sheet based on the attachment instructions.
wherein the method is performed by one or more computing devices.
(See references to a computer above in reissue claim 16.)
Reissue claims 1 and 16 mainly differ from claim 1 of US 9,823,642 B1 in that instead of simply “receiving, at a service provider computer over a network, design data defining one or more designs” as recited in the first step of claim 1 of US 9,823,642 B1, reissue claims 1 and 16 recites additional details under this part of the claims. However, Stempien teaches a related method for cutting out a design including taking a digital image of a design (i.e., the graphic “AR” in Figure 1); using a computer, rendering a plurality of design elements of the design as an output image and based on the output image, creating, and storing design data defining the design (column 5, lines 61-67; column 6, lines 1-20); and automatically determining one or one or more negative areas of the output image that are not to be transferred from the output image and one or more positive areas that are to be transferred from the output image (column 9, lines 10-16). Given claim 1 of US 9,823,642 B1, it would have been obvious to create reissue claims 1 and 16 with the additional design data processing taught by Stempien in order to further use the design data to properly guide the cutting of the design and the removal of unused areas. Further regarding reissue claim 1 in particular, claim 1 of US 9,823,642 B1 recites a method, not computer readable media, but it also would have been obvious to have non-transitory computer-readable storage media etc. for causing processors to perform the method, since claim 1 of US 9,823,642 B1 already recites that “the method is performed by one or more computing devices.”
Allowable Subject Matter
Claims 1-30 would be allowable if rewritten or amended to overcome the rejections under 35 U.S.C. 112(b) and double patenting set forth in this Office action.
The following is a statement of reasons for the indication of allowable subject matter:
Stempien discloses, among other things, a method for manufacturing a graphic product, including determining one or more negative areas of the output image that are not to be transferred from the graphic image (i.e., “weeds”) and one or more positive areas that are to be transferred from the output image (i.e., “the graphic product”); generating a digitally programmed set of cutting instructions for a cutting device that describe regions of the film to be cut based on the one or more negative areas, the one or more positive areas, and the design data (column 6, lines 23-26); and cutting the film on a backing sheet into the design based on the cutting instructions (column 6, lines 27-53). Stempien further discloses attaching one or more unused portions of the designs (i.e., the weeds) to a receiving sheet (i.e., bonding web 18) based on attachment instructions (column 6, lines 61-67; column 7, lines 1-14; column 9, lines 10-16). Stempien further discloses using registration holes 51 to ensure accuracy of the attachments (column 6, lines 54-60; column 9, lines 4-10)
Mikkelsen discloses, among other things, a method for manufacturing a graphic decal, including determining one or more negative areas of the output image that are not to be transferred from the graphic image (i.e., “waste areas”) and one or more positive areas that are to be transferred from the output image (i.e., “product areas”); and cutting/slitting cutting a face layer 56 on a backing sheet 56 into a design based on cutting instructions (creating negative/waste areas and positive/product areas; paragraph [0068]). Mikkelsen further discloses attaching one or more unused portions of the design (i.e., the waste areas) to a receiving sheet (i.e., carrier web 14) based on attachment instructions (paragraphs [0033] and [0069]-[0076]). Mikkelsen further discloses sensing registration marks to ensure accuracy of the attachments (paragraphs [0033] and [0083]).
However, the prior art does not specifically disclose or fairly teach a method including all the combination of all of the steps, elements, and limitations recited in the claims (as well as the claims may be understood as discussed above with regard to 35 U.S.C. 112(b)), and further including:
automatically generating a digitally programmed set of registration instructions for the cutting device that describe regions of the film to cut to create a registration means; and
cutting the film and the backing sheet to provide a registration means based on the registration instructions.
Conclusion
Applicant is reminded of the continuing obligation under 37 CFR 1.178(b), to timely apprise the Office of any prior or concurrent proceeding in which this reissue application is or was involved. These proceedings would include interferences, reissues, reexaminations, and litigation. Applicant is further reminded of the continuing obligation under 37 CFR 1.56, to timely apprise the Office of any information which is material to patentability of the claims under consideration in this reissue application. These obligations rest with each individual associated with the filing and prosecution of this application for reissue. See also MPEP §§ 1404, 1442.01 and 1442.04.
Applicant is notified that any subsequent amendment to the specification and/or claims must comply with 37 CFR 1.173(b).
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Any inquiry concerning this communication or earlier communications from the examiner, or as to the status of this proceeding, should be directed to Examiner Christina Leung at telephone number (571) 272-3023; the Examiner’s supervisor, SPE Timothy Speer at (313) 446-4825; or the Central Reexamination Unit at (571) 272-7705.
/CHRISTINA Y. LEUNG/ Primary Examiner, Art Unit 3991
Conferees:
/DEANDRA M HUGHES/ Reexamination Specialist, Art Unit 3992
/T.M.S/ Supervisory Patent Examiner, Art Unit 3991