DETAILED ACTION
Election/Restrictions
Newly submitted claim 22 is directed to an invention that is independent or distinct from the invention originally claimed for the following reasons: As pointed out in the arguments against the 35 USC 112 rejection (remarks, 02/23/26), the newly presented claim is drawn to Figures 1-2B, wherein all previously examined claims were drawn to Figures 3-4B. Although the embodiments are similar, the difference between two patterned adhesion-controlling layers which result in a patterned image upon peeling apart of the label, and a label with only one single non-patterned adhesion-controlling layer extending over the entire surface of the label is significantly different and requires a separate search. The patterned adhesion controlling layers were a critical aspect in the previous searches, and the newly submitted material would entail a different search.
Since applicant has received an action on the merits for the originally presented invention, this invention has been constructively elected by original presentation for prosecution on the merits. Accordingly, claim 22 is withdrawn from consideration as being directed to a non-elected invention. See 37 CFR 1.142(b) and MPEP § 821.03.
To preserve a right to petition, the reply to this action must distinctly and specifically point out supposed errors in the restriction requirement. Otherwise, the election shall be treated as a final election without traverse. Traversal must be timely. Failure to timely traverse the requirement will result in the loss of right to petition under 37 CFR 1.144. If claims are subsequently added, applicant must indicate which of the subsequently added claims are readable upon the elected invention.
Should applicant traverse on the ground that the inventions are not patentably distinct, applicant should submit evidence or identify such evidence now of record showing the inventions to be obvious variants or clearly admit on the record that this is the case. In either instance, if the examiner finds one of the inventions unpatentable over the prior art, the evidence or admission may be used in a rejection under 35 U.S.C. 103 or pre-AIA 35 U.S.C. 103(a) of the other invention.
Allowable Subject Matter
Claims 1-5 and 8-21 allowed.
None of the cited prior art anticipates or renders obvious all of the limitations of independent claims 1 or 21. In particular, the newly amended recitations which recite the fictionality of the adhesion-controlling layer remaining on the “residue” portion (i.e. “the carrier layer is at least partially detachable from at least the first adhesion-controlling layer”). Although Kobren et al. disclose a very similar invention (see rejection to claim 22), they do not disclose or teach a second adhesion-controlling layer, nor is provision of this obvious over other previously cited art.
Response to Arguments
The 35 USC 112 rejection was effectively argued against, with support in Figures 1-2B.
However, in explaining that Figures 1-2B embody the claimed invention of claim 22, the examiner is alerted to subject matter not original presented, wherein Figures 3-4B, with the multiple patterned adhesion-controlling layers being critical to the embodiments of Figures 3-4B, and present throughout the search. Searching of Figures 1-2B involves a significantly different structure (a single, non-patterned adhesion-controlling layer) and a different effect, slight color change vs. a patterned image upon peeling of the label. Thus, because only the first embodiment was searched, and the second embodiment is claimed, for the first time, after several office actions, it is withdrawn by original presentation.
Conclusion
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
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