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
1. 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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 02/19/2026 has been entered.
Response to Arguments/Amendments
2. Under further search and consideration new prior art was found to better address the immediate claims and as such the rejections involving Hsiu-Man are withdrawn and Applicant’s arguments are moot.
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.
3. Claim 10 is 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.
Regarding claim 10, Claim 10 recites the limitation "the adjacent openings" in line 2. There is insufficient antecedent basis for this limitation in the claim. Claim 1 establishes “at least one opening” which in the case of only one opening there would not be adjacent openings, and therefore this term lacks antecedent basis.
Double Patenting
The nonstatutory double patenting rejection is based on a judicially created doctrine grounded in public policy (a policy reflected in the statute) so as to prevent the unjustified or improper timewise extension of the “right to exclude” granted by a patent and to prevent possible harassment by multiple assignees. A nonstatutory double patenting rejection is appropriate where the conflicting claims are not identical, but at least one examined application claim is not patentably distinct from the reference claim(s) because the examined application claim is either anticipated by, or would have been obvious over, the reference claim(s). See, e.g., In re Berg, 140 F.3d 1428, 46 USPQ2d 1226 (Fed. Cir. 1998); In re Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993); In re Longi, 759 F.2d 887, 225 USPQ 645 (Fed. Cir. 1985); In re Van Ornum, 686 F.2d 937, 214 USPQ 761 (CCPA 1982); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Thorington, 418 F.2d 528, 163 USPQ 644 (CCPA 1969).
A timely filed terminal disclaimer in compliance with 37 CFR 1.321(c) or 1.321(d) may be used to overcome an actual or provisional rejection based on nonstatutory double patenting provided the reference application or patent either is shown to be commonly owned with the examined application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. See MPEP § 717.02 for applications subject to examination under the first inventor to file provisions of the AIA as explained in MPEP § 2159. See MPEP § 2146 et seq. for applications not subject to examination under the first inventor to file provisions of the AIA . A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
The filing of a terminal disclaimer by itself is not a complete reply to a nonstatutory double patenting (NSDP) rejection. A complete reply requires that the terminal disclaimer be accompanied by a reply requesting reconsideration of the prior Office action. Even where the NSDP rejection is provisional the reply must be complete. See MPEP § 804, subsection I.B.1. For a reply to a non-final Office action, see 37 CFR 1.111(a). For a reply to final Office action, see 37 CFR 1.113(c). A request for reconsideration while not provided for in 37 CFR 1.113(c) may be filed after final for consideration. See MPEP §§ 706.07(e) and 714.13.
The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The actual filing date of the application in which the form is filed determines what form (e.g., PTO/SB/25, PTO/SB/26, PTO/AIA /25, or PTO/AIA /26) should be used. A web-based eTerminal Disclaimer may be filled out completely online using web-screens. An eTerminal Disclaimer that meets all requirements is auto-processed and approved immediately upon submission. For more information about eTerminal Disclaimers, refer to www.uspto.gov/patents/apply/applying-online/eterminal-disclaimer.
4. Claims 1-10 Are rejected on the ground of nonstatutory double patenting as being unpatentable over the claims of U.S. Patent No. 11,952,162 (hereafter ‘162). Although the claims at issue are not identical, they are not patentably distinct from each other.
Regarding claim 1, lines 1-2 of the immediate application are verbatim to lines 1-2 of claim 1 of ‘162. Lines 3-6 of the immediate application correspond with lines 4-9 of claim 1 and line 1-5 of claim 2 of ‘162. Lines 7-11 of the immediate application correspond to lines 10-15 of claim 1 as well as line 3-4 of claim 5 of ‘162. Lines 12-18 of the immediate application are verbatim to lines 16-25 of claim 1 of ‘162.
Regarding claim 2, lines 4-5 of claim 2 of ‘162 teach these limitations.
Regarding claim 3, claim 5 of ‘162 teaches these limitations.
Regarding claim 4, claims 6-7 of ‘162 teach these limitations.
Regarding claim 6, lines 26-29 of claim 1 of ‘162 teach these limitations.
Regarding claim 7, claim 8 of ‘162 teaches these limitations.
Regarding claim 8, claim 11 of ‘162 teaches these limitations.
Regarding claim 9, claim 12 of ‘162 teaches these limitations.
Regarding claim 10, claim 13 of ‘162 teaches these limitations.
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.
5. Claims 1-3, 6, 8, and 10 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by J. Auger et al. (US 3,107,814; hereafter Auger).
Regarding claim 1, Auger teaches a system for dispensing labels from at least one label roll (title), that is configured to facilitate a user to dispense the labels from a label roll that includes peelable labels (labels-12) and a backing substrate (tape -14; col. 1 lines 9-15 and col. 2 lines 3-10). Auger’s apparatus comprises a label roll support member (enlarged diameter center portion- 24) that has a hollow interior that permits a portion of a support bar to pass therethrough (trunnions- 26), and the label roll support member is configured to support at least one label roll thereon and allow rotation thereof (col. 2 lines 48-61; see Figure 2). As seen in Figure 1, the support bar has a distal portion that has a free end that protrudes from the hollow interior of the label roll support member. Auger also teaches that their apparatus includes a label guide arm (wire element -38, which comprises arms 32, 34, and 36) connected to the label roll support member (via base- 20 as seen in Figure 1) that includes an edge (arm- 34). The label is separated from the outward-facing surface of the backing substrate at the edge by pulling the leading portion of the backing substrate of the label roll through an opening of the label guide arm (opening made by arm- 36 as seen in Figure 1; col. 3 line 46- col. 4 line 4). Auger teaches that their apparatus is to be mounted on an unspecified surface (col. 2 lines 39-47), which could be a fulfillment cart, and is thus configured to be mounted to a fulfillment cart.
