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 .
Continued Examination Under 37 CFR 1.114
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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 3/5/26 has been entered.
Claim Interpretation
Claims 2, 11, & 20: Claims 2, 11, & 20 recite the limitation “wherein the warning layer coating is adapted…not activate when the thermal sensitive coating is imaged by a thermal printer”; applicant is advised that this clause is a contingent clause and given that the claim does not require treating the structure with a thermal printer the prior art does not have to meet the contingent limitation. See MPEP §2111.04.
Claim Rejections - 35 USC §§ 102 & 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 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.
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.
This application currently names joint inventors. In considering patentability of the claims the examiner presumes that the subject matter of the various claims was commonly owned as of the effective filing date of the claimed invention(s) absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and effective filing dates of each claim that was not commonly owned as of the effective filing date of the later invention in order for the examiner to consider the applicability of 35 U.S.C. 102(b)(2)(C) for any potential 35 U.S.C. 102(a)(2) prior art against the later invention.
Claims 2, 4-7, 9-12, 14, & 16-18 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by or, in the alternative, under 35 U.S.C. 103 as obvious over Cornell (US Patent 3,896,965; hereafter ‘965).
Claim 2: ‘965 is directed towards a method of producing a tamper-evident label (title, abstract, & Figs. 1-4), comprising:
applying, by a press (the layer is printed which implies the use of a printing press, claim 6), a warning layer coating on top of a thermal-sensitive coating coated a front side of a substrate (layer 21, the warning layer with microcapsules, coated on layer 28, an adhesive layer, coated on layer 26, a substrate, see Fig. 3 and col. 3, line 50 – col. 4, line 25), wherein the substrate defines a roll of labels, wherein the warning layer coating is adapted to disperse colored material or reveal a printed warning indicia on the front side of each label responsive to a directional force applied to that label (see col. 1, line 30 – col. 3, line 35), wherein the warning layer coating includes a plurality of capsules (col. 1, lines 35-55), each capsule having a shell membrane that when broken by the direction force releases colored materials that provide visible indicia on the front side (the capsules comprise a shell that contains a reactive liquid that when released chemically reacts with a compound present in the binder and releases colored materials that provide visible indicia on the front side; see col. 1, lines 35-55); and
applying, by the press, an adhesive to a backside of the substrate (see layer 20, Fig. 3 and col. 3, line 50 – col. 4, line 25).
As discussed above, application of the layers by a press is implied by ‘965.
If, however, ‘965 does not anticipate application of all layers by a press, it would have been obvious to one of ordinary skill in the art at the time of filing to apply all of the layers by printing (i.e. a press) because as taught by ‘965, printing is an art recognized means for applying at least the warning layer and it is prima facie obvious to use known techniques to obtain predictable results and the use of a printing press to apply the layers other than the warning layer would have also reduced the number of different application tools required to produce the product which would have predictably simplified the process.
The warning layer is adapted to withstand heat (the material is heat resistant to some degree; see col. 1, line 30 – col. 3, line 40).
’965 does not teach that the warning layer is not activated when the thermal-sensitive coating is imaged by a thermal printer.
However, the claim does not require that the label be imaged by a thermal printer and instead “the warning layer is adapted to” is a contingent clause and the result does have to be met because the claim does not recite imaging with a thermal printer. See MPEP § 2111.04.
Claim 4: ‘965 teaches that the warning layer includes microencapsulated patches of food-safe material on top of the thermal-sensitive coating (‘965 teaches using a specific concentration and if the concentration is below the taught value it is not suitable for use in containers for food items, col. 2, line 55 – col. 3, line 13).
Though ‘965 does not explicitly state that the dyes are food safe dyes, it is reasonable to presume said dyes are food-safe because ‘965 teaches using them in containers for food items.
Claim 5: ‘965 teaches that the warning layer coating includes two or more food safe liquids, each food safe liquid adapted to be clear or remain invisible when not activated by the directional force (‘965 teaches using a specific concentration and if the concentration is below the taught value it is not suitable for use in containers for food items, col. 2, line 14 – col. 3, line 13 and col. 2, line 55 – col. 3, line 13).
Though ‘965 does not explicitly state that the dyes are food safe dyes, it is reasonable to presume said dyes are food-safe because ‘965 teaches using them in containers for food items.
