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 .
Continued Examination Under 37 CFR 1.114
A request for continued examination under 37 CFR 1.114, including the fee set forth in 37 CFR 1.17(e), was filed in this application after final rejection. Since this application is eligible for continued examination under 37 CFR 1.114, and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114. Applicant's submission filed on 11 May 2026 has been entered.
Specification
The amendment filed on 24 April 2026 is objected to under 35 U.S.C. 132(a) because it introduces new matter into the disclosure. 35 U.S.C. 132(a) states that no amendment shall introduce new matter into the disclosure of the invention. The added material which is not supported by the original disclosure is as follows: the originally filed specification does not appear to support the newly added limitation of “sized” sense marks within amended claims 13 and 18-19.
Applicant is required to cancel the new matter in the reply to this Office Action.
Claim Rejections - 35 USC § 112
The following is a quotation of the first paragraph of 35 U.S.C. 112(a):
(a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
The following is a quotation of the first paragraph of pre-AIA 35 U.S.C. 112:
The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention.
Claims 13-16 and 18-19 are rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the written description requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for applications subject to pre-AIA 35 U.S.C. 112, the inventor(s), at the time the application was filed, had possession of the claimed invention. See the listing of new matter set forth supra.
Claims 14-16 are rejected as depending (directly or indirectly) from rejected independent claim 13.
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 1-16 and 18-19 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.
The term “approximately” in claims 1, 13 and 18 is a relative term which renders the claims indefinite. The term “approximately” 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 claims 13 and 18 recitations of “a particular adhesive free area”, “a particular adhesive patch” and “a particular linerless tire label” are unclear, as it is unknown exactly which of the plurality of adhesive-free areas, adhesive patches, and linerless tire labels are being invoked. Exactly what structure/configuration is sought? Please review/revise/clarify.
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. Do Applicants actually intend the recited adhesive patches to be “disposed on” the linerless tire labels? Exactly what structure/configuration is sought? Please review/revise/clarify.
Claims 2-12 and 14-16 are rejected as depending (directly or indirectly) from rejected independent claims 1 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 1-16 and 18-19 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 gaps (e.g. absences of adhesive, as shown in figs. 2-3) that surround (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 product 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 apply the aforementioned Conwell teaching to Hill, thus allowing the Hill label 12 to be utilized as a label applied to tires as desired, in order to provide the benefit of presenting information and indicia on said tires ss desired.
Hill also does not disclose the gaps (aforementioned absences of adhesive, as shown in figs. 2-3) being approximately 2mm wide.
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’s already-disclosed “gaps” (aforementioned absences of adhesive) will determine the ultimate strength with which the Hill label 12 is bonded to a product to be labeled.
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 outside of adhesive patch 38 measuring approximately 2mm wide, in order to provide the benefit of allowing the Hill label 12 to adhere to the aforementioned tires with a level of adhesive strength 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 label 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 respective 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’s already-disclosed “gaps” (aforementioned absences of adhesive) will determine the ultimate strength with which the Hill label 12 is bonded to a product to be labeled.
For the reasons set forth in the rejection of claim 1, supra, it would have been obvious to provide Hill’s labels 12 with adhesive free areas outside of adhesive patch 38 measuring 2mm wide.
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) sized (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. areas to the left and right of an 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. areas to the left and right of a successive/lower instance of adhesive patch 38, as shown in fig. 3) for a next (i.e. successive/lower instance, as shown in fig. 3) adhesive patch (38); v) wherein each sized 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 apply the aforementioned Conwell teaching to Hill, thus allowing the Hill label 12 to be utilized as a label applied to tires as desired.
Hill also does not disclose each sized sense mark (42) being approximately 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 an approximately 5mm width dimension as desired in order to provide the benefit of allowing them be detectable by printers 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 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) sized sense marks (42, as shown in fig. 3 and discussed at para. 47), each adhesive patch (38) associated with (figs. 2-3) a particular linerless (para. 21 and 39) label (12, as shown in figs. 1-3 and discussed at para. 35) of a plurality (figs. 2-3) of linerless (para. 21 and 39) labels (12) defined in (figs. 2-3) the roll (18), wherein applying the adhesive patches (38) includes offsetting (figs. 2-3) each adhesive patch (38) from edges (e.g. distal left and right edges of web 20, as shown in figs. 2-3) of a substrate (e.g. web 20, as shown in figs. 2-3 and discussed at para. 39) of the roll (18) such adhesive-free areas (e.g. areas outside of adhesive patch 38, as shown in figs. 2-3) create gaps (e.g. absences of adhesive, as shown in figs. 2-3) that surround (figs. 2-3) each adhesive patch (38); ii) printing (fig. 3) the sized sense marks (42) on the backside (36) adjacent to (figs. 2-3) the adhesive-free areas (areas outside of adhesive patch 38) between (figs. 2-3) the adhesive patches (38); iii) 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 iv) winding (para. 39) the roll (18) as a roll (18) of the plurality (figs. 2-3) 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 apply the aforementioned Conwell teaching to Hill, thus allowing the Hill label 12 to be utilized as a label applied to tires as desired.
