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 .
Summary
The Applicants arguments and claim amendments received on 10/03/2025 are entered into the file. Currently, claims 1-4 and 7-9 are amended; claims 5 and 6 are cancelled; claims 10-18 are new; resulting in claims 1-4, 7-18 pending for examination.
Election/Restrictions
Newly submitted claims 15-18 are directed to an invention that is independent or distinct from the invention originally claimed for the following reasons: the invention of claims 1-4, 7-14 and the invention of claims 15-18 are related as product and process of making. The inventions are distinct if either or both of the following can be shown: (1) that the process as claimed can be used to make another materially different product, or (2) that the product as claimed can be made by a materially different process. In the instant case, the product can be made by a materially different process, such as a process involving the steps of hand writing identifying information with a maker or using a rubber stamp with identifying information.
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 Accordingly, claims 15-18 are withdrawn from consideration as being directed to a non-elected invention.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.
Claim Objections
Claim 3 is objected to because of the following informalities:
The number 3 is crossed out as if it is cancelled, however, the status of the claim is “(Currently Amended)”. It appears that this is a typographical error and claim 3 will not be treated as cancelled for the purposed of this office action.
Claim 3 does not comprise the proper annotations for indicating new limitations added to the claim. In the claim set from 03/31/2024, claim 3 read as follows:
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In the claim set received 10/03/2025, claim 3 read as follows:
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Therefore, claim 3 in the claim set received 10/03/2025 does not properly annotate the added limitations for the claim.
Appropriate correction is required.
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 1-4 and 7-14 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.
Regarding claim 1, the newly added phrase “selective self-adhesive resin” is indefinite as it is unclear what the term means with respect to the adhesive. There are no examples given in the specification as to what material would be considered a “selective self-adhesive resin” within the scope of the claimed invention and what materials would fall outside of the scope of a “selective self-adhesive resin”. It is not clear what is meant by “selective” with respect to the adhesive resin and what it is selective with respect to (i.e. material, heat, moisture, etc.). Furthermore, it is not clear what “self-adhesive” means with respect to an adhesive resin and what properties are required.
Regarding claims 4 and 13, the limitation reciting “further comprising a composite material as a printing substrate” is indefinite. Independent claim 1 recites a paper material and a selective self-adhesive region, and makes no mention of a printing substrate. It is not clear if the printing substrate is referring to the paper material or is reciting an additional layer of the identification badge not previously recited. If “printing substrate” is intended to further limit “paper material” it is not clear how it is further limiting, as the instant specification does not describe in any detail what a composite material is within the scope of the claimed invention, but rather states that the composite material is “composed of two or more different materials” (see pg-pub [0038]). There are no working examples that utilize a composite material to further demonstrate the scope of the claimed invention, nor are there any examples that further describe the claimed identification badge such that it is clear whether the “paper material” is the same as the “printing substrate”, and whether “composite material” is further limiting “paper material”, or whether the identification badge is comprised of at least two layers, a paper material layer and a composite material layer. The drawings do not aid in determining the structure of the claimed invention.
The metes and bounds of the claimed invention as required by claim 4 and claim 1 and as required by claim 13 and claim 1 are unknown and the structure of the claimed invention is unable to be determined, therefore, prior art is unable to be applied.
Regarding claim 14, the claim depends from claim 13, and therefore is indefinite for the reasons expressed above. Furthermore, due to its dependency from claim 13, as stated above, the metes and bounds of the claimed invention as required by claim 13 and claim 1 are unknown and the structure of the claimed invention is unable to be determined, therefore, prior art is unable to be applied to claim 13 and to claim 14 as it depends from claim 13.
Claims 2, 3 and 5-12 are also rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph based on their dependency from the rejected claims above.
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 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.
Claims 1, 3, 7, 8, 10, 11 and 8 are rejected under 35 U.S.C. 103 as being unpatentable over Hodsdon et al. (US 2005/0126701) in view of Hodsdon et al. (US 7,627,972; hereafter referred to as “Hodsdon ‘972”).
Regarding claims 1, 7, 10 and 11, Hodsdon et al. teaches a badge stock used for printing identification badges in roll fed printers, wherein the badge stock (identification badge) is comprised of facestock (118; paper material) having a first upper surface and a second lower surface, the facestock (118; paper material) is further comprised of a first half (124) and a second half (126), and an adhesive (120; selective self-adhesive resin) formed on the underside (first surface) of the facestock (118; paper material), wherein the facestock (118; paper material) is folded along a fold line (128) and the first half (124) is bonded to the second half (126) via the adhesive (120; selective self-adhesive resin) (Figure 1, 2, 6, 9A-C, 10A-C; [0005-0007, 0031-0037, 0040-0042]). As shown by at least Figures 1 and 2, the first half (124) and a second half (126) are symmetrical portions and the fold line (128) is between the first half (124) and the second half (126) (Figure 1, 2, 6, 9A-C, 10A-C; [0005-0007, 0031-0037, 0040-0042]). The badge stock can be printed with information on both the first half of the facestock (124) and the second half of the facestock (126) so that the resulting identification badge can have information on both the front and backside of the card (Figure 10A-10C; [0007-0008, 0031-0033, 0045]). Hodsdon et al. further teaches that the facestock (124) comprises strap apertures (130; at least one or more lanyard slots) to receive a strap as shown in Figures 3A and 4A ([0006, 0036-0038]).
