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 Applicant argument and claim amendments received on 09/05/2025 are entered into the file. Currently claims 1, 2, 6, 8, 9, 15, 16 and 18 are amended; claims 3 and 7 are cancelled; claims 21 and 22 are new; resulting in claims 1, 2, 4-6 and 8-22 pending for examination.
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 6, 8, 18, 21 and 22 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 6, the limitations “wherein each of the plurality of microcapsules comprise at least one electrically charged microcapsule at its external surface” is indefinite as it is not clear what structure is required by the claimed invention. It is not clear how the electric charge is obtained, whether a specific material is required, or a specific treatment is required to be performed on the microcapsule to achieve this feature. It is not clear if it is an inherent property of a specific type of material that would be present as long as the specific material is present. Furthermore, it is unclear what is meant by “each of the plurality of microcapsules comprise at least one electrically charged microcapsule at its external surface”, as the language of the claim suggests that each microcapsule comprises an electrically charged microcapsule at its external surface, wherein “its external surface” refers to the microcapsule. It is not clear if the claim is stating that each microcapsule is an electrically charged microcapsule, or if each microcapsule has an additional microcapsule at its external surface that is electrically charged.
The metes and bounds of the structure of the claimed invention are unable to be determined, and therefore prior art is unable to be applied.
Regarding claim 8, the limitation “wherein the mechanoresponsive material includes a plurality of mechanoresponsive fibers configured to generate an electric charge in response to mechanical stress being exerted on the sticker” is indefinite as it is not clear what structure is required by the claimed invention. Furthermore, while the limitation recites the intend use of the mechanoresponsive fibers, it is not clear if a specific material is required to achieve the claimed intended use or what structural features are required in order to achieve this particular property.
Regarding claim 18, the limitation reciting “wherein the colorant layer is a permeable layer that is permeable to the microcapsules and/or colorant” is indefinite. In claim 1, the colorant layer is said to be comprised of the mechanoresponsive material and the microcapsules. It is not clear what component of the colorant layer is permeable to the microcapsules and/or colorant and what materials would be required to achieve this property.
Regarding claim 21, the limitation “wherein the plurality of microcapsules include a first electric charge, and wherein the mechanoresponsive material includes a second electric charge that is the same as the first electric charge when the sticker is exposed to stress” is indefinite. It is not clear what structural features are required to achieve this property. It is not clear how the electric charges are obtained, whether a specific material is required, or a specific treatment is required to be performed on the microcapsule to achieve this feature. It is not clear if it is an inherent property of a specific type of material that would be present as long as the specific material is present.
The metes and bounds of the structure of the claimed invention are unable to be determined, and therefore prior art is unable to be applied.
Regarding claim 22, the claim is written as depending from itself, rendering the claim indefinite. As it is unclear which previous claim dependent claim 22 is intended to depend from, the metes and bounds of the structure of the claimed invention are unable to be determined, and therefore prior art is unable to be applied.
Claim Rejections - 35 USC § 102
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.
Claims 1, 4, 5, 14, 16, 17 and 18 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Bartlein (US 2022/0319356; cited on IDS)
Regarding claims 1, 5 and 16, Bartlein teaches an aroma flavor label for flavoring beverages with a desired flavor, wherein rather than flavoring a given beverage, a label comprising a scent of the desired flavoring is provided, the scent can provide the perception of taste to the user ([0003-0004]). The aroma flavor label comprises a base substrate (120; substrate) comprised of paper, cardboard, paperboard, etc., an adhesive layer on the bottom surface of the base substrate (120), a scented layer (130; mechanoresponsive material) on the top surface of the base substrate (120) and a cover layer (140) over the scented layer (130), wherein upon removal of the cover layer (140), the microcapsules are ruptured, releasing the scent (Figure 1A, 1B, 3A, 3B, [0079-0080, 0085, 0097]). The scented layer comprises at least one or a plurality of scented microcapsules, wherein a scented liquid substance, such as an essential oil, is surrounded by a membrane or matrix shell, wherein the microcapsule can further comprise a colorant such as a food grade dye in a color that corresponds to the scent ([0079, 0085, 0097]). Upon removal of the cover layer (140), a mechanical shear strength (mechanical stress) is created that ruptures the microcapsules, releasing the desired scent into the air ([0079, 0085, 0097]).