Hill also does not disclose wherein the gaps (aforementioned absences of adhesive, as shown in figs. 2-3) are approximately 2mm wide.
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’s already-disclosed “gaps” (aforementioned absences of adhesive) will determine the ultimate strength with which the Hill label 12 is bonded to a product to be labeled.
For the reasons set forth in the rejection of claim 1, supra, it would have been obvious to provide Hill’s labels 12 with adhesive free areas outside of adhesive patch 38 measuring approximately 2mm wide.
Hill further does not disclose wherein each sized sense mark (42) is approximately 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.
For the reasons set forth in the rejection of claim 13, supra, it would have been obvious to provide Hill’s sense marks 42 with an approximately 5mm width dimension 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 sized 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 response to Applicants’ argument that Hill and Conwell do not teach the newly added limitation of “wherein the gaps are approximately 2mm wide” (Arguments/Remarks pgs. 6-7), the Office respectfully encourages Applicants to see the treatment of said limitation set forth supra.
In response to Applicants’ argument that Hill and Conwell do not teach the newly added limitation of “wherein each sized sense mark is approximately 5mm in width” (Arguments/Remarks pgs. 7-8), the Office respectfully encourages Applicants to see the treatment of said limitation set forth supra.
In response to Applicants’ argument that Hill does not recognize or address the problem of adhesive buildup during cutting operations (Arguments/Remarks pg. 9), the Office respectfully asserts that as presently drafted, Applicants’ claims do not contain any limitations specifically regarding adhesive buildup. Accordingly, if such properties are sought, then Applicants are encouraged to duly amend the claim language to call for such, provided that sufficient support is provided within Applicants’ originally filed specification.
In response to Applicants’ argument that Conwell’s labels are not provided in roll form for automated cutting and do not address cutting interference or adhesive buildup problems (Arguments/Remarks pg. 10), the Office respectfully asserts that: i) Conwell paragraphs 44 and 47 discuss the capability of providing the pertinent labels in roll form; and ii) as presently drafted, Applicants’ claims do not contain any limitations specifically regarding automated cutting, cutting interference, or adhesive buildup. Accordingly, if such properties are sought, then Applicants are encouraged to duly amend the claim language to call for such, provided that sufficient support is provided within Applicants’ originally filed specification.
In response to Applicants’ argument that Examiner’s proposed combination would merely apply Hill’s general label structure to tire applications as taught by Conwell (Arguments/Remarks pg. 10), the Office respectfully encourages Applicants to review the actual bases of rejection, and combinations made in association therewith, set forth supra.
In response to Applicants’ argument that there would be no motivation to select the specific 2mm gap width and 5mm sense mark width recited in the claims (Arguments/Remarks pg. 10), the Office respectfully encourages Applicants to see the pertinent modifications set forth supra.
In response to Applicants’ argument that neither Hill nor Conwell teaches the newly added method step of printing 5mm wide sense marks adjacent to 2mm wide adhesive-free areas (Arguments/Remarks pg. 12), the Office respectfully encourages Applicants to see the pertinent modification set forth supra.
In response to Applicants’ argument that neither Hill nor Conwell discloses the general conditions of: i) creating adhesive-free gaps around adhesive patches to prevent cutting interference; ii) using sized sense marks in combination with dimensional gaps; and iii) the relationship between gap width and sense mark width to create error margins (Arguments/Remarks pg. 12), the Office respectfully asserts that as presently drafted, Applicants’ claims do not specifically mention cutting interference, dimensional gaps or error margins. Accordingly, if such properties are sought, then Applicants are encouraged to duly amend the claim language to call for such, provided that sufficient support is provided within Applicants’ originally filed specification.
In response to Applicants’ argument that Hill does not teach: i) 2mm wide adhesive-free gaps surrounding adhesive patches; ii) 5mm wide sized sense marks; and iii) the combination of these dimensional features to prevent cutting interference (Arguments/Remarks pg. 13), the Office respectfully asserts that as presently drafted, Applicants’ claims do not specifically mention cutting interreference. Accordingly, if such properties are sought, then Applicants are encouraged to duly amend the claim language to call for such, provided that sufficient support is provided within Applicants’ originally filed specification. With regard to the 2mm/5mm limitations, Applicants are encouraged to see the treatment of pertinent claims set forth supra.
In response to Applicants’ argument that Conwell provides no teaching regarding: i) adhesive-free gap dimensions; ii) sense mark dimensions; iii) roll-fed labels with automated cutting; and iv) dimensional relationships to prevent cutting interference (Arguments/Remarks pg. 13), the Office respectfully asserts that as presently drafted, Applicants’ claims do not specifically mention automated cutting or cutting interference. Accordingly, if such properties are sought, then Applicants are encouraged to duly amend the claim language to call for such, provided that sufficient support is provided within Applicants’ originally filed specification. With regard to the dimension limitations, Applicants are encouraged to see the treatment of pertinent claims set forth supra.
Conclusion
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
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