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 7-8 and 12-19 and 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.
As indicated in the previously issued Office Action, claim 7 recites the limitation "the linerless tire". There is insufficient antecedent basis for this limitation in the claim.
As indicated in the previously issued Office Action, the claim 18 recitation of “associated with” is unclear, as it is unknown particularly what kind of “association” is desired. Exactly what structure/configuration is sought? Please review/revise/clarify.
The claim 12 recitation of “a particular side” is unclear, as it is unknown exactly which “side” is intended. Do Applicants actually intend to recite “abutting a side of the adhesive patch”?
The term “oversized” in claims 13 and 17-19 is a relative term which renders the claims indefinite. The term “oversized” 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.
The claim 13 recitation of “a particular adhesive free area” is unclear, as it is unknown exactly which “adhesive free area” is intended. Do Applicants actually intend to recite “situated under an adhesive free area”?
Claims 8 and 14-16 are rejected as depending (directly or indirectly) from rejected claims 7 and 13.
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.
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 1-19 are rejected under 35 U.S.C. 103 as being unpatentable over U.S. Patent Application Publication No. 2018/0053446 to Hill et al. (“Hill”) in view of U.S. Patent Application Publication No. 2006/0290505 to Conwell et al. (“Conwell”).
Regarding claim 1, Hill discloses a linerless (para. 21 and 39) label (12, as shown in figs. 1-3 and discussed at para. 35), comprising: i) a substrate (e.g. web 20, as shown in figs. 2-3 and discussed at para. 39); and ii) an adhesive patch (38, as shown in figs. 2-3) disposed on (written abstract and para. 37) a backside (e.g. backside surface 36, as shown in figs. 2-3 and discussed at para. 40) of the substrate (20) and surrounded by (figs. 2-3) adhesive-free areas (e.g. areas outside of adhesive patch 38, as shown in figs. 2-3), wherein the adhesive-free areas (aforementioned areas outside of adhesive patch 38) are adjacent to (figs. 2-3) sides (e.g. upper, lower, left and right edges of each individual label 12, as shown in figs. 2-3) of the backside (36), wherein the adhesive patch (38) is offset from (figs. 2-3) edges (e.g. distal left and right edges of web 20, as shown in figs. 2-3) of the substrate (20) such that the adhesive-free areas (aforementioned areas outside of adhesive patch 38) create a gap (e.g. absence of adhesive, as shown in figs. 2-3) that surrounds (figs. 2-3) the adhesive patch (38).
Hill does not specifically disclose its linerless label (12) being a “tire” label.
Conwell teaches the concept of utilizing a label (10, as shown in fig. 2) as a tire label (fig. 2 and para. 3).
Given that Hill and Conwell both concern adhesive labels that can be provided in rolled configurations (Hill fig. 2, and Conwell para. 44 and 47) and in linerless form (Hill para. 21 and 39, and Conwell para. 44), it would have been obvious to a person of ordinary skill in the art before the effective filing date of the claimed invention to allow the Hill label 12 to be utilized as a label upon tires as desired, in order to provide the benefit of presenting information and indicia thereon as desired.
Regarding claim 2, Hill in view of Conwell discloses the linerless tire label of claim 1 further comprising: a release coating (e.g. low surface energy silicone release, as discussed at Hill para. 22) disposed on a frontside (e.g. Hill front surface 34, as shown in fig. 3; note that the “top surface” mentioned in para. 22 is correlated with said front surface 34) of the substrate (Hill 20).
Regarding claim 3, Hill in view of Conwell discloses the linerless tire label of claim 2, wherein the release coating (aforementioned Hill low surface energy silicone release) is disposed over (Hill para. 22) a print coating (e.g. Hill print or identifying indicia 16, as shown in fig. 1 and discussed at para. 36) that is on (compare Hill figs. 1 and 3) the frontside (Hill 34) of the substrate (Hill 20).
Regarding claim 4, Hill in view of Conwell discloses the linerless tire label of claim 3, wherein the print coating (Hill 16) is one of a thermally activated print coating (Hill para. 9 and 22), a laser print coating, dot matrix print coating, or inkjet coating.
Regarding claim 5, Hill in view of Conwell discloses the linerless tire label of claim 4, wherein the release coating (aforementioned Hill low surface energy silicone release) is a silicone-based release coating (Hill para. 22).
