DETAILED ACTION
Response to Amendment
Applicant's amendment filed 2/19/2026 has been entered. Currently, claims 2, 4-6, 8-13 and 15-18 are pending and claims 1, 3, 7, 14 and 19-21 are cancelled.
Claim Rejections - 35 USC § 112
Claims 2, 4-6, 8-13 and 15-18 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.
In claims 2 and 13, the Examiner does not find support for the phrase of “increasing area of the adhesive patches” and “increasing a area of the adhesive patches” in the specification as originally filed. Applicants misquote their own specification on page 7 of their Remarks as the quotation they provide for support does not appear in their specification. The Examiner does find support for the limitations of “increasing volume of the adhesive patches” at least at [0007].
In claims 2 and 13, the Examiner does not find support that the additional tack desired can be obtained “without having to increase either viscosity” in the specification as originally filed. Applicants misquote their own specification on page 7 of their Remarks as the quotation they provide for support does not appear in their specification. The Examiner does find support for the limitations of “without having to increase coat weight” at least at [0007].
In claim 2, the Examiner does not find support for “the desired peel force varies as a function of both a number of the adhesive patches and a size of each of the adhesive patches” in the specification as originally filed. What one desires is not determined by the number and size of the patches.
In claims 8 and 17, the description of the arrangements of adhesive patches does not find support in the specification as originally filed.
For pattern a) that reads on Fig 6A, leaving out that each pair “is aligned relative to each other in a diagonal relationship on the back side of the substrate” is new matter
For pattern b) that reads on Fig 6B, describing this pattern as a C-shape and leaving out that they are the same size is new matter
For pattern c) that reads on Fig 6C, leaving out that each pair “is aligned relative to each other in a diagonal relationship on the back side of the substrate” is new matter
For pattern d) that reads on Fig 6D, describing this pattern as a backward C-shape and leaving out that they are the same size is new matter
For pattern e) that reads on Fig 6E, describing this pattern as U shaped, and leaving out that two of the six patches are a first size and four of the six patches are a second size that is smaller than the first size is new matter
For pattern f) that reads on Fig 6F, leaving out that the patches are aligned relative to each other to form an I-shape arrangement is new matter
For pattern g) that reads on Fig 6G, leaving out that the adhesive patches are the same size is new matter
For pattern h) that reads on Fig 6H, leaving out that the adhesive patches are the same size is new matter
For pattern i) that reads on Fig 6I, leaving out that the adhesive patches are the same size is new matter
For pattern j) that reads on Fig 6J, leaving out that the adhesive patches are the same size is new matter
Claims 2, 4-6, 8-12 and 17 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.
In claim 2, the limitations “such that the desired peel force varies as a function of both a number of the adhesive patches and a size of each of the adhesive patches” renders the claim indefinite as the receipt and label roll is a finished product, and therefore the desired peel force cannot vary once the adhesive patches have been placed on the substrate. These limitations are comparing the receipt and label roll finished product of the claim with other products that are not being claimed, which renders the claim indefinite as the metes and bounds of the claim are unclear. This rejection can be overcome by deleting these limitations, which is how the claim will be interpreted.
In claims 8 and 17, the limitations of the f) pattern “adjacent to a leftmost side” renders the claim indefinite because it unclear where the leftmost side is located. This can be overcome by changing the phrase to “adjacent to a leftmost side of the backside of the substrate” which is how the claim will be interpreted.
Claims 4, 5 and 9 are rejected under 35 U.S.C. 112(d) or pre-AIA 35 U.S.C. 112, 4th paragraph, as being of improper dependent form for failing to further limit the subject matter of the claim upon which it depends, or for failing to include all the limitations of the claim upon which it depends.
In claim 4, the claim requires that the adhesive patches “comprise four separate adhesive patches”, but this does not further limit claim 2, which requires “at least four separate adhesive patches”.
In claim 5, the claim requires that the adhesive patches “covers at least a portion of each of four quadrants on the backside of the substrate” but this not limit claim 2, which requires that “each one of four quadrants on the backside of the substrate has position therein at least some adhesive from the at least four separate adhesive patches”.
Claim 9 does not add any further limitations to the 10 predefined patterns of claim 8 as claim 8 sets forth the number of patches in each of the 10 predefined patterns.