Claim 6: Each label of the roll is a linerless label (col. 1, line 55 – col. 2, line 5).
Claim 7: The warning layer coating includes a plurality of capsules, each having a shell membrane that when broken by the directional force releases two or more food safe liquids (‘965 teaches using a specific concentration and if the concentration is below the taught value it is not suitable for use in containers for food items, col. 2, line 14 – col. 3, line 13 and see Fig. 3).
Claim 9: The warning layer coating is a patch comprising microencapsulated ink situated substantially along a center of the front side of the substrate (see Fig. 4 and col. 4, lines 5-20).
Claim 10: The warning layer coating comprises a plurality of beads, each bead comprising a food coloring ink that is undetectable on the front side of the substrate until corresponding beads burst open from the directional force (see col. 1, line 30 – col. 3, line 35 and ‘965 teaches using a specific concentration and if the concentration is below the taught value it is not suitable for use in containers for food items, col. 2, line 14 – col. 3, line 13).
Claim 11: ‘965 is directed towards a method of producing a tamper-evident label (title, abstract, & Figs. 1-4), comprising:
providing a substrate with a front side and a back side (see substrate (26), Fig. 3 and col. 3, line 50 – col. 4, line 25);
applying a warning layer coating on a front side of the substrate atop a thermal- sensitive coating, the warning layer coating comprising heat-resistant capsules, each capsule containing a food safe liquid that exhibits no color until activated (see layer 21, Fig. 3 and col. 3, line 50 – col. 4, line 25; ‘965 teaches using a specific concentration and if the concentration is below the taught value it is not suitable for use in containers for food items, col. 2, line 55 – col. 3, line 13) and wherein the warning layer coating is applied by coating onto the thermal-sensitive coating (col. 2, lines 14-30, the layers are applied to a substrate, see structure 21, col. 4, lines 5-12); and
applying an adhesive on a back side of the substrate (see layer 20, Fig. 3 and col. 3, line 50 – col. 4, line 25);
wherein the warning layer coating is adapted to provide a visible indicia on the front side when a directional force ruptures the capsules (col. 2, line 55 – col. 3, line 13 and col. 3, line 50 – col. 4, line 25).
The warning layer is adapted to withstand heat (the material is heat resistant to some degree; see col. 1, line 30 – col. 3, line 40).
’965 does not teach that the warning layer is not activated when the thermal-sensitive coating is imaged by a thermal printer.
However, the claim does not require that the label be imaged by a thermal printer and instead “the warning layer is adapted to” is a contingent clause and the result does have to be met because the claim does not recite imaging with a thermal printer. See MPEP § 2111.04.
Claim 12: Each heat-resistant capsule includes a shell membrane that when broken from the direction force releases two or more food safe liquids (‘965 teaches using a specific concentration and if the concentration is below the taught value it is not suitable for use in containers for food items, col. 2, line 14 – col. 3, line 13 and col. 2, line 55 – col. 3, line 13).
Claim 14: The substrate is wound into a roll (col. 4, lines 10-20).
Claim 16: The visible indicia is a written warning indicia (col. 3, lines 25-32).
Claim 17: The ink is edible ink (965 teaches using a specific concentration and if the concentration is below the taught value it is not suitable for use in containers for food items, col. 2, line 14 – col. 3, line 13 and col. 2, line 55 – col. 3, line 13; given that it is food safe it is apparent it is edible because it is fit to be eaten).
Claim 18: The directional force is sufficient to rupture the heat-resistant capsules when an attempt is made to remove a label corresponding to the substrate once the label is affixed to a surface by the adhesive (col. 1, line 30 – col 3, line 40).
Claims 3 & 13 are rejected under 35 U.S.C. 103 as being unpatentable over ‘965 as applied above, and further in view of Yarusso et al. (US Patent 5,858,150; hereafter ‘150).
Claim 3: As discussed above, ‘965 discloses a structure comprising a warning layer coating on top of a substrate and an adhesive on the backside of the substrate (see Fig. 3) and that the tape can be wound into a roll (col. 1, lines 50-60).
‘965 does not teach applying a release coating on top of the warning layer coating as claimed.
