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 06/09/2026 are entered into the file. Currently, claims 1, 12 and 19 are amended, resulting in claims 1-20 pending for examination.
Information Disclosure Statement
The information disclosure statement (IDS) submitted on 06/09/2026 is considered by the examiner.
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 and 8-20 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Laurash et al. (US 5,547,227; cited on IDS).
Regarding claim 1, Laurash et al. teaches a laminated label form (12; label combination) comprising a bottom ply (62; liner substrate) comprising a plurality of die cuts (86, 84) forming two label release sections (80, 78) and a first release material (77; release coating) disposed on an upper side (first side) of the bottom ply (62; liner substrate) surrounding the two label release sections (80, 78) (Figure 3, col. 8 Ln. 20-col. 9 Ln. 30). Laurash et al. further teaches a top ply (60; label substrate) comprising label die cut (72, 70) forming a label portion (68) and a tab portion (66), and an adhesive coating (64) (Figure 3, col. 8 Ln. 20-col. 9 Ln. 30). Laurash et al. further teaches a second release material (77; release coating) forming in the central area of the bottom ply (62; liner substrate) between the label release sections (80,78) and the card section (82), such that when the label is assembled, it is disposed in a center lane portion of the top ply (60; label section) with the adhesive coating disposed thereon (Figure 3, col. 8 Ln. 20-col. 9 Ln. 30).
The limitations in lines 10-13 reciting “wherein the plurality of liner die cuts are shaped and positioned such that when the label substrate is separated from the liner substrate, the liner substrate retains structural integrity sufficient to be rewound without breakage by a printer rewinder, while the removable label retains sufficient adhesive coating on its backside to adhere to a surface” is considered functional language related to the intended use of the product and/or method of using the product, and is accorded limited weight as the language does not further limit the structure or the process. The limitation defines the structural component by what it does rather than what it is.
The method of using 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 Laurash et al. discloses the structure of claim 1 as described above.
Regarding claims 2, 3 and 4, Laurash et al. teaches all the limitations of claim 1 above.
The limitations reciting “wherein when the label substrate is separated from the liner substrate, at least one liner die cut remains as a portion of the liner substrate and an additional liner die cut remains adhered to the backside of the label substrate in areas that at least correspond to middle of the removable label” in claim 2, “wherein the at least one liner die cut that remains as a portion of the liner substrate is a single liner die cut, 6 line die cuts, or 7 liner die cuts” in claim 3, and “where one of the additional liner die cut that remains adhered to the backside of the label substrate is a single liner die cut or 3 liner die cuts” in claim 4 are considered functional language related to the intended use of the product and/or method of using the product, and is accorded limited weight as the language does not further limit the structure or the process.
The method of using 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 Laurash et al. discloses the structure of claim 1 as described above.
Furthermore, the laminated label form taught by Laurash et al. is capable of performing in the manner claimed. Laurash et al. teaches that when the bottom ply (62; liner substrate) is peeled away from the remainder of the laminated label form (12; label combination), leaving the tab and label release sections (78, 80) adhered to the tab and label portions (66,68) and the remaining top ply is adhered to the desired surface (col. 9 Ln. 1-23).
Regarding claim 8, Laurash et al. teaches all the limitations of claim 1 above and further teaches that at least one of the liner die cuts includes a tab shape (78) (Figure 3, col. 8 Ln. 20-col. 9 Ln. 30).
Regarding claim 9, Laurash et al. teaches all the limitations of claim 1 above and further teaches that the multiple ply label forms are compatible with thermal transfer and direct thermal printers (col. 4 Ln. 15-25) and therefore would inherently comprise a thermally activated coating.
Regarding claim 10, Laurash et al. teaches all the limitations of claim 1 above and further teaches that the multiple ply label forms are compatible laser printers (col. 4 Ln. 15-25) and therefore would inherently comprise a coating for laser printing.
Regarding claim 11, Laurash et al. teaches all the limitations of claim 1 above and further teaches that the upper side of each portion of the label can be printed with mailing information or other indicia as desired (col. 2 Ln. 5-18).
Regarding claims 12, 13 and 15, Laurash et al. teaches a laminated label form (12; label combination) comprising a bottom ply (62; liner substrate) comprising a plurality of die cuts (86, 84) forming two label release sections (80, 78) and a first release material (77; release coating) disposed on an upper side (first side) of the bottom ply (62; liner substrate) surrounding the two label release sections (80, 78) (Figure 3, col. 8 Ln. 20-col. 9 Ln. 30). Laurash et al. teaches that the label forms may be adhered to one another in a continuous web (i.e. roll) divided by perforations (col. 11 Ln. 60-67).
