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 .
Claim Rejections - 35 USC § 112
Claims 2-21 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, 9 and 16, the Examiner does not find support for the limitations of a “label substrate including a plurality of labels”, “label substrate with multiple independent labels” and “label substrate designed with several distinct labels” in the specification as originally filed. This represents a broadening limitation that does not find support in the specification as originally filed. The Examiner does find support for a “label substrate comprising at least three independent labels”.
In claim 2, the Examiner does not find support for the limitations of a “liner label corresponding to one of the plurality of labels” in the specification as originally filed. This represents a broadening limitation that does not find support in the specification as originally filed. The Examiner does find support for a “liner label that corresponds to one of the at least three independent labels”.
In claim 2, the Examiner does not find support for the limitations of a “a tab configured to facilitate separation” in the specification as originally filed. There is no disclosure of tab that can “facilitate separation”.
In claim 2, the Examiner does not find support for “at a lower portion of the corresponding label and the liner label” in the specification as originally filed. The support for this limitation appears to be from the Figure 1; however, in order to draw support the limitations must be inherently supported from the Figure. The limitations “at a lower portion” is broader than what is inherently supported by the Figures as a lower portion could be in the corners of the label, but this is not shown in the Figures. The Examiner does find support for the limitations “a tab substantially centered at a bottom of the label and liner substrates”
In claim 2, the Examiner does not find support for the limitations of a “the tab and surrounding areas on both the label substrate and the liner substrate are perforated” in the specification as originally filed.
In claim 3, the Examiner does not find support for the limitations of a “the label substrate includes thermal transfer receptive coatings” in the specification as originally filed. This represents a broadening limitation that does not find support in the specification as originally filed. The Examiner does find support for a “a thermal transfer receptive coating on a front side of the label substrate”.
In claim 4, the Examiner does not find support for the limitations of “the label substrate and the liner substrate include aligned perforations surrounding the tab to facilitate a clean separation” in the specification as originally filed.
In claim 5, the Examiner does not find support for the limitations of “the liner substrate includes a coating that enhances receptivity” in the specification as originally filed. This implies that the backside of the label was already receptive to printing, which is not supported; further, removing the location of the coating being on the back side is a broadening that is not supported.
In claim 8, the Examiner does not find support for the limitations of a liner label imaged with “shipping information” in the specification as originally filed. This implies that the backside of the label was already receptive to printing, which is not supported; further, removing the location of the coating being on the back side is a broadening that is not supported.
In claim 9, the Examiner does not find support for the limitations of “each label capable of being individually imaged” in the specification as originally filed.
In claim 9, the Examiner does not find support for the limitations of a “liner label aligned with one of the multiple independent labels” in the specification as originally filed. This represents a broadening limitation that does not find support in the specification as originally filed. The Examiner does find support for a “liner label that is aligned with one of the at least three independent labels”.
In claim 9, the Examiner does not find support for the limitations of “a separation mechanism” in the specification as originally filed.
In claim 9, the Examiner does not find support for the limitations of “centrally positioned relative to the aligned label and liner label” in the specification as originally filed.
In claim 9, the Examiner does not find support for the limitations of “designed to enable detachment of both the aligned label and liner label” in the specification as originally filed.
In claim 10, the Examiner does not find support for the limitations of a “the liner substrate includes direct thermal print coating” in the specification as originally filed. This represents a broadening limitation that does not find support in the specification as originally filed. The Examiner does find support for a “a direct thermal print coating on a back side of the liner substrate”.
In claim 12, the Examiner does not find support for the limitations of the specialized coating “enhancing print quality imaged on the back side of the liner substrate” in the specification as originally filed.
In claim 14, the Examiner does not find support for the limitations that the “liner substrate includes die cuts that define areas for customized indicia” in the specification as originally filed.
In claim 15, the Examiner does not find support for the limitations that a first label of the label substrate is configured as a “mail address label” in the specification as originally filed.
In claim 16, the Examiner does not find support for the limitations of a “liner label that aligns with a specific label of the several distinct label” in the specification as originally filed. This represents a broadening limitation that does not find support in the specification as originally filed. The Examiner does find support for a “liner label that is aligned with one of the at least three independent labels”.
In claim 16, the Examiner does not find support for the limitations of “centrally located tab at a base of the aligned label and liner label” in the specification as originally filed.
In claim 16, the Examiner does not find support for the limitations of “the tab being part of a perforation through both substrates to assist in their separation” in the specification as originally filed.
In claim 17, the Examiner does not find support for the limitations of a “the liner substrate comprises an aqueous resin-based thermal transfer receptive coating” in the specification as originally filed. This represents a broadening limitation that does not find support in the specification as originally filed. The Examiner does find support for a “an aqueous resin-based thermal transfer receptive coating on a back side of the liner substrate”.
