DETAILED ACTION
Notice of Pre-AIA or AIA Status
The present application is being examined under the pre-AIA first to invent provisions.
Status of Submission
This Office action is responsive to the amendment filed on December 17, 2025 which has been entered.
Claims Subject to Examination
Patent claims 1-30 have been canceled. New claims 31 and 33-35 are subject to examination. AS discussed below, the number of new claims 31 and 33-35 is incorrect in view of MPEP 1451 and 1453. The following new and reiterated grounds of rejection are set forth:
Related Proceedings
Applicant is reminded of the continuing obligation under 37 CFR 1.178(b), to timely apprise the Office of any prior or concurrent proceed-ing in which Patent No. 8,746,490 is or was involved. These proceedings would include interferences, reissues, reexaminations, and litigation.
Applicant is further reminded of the continuing obligation under 37 CFR 1.56, to timely apprise the Office of any information which is mate-rial to patentability of the claims under consideration in this reissue appli-cation.
These obligations rest with each individual associated with the filing and prosecution of this application for reissue. See also MPEP §§ 1404, 1442.01 and 1442.04.
Objection to Amendments
The claim amendments filed on December 17, 2025 are objected to as failing to comply with 37 CFR 1.175(b)(2), (e) and 37 CFR 1.177(b). The instant reissue application is a continuation of reissue application 7/560447 which matured into RE49960. Per 37 CFR 1.177(b) and MPEP 1453 VI, respectively:
(b) If applicant files more than one application for the reissue of a single patent, each claim of the patent being reissued must be presented in each of the reissue applications as an amended, unamended, or canceled (shown in brackets) claim, with each such claim bearing the same number as in the patent being reissued. The same claim of the patent being reissued may not be presented in its original unamended form for examination in more than one of such multiple reissue applications. The numbering of any added claims in any of the multiple reissue applications must follow the number of the highest numbered original patent claim.
(emphasis added)
(E) Making amendments in an application for reissue of a previously reissued patent:
When a copy of a first reissue patent is presented as the specification of a second reissue application (filed as a reissue of a reissue), additions made by the first reissue will already be printed in italics, and should remain in such format. Thus, applicants need only present additions to the specification/claims in the second reissue application as double underlined text. Subject matter to be deleted from the first reissue patent should be presented in the second reissue application within sets of double brackets. Examples of the form for a twice-reissued patent (a reissue of a reissue) are found in Re. 23,558 and Re. 28,488. Double underlining and double bracketing are used in the second reissue application, while bold-faced type and double bracketing appear in the printed patent (the second reissue patent) to indicate further insertions and deletions, respectively, in the second reissue patent.
(emphasis added)
Thus, new claims 31 and 33-35 must be numbered to follow the highest numbered patent claim of RE49960, which was claim 34, and the present reissue application must present any new claims starting at number 35.
Applicant is required to place the amendments into compliance with 37 CFR 1.175(b)(2), (e) and 37 CFR 1.177(b) in response to this Office action.
Reissue Oath/Declaration
The Reissue Application Declaration By The Inventor (Form PTO/AIA /05) filed on December 17, 2025 is defective because it fails to properly and specifically identify at least one error which can be relied upon to support the reissue application. See 37 CFR 1.175 and MPEP 1414-1414.01. From MPEP 1414II(C):
“(C) It is not sufficient for an oath/declaration to merely state "this application is being filed to correct errors in the patent which may be noted from the changes made in the disclosure." Rather, the oath/declaration must specifically identify an error. In addition, it is not sufficient to merely reproduce the claims with brackets and underlining and state that such will identify the error. See In re Constant, 827 F.2d 728, 729, 3 USPQ2d 1479 (Fed. Cir.), cert. denied, 484 U.S. 894 (1987). Any error in the claims must be identified by reference to the specific claim(s) and the specific claim language wherein lies the error.
A statement in the oath/declaration of "…failure to include a claim directed to …" and then reciting all the limitations of a newly added claim, would not be considered a sufficient "error" statement because applicant has not pointed out what the other claims lacked that the newly added claim has, or vice versa. Such a statement would be no better than saying in the reissue oath or declaration that "this application is being filed to correct errors in the patent which may be noted from the change made by adding new claim 10." In both cases, the error has not been identified.