Laurash et al. further that each label comprises a top ply (60; label substrate) comprising label die cut (72, 70) forming a label portion (68; removable label), a tab portion (66; removable label) and a card portion (74; primary label), and an adhesive coating (64) on the underside of the top ply (60; label substrate)(Figure 3, col. 8 Ln. 20-col. 9 Ln. 30).
The limitations reciting “wherein when the label substrate is separated from the liner substrate, at least one liner die cut remains as a portion of the liner substrate and at least one additional liner die cut remains adhered to the backside of the removable label” and “wherein the plurality of liner die cuts are shaped and positioned such that when the label substrate is separated from the liner substrate, the liner substrate retains structural integrity sufficient to be rewound without breakage by a printer rewinder, while the removable label retains sufficient adhesive coating on its backside to adhere to a surface” are considered functional language related to the intended use of the product and/or method of using the product, and is accorded limited weight as the language does not further limit the structure or the process.
The method of using 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 Laurash et al. discloses the structure of claim 1 as described above.
Furthermore, the laminated label form taught by Laurash et al. is capable of performing in the manner claimed. Laurash et al. teaches that when the bottom ply (62; liner substrate) is peeled away from the remainder of the laminated label form (12; label combination), leaving the tab and label release sections (78, 80) adhered to the tab and label portions (66,68) and the remaining top ply is adhered to the desired surface (col. 9 Ln. 1-23).
Regarding claim 14, Laurash et al. teaches all the limitations of claim 12 above and further teaches a second release material (77; release coating) forming in the central area of the bottom ply (62; liner substrate) between the label release sections (80,78) and the card section (82), such that when the label is assembled, it is disposed in a center lane portion of the top ply (60; label section) with the adhesive coating disposed thereon (Figure 3, col. 8 Ln. 20-col. 9 Ln. 30).
Regarding claim 16, Laurash et al. teaches all the limitations of claim 12 above and further teaches as shown by Figure 3 that the plurality of liner die cuts (84, 86) are aligned with label die cuts (70, 72) pertaining to the label portion (68; removable label), a tab portion (66; removable label) (Figure 3, col. 8 Ln. 20-col. 9 Ln. 30).
Regarding claim 17, Laurash et al. teaches all the limitations of claim 12 above.
The limitations reciting “wherein the at least one liner die cut that remains as a portion of the liner substrate provides structural integrity to a liner waste when the label substrate is separated from the liner substrate” is considered functional language related to the intended use of the product and/or method of using the product, and is accorded limited weight as the language does not further limit the structure or the process. It is further limiting the intended use limitations recited in claim 12.
The method of using 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 Laurash et al. discloses the structure of claim 12 as described above, and the laminated label form taught by Laurash et al. is capable of performing in the manner claimed.
Regarding claim 18, Laurash et al. teaches all the limitations of claim 12 above and further teaches that the upper side of each portion of the label can be printed with mailing information or other indicia as desired (col. 2 Ln. 5-18).
Regarding claims 19 and 20, Laurash et al. teaches a laminated label form (12; label combination) comprising a bottom ply (62; liner substrate) comprising a plurality of die cuts (86, 84) forming two label release sections (80, 78) and a first release material (77; release coating) disposed on an upper side (first side) of the bottom ply (62; liner substrate) surrounding the two label release sections (80, 78) (Figure 3, col. 8 Ln. 20-col. 9 Ln. 30). Laurash et al. further teaches a top ply (60; label substrate) comprising label die cut (72, 70) forming a removable label portion (68) and a removable tab portion (66), and an adhesive coating (64) on the underside of the top ply (60; label substrate) (Figure 3, col. 8 Ln. 20-col. 9 Ln. 30).
The limitations reciting “wherein when the label substrate is separated from the liner substrate, a portion of the liner substrate is defined by the at least one line die cut remains adhered to a backside of the removable label” and “wherein the at least one liner die cut is shaped and positioned such that when the label substrate is separated from the liner substrate, the liner substrate retains structural integrity sufficient to be rewound without breakage by a printer rewinder, while the removable label retains sufficient adhesive coating on its backside to adhere to a surface” are considered functional language related to the intended use of the product and/or method of using the product, and is accorded limited weight as the language does not further limit the structure or the process.
The method of using 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 Laurash et al. discloses the structure of claim 1 as described above and is capable of performing in the manner claimed.