In claim 19, the Examiner does not find support for the limitations of “to facilitate individual removal” in the specification as originally filed.
Claims 2-21 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, the phrase “to facilitate separation” is a subjective term that renders the claim indefinite. The term “facilitate” means to make an action easier, but it is unclear how one is to judge whether the tab has made the separation easier to read on these limitations.
In claim 2 on lines 6 and 8, the phrase “the corresponding label” lacks antecedent basis in the claims.
In claim 2, the phrase “at a lower portion” is a relative term that renders the claim indefinite. It is unclear what portions are considered lower versus other portions of the label combination.
In claim 2, the phrase “surrounding areas” is a relative term that renders the claim indefinite. It is unclear how far from the tab one can be and still be considered a surrounding area.
In claim 4, the phrase “surrounding the tab to facilitate a clean separation” in the renders the claim indefinite. It is unclear how perforations could surround a tab, facilitate is a subjective term, and “clean separation” is a term of degree that renders the claim indefinite.
In claim 5, the phrase “that enhances receptivity” is a relative term that renders the claim indefinite. It is unclear how one determined that receptivity has been enhanced since this concept is not found in the specification.
In claim 9, the limitations of “centrally positioned relative to the aligned label and liner label” is a relative term that renders the claim indefinite. It is unclear how one can determined where “centrally positioned” relative to the two labels is located since the two labels are aligned on top of each other.
In claim 9 on lines 6 and 7, the phrase “the aligned label” lacks antecedent basis in the claims.
In claim 12, the phrase “specialized coating” for “enhancing print quality” is a subjective term that renders the claim indefinite. It is unclear how one determines whether print quality has been enhanced to thereby call the coating specialized.
In claim 12, the phrase “transforms it” lacks antecedent basis in the claims. It is unclear what “it” is referring to.
In claim 14, the limitations that the “liner substrate includes die cuts that define areas for customized indicia” render the claim indefinite as it unclear if these are areas other than the liner label or if the liner label is the defined areas.
In claim 16, the limitations that the “several distinct labels” render the claim indefinite as the word “several” is an indefinite number that is more than a few. Also, the word “distinct” means recognizably different, which is a subjective term.
In claim 16, the limitations of “centrally located” tab at a base of the aligned label and liner label is a relative term that renders the claim indefinite. It is unclear how one can determined where “centrally located” relative to the two labels is located since the base of the labels is never defined and this is not supported so there is no portions of the specification that can help understand this term.
In claim 16, the limitations of “the tab being part of a perforation through both substrates to assist in their separation” renders the claim indefinite. A tab cannot be part of a perforation as these are two distinct structures. Also, the phrase “to assist” is a subjective term and “their separation” lacks antecedent basis in the claims as it is unclear what to “their” is referring.
In claim 19, the phrase “to facilitate individual removal” is a subjective term that renders the claim indefinite. The term “facilitate” means to make an action easier, but it is unclear how one is to judge whether the weakened periphery has made the individual removal easier to read on these limitations.
Claim Rejections - 35 USC § 103
Claims 2-12, 14-16 and 18-21 are rejected under 35 U.S.C. 103 as being unpatentable over Keeton et al. (US 2009/0015649) in view of Brookshire et al. (US 2013/0068380).
With regard to claims 2-4, 6, 7, 9-11, 16 and 18-20 Keeton et al. teach a two-sided thermal media comprising a label and liner combination in Figure 16 that has a first substrate 1610, which reads on applicants’ label substrate, a coating 1620, which may be either a thermally sensitive, which reads on applicants’ direct thermal coating, or a thermal transfer receptive coating, a second substrate 1615, which reads on applicants’ liner substrate, and a coating 1630, which may be a thermally sensitive or thermal transfer receptive coating [0136]-[0139] and [0143]. There may be an adhesive 1660, which reads on an adhesive on a backside of the liner substrate, and a release layer 1670, which reads on applicants’ release coating [0142]. Another embodiment of the two-sided thermal media may be in the form of a roll of labels [0074]; however, Keeton et al. do not specifically teach the embodiment of Figure 16 having pull tabs and die cuts or perforations as claimed.
Brookshire et al. teach a two-sided label having perforations 115 and die cuts 155/157, in an upper layer 110 and a lower layer 150 of the label, wherein the upper layer reads on applicants’ label substrate and the lower layer reads on the liner substrate [0020] and [0024]. Brookshire et al. teach that the die cuts extend through both the lower layer 150 and the upper layer 110 in the same outline [0025]. The perforations 115 and/or die cuts 155/157 would read on applicants’ claimed aligned die cuts and/or perforations. The Examiner is making this interpretation based upon [0029] of applicants’ specification, which show that applicants are treating these terms to be equivalents.