The limitations “configured to be attached to skin” and “wherein the mechanoresponsive material is configured to release the microcapsules when the sticker is exposed to mechanical stress” is considered 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. As Bartlein teaches all the structural features required by claim 1 above, it would be capable of performing in the manner claimed.
Regarding claim 4, Bartlein teaches all the limitations of claim 1 above, and the membrane or matrix of the microcapsules ([0079]) would inherently be either opaque or transparent.
Regarding 14, Bartlein teaches all the limitations of claim 1 above, and further teaches as shown in Figures 1A, 1B, 3A, 3B that the label comprises a first subset of microcapsules comprising a first scent and colorant and a second subset of microcapsules comprising a second scent and colorant ([0080-0089, 0096-0097]).
Regarding claim 17, Bartlein teaches all the limitations of claim 1 above, and teaches that the aroma flavor label comprises a base substrate (120; substrate) comprised of paper, cardboard, paperboard (Figure 1A, 1B, 3A, 3B, [0079-0080, 0085, 0097]).The limitation reciting “wherein the colorant is configured to diffuse into the substrate upon mechanical stress being exerted on the sticker” is considered 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. As Bartlein teaches all the structural features required by claim 1 above, it would be capable of performing in the manner claimed.
Regarding claim 18, Bartlein teaches all the limitations of claim 1 above, and the claim is indefinite for the reasons expressed above. The limitation reciting “wherein the colorant layer is a permeable layer that is permeable to the microcapsules and/or colorant” is considered 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. As Bartlein teaches all the structural features required by claim 1 above, it would be capable of performing in the manner claimed.
Claim Rejections - 35 USC § 103
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, 2, 4, 5, 14, 15, 16, 17, 18, 19 and 20 are rejected under 35 U.S.C. 103 as being unpatentable over Thomas et al. (WO 2018/085811, cited on IDS).
Regarding claims 1, 2, 5 and 16, Thomas et al. teaches a performance gauge (10; sticker) affixed (adhesive) to an apparel item (substrate), wherein the performance gauge (10; sticker) comprised of a binder layer (2; colorant layer) of any suitable textile (fibers) embedded with microcapsules (4) and a coating layer (1) (i.e. plurality of microcapsules held between fibers)(Figure 1, 2, 6; [0029-0044, 0048-0050]). The microcapsules (4) comprise an inner volume and an outer shell, wherein the inner volume of some microcapsules comprises a dye (30) and other microcapsules comprise a co-reactant activator for the dye (31), wherein the microcapsules are designed to break down over time from factors that would damage the apparel item, such as stretching, washing, etc. (i.e. mechanical stress) ([0041-0044]). When the microcapsules break down and rupture (i.e. burst), the dye (30) is activated by the co-reactant activator (31) and the color change becomes more pronounced, alerting the wearer that the apparel item is no longer performing adequately ([0007-0019, 0029-0044, 0048-0050]).
While Thomas et al. teaches that the label is affixed to the apparel item, the reference does not expressly teach and adhesive layer, however, it would have been obvious to one of ordinary skill in the art to utilize an adhesive to affix the label as adhesive are known in the label art for affixing labels to various surfaces.
The limitations “configured to be attached to skin” and “wherein the mechanoresponsive material is configured to release the microcapsules when the sticker is exposed to mechanical stress” from claim 1 and “wherein the plurality of mechanoresponsive fibers are configured to release the microcapsules when the sticker is exposed to mechanical stress” are considered 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. As Thomas et al. teaches all the structural features required by claim 1 above, it would be capable of performing in the manner claimed.
With respect to claim 2, while Thomas et al. does not expressly teach that the biner layer (2) of any suitable textile is opaque, such a modification would have been obvious to one of ordinary skill in the art as an obvious matter of design choice based upon the coloration of the dye within the microcapsules and desired look of the color change of the visual indicator.
Regarding claim 4, Thomas et al. teaches all the limitations of claim 1 above, and while the reference does not expressly disclose whether the outer shell of the microcapsule is opaque or transparent, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention that the outer shell would either be opaque or transparent.