Furthermore, the laminated label form taught by Laurash et al. is capable of performing in the manner claimed. Laurash et al. teaches that when the bottom ply (62; liner substrate) is peeled away from the remainder of the laminated label form (12; label combination), leaving the tab and label release sections (78, 80) adhered to the tab and label portions (66,68) and the remaining top ply is adhered to the desired surface (col. 9 Ln. 1-23).
Claims 1-4 and 8-20 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Francoeur (US 2009/0145540).
Regarding claim 1, Francoeur teaches a multipart pharmacy label comprising a release liner (3; liner substrate) comprising a plurality of separation lines (13; die cuts) forming a first portion (9) of the release liner (3; liner substrate) and a second portion (11) of the release liner (3; liner substrate), and a label sheet (1; label substrate) comprising label die cuts (17A-E) defining auxiliary labels (7A-7E; removable labels), and the plurality of liner die cuts are aligned to correspond with a middle and sides of the removable label (Figure 2, 3; [0023-0037]). The backside of the label sheet (1; label substrate) comprises an adhesive and the release liner (3; liner substrate) is coated with a silicone based release coating, wherein a first coating is present on the first portion (9) of the release liner (3; liner substrate) and a second coating is present on a second portion (11) of the release liner (3; liner substrate), such that when the label is formed, the adhesive and the second coating is present on a second portion (11) overlap (Figure 2, 3; [0023-0037]).
The limitations in lines 10-13 reciting “wherein the plurality of liner die cuts are shaped and positioned such that when the label substrate is separated from the liner substrate, the liner substrate retains structural integrity sufficient to be rewound without breakage by a printer rewinder, while the removable label retains sufficient adhesive coating on its backside to adhere to a surface” is considered functional language related to the intended use of the product and/or method of using the product, and is accorded limited weight as the language does not further limit the structure or the process. The limitation defines the structural component by what it does rather than what it is.
The method of using 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 Francoeur discloses the structure of claim 1 as described above.
Regarding claims 2, 3 and 4, Francoeur teaches all the limitations of claim 1 above.
The limitations reciting “wherein when the label substrate is separated from the liner substrate, at least one liner die cut remains as a portion of the liner substrate and an additional liner die cut remains adhered to the backside of the label substrate in areas that at least correspond to middle of the removable label” in claim 2, “wherein the at least one liner die cut that remains as a portion of the liner substrate is a single liner die cut, 6 line die cuts, or 7 liner die cuts” in claim 3, and “where one of the additional liner die cut that remains adhered to the backside of the label substrate is a single liner die cut or 3 liner die cuts” in claim 4 are considered functional language related to the intended use of the product and/or method of using the product, and is accorded limited weight as the language does not further limit the structure or the process.
The method of using 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 Francoeur discloses the structure of claim 1 as described above and would be capable of performing in the manner claimed.
Regarding claim 8, Francoeur teaches all the limitations of claim 1 above and further teaches, as shown in Figure 3 that the liner die cut includes a tab shape (13C) protruding to an edge of the label substrate.
Regarding claim 9, Francoeur teaches all the limitations of claim 1 above and further teaches that the label laminate can be a thermally activated substrate, thermally activated paper or comprise a thermally activated coating for ([0022, 0024-0026, 0032, 0049, 0052; claim 11).
Regarding claim 10, Francoeur teaches all the limitations of claim 1 above and further teaches that the label laminate can be printed on with a laser printer ([0025, 0052]), and therefore would inherently have a laser coating.
Regarding claim 11, Francoeur teaches all the limitations of claim 1 above and further teaches that the label can be printed with indicia or traces ([0008, 0023-0026]).
Regarding claims 12, 13, 14, 15, 16, Francoeur teaches a multipart pharmacy label comprising a release liner (3; liner substrate) comprising a plurality of separation lines (13; die cuts) forming a first portion (9) of the release liner (3; liner substrate) and a second portion (11) of the release liner (3; liner substrate), and a label sheet (1; label substrate) comprising a main label (5; primary label) and label die cuts (17A-E) defining auxiliary labels (7A-7E; removable labels), and the plurality of liner die cuts are aligned to correspond the middle and sides of the auxiliary labels (7A-7E; removable labels) (Figure 2, 3; [0023-0037]). The backside of the label sheet (1; label substrate) comprises an adhesive to adhere to the release liner (3; liner substrate), and the release liner (3; liner substrate) is coated with a silicone based release coating, wherein a first coating is present on the first portion (9) of the release liner (3; liner substrate) and a second coating is present on a second portion (11) of the release liner (3; liner substrate), such that when the label is formed, the adhesive and the second coating is present on a second portion (11) overlap (Figure 2, 3; [0023-0037]). Francoeur further teaches that the label laminate can be in the form of a roll such that multiple label sheets are present on one substantially continuous release liner, wherein the labels are separated by perforations ([0025]).