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The central portion 113 reads on applicants’ label of the label substrate and the central portion 153 reads on applicants’ liner label [0020] and [0021]. They also teach that tabs 131 or 132 may be included at one end of the central portion [0021]. Those tabs do not have any material underneath them, and therefore the area below them is devoid of material associated with the label. The central portions 113 and 153 can be removed together [0041].
Since Keeton et al. and Brookshire et al. are drawn to two-sided labels that use thermal recording, it would have been obvious to one having ordinary skill in the art to have die cut the label of Keeton et al. to form a label having the die cuts as taught by Brookshire et al. It would have been obvious to have made the labels separable from each other by way of die cuts such that they could be separated and used on separate products.
It would also have been obvious to one having ordinary skill in the art to have made the label-liner combination of Figure 16 be a roll of two or more labels as is taught for another embodiment of a two-sided thermal media within Keeton et al. This would read on applicants’ plurality of labels, multiple independent labels and several distinct labels. The rationale to make it a roll of two or more labels is provide a customer with a sufficient amount of media to load into a printer for multiple uses. It would also have been obvious to one having ordinary skill in the art to have made multiple labels on one liner substrate as this would save materials by using a single liner. This would read on the label substrate having less area than the liner substrate.
With regard to claims 5, 8, 14, 15 and 21, these claims represent functional and intended use limitations of the two-sided thermal media. A thermal transfer receptive coating is for receiving transfer ink, which means this material will also intrinsically enhance receptivity to inkjet and laser printing [0138]. Since the liner substrate can be printed, it can be printed with packing list or shipping information, customized indicia, mail addresses or handling instructions etc. as claimed.
With regard to claim 12, the second substrate 1615 can be a synthetic material, such as polyester or polyethylene [0136]. These materials will intrinsically be translucent, and given the fact that the thermal transfer receptive coating is for the same purpose and materials as claimed, it will intrinsically transform the liner substrate from translucent to opaque and enhancing print quality as claimed.
Claim 17 is rejected under 35 U.S.C. 103 as being unpatentable over Keeton et al. (US 2009/0015649) in view of Brookshire et al. (US 2013/0068380) and further in view of Okumura et al. (5,276,002).
Keeton et al. in view of Brookshire et al. render obvious all of the limitations of claim 25 above. Keeton et al. also teach that the coating 1630 may be a thermal transfer receptive coating [0136] and [0138]; however, they do not specifically teach the thermal transfer receptive coating being made of the aqueous based-resin claimed.
Okumura et al. teach an image-receiving sheet having an image-receiving layer that may be used for thermal transfer recording (col. 3, lines 44-50). The image-receiving layer may be formed with a water-soluble resin and ammonia to make the coating composition alkaline, which read on applicants’ aqueous resin-based thermal transfer receptive coating (col. 3, lines 54-58 and col. 4, lines 53-66).
Since Keeton et al. in view of Brookshire et al. and Okumura et al. are drawn to thermal transfer receiving layers, it would have been obvious to one having ordinary skill in the art to have merely substituted the thermal transfer receptive coating of Keeton et al. in view of Brookshire et al. by using the coating composition for forming the thermal transfer image-receiving layer of Okumura et al. The results of such a substitution would have been predictable to one having ordinary skill in the art.
Claim 13 is rejected under 35 U.S.C. 103 as being unpatentable over Keeton et al. (US 2009/0015649) in view of Brookshire et al. (US 2013/0068380) and further in view of Raming (US 2002/0193225).
Keeton et al. in view of Brookshire et al. render obvious all of the limitations of claim 25 above. Keeton et al. also teach that they can print shipping information on their thermal media [0052]; however, they do not specifically teach an adhesive coating on a back side of the liner, which would be an opposite side from the front side of the liner substrate.
Raming teach that it is known to apply U-shaped adhesive 70 to the reverse side of a shipping label outside of the indicia area 78 for the purpose of attaching to the container [0024].
Since Keeton et al. in view of Brookshire et al. and Raming are drawn to shipping labels, it would have been obvious to one having ordinary skill in the art to have combined the adhesive of Raming onto the back side of the label of Keeton et al. in view of Brookshire et al. The results of such a combination would have been predictable to one having ordinary skill; further, each of the elements would have performed the same in combination as they would have separately. The rationale to do this is to be able to attach the shipping label to a container.
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 2-21 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 substrate and a liner substrate having labels therein. The copending claims are a species of the pending claims, and therefore they render them obvious using the anticipation analysis, see MPEP 804.
Claims 2-21 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 substrate and a liner substrate having labels therein. The copending claims are a species of the pending claims, and therefore they render them obvious using the anticipation analysis, see MPEP 804.
Conclusion
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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/Gerard Higgins/Primary Examiner, Art Unit 1785
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