Regarding claim 6, Hill in view of Conwell discloses the linerless tire label of claim 1, wherein adhesive patch (Hill 38; note that the Office assumes that Applicants actually intend to recite “wherein the adhesive patch”) comprises hotmelt rubber adhesive (per Hill para. 65, a heat activated adhesive may be utilized as desired), solvent-acrylic adhesive or emulsion-acrylic adhesive.
Regarding claim 7, Hill in view of Conwell discloses the linerless tire of claim 1, wherein adhesive of the adhesive patch (Hill 38) is discontinuous within (per Hill para. 59, the adhesive patch 38 can be formed according to the pattern shown in fig. 7C) the adhesive patch (Hill 38).
Regarding claim 8, Hill in view of Conwell discloses the linerless tire label of claim 7, wherein the discontinuous adhesive is arranged within (per Hill para. 59, the adhesive patch 38 can be formed according to the pattern shown in fig. 7C) the adhesive patch (Hill 38) in a pattern (Hill fig. 7C).
Regarding claim 9, Hill in view of Conwell discloses the linerless tire label of claim 1, wherein the adhesive-free areas (aforementioned areas outside of Hill adhesive patch 38) are continuous (Hill figs. 2-3) and connected (Hill figs. 2-3) along a periphery (Hill figs. 2-3) of the backside (Hill 36).
Regarding claim 10, Hill in view of Conwell discloses the linerless tire label of claim 9, wherein the adhesive patch (Hill 38) is substantially centered (Hill figs. 2-3) on the backside (Hill 36) adjacent to (Hill figs. 2-3) the adhesive free areas (aforementioned areas outside of Hill adhesive patch 38).
Regarding claim 11, Hill in view of Conwell discloses the linerless tire label of claim 1, wherein each adhesive free area (aforementioned areas outside of Hill adhesive patch 38) corresponds to (i.e. abuts, as shown in Hill figs. 2-3) an outer side (e.g. peripheral edges, as shown in Hill figs. 2-3) of the backside (Hill 36).
Regarding claim 12, Hill in view of Conwell discloses the linerless tire label of claim 1, but does not disclose wherein each adhesive free area (aforementioned areas outside of Hill adhesive patch 38) is 2mm wide extending from an outer side and abutting a particular side of the adhesive patch (Hill 38).
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 of the Hill adhesive free area will determine the ultimate degree to which the Hill label (12) may be adhered to tires.
Accordingly, it would have been obvious to a person of ordinary skill in the art before the effective filing date of the claimed invention to provide Hill’s labels 12 with adhesive free areas limited to dimensions as desired in order to provide the benefit of allowing them to adhere to tires as desired.
Regarding claim 13, Hill discloses a roll (18, as shown in fig. 2) of linerless (para. 21 and 39) labels (12, as shown in figs. 1-3 and discussed at para. 35), comprising: i) a substrate (e.g. web 20, as shown in figs. 2-3 and discussed at para. 39); ii) adhesive patches (38, as shown in figs. 2-3) disposed on (written abstract and para. 37) a backside (e.g. backside surface 36, as shown in figs. 2-3 and discussed at para. 40) of the substrate (20); iii) each of a plurality of sides (e.g. upper, lower, left and right edges of each adhesive patch 38, as shown in figs. 2-3) of each adhesive patch (38) is adjacent to (figs. 2-3) an adhesive-free area (e.g. areas outside of each adhesive patch 38, as shown in figs. 2-3) along (figs. 2-3) the backside (36); and iv) oversized (fig. 3) sense marks (42, as shown in fig. 3 and discussed at para. 47) printed or imaged on (fig. 3) the backside (36), each sense mark (42) extending across a width (fig. 3) of the backside (36) and situated under (fig. 3) a particular adhesive free area (e.g. area beneath each adhesive patch 38, as shown in fig. 3) for a particular adhesive patch (38) and above (fig. 3) a next adhesive free area (e.g. area above each adhesive patch 38, as shown in fig. 3) for a next adhesive patch (38); v) wherein each oversized sense mark (42) delineates (para. 47) two linerless tire labels (12) defined within (compare figs. 2-3) the roll (18) of linerless labels (12).
Hill does not specifically disclose its linerless labels (12) being “tire” labels.
Conwell teaches the concept of utilizing a label (10, as shown in fig. 2) as a tire label (fig. 2 and para. 3).