The limitation in lines 9-11 of claim 12 reciting “wherein when the label substrate is separated from the liner substrate, at least one liner die cut remains as a portion of the liner substrate and an additional liner die cut remains adhered to the backside of the removable label” and in lines 12-15 reciting “wherein the plurality of liner die cuts are shaped and positioned such that when the label substrate is separated from the liner substrate, the liner substrate retains structural integrity sufficient to be rewound without breakage by a printer rewinder, while the removable label retains sufficient adhesive coating on its backside to adhere to a surface” are considered functional language related to the intended use of the product and/or method of using the product, and is accorded limited weight as the language does not further limit the structure or the process.
The method of using 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 Francoeur discloses the structure of claim 12 as described above and would be capable of performing in the manner claimed.
Regarding claim 17, Francoeur teaches all the limitations of claim 12 above.
The limitations reciting “wherein the at least one liner die cut that remains as a portion of the liner substrate provides structural integrity to a liner waste when the label substrate is separated from the liner substrate” is considered functional language related to the intended use of the product and/or method of using the product, and is accorded limited weight as the language does not further limit the structure or the process. It is further limiting the intended use limitations recited in claim 12.
The method of using 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 Francoeur discloses the structure of claim 1 as described above, and the laminated label form taught by Francoeur is capable of performing in the manner claimed.
Regarding claim 18, Francoeur teaches all the limitations of claim 12 above and further teaches that the label can be printed with indicia or traces ([0008, 0023-0026]).
Regarding claims 19 and 20, Francoeur teaches a multipart pharmacy label comprising a release liner (3; liner substrate) comprising a plurality of separation lines (13; die cuts) forming a first portion (9) of the release liner (3; liner substrate) and a second portion (11) of the release liner (3; liner substrate), and a label sheet (1; label substrate) comprising label die cuts (17A-E) defining auxiliary labels (7A-7E; removable labels), and the separation lines (13; die cuts) are aligned to correspond with the auxiliary labels (7A-7E; removable labels) (Figure 2, 3; [0023-0037]). The backside of the label sheet (1; label substrate) comprises an adhesive and the release liner (3; liner substrate) is coated with a silicone based release coating (Figure 2, 3; [0023-0037]).
The limitation in lines 5-7 of claim 19 reciting “wherein when the label substrate is separated from the liner substrate, a portion of the liner substrate defined by the at least one liner die cut remains adhered to a backside of the removable label” and in lines 8-11 reciting “wherein the at least one liner die cut is shaped and positioned such that when the label substrate is separated from the liner substrate, the liner substrate retains structural integrity sufficient to be rewound without breakage by a printer rewinder, while the removable label retains sufficient adhesive coating on its backside to adhere to a surface” are considered functional language related to the intended use of the product and/or method of using the product, and is accorded limited weight as the language does not further limit the structure or the process.
The method of using 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 Francoeur discloses the structure of claim 19 as described above and 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.
Claim 5 is rejected under 35 U.S.C. 103 as being unpatentable over Laurash et al. (US 5,547,227; cited on IDS) in view of Mertens (US 4,895,746; cited on IDS).
Regarding claim 5, Laurash et al. teaches all the limitations of claim 1 above, and while Laurash et al. teaches various label portions being removed (i.e. peel force), the reference does not expressly teach the first peel force of 6-8 grams per inch and a second peel force of 20-25 grams per inch.
Mertens teaches a stack of aligned sheets, wherein a first low release peel force less than 15 grams per inch between adjacent sheets within the stack to allow for easy initiation of peeling a sheet off of the stack and a second peel force greater than 20 grams per inch to firmly adhere the label form during handling until the label form is to be adhesively secured to a package (col. 3 Ln. 25-45).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to arrange the peel forces of Laurash et al. removable label areas to be within the ranges disclosed by Mertens to allow for the labels to be easily peel when it is desired to remove the removable portions but to remain adhered during handling until the desired time to remove the labels.
Claims 6 and 7 are rejected under 35 U.S.C. 103 as being unpatentable over Laurash et al. (US 5,547,227; cited on IDS) in view of Kraft et al. (US 5,580640; cited on IDS).
Regarding claims 6 and 7, Laurash et al. teaches all the limitations of claim 1 above, however the reference does not expressly teach that the first release coating and the second release coatings are different types, wherein one of the first or second release coatings is a non-silicone release coating.
Kraft et al. teaches integrated labels having controlled release, wherein a first release coating is a paper or synthetic resin film and the second release coating is a silicone type coating known in the art that is partially applied to a release sheet (col. 4 Ln. 20-25, 45-50).
