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 .
Drawings
The drawings are objected to as failing to comply with 37 CFR 1.84(p)(5) because they include the following reference characters not mentioned in the description: 101-106. Corrected drawing sheets in compliance with 37 CFR 1.121(d), or amendment to the specification to add the reference character(s) in the description in compliance with 37 CFR 1.121(b) are required in reply to the Office action to avoid abandonment of the application. Any amended replacement drawing sheet should include all of the figures appearing on the immediate prior version of the sheet, even if only one figure is being amended. Each drawing sheet submitted after the filing date of an application must be labeled in the top margin as either “Replacement Sheet” or “New Sheet” pursuant to 37 CFR 1.121(d). If the changes are not accepted by the examiner, the applicant will be notified and informed of any required corrective action in the next Office action. The objection to the drawings will not be held in abeyance.
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 1-17 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.
There is insufficient antecedent basis for multiple limitations in the claims, including: i) claims 1, 13 and 16 recite the limitation "the form of a card"; ii) claim 1 recites the limitation “the cut”; iii) claims 2, 13 and 16 recite the limitation “the second piece of a material”; iv) claims 11, 14 and 16 recite the limitations “the distance” and “the second sheet of material”; and v) claim 16 recites the limitations “the card” (note that the claim 16 preamble does not affirmatively establish a particular isolated and discrete “card” element sufficient to later refer to as “the card”) and “the second piece of a material”.
The claim 7 recitation of “printing on the roll including the” is unclear, as it appears that at least a portion of the claim language has been omitted. Exactly what step/configuration is sought? Please review/revise/clarify.
The term “about” in claims 11, 14 and 16 is a relative term which renders the claims indefinite. The term “about” is not defined by the claims, the specification does not provide a standard for ascertaining the requisite degree, and one of ordinary skill in the art would not be reasonably apprised of the scope of the invention.
Claims 2-6, 8-10, 12, 15 and 17 are rejected as depending (directly or indirectly) from rejected independent claims 1, 13 and 16.
Claim Rejections - 35 USC § 102
The following is a quotation of the appropriate paragraphs of 35 U.S.C. 102 that form the basis for the rejections under this section made in this Office action:
A person shall be entitled to a patent unless –
(a)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention.
Claims 1-7, 9-10, 12 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by U.S. Patent Application Publication No. 2014/0145424 to Yost (“Yost”).
Regarding claim 1, Yost anticipates a method of manufacturing (fig. 10 and para. 21) a roll (per para. 37, the subject matter of the overall invention may be implemented on a roll) to produce a plurality of punch out cards (e.g. information cards discussed at para. 2; note that card 120 shown in fig. 1 shows one instance of such an information card) on the roll (aforementioned roll on which the overall invention is implemented), the method comprising, i) cutting (per para. 29, first cavity 105 can be created by punching or die-cutting document 100 of fig. 1) a plurality (per para. 28, document 100 of fig. 1 may contain multiple first cavities 105) of holes (e.g. plurality of instances of first cavity 105, each defined by interior borders 102, as shown in figs. 1 and 7, and discussed at para. 26) in a roll (aforementioned roll on which the overall invention is implemented) of a carrier sheet (e.g. document 100, as shown in fig. 1) to form a plurality (para. 28) of cut-outs (e.g. individual instances of first cavity 105, defined by interior borders 102) through (para. 26 and figs. 1 and 7) the carrier sheet (100) where the carrier sheet (100) has a top side (e.g. upper surface, as shown in fig. 7) and a bottom side (e.g. lower surface, as shown in fig. 7); ii) for each cut-out (aforementioned individual instances of first cavity 105, defined by interior borders 102), covering (fig. 7) the cut-out (aforementioned individual instances of first cavity 105, defined by interior borders 102) from the bottom-side (aforementioned lower surface) of the carrier sheet (100) by applying to (fig. 7) the bottom-side (aforementioned lower surface) of the carrier sheet (100) a first piece of material (e.g. carrier 110, as shown in figs. 1 and 7); iii) for each cut-out (aforementioned individual instances of first cavity 105, defined by interior borders 102), adhering (note the use of adhesive 625, as shown in fig. 7) within (fig. 7) the cut-out (aforementioned individual instances of first cavity 105, defined by interior borders 102) a second piece of material (e.g. card 120, as shown in figs. 1 and 7) in the form of a card (para. 26) to the first piece of material (110) through (fig. 7) the cut-out (aforementioned individual instances of first cavity 105, defined by interior borders 102) from (fig. 7) the top side (aforementioned upper surface) of the carrier sheet (100); and iv) perforating (i.e. kiss cutting, as discussed at para. 34 and shown in step 1040 of fig. 10) the first piece of material (110) and the second piece of material (120) from the bottom-side (aforementioned lower surface) of the carrier sheet (100) such that the cut is made first through (para. 34 and fig. 10) the first piece of material (110) and then (para. 34 and fig. 10) the second piece of material (120).