Regarding claim 2, Auger does not teach of any permanent bonding to the mounted surface, and therefore their apparatus is detachably coupled to the fulfillment cart.
Regarding claim 3, Auger teaches that label roll support member is configured as an elongated cylinder that permits the at least one label roll to freely rotate on the label roll support member (col. 2 lines 48-61).
Regarding claim 6, Auger teaches of a side wall interconnecting the label roll support member and the label guide arm (upright member- 18; col. 2 lines 48-61; see in Figure 1 with base- 20).
Regarding claim 8, as seen in Figure 1, the label guide arm has a lower portion that is generally arcuate as it bends towards the base, and the upper portion or flat top is strait and not co-linear with an arc of curvature of the lower portion.
Regarding claim 10, Auger’s opening is defined by the square area between arms 34 and 36, with the forward direction being downwards in relation to Figures 1 and 2. In such openings, the edge, which is arm- 34, defines the bottom side of the perimeter of the opening of the label guide arm. Arm- 34 is part of a wire (col. 3 lines 53-57), which is cylindrical. The continued curve of the cylindrical wire is a sloped surface that is past the defining edge extending forwardly and downwardly. If there were adjacent openings (which is addressed the rejection of claim 9 below), this sloped surface would be between ribs separating the adjacent openings.
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.
6. Claim 7 is rejected under 35 U.S.C. 103 as being unpatentable over Auger.
Regarding claim 7, in applying Auger as in claim 6, as seen in Figure 2, the side wall includes a top edge (curved top), a bottom edge opposite the top edge (flat bottom), a rear edge (left edge as seen in Figure 2), and a front edge (right edge as seen in Figure 2), wherein the front edge is generally arcuate from a top end of the front edge to a bottom end of the front edge (shown as entirely curved). Auger does not teach specific shape relation between the top edge and front edge, however such distinction is merely a difference in shape. MPEP 2144.04.IV.B teaches that such is an obvious modification and therefore does not differentiate over the prior art- “In re Dailey, 357 F.2d 669, 149 USPQ 47 (CCPA 1966) (The court held that the configuration of the claimed disposable plastic nursing container was a matter of choice which a person of ordinary skill in the art would have found obvious absent persuasive evidence that the particular configuration of the claimed container was significant.)”
7. Claim 4 is rejected under 35 U.S.C. 103 as being unpatentable over Auger as applied to claim 3 above and in further view of D. G. Way (US 3,531,057; hereafter Way).
Regarding claim 4, in applying Auger as in claim 3, Auger does not teach that the elongated cylinder has an incomplete perimeter and associated limitations. Way teaches of an elongated cylinder with an incomplete perimeter such that a portion of a circumference of the elongated cylinder is absent to create two opposing top free ends of the circumference and two opposing bottom free ends of the circumference the top free ends having a first gap therebetween and the bottom free ends having a second gap therebetween (narrow gaps- 17; col. 2 lines 56-72; see Figure 2), this interacting with lugs of the material roll (col. 3 lines 1-10). The advantage of Way’s gaps is that roll does not freely turn (col. 1 lines 33-45), which would include forward and rearward rotation. It would have been obvious to one of ordinary skill in the art before the effective filing date of the proposed invention to include the gaps of Way in the label support roll of Auger for the advantage of preventing unwanted turning.
8. Claim 9 is rejected under 35 U.S.C. 103 as being unpatentable over Auger as applied to claim 3 above and in further view of Hsiu-Man (US 6,805,184).
Regarding claim 9, Auger’s opening is defined by the square area between arms 34 and 36, with the outward direction being downwards in relation to Figures 1 and 2. In such openings, the edge, which is arm- 34, defines the bottom side of the perimeter of the opening of the label guide arm. Auger teaches of only a singular label roll, and therefore does not teach a plurality of openings and associated limitations. Hsiu-Man teaches of a plurality of label rolls (label tape reels- 50; plural seen in Figure 4) on a label roll support member (reel support rod- 20) that are separated by ribs (separating plates- 40). As seen in Figure 4 the ribs go to the separation edge, which in the context of Auger is the label guide arm, which as seen in Figure 1 lacks a defined side perimeter. The advantage of so doing is that a plurality of rolls can be used without issues of slipping sidewards (col. 3 lines 30-40). In application of multiple rolls to Auger, Auger would now have a plurality of label guide arms for each roll, each label guide arm defining an opening, with the ribs defining the perimeter of each adjacent opening.
9. Claim 21 is rejected under 35 U.S.C. 103 as being unpatentable over Auger as applied to claim 1 above and in further view of Granger (US 6,416,011).
Regarding claim 21, Auger does not teach that the support bar includes a horizontal portion. Granger teaches of a support bar (support- 17) that as seen in Figure 3 has a horizontal portion and a distal portion that is inclined relative to the horizontal portion (pin- 19; col. 3 lines 20-46). The support bar is compatible with a cylindrical label roll support member (reel holder- 16; col. 3 lines 20-23). The advantage of Granger’s support bar is a locking in of the roll to the support (col. 2 lines 16-17). It would have been obvious to one of ordinary skill in the art before the effective filing date of the proposed invention to include the support bar of Granger in the apparatus of Auger for the advantage of securing the roll to the supports.
Conclusion
10. Any inquiry concerning this communication or earlier communications from the examiner should be directed to ALEXANDER S WRIGHT whose telephone number is (571) 272-8343. The examiner can normally be reached Monday- Friday 8:30am-5:00 pm EST.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Philip Tucker can be reached on 571-273-1095. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/ALEXANDER S WRIGHT/Examiner, Art Unit 1745
/ALEX B EFTA/Primary Examiner, Art Unit 1745
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