For the reasons set forth within the rejection of claim 1, supra, it would have been obvious to allow the Hill label 12 to be utilized as a label upon tires as desired.
Regarding claim 14, Hill in view of Conwell discloses the roll of linerless tire labels of claim 13, further comprising: a release coating (e.g. low surface energy silicone release, as discussed at Hill para. 22) disposed on a frontside (e.g. Hill front surface 34, as shown in fig. 3; note that the “top surface” mentioned in para. 22 is correlated with said front surface 34) of the substrate (Hill 20).
Regarding claim 15, Hill in view of Conwell discloses the roll of linerless tire labels of claim 14, wherein release coating (aforementioned Hill low surface energy silicone release) is disposed over top (Hill para. 22) of a print coating (e.g. Hill print or identifying indicia 16, as shown in fig. 1 and discussed at para. 36) that is on (compare Hill figs. 1 and 3) the frontside (Hill 34).
Regarding claim 16, Hill in view of Conwell discloses the roll of linerless tire labels of claim 15, wherein release coating (aforementioned Hill low surface energy silicone release) is a silicone release coating (Hill para. 22) and adhesive of the adhesive patches (Hill 38) includes a hotmelt rubber adhesive (per Hill para. 65, a heat activated adhesive may be utilized as desired).
Regarding claim 17, Hill in view of Conwell discloses the roll of linerless tire labels of claim 13, but does not disclose wherein each oversized sense mark (42) is 5mm in width.
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 of the Hill sense marks 42 will determine the degree to which they can be detected by printers.
Accordingly, it would have been obvious to a person of ordinary skill in the art before the effective filing date of the claimed invention to provide Hill’s sense marks 42 with dimensions as desired in order to provide the benefit of allowing them be optimally detectable by printers.
Regarding claim 18, Hill discloses a method (claim 19) comprising: i) applying (para. 91), by a press (400, as shown in fig. 11 and discussed at para. 92), adhesive patches (38, as shown in figs. 2-3) on (written abstract and para. 37) a backside (e.g. backside surface 36, as shown in figs. 2-3 and discussed at para. 40) of a roll (18, as shown in fig. 2) separated by (fig. 3) oversized (fig. 3) sense marks (42, as shown in fig. 3 and discussed at para. 47), each adhesive patch (38) associated with (figs. 2-3) a linerless (para. 21 and 39) label (12, as shown in figs. 1-3 and discussed at para. 35); ii) applying (para. 91), by the press (400), a release coating (e.g. low surface energy silicone release, as discussed at para. 22) over a frontside (e.g. front surface 34, as shown in fig. 3; note that the “top surface” mentioned in para. 22 is correlated with said front surface 34) of the roll (18); and iii) winding (para. 39) the roll (18) as a roll (18) of linerless (para. 21 and 39) labels (12).
Hill does not specifically disclose its linerless labels (12) being “tire” labels.
Conwell teaches the concept of utilizing a label (10, as shown in fig. 2) as a tire label (fig. 2 and para. 3).
For the reasons set forth within the rejection of claim 1, supra, it would have been obvious to allow the Hill label 12 to be utilized as a label upon tires as desired.
Regarding claim 19, Hill in view of Conwell discloses the method of claim 18, wherein applying (Hill para. 91) the adhesive patches (Hill 38) further includes printing (Hill fig. 3) the oversized sense marks (Hill 42) on the backside (Hill 36) adjacent to (Hill fig. 3) adhesive-free areas (e.g. areas outside of Hill adhesive patch 38, as shown in figs. 2-3) between (Hill fig. 3) the adhesive patches (Hill 38).
Response to Arguments
In view of Applicants’ amendment, a further search of the pertinent areas of prior art was executed. Within said search, the aforementioned Hill and Conwell references were identified. Accordingly, Applicants’ arguments have been considered but are moot because the new ground of rejection does not rely on any reference applied in the prior rejection of record for any teaching or matter specifically challenged in the argument.
Conclusion
Applicant's amendment necessitated the new grounds of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any nonprovisional extension fee (37 CFR 1.17(a)) pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the mailing date of this final action.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to JUSTIN V LEWIS whose telephone number is (571)270-5052. The examiner can normally be reached M-F 7:30AM-5:00PM.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Daniel J. Troy can be reached at (571) 270-3742. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/JUSTIN V LEWIS/Primary Examiner, Art Unit 3637