Regarding claim 2, Yost anticipates the method of claim 1 wherein the first piece of material (110) comprises an adhesive (625, as shown in fig. 7) on a first side (e.g. upper side, as shown in fig. 7) of the first piece of material (110) on which the card (para. 26) is adhered (figs. 1 and 7) and is configured such that the second piece of a material (120) is releasably (per para. 4, the card is easily removed from the carrier) attached to (fig. 7) the first piece of material (110).
Regarding claim 3, Yost anticipates the method of claim 1 wherein the first piece of material (110) is made from an opaque material (per para. 26, carrier 110 is a film or sheet of paper; note that paper is at least minimally opaque) having an adhesive (625, as shown in fig. 7) on a first side (e.g. upper side, as shown in fig. 7) of the first piece of material (110) on which the card (para. 26) is adhered (figs. 1 and 7).
Regarding claim 4, Yost anticipates the method of claim 2 wherein the adhesive (625) is a pressure sensitive adhesive (per para. 4, lift adhesives may be utilized; note that a lift adhesive is a form of pressure sensitive adhesive).
Regarding claim 5, Yost anticipates the method of claim 3, wherein the first piece of material (110) comprises an inkjet receptive coating (note that paper is receptive to inkjet printing, and para. 37 indicates that printing can occur via an inkjet imaging process).
Regarding claim 6, Yost anticipates the method of claim 3, wherein the adhesive (625) is not dried by ultra-violet (UV) light (note the lack of any mention of adhesive 625 being dried by ultraviolet light).
Regarding claim 7, Yost anticipates the method of claim 1 further comprising feeding the manufactured roll (aforementioned roll on which the overall invention is implemented) into a press (e.g. printer discussed at written abstract), printing (para. 2) on the roll (aforementioned roll on which the overall invention is implemented) including the (see the rejection under 35 USC 112 set forth supra), and cutting (e.g. executing kisscut operation discussed at step 1040 in fig. 10) the roll (aforementioned roll on which the overall invention is implemented).
Regarding claim 9, Yost anticipates the method of claim 1 wherein the second piece of material (120) is a polyester plastic card (per para. 31, the card material may be made of a variety of plastics as desired).
Regarding claim 10, Yost anticipates the method of claim 1 wherein the second piece of material (120) is made from plastic (per para. 31, the card material may be made of a variety of plastics as desired).
Regarding claim 12, Yost anticipates a roll (aforementioned roll on which the overall invention is implemented) made from the method of claim 1.
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.
Claims 8, 11 and 13-17 are rejected under 35 U.S.C. 103 as being unpatentable over Yost.
Regarding claim 8, Yost discloses the method of claim 1, but does not disclose wherein the roll (aforementioned roll on which the overall invention is implemented) is at least 17 inches in width and the cut-outs (aforementioned individual instances of first cavity 105, defined by interior borders 102) are formed on the roll (aforementioned roll on which the overall invention is implemented) such that when the roll (aforementioned roll on which the overall invention is implemented) is cut to produce two 8 1/2 x 11 sheets side by side widthwise across the roll (aforementioned roll on which the overall invention is implemented), each sheet includes at least one punch-out card (aforementioned information card).
However, it has been held that where the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation. In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955). In the instant matter, the particular chosen dimensions will determine the ultimate number of cards that can be provided within the assembly.
Accordingly, it would have been obvious to a person of ordinary skill in the art before the effective filing date to provide the Yost assembly’s rolls with dimensions as desired, in order to provide the benefit of yielding an ultimate number of cards as desired.
Regarding claim 11, Yost discloses the method of claim 1, but does not disclose wherein for each cut-out (aforementioned individual instances of first cavity 105, defined by interior borders 102), the distance between an edge of the cutout (aforementioned individual instances of first cavity 105, defined by interior borders 102) and a nearest edge of the second sheet of material (120) in the cut-out (aforementioned individual instances of first cavity 105, defined by interior borders 102) is or about 1/64 inches or less.
However, it has been held that where the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation. In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955). In the instant matter, the particular chosen dimensions will determine the ultimate number of cards that can be provided within the assembly.
Accordingly, it would have been obvious to a person of ordinary skill in the art before the effective filing date to provide the Yost assembly’s rolls with dimensions as desired, in order to provide the benefit of yielding an ultimate number of cards as desired.