Claim Rejections - 35 USC § 103
Claims 2, 4-6, 8, 9, 11-13, 15, 17 and 18 are rejected under 35 U.S.C. 103 as being unpatentable over Roth et al. (EP 2551838) in view of Vigunas et al. (8,445,104).
With regard to claims 2, 4-6, 11-13, 15 and 18, Roth et al. teach a roll of label media having a substrate with a thermally sensitive coating on the first side of the substrate and a variably patterned adhesive on the second side of the substrate [0002] and [0003]. There may also be a release coating on the front side [0026]. The portion of adhesive patches highlighted in the second image in Figure 1G (see below) reads on applicants’ at least four adhesive patches, i.e. seven, and the limitations of claims 4-6, 11, 12 and 18 [0025] and [0026].
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Also, Roth et al. teach that there may be a multiplicity of adhesive patches in a predefined pitch and angle [0012]. The label with these adhesive patches reads on each adhesive patch being a multiple of a base patch size, sized and positioned relative to each other and having a desired tack and desired peel force as any peel force or tack reads on the desired tack or peel force; however, they do not specifically teach the adhesive claimed.
Vigunas et al. teach the advantages of employing a water-based microsphere adhesive on the back of a thermally printable label roll (col. 5, lines 4-21). Consequently, use of a water-based microsphere adhesive as the generically disclosed adhesive of Roth et al. would have been obvious to one of ordinary skill in this art in the absence of unexpected results.
Finally, the Examiner notes that the limitations that “desired tack can be obtained by increasing area of the adhesive patches…without having to increase either viscosity or coat weight” and the desired peel force are product-by-process limitations on how one plans the placement and coat weight of the adhesive patches. It has been held that “even though 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.” Please see MPEP 2112 and In re Thorpe, 777 F.2d 695, 698, 227 USPQ 964, 966 (Fed. Cir. 1985). Given the fact that the article of the prior art has the same structure as the structure that results from the product-by-process limitations claimed, it teaches the claim.
With regard to claims 8, 9 and 17, Roth et al. render obvious all of the limitations of claims 2 and 13 above; however, they do not specifically teach the patterns being claimed.
It would have been obvious to one having ordinary skill in the art to have made the patches of adhesive of Figure 1F be a diagonal line of 5 adhesive patches running from the top right to the bottom left. It would have been obvious to have added more adhesive patches depending on the length of the label being cut and the width of the label, such that the adhesive patches would form a solid label while also making sure that the adhesive patches did not clog up a cutting mechanism for the label maker
Claims 10 and 16 are rejected under 35 U.S.C. 103 as being unpatentable over Roth et al. (EP 2551838) in view of Vigunas et al. (8,445,104), and further in view of Blank et al. (US 2006/0134365).
Roth et al. in view of Vigunas et al. render obvious all of the limitations of claims 2 and 13 above; however, they do not specifically teach the sense marks claimed.
Blank et al. teach a label roll having index marks spaced longitudinally apart with adhesive patches therebetween that are in register with the index sensor marks [0011] and [0034].
Since Roth et al. in view of Vigunas et al. and Blank et al. are drawn to adhesive label rolls, it would have been obvious to one having ordinary skill in the art to have combined in the index sensor marks of Blank et al. onto the adhesive label of Roth et al. in view of Vigunas et al. The results of such a combination would have been predictable; further, each of the elements would have performed the same in combination as they would separately.
Response to Arguments
Applicant’s arguments, see Remarks, filed 2/19/2026, with respect to the claim objections, some of the 112(a), 112(b) and 112(d) rejections have been fully considered and are persuasive. The relevant objections/rejections have been withdrawn.
Applicant's arguments filed 2/19/2026 have been fully considered but they are not persuasive.
Applicants argue on pages 8-9 that the pattern descriptions in the claims “directly correspond to the patterns shown in Figures 6A-6J” and therefore the 112(a) new matter rejections should be withdrawn.
The Examiner respectfully disagrees and notes that he has specifically pointed out in the 112(a) rejection above where they patterns do not directly correspond so as to be considered new matter. Applicants’ arguments do not point out how the Examiner has clearly erred as the portions that applicants cite from the specification support the Examiner’s position because the descriptions of each of the drawings includes the limitations that the Examiner’s pointed out was missing in his 112(a) new matter rejection.