Likewise, a statement of the error as ‘…the inclusion of claims 3-5 which were unduly broad…’ and then canceling claims 3-5, would not be considered a sufficient "error" statement because applicant has not pointed out what the canceled claims lacked that the remaining claims contain. The statement of what the remaining claims contain need not identify specific limitations, but rather may provide a general identification, such as ‘Claims 3-5 did not provide for any of the tracking mechanisms of claims 6-12, nor did they provide an attachment mechanism such as those in claims 1-2 and 9-16.’” (Emphases examiner).
The error statement:
“The failure to previously present narrower claims of the type being added by this reissue application and to correct errors in language and dependency of certain method claims included in the granted patent.”
does NOT: reference a specific claim or claims and the specific claim language wherein lies the error. In other words, what specific patent claim or claims are being narrowed (either in that specific claim itself or in a new reissue claim) and what specific claim language has the Patent Owner added to the any of the claims (narrowing the scope of the added claims relative to the original patented claims), and how it renders the original patent wholly or partly inoperative or invalid (such as, by the original patent claims being unduly broad). Furthermore, the statement pertaining to “correct errors in language and dependency of certain method claims” does not apply to the instant reissue application, in view of patent claims 1-30 being canceled.
A replacement reissue oath/declaration must be submitted to comply with 37 CFR 1.175.
Claim Rejections - 35 USC § 251
The following is a quotation of 35 U.S.C. 251:
(a) IN GENERAL.—Whenever any patent is, through error, deemed wholly or partly inoperative or invalid, by reason of a defective specification or drawing, or by reason of the patentee claiming more or less than he had a right to claim in the patent, the Director shall, on the surrender of such patent and the payment of the fee required by law, reissue the patent for the invention disclosed in the original patent, and in accordance with a new and amended application, for the unexpired part of the term of the original patent. No new matter shall be introduced into the application for reissue.
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(b) MULTIPLE REISSUED PATENTS.—The Director may issue several reissued patents for distinct and separate parts of the thing patented, upon demand of the applicant, and upon payment of the required fee for a reissue for each of such reissued patents.
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(c) APPLICABILITY OF THIS TITLE.—The provisions of this title relating to applications for patent shall be applicable to applications for reissue of a patent, except that application for reissue may be made and sworn to by the assignee of the entire interest if the application does not seek to enlarge the scope of the claims of the original patent or the application for the original patent was filed by the assignee of the entire interest.
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(d) REISSUE PATENT ENLARGING SCOPE OF CLAIMS. No reissued patent shall be granted enlarging the scope of the claims of the original patent unless applied for within two years from the grant of the original patent.
GROUND 1: Claims 31 and 33-35 are rejected under 35 U.S.C. 251 as being based upon a defective reissue oath/declaration. See 37 CFR 1.175. The nature of the defect(s) in the reissue oath/declaration is explained above.
Double Patenting
The terminal disclaimer filed on December 17, 2025 disclaiming the terminal portion of any patent granted on this application which would extend beyond the expiration date of RE49,960 has been reviewed and is accepted. The terminal disclaimer has been recorded.
Claim Rejections - 35 USC § 112
The following is a quotation of 35 U.S.C. 112(d):
(d) REFERENCE IN DEPENDENT FORMS.—Subject to subsection (e), a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
The following is a quotation of pre-AIA 35 U.S.C. 112, fourth paragraph:
Subject to the following paragraph [i.e., the fifth paragraph of pre-AIA 35 U.S.C. 112], a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
GROUND 2: Claim 35 is rejected under 35 U.S.C. 112(d) or pre-AIA 35 U.S.C. 112, 4th paragraph, as being of improper dependent form for failing to further limit the subject matter of the claim upon which it depends, or for failing to include all the limitations of the claim upon which it depends. Claim 35 recites “wherein the PE emulsion layer is applied to the removeable adhesive pattern” which is redundant in view of claim 31, from which it depends. Applicant may cancel the claim(s), amend the claim(s) to place the claim(s) in proper dependent form, rewrite the claim(s) in independent form, or present a sufficient showing that the dependent claim(s) complies with the statutory requirements.
Claim Rejections - 35 USC § 103
In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis (i.e., changing from AIA to pre-AIA ) for the rejection will not be considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status.