Regarding claim 14, Thomas et al. teaches all the limitations of claim 1 above, and as previously stated, Thomas et al. teaches some microcapsules comprises a dye (30; first colorant) and other microcapsules comprise a co-reactant activator for the dye (31; second colorant) ([0029-0044, 0048-0050]).
Regarding claim 15, Thomas et al. teaches all the limitations of claim 1 above, and while the reference does not expressly teach that the sticker has an area wherein the microcapsules are dispersed in and an defined boundary area where they are not, such a modification would have been obvious to one of ordinary skill in the art before the effective filing date to modify the area comprising the microcapsules to be in any design or pattern.
Regarding claim 17, Thomas et al. teaches all the limitations of claim 1 above and as previously stated, teaches that the performance gauge (10; sticker) affixed (adhesive) to an apparel item (substrate) (Figure 1, 2, 6; [0029-0044, 0048-0050]). The limitation reciting “wherein the colorant is configured to diffuse into the substrate upon mechanical stress being exerted on the sticker” is considered 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. As Thomas et al. teaches all the structural features required by claim 1 above, it would be capable of performing in the manner claimed.
Regarding claim 18, Thomas et al. teaches all the limitations of claim 1 above, and the claim is indefinite for the reasons expressed above. The limitation reciting “wherein the colorant is permeable to the microcapsules and/or colorant” is considered 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. As Thomas et al. teaches all the structural features required by claim 1 above, it would be capable of performing in the manner claimed.
Regarding claim 19, Thomas et al. teaches all the limitations of claim 1 above, and the reference further teaches that the coating layer can further comprise a microporous film that has openings of roughly 1-50 micrometers to allow individual water vapor molecules to pass through while blocking larger water molecules ([0036]).
Regarding claim 20, Thomas et al. teaches all the limitations of claim 19 above, and as stated previously, Thomas et al. teaches that the pores of the microporous film that has openings of roughly 1-50 micrometers ([0036]). Thomas et al. further teaches that the diameter of the microcapsules is approximately 100 micrometers or less ([0044]), and therefore, when the microcapsules are in the upper range of 51-100 micrometers, they would be larger than the pores.
Claims 8, 9, 10, 11, 12 and 13 are rejected under 35 U.S.C. 103 as being unpatentable over Thomas et al. (WO 2018/085811, cited on IDS)in view of Wang et al. (US 10,143,081).
Regarding claims 8, 9, 10, 11, 12 and 13, Thomas et al. teaches all the limitations of claim 1 above, however, the reference does not expressly teach that binder layer (2; colorant layer) comprises a plurality of mechanoresponsive fibers configured to generate a charge as required by claim 8 or a piezoelectric material, such as a piezoelectric polymer including polyvinylidene fluoride or polyvinylidene-trifluoroethylene polymer as required by claims 9-13.
Wang et al. discloses a hyper elastic binder for printed, stretchable devices such as temporary tattoos, textiles, electrochemical devices, addressing issues related to elasticity and stretchability of such devices (col. 1 Ln. 13-col. 3 Ln. 50, col. 22 Ln. 1-62). Wang et al. teaches that polyvinylidene fluoride can be added to the binder composition for such devices as it adds durability to the elastic composite material without affecting the functional properties (col. 8 Ln. 49-65).
As both Thomas et al. and Wang et al. are directed to conformable structures, 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 coating layer (3; colorant layer) of Hausen et al. to include a polyvinylidene fluoride as taught by Wang et al. to add durability without affecting the functional properties.
Claim 15 is rejected under 35 U.S.C. 103 as being unpatentable over Bartlein (US 2022/0319356)
Regarding claim 15, Bartlein teaches all the limitations of claim 1 above, and as shown by at least Figure 1A, Bartlein teaches that the scented layer does not cover the entirety of the substrate ([0080-0089, 0096-0097]). While the reference does not expressly teach that the scented layer with the microcapsules covers up to 70% of the label surface, such a modification would have been obvious to one of ordinary skill in the art based upon the desired amount of each scent in the resultant label.