Applicants argue that claims 8 and 17 are definite as to pattern f).
The Examiner respectfully disagrees and notes that it would not be clear to one having ordinary skill as an assumption would need to be made on how to look at the substrate in order to determine “leftmost side”, which means the claims remain indefinite. The rejection can be overcome by amending the claims as suggested by the Examiner in the rejection.
Applicants argue on page 12 of their Remarks that the pattern description of “comprise four separate adhesive patches” in claim 4 further limits claim 2.
The Examiner respectfully disagrees and notes that the term “comprises” is open language, which means claim 4 is open to having more than 4 adhesive patches; hence, it is the same scope as claim 2 and fails to further limit claim 2.
Applicants argue that the limitations of claim 5 further limit claim 2.
The Examiner respectfully disagrees and notes that the limitations they are pointing to do not add further limitations that limit claim 2. The limitation of “the given pattern” does not add any further structure as this limitation is in claim 2.
Applicants argue that the limitations of claim 9 further limits claim 8.
The Examiner respectfully disagrees and notes that the limitations they are pointing to do not add further limitations that limit claim 8. The limitation of “predefined number” does not add any further structure as claim 8 has “predefined patterns” and each one has a number of adhesive patches recited, and therefore there is no difference in scope between claims 8 and 9.
Applicants argue on pages 13-14 of their Remarks that Roth does not teach or suggest additional tack desired can be obtained by increasing area of the adhesive patches by increasing a size of a given adhesive without increasing coat weight and that the size one of the four adhesive patches is a base size from which the size of the other patches is calculated.
As to the patch sizes, the additional desired tack and peel force, the Examiner stated previously and repeated in this action that a label with these adhesive patches reads on applicants’ adhesive patch as a multiple of a base patch size, sized and positioned relative to each other and having a desired tack and desired peel force as any peel force or tack reads on the desired tack or peel force. The limitations about basing the adhesive patches on a base patch size, achieving a desired peel force and achieving a desired tack are mental steps on how one thought about making the article, which does not differentiate from the structure of the prior art. Applicants’ arguments on page 14 call their claim limitations an optimization technique (which is used in a method of manufacturing), but applicants’ claims are to an article and not an optimization method, and therefore applicants’ arguments are not persuasive.
Applicants argue on page 14 of their Remarks that Roth has a different purpose and structure, and therefore their approach does not read on the claims.
The Examiner respectfully disagrees and notes the structure of the product is what is being claimed, and given that the prior art has the same structure, it reads on the claim. Applicants’ argument does not point to how the structure of the claimed invention defines over the prior art, and therefore the Examiner maintains that Roth in view of Vigunas renders obvious the structure claimed.
Applicants argue on pages 14-15 that the product-by-process analysis is improper as the claims require at least the structural limitations of the base patch size calculation methodology and Roth does not teach the base size calculation system.
The Examiner respectfully disagrees and notes that a methodology necessarily implies method limitations in a product claim and calling these limitations a calculation system is confusing as it is a method on how one determines the sizes of the adhesive patches; hence, the product-by-process analysis is correct. Also, the limitations of basing the sizes of the remaining adhesive patches on the base size of one of the adhesive patches does not add further structure that overcome the prior art because these limitations do not set forth a specific size of the base patch, they do not limit what the size of any of the remaining adhesive patches may be and they do not require patches having different sizes, i.e. all adhesive patches could be the same size. This means any structure of adhesive patches reads on the product-by-process limitations claimed. For at least this reason, applicants’ arguments are not persuasive.
Applicants argue on pages 10-11 that there are unexpected results for the claimed invention.
Applicants’ arguments are not persuasive as the claims are not commensurate in scope with the evidence as the claims are not limited to the embodiments of Figures 8 or 9 and the claims are drawn to an article, and therefore coat weight optimization methods would not be commensurate with an article claim.
Conclusion
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). 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 GERARD T HIGGINS whose telephone number is (571)270-3467. The examiner can normally be reached M-F 9:30-6pm.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Mark Ruthkosky can be reached at (571) 272-1291. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/Gerard Higgins/Primary Examiner, Art Unit 1785