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 .
Election/Restrictions
Applicant’s election without traverse of Group II, claims 13-16, in the reply filed on 2/10/2026 is acknowledged.
Claims 1-12 and 17-20 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected invention(s), there being no allowable generic or linking claim. Election was made without traverse in the reply filed on 2/10/2026.
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.
Claim 16 is 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 claim 16, it is unclear from the claim limitations what is being claimed given that the substrate is recited as comprising the web, which in turn is recited as being wound into the roll, and includes additional labels. However, it is unclear if the label itself as recited in current claim 13, to include the substrate further comprising the web, is also wound into a web and/or is one of the “additional labels.”
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.
(a)(2) the claimed invention was described in a patent issued under section 151, or in an application for patent published or deemed published under section 122(b), in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention.
Claim(s) 13 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Brown et al. (US 6586510 B1).
Regarding claim 13, Brown teaches a multilayer PSA construction comprising facestock (12) (substrate) comprising inner and outer surfaces (12a) (backside of the substrate) and (12b), and an adhesive laminate comprising at least a face side adhesive (FSA) (16) and a liner side adhesive (LSA) (18), or multiple adhesive layers (column 6, lines 32-44; Figure). Brown also teaches an embodiment wherein a primer is coated on the facestock (12) (column 6, lines 45-47).
The Examiner notes that the primer layer teaches a first layer of adhesive on the backside of substrate (i.e., inner surface (12a)); FSA layer (16) teaches a second layer of adhesive deposited over the first layer of adhesive; and LSA layer (18) teaches a third layer of adhesive deposited over the second layer of adhesive. The invention of Brown is directed to a label (column 1, lines 11-13).
Claim(s) 13 and 15 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Raeymackers et al. (US 2018/0345625 A1).
Regarding claim 13, Raeymackers claims a marking element (label) for labelling a textile (claims 1) comprising a fabric layer, an adhesive bonded to the lower surface of the fabric layer, which said adhesive layer comprises a second sublayer between the first sublayer and the fabric layer; and the first layer secures the marking element to the textile.
Raeymackers also claims a third sublayer located between the second sublayer and the fabric layer (claims 5 and 7). The Examiner submits that the claimed marking element of Raeymackers teaches laminate with the ordered structure given by fabric layer/third sublayer/second sublayer/first sublayer wherein:
the fabric layer provides the presently claimed substrate;
the third sublayer provides the presently claimed first layer of adhesive on the backside of the substrate;
the second sublayer provides the presently claimed second layer of adhesive on the first layer of adhesive; and.
the first sublayer provides the presently claimed third layer of adhesive on the second layer of adhesive.
Regarding claim 15, Raeymackers does not disclosed or suggest that the marking element comprises a release liner.
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.
Claim(s) 14-15 is/are rejected under 35 U.S.C. 103 as being unpatentable over Brown et al. (US 6586510 B1).
Regarding claim 14, as noted above, Brown teaches that multilayer PSA construction comprises at least a face side adhesive (FSA) (16) and a liner side adhesive (LSA) (18), and multiple adhesive layers, or additional layers, as well as the primer layer.
Thus, one skilled in the art would have recognized that the invention of Brown contemplated the employment of additional layer(s) of adhesive other than the primer, FSA and LSA layers as in the present invention.
Regarding claim 15, while Brown teaches the employment of a release liner (20) (see the figure), Brown also teaches that the PSA composition can be applied to a facestock (linerless label) (column 6, lines 15-16).
Claim(s) 16 is/are rejected under 35 U.S.C. 103 as being unpatentable over Brown et al. (US 6586510 B1) in view of Hill et al. (US 2018/0053446 A1).
Regarding claim 16, Brown teaches the multilayer PSA label constructions as in the rejection current claims 13-15 set forth above, but is silent to said label defined by sense marks within the facestock (12) (i.e., web).
However, Brown does instruct the skilled artisan that a modern label is passed through an apparatus that converts the construction into label stock that comprises a roll of labels (column 2, lines 10-16).
In addition, Hill teaches an adhesive label and roll (title) comprising adhesive patches and sense marks (42) on the web (20) (para 0047) towards strategic placement of the patches during processing (e.g., alignment with the cutting mechanism) (para 0023-0024).
Therefore, it would have been obvious to one of ordinary skill in the art before the effective date of the present invention to employ sense marks in the multilayer PSA label constructions of Brown towards alignment of the individual labels with the processing apparatuses for generating the final label products as in the present invention,
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 13-15 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 13-14 of copending Application No. 18/450306.
Although the claims at issue are not identical, they are not patentably distinct from each other because the claims of the copending teach all the limitations of the presently claimed invention except that claims of the copending except that the copending is directed to a toll of labels while the present invention claims only a label. However, one skilled in the art would have found it obvious that the roll of labels of the copending comprises individual labels as presently claimed.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to FRANK D DUCHENEAUX whose telephone number is (571)270-7053. The examiner can normally be reached 8:30 PM - 5:00 PM.
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, Alicia A Chevalier can be reached at 571-272-1490. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/FRANK D DUCHENEAUX/Primary Examiner, Art Unit 1788 3/4/2026