However, ‘150, which is also directed towards tamper-evident tape (title & col. 10, lines 1-10), discloses adding a release coating to the side opposite of the adhesive layer (col. 5, line 65 – col. 6, line 15, col. 11, lines 45-60, col. 12, lines 20-35) for linerless rolls of tape (col. 8, line 60 – col. 9, line 30).
It would have been obvious to one of ordinary skill in the art at the time of filing to incorporate the teachings of ‘150 and apply a release coating on the warning layer coating of ‘965 because it is an art recognized configuration which would have predictably produced a linerless roll of labels as desired.
Claim 13: As discussed above, ‘965 discloses a structure comprising a warning layer coating on top of a substrate and an adhesive on the backside of the substrate (see Fig. 3) and that the tape can be wound into a roll (col. 1, lines 50-60).
‘965 does not teach applying a release coating on top of the warning layer coating as claimed.
However, ‘150, which is also directed towards tamper-evident tape (title & col. 10, lines 1-10), discloses adding a release coating to the side opposite of the adhesive layer (col. 5, line 65 – col. 6, line 15, col. 11, lines 45-60, col. 12, lines 20-35) for linerless rolls of tape (col. 8, line 60 – col. 9, line 30).
It would have been obvious to one of ordinary skill in the art at the time of filing to incorporate the teachings of ‘150 and apply a release coating on the warning layer coating of ‘965 because it is an art recognized configuration which would have predictably produced a linerless roll of labels as desired.
Claims 8 & 15 are rejected under 35 U.S.C. 103 as being unpatentable over ‘965 as applied above, and further in view of Schaefer et al. (US Patent 4,557,505; hereafter ‘505.
Claim 8: ‘965 does not teach applying a liner on the adhesive on the backside.
However, 505, which is also directed towards tamper-evident tape (title) teaches applying a liner to the adhesive on the backside of the tape to protect the adhesive layer until the structure is applied (col. 3, lines 5-15).
It would have been obvious to one of ordinary skill in the art at the time of filing to incorporate the teachings of ‘505 into the process of ‘965 and apply a liner to the backside adhesive because it is an art recognized layer which would have predictably protected the adhesive layer on the tape until the structure is applied and thus improved the structure.
The combination does not teach applying the liner by the press (i.e. printer).
As discussed above, ‘965 teaches applying the layers by printing.
It would have been obvious to one of ordinary skill in the art at the time of filing to apply the liner by printing because it is an art recognized application means and would have predictably produced the desired result.
Claim 15: ‘965 does not teach applying a liner on the adhesive on the backside.
However, 505, which is also directed towards tamper-evident tape (title) teaches applying a liner to the adhesive on the backside of the tape to protect the adhesive layer until the structure is applied (col. 3, lines 5-15).
It would have been obvious to one of ordinary skill in the art at the time of filing to incorporate the teachings of ‘505 into the process of ‘965 and apply a liner to the backside adhesive because it is an art recognized layer which would have predictably protected the adhesive layer on the tape until the structure is applied and thus improved the structure.
The combination does not teach applying the liner by the press (i.e. printer).
As discussed above, ‘965 teaches applying the layers by printing.
It would have been obvious to one of ordinary skill in the art at the time of filing to apply the liner by printing because it is an art recognized application means and would have predictably produced the desired result.
Claims 20-21 are rejected under 35 U.S.C. 103 as being unpatentable over ‘965 in view of ‘150.
Claim 20: A method, comprising:
providing a substrate coated with a thermal-sensitive coating on a front side of the substrate (see layer 21, Fig. 3 and col. 3, line 50 – col. 4, line 25; ‘965 teaches using a specific concentration and if the concentration is below the taught value it is not suitable for use in containers for food items, col. 2, line 55 – col. 3, line 13);
applying a warning layer coating atop the thermal-sensitive coating, wherein the warning layer coating is adapted to withstand heat, and wherein the warning layer coating includes microencapsulated food safe inks that rupture and provide visible indicia on the front side of the substrate when a directional force is applied to the substrate (see layer 21, Fig. 3 and col. 3, line 50 – col. 4, line 25; ‘965 teaches using a specific concentration and if the concentration is below the taught value it is not suitable for use in containers for food items, col. 2, line 55 – col. 3, line 13; the material is heat resistant to some degree; see col. 1, line 30 – col. 3, line 40), and wherein the microencapsulated food safe inks include an edible and non-toxic coloring substance within a membrane that exhibits heat-resistance such that the membrane does not rupture upon application of heat but ruptures on tension or force ((‘965 teaches using a specific concentration and if the concentration is below the taught value it is not suitable for use in containers for food items, col. 2, line 14 – col. 3, line 13 and col. 2, line 55 – col. 3, line 13 and given that the structure is stable it is apparent that it has a degree of heat-resistance where upon it does not rupture from the heat but from the tension or force applied);
applying an adhesive coating to a back side of the substrate (see layer 20, Fig. 3 and col. 3, line 50 – col. 4, line 25); and
winding the substrate into a roll of linerless labels (col. 4, lines 10-20).
