DETAILED ACTION
Response to Amendment
Applicants’ amendment filed 9/9/2026 has been entered. Currently, claims 2-12 and 14-21 are pending and claim 13 is canceled.
Claim Objections
Claims 1, 9, 14 and 16 are objected to because of the following informalities:
In claim 1 on line 12, claim 9 on line 14 and claim 16 on line 17, the phrase “devoid of label-substrate material” is objected to grammatically. The objection can be overcome by changing the phrase to “devoid of a material of the label substrate” which is how the claim will be interpreted.
In claim 14 on lines 1-2, the phrase “the liner substrate the liner substrate” is objected to grammatically. The objection can be overcome by deleting one instance of “the liner substrate”
Appropriate correction is required.
Claim Rejections - 35 USC § 112
Claims 2-12, 14 and 15 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.
In claims 2 and 9, the Examiner does not find support for “a first label of the at least three independent labels is enclosed by a first weakened periphery within a border portion of the label substrate” in the specification as originally filed. The broadest reasonable interpretation of the limitations “within a border portion of the label substrate” would mean that the three independent labels have a border portion going around the entire label substrate, but this breadth is not supported by the specification as filed. The specification refers to the at least independent labels as 102, 108 and 110 with the label 102 having the perforated inner label 104 and a remaining portion of that label 102 as a border portion, but this would not support the breadth of the structure being claimed [0029] and [0031].
Claims 2-12, 14, 15, 17 and 20 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.
In claim 2 and 9, the limitations of “a first label of the at least three independent labels is enclosed by a first weakened periphery within a border portion of the label substrate” renders the claim indefinite as it is unclear if the border portion is part of one of the three independent labels or if it is separate from them. If it is separate from the labels, it is unclear if they border around the entire label combination or one label of the three. Given how the specification refers to the label 102 having the perforated inner label 104 and a remaining portion of that label 102 as a border portion, this is how the limitations will be interpreted.
In claims 3 and 17, the limitations of a “thermal transfer coating” render the claim indefinite as the conventional use of this term is a coating that transfers to another substrate upon the application of heat. It appears that applicants’ coating is a “thermal transfer receptive coating”, which is how the claims will be interpreted and how the rejection can be overcome.
In claim 20, the limitation of “a space adjacent to the pull tab” renders the claim indefinite as it is unclear if this is the same space in claim 16. This rejection can be overcome by canceling claim 20.
Claims 4 and 20 are 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 4 recites that that first and second weakened periphery “are aligned with one another” but claim 2 already requires that first label and the liner label are “aligned” and defined by the second weakened periphery “corresponding to the first weakened periphery”. The fact that the labels are aligned and the weakened peripheries correspond to each other will necessarily mean they are aligned as well, which means claim 4 fails to limit the claim from which it depends.
As to claim 20, the limitations are already present on lines 16-17 of claim 16, and therefore claim 20 fails to limit claim 16.
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.
Claims 2-12 and 14-21 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-13 of U.S. Patent No. 11,217,120.
Although the claims at issue are not identical, they are not patentably distinct from each other because they both teach a label combination having a label substrate and a liner substrate having at least three labels therein and a tab substantially centered on a first label; however, they do not specifically teach the inner label surrounded by a border in the first label.
It would have been obvious to one having ordinary skill in the art to have arranged the perforations in the label substrate to be located within the first area to form a label of the desired size. This inner label located within the first area would then read the first label and inner label of the pending claims with a border area around said inner label.
Claims 2-12 and 14-21 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-15 of U.S. Patent No. 11,996,014.
Although the claims at issue are not identical, they are not patentably distinct from each other because they both teach a label combination having a label substrate and a liner substrate having at least three labels therein and a tab substantially centered on a first label; however, they do not specifically teach the inner label surrounded by a border in the first label.
It would have been obvious to one having ordinary skill in the art to have arranged the perforations in the label substrate to be located within the first area to form a label of the desired size. This inner label located within the first area would then read the first label and inner label of the pending claims with a border area around said inner label.
Response to Arguments
Applicant’s arguments, see Remarks, filed 9/9/2026, with respect to the previous 112(a)/(b) rejections and the prior art rejections have been fully considered and are persuasive. The relevant rejections have been withdrawn.
Applicants’ arguments filed 9/9/2026 have been fully considered but they are not persuasive.
Applicants argue that the double patenting rejections have been overcome.
The Examiner respectfully disagrees and notes that Applicants have not specifically pointed to what aspects of the pending claims have overcome the patented claims. The structure of the pending claims are still obvious over the patented claims for the reasons noted above, and therefore the Examiner maintains that the rejections were proper and have been restated above.
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 GERARD T HIGGINS whose telephone number is (571)270-3467. The examiner can normally be reached M-F 9:30-6pm.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Mark Ruthkosky can be reached at (571) 272-1291. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/Gerard Higgins/Primary Examiner, Art Unit 1785