The following is a quotation of pre-AIA 35 U.S.C. 103(a) which forms the basis for all obviousness rejections set forth in this Office action:
(a) A patent may not be obtained though the invention is not identically disclosed or described as set forth in section 102, if the differences between the subject matter sought to be patented and the prior art are such that the subject matter as a whole would have been obvious at the time the invention was made to a person having ordinary skill in the art to which said subject matter pertains. Patentability shall not be negated by the manner in which the invention was made.
GROUND 3: Claims 31, 33 and 35 is/are rejected under pre-AIA 35 U.S.C. 103(a) as being unpatentable over US 2005/0252600 to van Driesten (van Driesten) in combination with US 5,714,305 to Teng et al. (Teng et al.).
In regard to claims 31, 33 and 35, van Driesten disclose a film construction 106,124 for attaching to a base member 102 to define a package, the film construction comprising: a top layer 134, the top layer having a top surface and a bottom surface, a removable adhesive 136 (pressure sensitive adhesive, para. [0061]) having a defined pattern applied below the bottom surface (para. [0050]; see Figs. 1D, E and G, for example), wherein the d3efined adhesive pattern conforms to a periphery of the base member and top layer (see fig. 1E), and a release layer 172 (para. [0065]), applied to and covering the adhesive layer 136 (Fig. 4A. Release layer 172 is immediately below and in contact with adhesive layer 136), but does not teach this release layer is a polyethylene (PE) emulsion layer, applied to and covering at least a portion of the adhesive pattern, wherein the PE emulsion layer is heat sealable. However, use of polyethylene (PE) emulsion layers as release layers is known to those skilled it the art. The patent to Teng et al. teaches a sheet material (figs. 3-5A), in the form of an overcoat releasing laminate which has a top layer 38, the top layer having a top surface and a bottom surface, and a release layer 36 which is a polyethylene (PE) emulsion layer (see col. 7, ll. 10-20; col. 11, ll. 63-67; col. 24, ll. 60-65), applied to top layer. It would have been obvious to a person skilled in the art at the time the invention was made to substitute the release layer of van Driesten with the release layer (polyethylene (PE) emulsion layer) of Teng et al. as such is considered a mere substitution of equivalent release layers.
Further, selection of a polyethylene (PE) emulsion layer for the release layer of van Driesten yields predictable results. KSR International Co. v. Teleflex Inc., 550 U.S. 398, 82 USPQ2d 1385 (2007). The claim language “wherein the PE emulsion layer is heat sealable” is a recitation of intended use and as such, the reference need not teach that the PE emulsion layer is heat sealable, but must be capable of performing the recited intended use. Regardless, Teng discloses at col. 7, ll. 10-20:
“Release layer 36 is configured such that, upon thermal lamination of overcoat-releasing laminate 30 onto a planar surface (cf., the image surface of binary image 10b), interfacial separation between the durable layer 34 and carrier web 30b can be reliably accomplished by adhesive or cohesive failure of release layer 36. As more fully described below, release layer 36 can be prepared from wax, silicone or a combination of the two, and is deposited, for example, onto an untreated polyester base (cf., flexible base 38) from an aqueous emulsion.”
Teng et al. further teaches col. 24, ll. 60-67 that:
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Accordingly, this disclosure indicates that Teng’s polyethylene emulsion is capable of being heat sealable. Further, it has been held that the recitation that an element is capable of performing a function (heat sealable- able to be heat sealed) is not a positive limitation but only requires the ability to so perform. It does not constitute a limitation in any patentable sense. In re Hutchison, 69 USPQ 138.
In regard to claim 34, van Driesten in combination with Teng et al. do not explicitly teach that wherein PE emulsion layer is characterized in that the application of heat during heat sealing transforms the emulsion to a film material. However, as Teng et al. teaches a release layer 36 which is a polyethylene (PE) emulsion layer, which is the same as what is being claimed, the emulsion layer of Teng et al. must also have the same properties as the claimed emulsion layer. Therefore, it would have been obvious to one having ordinary skill in the art at the time the invention was made to recognize that the combination of van Driesten in combination with Teng et al., specifically the PE emulsion of Teng et al. is characterized in that the application of heat during heat sealing transforms the emulsion to a film material.