’965 does not teach that the warning layer is not activated when the thermal-sensitive coating is imaged by a thermal printer.
However, the claim does not require that the label be imaged by a thermal printer and instead “the warning layer is adapted to” is a contingent clause and the result does have to be met because the claim does not recite imaging with a thermal printer. See MPEP § 2111.04.
As discussed above, ‘965 discloses a structure comprising a warning layer coating on top of a substrate and an adhesive on the backside of the substrate (see Fig. 3) and that the tape can be wound into a roll (col. 1, lines 50-60).
‘965 does not teach applying a release coating on top of the warning layer coating as claimed.
However, ‘150, which is also directed towards tamper-evident tape (title & col. 10, lines 1-10), discloses adding a release coating to the side opposite of the adhesive layer (col. 5, line 65 – col. 6, line 15, col. 11, lines 45-60, col. 12, lines 20-35) for linerless rolls of tape (col. 8, line 60 – col. 9, line 30).
It would have been obvious to one of ordinary skill in the art at the time of filing to incorporate the teachings of ‘150 and apply a release coating on the warning layer coating of ‘965 because it is an art recognized configuration which would have predictably produced a linerless roll of labels as desired.
‘965 does not teach that the thermal-sensitive coating can still be activated under the warning layer coating through application of heat by a thermal print head of a thermal printer but without activating the microencapsulated food safe inks of the warning layer coating.
However, it is apparent that the warning layer is adapted to withstand heat (the material is heat resistant to some degree; see col. 1, line 30 – col. 3, line 40).
The combination teaches the claimed invention but fails to explicitly teach the thermal-sensitive coating can still be activated under the warning layer coating through application of heat by a thermal print head of a thermal printer but without activating the microencapsulated food safe inks of the warning layer coating. Since similar materials are used and the same structure is produced; it is reasonable to presume the same results would be obtained. Support for said presumption is found in the use of like materials and like processes which would result in the claimed property.
The burden is upon the Applicant to prove otherwise. In re Fitzgerald 205 USPQ 594. In addition, the presently claimed properties would obviously have been present once the product is provided. Note In re Best, 195 USPQ at 433, footnote 4 (CCPA 1977).
’965 does not teach that the warning layer is not activated when the thermal-sensitive coating is imaged by a thermal printer.
However, the claim does not require that the label be imaged by a thermal printer and instead “the warning layer is adapted to” is a contingent clause and the result does have to be met because the claim does not recite imaging with a thermal printer. See MPEP § 2111.04.
Claim 21: The warning layer is adapted to remain invisible until ruptured by the directional force (col. 2, lines 45-57, ‘965).
Response to Arguments
Applicant's arguments filed 3/5/26 have been fully considered but they are not persuasive.
In regards to applicant’s arguments that ‘965 does not disclose any thermal-sensitive coating; the Office does not find this argument convincing because ‘965 teaches a thermally sensitive layer as discussed above which reads on the thermally-sensitive coating. Applicant is advised that the term “thermally-sensitive coating” does not have any specially meaning beyond the plain meaning of the words and any layer/coating that has a sensitivity to heat reads on a thermally-sensitive coating/layer.
In regards to applicant’s argument ‘965 contains “no disclosure of a thermal-sensitive coating of any kind, let alone a thermal-sensitive coating that is adapted to be imaged by a thermal printer” ; the Office does not find this argument convincing because ‘965 provides a coating which reads on the claimed structure and material and the claim does not require that the label be imaged by a thermal printer and instead “the warning layer is adapted to” is a contingent clause and the result does have to be met because the claim does not recite imaging with a thermal printer. See MPEP § 2111.04.