Regarding claim 13, Yost discloses a method of manufacturing (fig. 10 and para. 21) a roll (per para. 37, the subject matter of the overall invention may be implemented on a roll) to produce a plurality of punch out cards (e.g. information cards discussed at para. 2; note that card 120 shown in fig. 1 shows one instance of such an information card) on the roll (aforementioned roll on which the overall invention is implemented), the method comprising, i) cutting (per para. 29, first cavity 105 can be created by punching or die-cutting document 100 of fig. 1) a plurality (per para. 28, document 100 of fig. 1 may contain multiple first cavities 105) of holes (e.g. plurality of instances of first cavity 105, each defined by interior borders 102, as shown in figs. 1 and 7, and discussed at para. 26) in a roll (aforementioned roll on which the overall invention is implemented) of a carrier sheet (e.g. document 100, as shown in fig. 1) to form a plurality (para. 28) of cut- outs (e.g. individual instances of first cavity 105, defined by interior borders 102) through (para. 26 and figs. 1 and 7) the carrier sheet (100) where the carrier sheet (100) has a top side (e.g. upper surface, as shown in fig. 7) and a bottom side (e.g. lower surface, as shown in fig. 7); ii) for each cut-out (aforementioned individual instances of first cavity 105, defined by interior borders 102), covering (fig. 7) the cut-out (aforementioned individual instances of first cavity 105, defined by interior borders 102) from the bottom-side (aforementioned lower surface) of the carrier sheet (100) by applying to (fig. 7) the bottom-side (aforementioned lower surface) of the carrier sheet (100) a first piece of material (e.g. carrier 110, as shown in figs. 1 and 7) wherein the first piece of material (110) comprises an adhesive (e.g. adhesive 625, as shown in fig. 7 and discussed at para. 31) on a first side (e.g. upper surface, as shown in fig. 7) of the first piece of material (110) on which (fig. 7) the card (120) is adhered (via aforementioned adhesive 625, as shown in fig. 7) and is configured such that the second piece of a material (e.g. card 120, as shown in figs. 1 and 7) is releasably attached (per para. 31, EZ release material may be employed) to the first piece of material (110) and wherein the first piece of material (110) is made from an opaque material (per para. 26, carrier 110 is a film or sheet of paper; note that paper is at least minimally opaque) having an inkjet receptive coating (note that paper is receptive to inkjet printing, and para. 37 indicates that printing can occur via an inkjet imaging process) and wherein the adhesive (625) is not dried by ultra-violet (UV) light (note the lack of any mention of adhesive 625 being dried by ultraviolet light); iii) for each cut-out (aforementioned individual instances of first cavity 105, defined by interior borders 102), adhering (note the use of adhesive 625, as shown in fig. 7) within (fig. 7) the cut-out (aforementioned individual instances of first cavity 105, defined by interior borders 102) a second piece of material (e.g. card 120, as shown in figs. 1 and 7) in the form of a card (para. 26) to the first piece of material (110) through (fig. 7) the cut-out (aforementioned individual instances of first cavity 105, defined by interior borders 102) from (fig. 7) the top side (aforementioned upper surface) of the carrier sheet (100) wherein the second piece of material (120) is made from plastic (per para. 31, at least one layer of the card 120 can comprise plastic); and iv) perforating (i.e. kiss cutting, as discussed at para. 34 and shown in step 1040 of fig. 10) the first piece of material (110) and the second piece of material (120) from the bottom-side (aforementioned lower surface) of the carrier sheet (100) such that the cut is made first through (para. 34 and fig. 10) the first piece of material (110) and then (para. 34 and fig. 10) the second piece of material (120).
Yost does not disclose wherein the roll (aforementioned roll on which the overall invention is implemented) is at least 17 inches in width and the cut-outs (aforementioned individual instances of first cavity 105, defined by interior borders 102) are formed on the roll (aforementioned roll on which the overall invention is implemented) such that when the roll (aforementioned roll on which the overall invention is implemented) is cut to produce two 8 1/2 x 11 sheets side by side widthwise across the roll (aforementioned roll on which the overall invention is implemented), each sheet includes at least one cut out (aforementioned individual instances of first cavity 105, defined by interior borders 102)
However, it has been held that where the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation. In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955). In the instant matter, the particular chosen dimensions will determine the ultimate number of cards that can be provided within the assembly.
For the reasons set forth in the rejection of claim 8, supra, it would have been obvious to provide the Yost assembly’s rolls with dimensions as desired.
Regarding claim 14, Yost discloses the method of claim 13, but does not disclose wherein for each cut-out (aforementioned individual instances of first cavity 105, defined by interior borders 102), the distance between an edge of the cutout (aforementioned individual instances of first cavity 105, defined by interior borders 102) and a nearest edge of the second sheet of material (120) in the cut-out (aforementioned individual instances of first cavity 105, defined by interior borders 102) is or about 1/64 inches or less.
However, it has been held that where the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation. In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955). In the instant matter, the particular chosen dimensions will determine the ultimate number of cards that can be provided within the assembly.
For the reasons set forth in the rejection of claim 11, supra, it would have been obvious to provide the Yost assembly’s rolls with dimensions as desired.
Regarding claim 15, Yost discloses a roll (aforementioned roll on which the overall invention is implemented) made from the method of claim 13.