Where the claimed and prior art products are identical or substantially identical in structure or composition, or are produced by identical or substantially identical processes, a prima facie case of either anticipation or obviousness has been established. In re Best, 562 F.2d 1252, 1255, 195 USPQ 430, 433 (CCPA 1977). "When the PTO shows a sound basis for believing that the products of the applicant and the prior art are the same, the applicant has the burden of showing that they are not." In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990). See MPEP 2112.01(I).
Response to Arguments
Applicant's remarks and amendments filed December 17, 2025, have been fully considered and will be addressed as follows with respect to the previously presented claim interpretations and rejections:
Oath/Declaration (35 USC § 251 rejections):
The Reissue Application Declaration By The Inventor (Form PTO/AIA /05) filed on December 17, 2025 is defective because it fails to properly and specifically identify at least one error which can be relied upon to support the reissue application. The rejection of new claims 31 and 33-35 is maintained. See GROUND 1 above.
Double Patenting:
The terminal disclaimer filed on December 17, 2025 has been reviewed and is accepted. The previous rejection of the claims on the grounds of non-statutory double patenting is withdrawn.
Claim Rejections - 35 USC § 112:
In view of the amendments filed December 17, 2025, and cancelation of claims 1-30, the rejection of claims 1-3, 6 and 8-10 and 6-7 under 35 USC § 112 is withdrawn.
Claim Rejections - 35 USC § 103:
In view of the amendments filed December 17, 2025, the rejection of claims 31 and 33-35 is maintained for the following reasons:
Applicant states that the cited art fails to teach of suggest the limitations of claims 31 and 33, citing “the defined adhesive pattern conforms to a periphery of the base member” and “conforms to a periphery of the top layer member”, respectively. Examiner strongly disagrees. Para 0049 of van Driesten recites:
In the container 100 shown in FIGS. 1A-1C, the adhesive film 124 completely covers, or is continuous relative to, the inner surface of the second portion 106. Thus, the film 124 covers both the areas 116 aligned with the receptacle-defining areas 110 of the first portion 102 and the areas 118 aligned with the receptacle-surrounding areas 112 of the first portion 102. Alternatively, as shown in FIGS. 1D and 1E, the adhesive film 124 can be applied in a pattern on the inner surface of the second portion 106. The pattern can comprise longitudinal adhesive stripes coinciding with the areas 118 aligned with the receptacle-surrounding areas 112 of the first portion 102 (FIG. 1D) or it can comprise an adhesive grid covering all of the areas 118 aligned with the receptacle-surrounding areas 112 of the first portion 102 (FIG. 1E).
(emphasis added)
The word “conform”, by definition means “to give the same shape, outline, or contour to: bring into harmony or accord” (see www.merriam-webster.com/dictionary/conform).
Thus, as broadly as claimed, the defined adhesive pattern 136 of van Driesten is clearly illustrated and disclosed as having the same shape/outline as both “a periphery of the base member” and “a periphery of the top layer member”.
Applicant further states that the cited art fails to teach of suggest “the application of heat during heat sealing transform the emulsion to a film material”. As rejected above, Teng et al. teaches a release layer 36 which is a polyethylene (PE) emulsion layer, which is the same as what is being claimed, the emulsion layer of Teng et al. must also have the same properties as the claimed emulsion layer. Therefore, it would have been obvious to one having ordinary skill in the art at the time the invention was made to recognize that the combination of van Driesten in combination with Teng et al., specifically the PE emulsion of Teng et al. is characterized in that the application of heat during heat sealing transforms the emulsion to a film material.
It is noted, where the claimed and prior art products are identical or substantially identical in structure or composition, or are produced by identical or substantially identical processes, a prima facie case of either anticipation or obviousness has been established. In re Best, 562 F.2d 1252, 1255, 195 USPQ 430, 433 (CCPA 1977). "When the PTO shows a sound basis for believing that the products of the applicant and the prior art are the same, the applicant has the burden of showing that they are not." In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990). See MPEP 2112.01(I).
Amendments in Reissue Applications
Applicant is notified that any subsequent amendment to the specification, claims or drawings must comply with 37 CFR 1.173(b)-(g). In addition, for reissue applications filed before September 16, 2012, when any substantive amendment is filed in the reissue application, which amendment otherwise places the reissue application in condition for allowance, a supplemental oath/declaration will be required. See MPEP § 1414.01.