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 bottom ply (62; liner substrate) of the laminated label form (12; label combination) to have different areas with different release properties thereon as taught by Kraft et al. to reduce the peeling force at different portions of the label as Laurash et al. teaches that it is necessary to ensure that each portion is readily separable from the first ply (see col. 2 Ln. 10-20).
Claim 5 is rejected under 35 U.S.C. 103 as being unpatentable over Francoeur (US 2009/0145540) in view of Mertens (US 4,895,746; cited on IDS).
Regarding claim 5, Francoeur teaches all the limitations of claim 1 above, however the reference does not expressly teach the first peel force of 6-8 grams per inch and a second peel force of 20-25 grams per inch.
Mertens teaches a stack of aligned sheets, wherein a first low release peel force less than 15 grams per inch between adjacent sheets within the stack to allow for easy initiation of peeling a sheet off of the stack and a second peel force greater than 20 grams per inch to firmly adhere the label form during handling until the label form is to be adhesively secured to a package (col. 3 Ln. 25-45).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to arrange the peel forces of Francoeur removable label areas to be within the ranges disclosed by Mertens to allow for the labels to be easily peel when it is desired to remove the removable portions but to remain adhered during handling until the desired time to remove the labels.
Response to Arguments
Response-Claim Rejections - 35 USC § 102 and 103
Applicant's arguments filed 06/09/2026 have been fully considered but they are not persuasive.
With respect to the rejections over Laurash et al., the Applicant argues on pages 6 and 7 that the reference does not teach a liner substrate that is rewound by a printer rewinder, that there is no printer rewinder involved in Laurash’s operation, and that the reference is silent with respect to the printer rewinding, liner waste structural integrity during rewinding or the prevention of printer jams caused by liner breakage. The Applicant further argues that there is no disclosure or suggestion in Laurash directed to the problem of maintaining structural integrity of the liner waste, preventing breakage and jams during printer rewinder while allowing for easy removal of the secondary label, or that the waste liner retains sufficient structural strength to prevent waste liner breakage during printer rewind. These arguments are not persuasive.
The newly added limitations to independent claims 1,12 and 19 are directed to the intended use and/or method of using and do not claim further structure but rather define the structure by what it does rather than what it is. Furthermore, the method of using 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. A recitation of the intended use of the claimed invention must result in a structural difference between the claimed invention and the prior art in order to patentably distinguish the claimed invention from the prior art. If the prior art structure is capable of performing the intended use, then it meets the claim. As stated in the rejects above, Laurash et al. teaches all the structural features of the claimed invention, and therefore would be capable of performing in the manner claimed.
The claims recite that the label substrate “retains structural integrity sufficient to be rewound” and that the removable label “retains sufficient adhesive coating on its backside to adhere to a surface”, however, neither the claims nor the specification provide clarification as to what degree of structural integrity is “sufficient to be rewound” for the label substrate or what amount of adhesive is “sufficient” “to adhere to a surface”.
Additionally, the claims are directed to a label combination and not to a printer or printer rewinder. The limitations pertaining to a printer or printer rewinder are related to the intended use and/or method of using the claimed label combination, and not structural features that are required by the label combination itself.
The Applicant argues on page 7 that the labels of Laurash et al. are “sized and positioned to circumscribe and define label release sections” and are “not shaped and positioned to maintain liner waste structural integrity during printer rewinding”, however these arguments are not persuasive. The arguments do not highlight structural differences in Laurash et al. that would render the labels incapable of performing in the manner claimed, but are directed to the intended use of the label of Laurash et al. versus the intended use of the claimed label. As stated in the rejections above, Laurash et al. teaches the structural features required by the instant claims, and therefore would be capable of performing in the manner claimed.
With respect to Francoeur, the Applicant argues on pages 8 and 9 that the reference does not teach a liner substrate that serves as a waste liner rewound by a printer rewinder following label separation and that Francoeur’s separation lines are not described as being shaped or positioned to preserve liner structural integrity. The Applicant further argues that the claimed arrangement solves the problem of waste liner causing printing jams by having die cuts that are “shaped and positioned to ensure the liner substrate ‘retains structural integrity sufficient to be rewound without breakage by a printer rewinder”. The Applicant argues on page 9 that because Francoeur does not describe liner separation lines shaped and positioned to maintain liner waste structural integrity, then the reference does not anticipate the amended claims. These arguments are not persuasive, for the same reasons expressed above regarding the rejections over Laurash et al.
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
Prosecution Insights