Response to Arguments
Response-Claim Rejections - 35 USC § 102 and 103
Applicant’s arguments, see page 8-9, filed 09/05/2025, with respect to Hausen et al. have been fully considered and are persuasive. The previous rejections of claims 1, 4, 5, 16, 17 and 18 under 35 U.S.C. 102(a)(1) as being anticipated by Hausen et al. (US 2010/0139861; cited on IDS); of claims 3, 14, 15 under 35 U.S.C. 103 as being unpatentable over Hausen et al. (US 2010/0139861; cited on IDS); of claims 6, 7, 8 and 9 under 35 U.S.C. 103 as being unpatentable over Hausen et al. (US 2010/0139861; cited on IDS) in view of Bansal (US 2013/0125910; cited on IDS); and of claims 10, 11, 12 and 13 under 35 U.S.C. 103 as being unpatentable over Hausen et al. (US 2010/0139861; cited on IDS) in view of Wang et al. (US 10,143,081) have been withdrawn.
With respect to the rejections over Bartlein, the Applicant's arguments filed 09/05/2025 have been fully considered but they are not persuasive.
The Applicant argues on page 8 that Bartlein does not includes a mechanoresponsive material in combination with the microcapsules, nor does the reference teach that the microcapsules include a colorant. These arguments are not persuasive.
In the instant specification, it is disclosed that the term “mechanoresponsive material” may refer to material comprising molecules that respond to mechanical stress and additionally or alternatively, may relate to a material configured to change a physical property when exposed to mechanical stress (see pg-pub [0008]). A specific embodiment is discussed wherein the mechanoresponsive materials is comprised of a plurality of mechanoresponsive fibers that are comprised of piezoelectric polymers that generate an electrical charge (see pg-pub [0012, 0018-0019, 0060-0068]), however, this embodiment is recited in dependent claims 2 and 8, which are not rejected by Bartlein.
Bartlein teaches that the scented layer comprises at least one or a plurality of scented microcapsules, wherein a scented liquid substance, such as an essential oil, is surrounded by a membrane or matrix ([0079, 0085, 0097]), which corresponds to the first definition of “mechanoresponsive material” disclosed by the instant specification, wherein the phrase refers to a material comprising molecules that respond to mechanical stress. The microencapsulated coating is released due to mechanical shear release, wherein a protective strip or cover is removed, resulting in mechanical shear that ruptures the shell or membrane of the microcapsules, thus releasing the aroma of the liquid aromatic substance ([0079]).
Bartlein further teaches that the microcapsule can comprise a colorant such as a food grade dye in a color that corresponds to the scent ([0079, 0085, 0097]).
With respect to the rejections over Thomas et al., the Applicant's arguments on pages 10-11 filed 09/05/2025 have been fully considered but they are not persuasive.
The Applicant argues on pages 10 that Thomas et al. does not teach a mechanoresponsive material, but rather teaches a conventional binder which functions to prevent the microcapsules from being washed away. This argument is not persuasive.
As previously stated, the instant specification, it is disclosed that the term “mechanoresponsive material” may refer to material comprising molecules that respond to mechanical stress and additionally or alternatively, may relate to a material configured to change a physical property when exposed to mechanical stress (see pg-pub [0008]). The binder taught by Thomas et al. is a material that comprises the microcapsules (4) (Figure 1, 2, 6; [0029-0044, 0048-0050]), and thus corresponds to the mechanoresponsive material recited by claim 1.
The Applicant further argues on page 10 that Thomas et al. teaches that the microcapsules rupture due to physical movement or stress rather than the result of a mechanoresponsive material that responds to mechanical stress and facilitates the release of the microcapsules. This argument is not persuasive. The Applicant has not presented any arguments directed to the structural differences between the mechanoresponsive material of the instant invention and that of the binder layer with embedded microcapsules taught by Thomas et al.
The Applicant further argues on pages 10-11 with respect to specific embodiments of the instant invention being to a tattoo sticker, describing how it is used and applied to a user’s skin. 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., a tattoo sticker that creates a self-activated tattoo design; or the use of a mechanoresponsive material that enables activation of a tattoo design without rupturing the microcapsules) 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).
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.
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LAURA POWERS
Examiner
Art Unit 1785
/LAURA C POWERS/Primary Examiner, Art Unit 1785