DETAILED ACTION
Election/Restrictions
Claims 23-26 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected invention, there being no allowable generic or linking claim. Election was made without traverse in the reply filed on 09/11/25.
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 3 and 4 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.
Claim 3 recites “wherein the adhesive layer defines a cut area wherein the adhesive layer is not attached to the paper layer” which is indefinite. The adhesive layer defines an adhesive area, not a “cut area”. The “cut area” is between the adhesive layer, thus the recitation is indefinite and unclear.
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 1-6 and 9-21 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Serre (FR 2,611,964) (See NPL for English Translation).
In respect to claim 1, Serre discloses a bottle comprising a body 29 and an opening (intrinsic to a “bottle”) and a label 24 attached to the body (0007; Fig. 7); the label consisting of a paper layer 1 having an adhesive layer 13 on an inner face of the paper layer (0006; Fig. 3); the adhesive layer covers 36% of the paper layer (140 width divided by 25 for each adhesive width, verified measuring pixels on the screen).
In respect to claims 3 and 4, the claims are indefinite for the reasons stated in the 35 USC 112 rejection above, however, Serre disclose the adhesive layers comprising a first strip and a second strip, with a “cut area” between the strips, demarcated by perforations 14 (Fig. 3).
In respect to claims 5 and 6, Serre discloses that the paper layer includes a first, second, third, and fourth edge. The first and second strips are either adjacent the first edge and third edge, respectively, or the second edge and fourth edge, respectively, depending on which arbitrary designation is given to the edges (Fig. 3).
In respect to claim 9, Serre discloses the claimed invention for the reasons stated above, and additionally discloses forming an image via a printing apparatus. The term “original art” does not necessitate different structure from the disclosed colored ink on the paper (0007). “Original art” is understood to be a term to describe artwork that is a 1-1 piece. In other words, there is no structural distinction, only who or whom produced the work and condition of product (e.g. “only one”). There is no structural distinction between any printed material and “original” printed material absent product-by-process distinction. Although, 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.” In re Thorpe, 777 F.2d 695, 698, 227 USPQ 964, 966 (Fed. Cir. 1985)
In respect to claims 10-21, Serre discloses some of the method of printing recited in the claims (0007), but not all of the litany of different known printing processes. Again, similar to claim 9, the resultant ink on the page is not structural distinct based on a broad printing step. Rather, the resultant product, namely the ink and paper layer, could have been formed by any of the recited method.
Claims 1 and 2 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Wright (US 2,091,346).
Wright discloses a bottle comprising a body B and an opening and a label C attached to the body (Fig. 1); the label consisting of a paper layer (readily inferred from a perforated label from a 1937 patent) having an adhesive layer 9 on an inner face of the paper layer (Fig. 4); the adhesive layer covers 23% of the paper layer (220 width divided by 25 for each adhesive width, verified measuring pixels on the screen).
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 2 is additionally rejected under 35 U.S.C. 103 as being unpatentable over Serre (FR 2,611,964) (See NPL for English Translation).
Serre discloses a similar range to 20-30%, but slight larger (36%). However, it would have been obvious to dimension the widths of the adhesive strips to a slightly different ratio, since where the only difference between the prior art and the claims was a recitation of relative dimensions of the claimed device and a device having the claimed relative dimensions would not perform differently than the prior art device, the claimed device was not patentably distinct from the prior art device. In Gardner v. TEC Systems, Inc., 725 F.2d 1338, 220 USPQ 777 (Fed. Cir. 1984), cert. denied, 469 U.S. 830, 225 USPQ 232 (1984). Furthermore, there absolutely specificity for this range, as other claims have the range as large as 2-70%.
Claims 7 and 8 are rejected under 35 U.S.C. 103 as being unpatentable over Serre (FR 2,611,964) (See NPL for English Translation).
Serre discloses paper but does not disclose 100% cotton or 85% cotton/15% linen (also a cotton?), however, selection of any well-known paper formulations would be obvious since it has been held to be within the general skill of a worker in the art to select a known material on the basis of its suitability for the intended use as a matter of obvious design choice. In re Leshin, 125 USPQ 416.
Claims 1-22 are additionally rejected under 35 U.S.C. 103 as being unpatentable over Subtle Spirits (NPL) in view of Serre (FR 2,611,964) (See NPL for English Translation).
Subtle Spirits discloses providing original artwork on paper labels applied to a whiskey bottle (NPL) which may be signed by the artist. The structural details of the label are not disclosed, however, Serre teaches a label with a removable portion as detailed above. It would have been obvious to provide the paper layer taught in Subtle Spirits with selective (10-40%) adhesive and perforations in view of Serre to allow the artwork to be cleanly detached without scissors and free of adhesive (0004-0005).
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. Hincks et al. (US 2009/0246427), Couture (US 2015/0221239), Boucher et al. (US 8,609,211), and Frigoli (EP 2,006,823), disclose similar inventions.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to KYLE ROBERT GRABOWSKI whose telephone number is (571)270-3518. The examiner can normally be reached M-Th 8am-6pm.
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/KYLE R GRABOWSKI/Primary Examiner, Art Unit 3637