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 .
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 2 and 14 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. “A single claim which claims both an apparatus and the method steps of using the apparatus is indefinite under 35 U.S.C. 112(b).” (MPEP § 2173.05 (p) II)
The term “trip dots” in claim 14 is a relative term which renders the claim indefinite. The term “trip dots” is not defined by the claim, 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.
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)(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.
Claims 1, 2, 10, 11, 15, and 17 are rejected under 35 U.S.C. 102(a)(2) as being unpatentable by Constantine (US 2006/0060294).
With respect to claims 1, 2, 10, and 11, Constantine teaches a marker transfer tape having a length and a width, the marker transfer tape comprising:
a transfer material layer, i.e. circular labels (14) extending along the length and width of the marker transfer tape (12), the transfer material layer having a thickness and a bottom side and a top side spaced apart along the thickness;
an adhesive layer along the bottom side of the transfer material layer, the adhesive layer comprising pressure sensitive adhesive; and
a marker separation cut (16) formed in the marker transfer tape, the marker separation cut extending along the length of the marker transfer tape and located centrally along the width of the marker transfer tape, the marker separation cut spanning at least the thickness of the transfer material layer such that the marker separation cut defines:
a first removable portion on a first side of the marker separation cut,
a second removable portion on a second side of the marker separation cut, and
a plurality of markers between the first removable portion and the second removable portion, the plurality of markers being spaced along the length of the marker transfer tape (abstract; Figure 1).
With respect to claim 15, Constantine suggests from the drawings that the markers are evenly spaced along the length of the marker transfer tape (Figures 1 and 3).
With respect to claim 17, Constantine teaches further teaches a release coating covering the adhesive layer (paragraphs 0022-0023).
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.
This application currently names joint inventors. In considering patentability of the claims the examiner presumes that the subject matter of the various claims was commonly owned as of the effective filing date of the claimed invention(s) absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and effective filing dates of each claim that was not commonly owned as of the effective filing date of the later invention in order for the examiner to consider the applicability of 35 U.S.C. 102(b)(2)(C) for any potential 35 U.S.C. 102(a)(2) prior art against the later invention.
Claims 12, 13, and 16 are rejected under 35 U.S.C. 103 as being unpatentable over Constantine, as applied to claim 1 above, and further in view of Freedman (US 5516393).
The teachings of claim 1 are as described above.
With respect to the label thickness and label material, it would have been obvious to configure those to one of ordinary skill in the art’s preference, such as cost or apparatus stability (Freedman: column 2, lines 1-4; column 11, lines 24-26).
With respect to claim 16, Freedman teaches the tape is provided in a roll (Freedman: Figure 1D).
Allowable Subject Matter
Claims 3, 4, 5, 6, 7, 8, and 9 are objected to as being dependent upon a rejected base claim, but would be allowable if rewritten in independent form including all of the limitations of the base claim and any intervening claims.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to SONYA M SENGUPTA whose telephone number is (571)272-6019. The examiner can normally be reached Monday-Friday, 9:30am-5:00pm.
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, Philip Tucker can be reached at 571-272-1095. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/SONYA M SENGUPTA/Primary Examiner, Art Unit 1745
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