The provisions of 37 CFR 1.173(b)(1), (d), (f) and (g) govern amendments to the specification (other than the claims) in reissue applications. The following guidance is provided as to the procedure for amending the specification:
a) All amendments which include deletions or additions must be made by submission of the entire text of each added or rewritten paragraph containing the bracketing and/or underlining required by 37 CFR 1.173(d).
b) An entire paragraph of specification text may be deleted by a statement deleting the paragraph without presentation of the text of the paragraph.
c) Applicant must indicate the precise point where each amendment is made.
d) All bracketing and underlining is made in comparison to the original patent, not in comparison to any prior amendment in the reissue application. Thus, all paragraphs which are newly added to the specification of the original patent must be submitted as completely underlined each time they are re-submitted in the reissue application.
The provisions of 37 CFR 1.173(b)(2), (c)-(e) and (g) govern amendments to the claims in reissue applications. The following guidance is provided as to the procedure for amending the claims:
a) For each claim that is being amended, the entire text of the claim must be presented with the bracketing and/or underlining required by 37 CFR 1.173(d).
b) For each new claim added to the reissue, the entire text of the added claim must be presented completely underlined.
c) A patent claim should be canceled by a direction to cancel that claim. There is no need to present the patent claim surrounded by brackets.
d) A new claim (previously added in the reissue) should be canceled by a direction to cancel that claim.
e) Pursuant to 37 CFR 1.173(b)(2), each claim that is amended or added should include the appropriate status indicator following the claim number, e.g., “(amended)”, “(twice amended)”, “(new)”, and “(canceled)”.
f) Pursuant to 37 CFR 1.173(c), each amendment submitted must set forth the status of all patent claims and all added claims as of the date of the submission. The status to be set forth is whether the claim is pending or canceled.
g) Also pursuant to 37 CFR 1.173(c), each claim amendment must be accompanied by an explanation of the support in the patent’s disclosure for all changes made in the claim(s), whether insertions or deletions.
h) Pursuant to 37 CFR 1.173(e), original patent claims are never to be renumbered. A patent claim retains its number even if it is canceled in the reissue proceeding, and the numbering of any added claims must begin after the last original patent claim.
i) Pursuant to 37 CFR 1.173(g), all bracketing and underlining is made in comparison to the original patent, not in comparison to any prior amendment in the reissue application.
The provisions of 37 CFR 1.173(b)(3) govern amendments to the drawings in reissue applications. The following guidance is provided as to the procedure for amending drawings:
a) Amending the original or printed patent drawing sheets by physically changing or altering them is not permitted.
b) Where a change to the drawings is desired, applicant must submit a replacement sheet for each sheet of drawings containing a figure to be revised. Any replacement sheet must comply with 37 CFR 1.84 and include all of the figures appearing on the original version of the sheet, even if only one figure is being amended. Each figure that is amended must be identified by placing the word “Amended” at the bottom of that figure. Any added figure must be identified as “New”. In the event that a figure is canceled, the figure must be identified as “Canceled” and also surrounded by brackets.
c) All changes to the figure(s) must be explained, in detail, beginning on a separate sheet which accompanies the papers including the amendment to the drawings.
d) If desired, applicant may include a marked-up copy of any amended drawing figure, including annotations indicating the changes made. Such a marked-up copy must be clearly labeled as “Annotated Marked-up Drawings”, and it must be presented in the amendment or remarks section that explains the change to the drawings.
Failure to fully comply with 37 CFR 1.173(b)-(g) will generally result in a notification to applicant that an amendment before final rejection is not completely responsive. Such an amendment after final rejection will not be entered.
Conclusion
Applicant's amendment necessitated the new ground(s) 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 MATTHEW J KASZTEJNA whose telephone number is (571)272-6086. The examiner can normally be reached M-F, 7AM--3PM.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Eileen Lillis can be reached at 571-272-6928. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/MATTHEW J KASZTEJNA/Reexamination Specialist, Art Unit 3993
Conferees:
/JOSHUA KADING/Reexamination Specialist, Art Unit 3993
/EILEEN D LILLIS/SPRS, Art Unit 3993