While Hodsdon et al. teaches that any known label stock can be used for the facestock of the assembly, the reference does not expressly teach that the facestock (118; paper material) is a paper material. Hodsdon ‘972 teaches a printing stock with a label for making a security badge comprising a facestock, adhesive and liner, wherein the facestock is made of paper or opaque film (col. 3 Ln. 30-col. 4 Ln. 15-25).
As both Hodsdon et al. and Hodsdon ‘972 teach identification badges, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to utilize the paper facestock of Hodsdon ‘972 as the facestock (118; paper material) of Hodsdon et al., as Hodsdon ‘972 teaches paper is appropriate material for the facestock of printed identification badges.
Regarding claim 3, the limitation “wherein the paper material further comprises identification information printed from at least one of a direct thermal printer or an inkjet printer” is being treated as a method limitation, which does not determine the patentability of the product, unless the method produces a structural feature of the product. The method of forming the product is not germane to the issue of patentability of the product itself, unless Applicant presents evidence from which the Examiner could reasonably conclude that the claimed product differs in kind from those of the prior art. See MPEP § 2113. Furthermore, there does not appear to be a difference between the prior art structure and the structure resulting from the claimed method because Hodsdon et al. in view of Hodsdon ‘972 discloses the structure of claim 1 as described above, wherein Hodson et al. teaches that the badge stock can be printed with information on both the first half of the facestock (124) and the second half of the facestock (126) so that the resulting identification badge can have information on both the front and backside of the card (Figure 10A-10C; [0007-0008, 0031-0033, 0045]).
Regarding claim 8, Hodsdon et al. in view of Hodsdon ‘972 teaches all the limitations of claim 1 above, and as stated in the above rejection, the facestock (118; paper material) is folded along a fold line (128) and the first half (124) is bonded to the second half (126) via the adhesive (120; self-adhesive resin) (Figure 1, 2, 6, 9A-C, 10A-C; [0005-0007, 0031-0037, 0040-0042]).
The limitation “facilitates secure adhesion in a folded state without the need for additional fasteners or holders” recites functional language related to the intended use of the product and is accorded limited weight as the language does not further limit the structure or the process.
The identification badge of Hodsdon et al. in view of Hodsdon ‘972 teaches all the structural features required by claim 1 above and would therefore be capable of performing in the manner claimed.
Claims 2, 9, 12 and 9 are rejected under 35 U.S.C. 103 as being unpatentable over Hodsdon et al. (US 2005/0126701) in view of Hodsdon et al. (US 7,627,972; hereafter referred to as “Hodsdon ‘972”) and further in view of All (US 5,283,093).
Regarding claims 2 and 9, Hodsdon et al. in view of Hodsdon ‘972 teaches all the limitations of claim 1 above, however, the references do not expressly teach that the fold line includes perforations.
All teaches a self-laminating identification badge assembly, comprising a paper carrier, paint lamina for receiving printed information and a transparent lamina, wherein lines of perforations are made to facilitate folding of the badge assembly (col. 3 Ln. 1-60).
As the references are all in the field of identification badges, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the fold line (128) of the facestock (118; paper material) in the badge stock taught by Hodsdon et al. in view of Hodsdon ‘972 to include perforations as taught by All to facilitate the folding of the facestock (118; paper material).
Regarding claim 12, Hodsdon et al. in view of Hodsdon ‘972 and All teach all the limitations of claim 1 above, and Hodsdon et al. further teaches, as shown by at least Figures 1 and 2, the first half (124) and a second half (126) are symmetrical portions and the fold line (128) is between the first half (124) and the second half (126) (Figure 1, 2, 6, 9A-C, 10A-C; [0005-0007, 0031-0037, 0040-0042]).
Response to Arguments
Response-Drawings
The previous objections to the drawings for failing to comply with 37 CFR 1.84(p)(4) because reference character “100” was used to designate multiple features and failing to comply with 37 CFR 1.84(p)(5) because they do not include reference signs 102-1 and 102-2 mentioned in the description are overcome by Applicants amendments to the specification and drawings in the response filed 10/03/2025.
Response-Claim Rejections - 35 USC § 112
The previous rejections of claims 1-3 and 5-9 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 are overcome by Applicants amendments to claims 1, 3, 7 and the cancellation of claims 5 and 6 in the response filed 10/03/2025.
Claim 4 remains rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, for the reasons expressed above.
Response-Claim Rejections - 35 USC § 103
Applicant's arguments filed 10/03/2025 have been fully considered but they are not persuasive.
The Applicant argues on pages 7 and 8 that none of the cited art references teach or suggest an identification badge as required by claim 1. The Applicant specifically argues on page 8 that Hodsdon et al. does not teach a selective self-adhesive resin, which eliminates the need for carrier paper or liner such as silicon wax. This argument is not persuasive.
As stated in the office action above, it is not clear what is meant by the phrase “selective self-adhesive”, and what it means regarding the structure of the claimed adhesive. There are no examples given in the specification as to what material would be considered a “selective self-adhesive resin” within the scope of the claimed invention, such that it is known which adhesives would be considered “selective self-adhesive” and which would not. Furthermore, the claims use the word “comprising” which is open ended, and therefore, the claims can include other features other than that which is explicitly recited in the claim, including a release liner.
Without clarification or detail, the rejections over Hodsdon et al. in view of Hodsdon et al. ‘972 is maintained in the office action above.
Conclusion
THIS ACTION IS MADE FINAL. 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 LAURA POWERS whose telephone number is (571)270-5624. The examiner can normally be reached Monday-Thursday, 10:00AM-3:00PM.
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LAURA POWERS
Examiner
Art Unit 1785
/LAURA C POWERS/Primary Examiner, Art Unit 1785