Regarding claim 16, Yost discloses a method of manufacturing (fig. 10 and para. 21) a roll (per para. 37, the subject matter of the overall invention may be implemented on a roll) to produce a plurality of punch out cards (e.g. information cards discussed at para. 2; note that card 120 shown in fig. 1 shows one instance of such an information card) on the roll (aforementioned roll on which the overall invention is implemented), the method comprising, i) cutting (per para. 29, first cavity 105 can be created by punching or die-cutting document 100 of fig. 1) a plurality (per para. 28, document 100 of fig. 1 may contain multiple first cavities 105) of holes (e.g. plurality of instances of first cavity 105, each defined by interior borders 102, as shown in figs. 1 and 7, and discussed at para. 26) in a roll (aforementioned roll on which the overall invention is implemented) of a carrier sheet (e.g. document 100, as shown in fig. 1) to form a plurality (para. 28) of cut-outs (e.g. individual instances of first cavity 105, defined by interior borders 102) through (para. 26 and figs. 1 and 7) the carrier sheet (100) where the carrier sheet (100) has a top side (e.g. upper surface, as shown in fig. 7) and a bottom side (e.g. lower surface, as shown in fig. 7); ii) for each cut-out (aforementioned individual instances of first cavity 105, defined by interior borders 102), covering (fig. 7) the cut-out (aforementioned individual instances of first cavity 105, defined by interior borders 102) from the bottom-side (aforementioned lower surface) of the carrier sheet (100) by applying to (fig. 7) the bottom-side (aforementioned lower surface) of the carrier sheet (100) a first piece of material (e.g. carrier 110, as shown in figs. 1 and 7) wherein the first piece of material (110) comprises an adhesive (e.g. adhesive 625, as shown in fig. 7 and discussed at para. 31) on a first side (e.g. upper surface, as shown in fig. 7) of the first piece of material (110) on which (fig. 7) the card (120) is adhered (via aforementioned adhesive 625, as shown in fig. 7) and is configured such that the second piece of a material (e.g. card 120, as shown in figs. 1 and 7) is releasably attached (per para. 31, EZ release material may be employed) to the first piece of material (110) and wherein the first piece of material (110) comprises an inkjet receptive coating (per para. 26, carrier 110 is a film or sheet of paper; note that paper is receptive to inkjet printing, and para. 37 indicates that printing can occur via an inkjet imaging process); iii) for each cut-out (aforementioned individual instances of first cavity 105, defined by interior borders 102), adhering (note the use of adhesive 625, as shown in fig. 7) within (fig. 7) the cut-out (aforementioned individual instances of first cavity 105, defined by interior borders 102) a second piece of material (e.g. card 120, as shown in figs. 1 and 7) in the form of a card (para. 26) to the first piece of material (110) through (fig. 7) the cut-out (aforementioned individual instances of first cavity 105, defined by interior borders 102) from (fig. 7) the top side (aforementioned upper surface) of the carrier sheet (100) wherein the second piece of material (120) is made from plastic (per para. 31, at least one layer of the card 120 can comprise plastic); and iv) perforating (i.e. kiss cutting, as discussed at para. 34 and shown in step 1040 of fig. 10) the first piece of material (110) and the second piece of material (120) from the bottom-side (aforementioned lower surface) of the carrier sheet (100) such that the cut is made first through (para. 34 and fig. 10) the first piece of material (110) and then (para. 34 and fig. 10) the second piece of material (120).
Yost does not disclose: i) wherein the roll (aforementioned roll on which the overall invention is implemented) is at least 17 inches in width and the cut-outs (aforementioned individual instances of first cavity 105, defined by interior borders 102) are formed on the roll (aforementioned roll on which the overall invention is implemented) such that when the roll (aforementioned roll on which the overall invention is implemented) is cut to produce two 8 1/2 x 11 sheets side by side widthwise across the roll (aforementioned roll on which the overall invention is implemented), each sheet includes at least one cut out (aforementioned individual instances of first cavity 105, defined by interior borders 102); and ii) wherein the distance between an edge of the cut-out (aforementioned individual instances of first cavity 105, defined by interior borders 102) and a nearest edge of the second sheet of material (120) in the cut-out (aforementioned individual instances of first cavity 105, defined by interior borders 102) is or about 1/64 inches or less.
However, it has been held that where the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation. In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955). In the instant matter, the particular chosen dimensions will determine the ultimate number of cards that can be provided within the assembly.
For the reasons set forth in the rejection of claim 13, supra, it would have been obvious to provide the Yost assembly’s rolls with dimensions as desired.
Regarding claim 17, Yost discloses a roll (aforementioned roll on which the overall invention is implemented) made from the method of claim 16.
Conclusion
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/JUSTIN V LEWIS/Primary Examiner, Art Unit 3637