In regards to applicant’s argument that ‘965 does not teach a “roll of labels”; the Office does not find this argument convincing because as discussed above, ‘965 teaches that the laminate structure can be in the form of a roll which reads on a roll of labels.
In response to applicant's argument that the references fail to show certain features of the invention, it is noted that the features upon which applicant relies (i.e., individually separate labels on a roll substrate, thermal printing) are not recited in the rejected claim(s). Although the claims are interpreted in light of the specification, limitations from the specification are not read into the claims. See In re Van Geuns, 988 F.2d 1181, 26 USPQ2d 1057 (Fed. Cir. 1993).
In response to applicant's arguments against the references individually, one cannot show nonobviousness by attacking references individually where the rejections are based on combinations of references. See In re Keller, 642 F.2d 413, 208 USPQ 871 (CCPA 1981); In re Merck & Co., 800 F.2d 1091, 231 USPQ 375 (Fed. Cir. 1986).
In regards to applicant’s argument that ‘965 does not teach application of a warning layer coating by spraying, coating, or rolling onto a thermal-sensitive coating; the Office does not find this argument convincing because as discussed above, ‘965 teaches applying the binder (the warning layer coating) by coating onto layer 27 which reads on the thermally-sensitive coating.
In response to applicant's argument that the examiner's conclusion of obviousness is based upon improper hindsight reasoning, it must be recognized that any judgment on obviousness is in a sense necessarily a reconstruction based upon hindsight reasoning. But so long as it takes into account only knowledge which was within the level of ordinary skill at the time the claimed invention was made, and does not include knowledge gleaned only from the applicant's disclosure, such a reconstruction is proper. See In re McLaughlin, 443 F.2d 1392, 170 USPQ 209 (CCPA 1971).
In response to applicant’s argument that there is no teaching, suggestion, or motivation to combine the references, the examiner recognizes that obviousness may be established by combining or modifying the teachings of the prior art to produce the claimed invention where there is some teaching, suggestion, or motivation to do so found either in the references themselves or in the knowledge generally available to one of ordinary skill in the art. See In re Fine, 837 F.2d 1071, 5 USPQ2d 1596 (Fed. Cir. 1988), In re Jones, 958 F.2d 347, 21 USPQ2d 1941 (Fed. Cir. 1992), and KSR International Co. v. Teleflex, Inc., 550 U.S. 398, 82 USPQ2d 1385 (2007). In this case, both ‘965 and ’150 are in the same field of endeavor (tamper evident adhesive materials) and it would have been obvious to use features from ‘150 to improve ‘965 for the same desired results.
In regards to applicant’s arguments that the capsules and the capsule contents are not food safe as recited; the Office does not find this argument convincing because as noted above, ‘965 teaches using them with food containers and thus teaches the use of said compositions with food and include tannic acid as the encapsulate which provides the presumption that said compositions are food safe. Applicant has not provided any evidence to the contrary. An argument by the applicant is not evidence unless it is an admission, in which case, an examiner may use the admission in making a rejection. See MPEP § 2129 and § 2144.03 for a discussion of admissions as prior art.
Arguments presented by applicant cannot take the place of evidence in the record. See In re De Blauwe, 736 F.2d 699, 705, 222 USPQ 191, 196 (Fed. Cir. 1984); In re Schulze, 346 F.2d 600, 602, 145 USPQ 716, 718 (CCPA 1965); In re Geisler, 116 F.3d 1465, 43 USPQ2d 1362 (Fed. Cir. 1997) ("An assertion of what seems to follow from common experience is just attorney argument and not the kind of factual evidence that is required to rebut a prima facie case of obviousness."). See MPEP § 716.01(c) for examples of applicant statements which are not evidence and which must be supported by an appropriate affidavit or declaration.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to JAMES M MELLOTT whose telephone number is (571)270-3593. The examiner can normally be reached 8:30AM-4:30PM CST.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Curtis Mayes can be reached at 571-272-1234. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/James M Mellott/ Primary Examiner, Art Unit 1759
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