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 .
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 13-24 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-43 of U.S. Patent No. 12,151,496.
Although the claims at issue are not identical, they are not patentably distinct from each other because the subject matter claimed in the instant application is disclosed in the US Patent (496) and is covered by the US Patent, since the US Patent and the instant application are claiming common subject matter.
Claims 13-24 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-51 of copending Application No. 18/941534 (reference application).
Although the claims at issue are not identical, they are not patentably distinct from each other because the subject matter claimed in the instant application is disclosed in the co-pending application and is covered by the co-pending application since the co-pending application and the instant application are claiming common subject matter.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Claims 13-24 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-33 of copending Application No. 18/952434 (reference application).
Although the claims at issue are not identical, they are not patentably distinct from each other because the subject matter claimed in the instant application is disclosed in the co-pending application and is covered by the co-pending application since the co-pending application and the instant application are claiming common subject matter.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Claims 13-24 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-45 of copending Application No. 19/096928 (reference application).
Although the claims at issue are not identical, they are not patentably distinct from each other because the subject matter claimed in the instant application is disclosed in the co-pending application and is covered by the co-pending application since the co-pending application and the instant application are claiming common subject matter.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Claims 13-24 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-43 of copending Application No. 19/379508 (reference application).
Although the claims at issue are not identical, they are not patentably distinct from each other because the subject matter claimed in the instant application is disclosed in the co-pending application and is covered by the co-pending application since the co-pending application and the instant application are claiming common subject matter.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Claim Rejections - 35 USC § 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 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.
Claim(s) 13-24 is/are rejected under 35 U.S.C. 103 as being unpatentable over Schaefer (# US 2010/0291331).
Schaefer discloses:
13. A method of creating a multiple layered print structure (see Abstract; [0241]), by:
printing at least one print layer on a removable substrate using one digital ink-jet print method wherein the at least one print layer forms a design ([0026]-[0028]; [0173]);
where, at least one print layer comprising at least one opaque layer ([0034]-[0044]; [0066]; [0241]) printed on the design using one digital ink-jet print method ([0014]-[0016]);
applying a heat-sensitive adhesive layer to the opaque layer, wherein the adhesive layer conforms to the opaque layer, whereby the at least one print layer, including the opaque layer, and the heat-sensitive adhesive layer are adapted to be separated from the removable substrate and for transfer of the design to a receptor ([0260]-[0279]).
The Examiner draws particular attention to the Applicant that " Schaefer does address Printing techniques may include offset, gravure, screen, thermal transfer, ink or laser jet, etc., it teaches a laundry list of possible Printing techniques may include offset, gravure, screen, thermal transfer, ink or laser jet, etc.. The format in which Schaefer presents its teaching does not change the fact that it teaches the claimed invention. It is not necessary for Schaefer to present its teaching in an example format citing it in a list is sufficient.
Therefore, it would have been obvious to one of ordinary skill in the art, absent evidence to the contrary, to choose any of the printing techniques may include offset, gravure, screen, thermal transfer, ink or laser jet, etc., including those presently claimed, and thereby arrive at the claimed invention. However, "applicant must look to the whole reference for what it teaches. Applicant cannot merely rely on the examples and argue that the reference did not teach others." In re Courtright, 377.
14. The method of creating a multiple layer print structure of claim 13, wherein the step of printing comprises forming a design, where the design is formed in mirror image format (see Examples).
15. The method of creating a multiple layer print structure of claim 13, wherein the step of printing comprises a removable substrate, where the removable substrate is formed of a material adapted to withstand high temperatures (silicone; [0247]).
16. The method of creating a multiple layered print structure of claim 13, wherein the step of printing comprises a removable substrate, where the removable substrate is selected from at least one of a group comprising paper web, plastic film, wood pulp fiber paper, metal foil, parchment paper, lithographic printing paper, or clear film (plastic paper plate; [0272]).
17. The method of creating a multiple layer print structure of claim 13, wherein the step of printing comprises a removable substrate, where the removable substrate further comprises a release layer underlying said at least one print layer to facilitate easy release of print structure onto a receptor element (see Examples).
18. The method of creating a multiple layer print structure of claim 17, wherein the step of printing comprises a removable substrate, where the removable substrate further comprises a release layer underlying said at least one print layer, where the release layer is adapted to receive at least one print layer being printed using at least one digital ink-jet print method ([0014]).
19. The method of creating a multiple layer print structure of claim 17, wherein the step of printing comprises a removable substrate, where the removable substrate further comprises one or more layers, where these layers facilitate receiving and release of at least one print layer (see Abstract).
20. The multiple layer print structure of claim 17, wherein the step of printing comprises a removable substrate, where the removable substrate further comprises a release layer underlying said at least one print layer to facilitate easy release of print structure onto a receptor element (see Abstract), wherein the release layer is adapted to receive at least one print layer being printed using at least one digital ink-jet print method; and where the at least one release layer is selected from at least one of (a) silicone ([0035]) (b) wax-based materials; such that it releasably adheres the at least one print layer to the substrate.
21. The method of creating a multiple layered print structure of claim 13, wherein the step of applying heat-sensitive adhesive comprises an adhesive, where the adhesive is selected from a group of thermoplastic polymer, including a polyamide, polyolefin, or polyester ([0034]; [0056]; [0057]).
22. The method of creating a multiple layer print structure of claim 13, wherein the step of applying heat-sensitive adhesive comprises an adhesive, where the adhesive is a powder adhesive ([0057]).
23. The method of creating a multiple layer print structure of claim 13, wherein the step of printing at least one print layer on a removable substrate, where the at least one print layer includes adhesive ([0066]).
24. The method of creating a multiple layer print structure of claim 13, wherein the step of printing at least one print layer on a removable substrate, where at least one print layer comprising at least one opaque layer; such that the at least one opaque print layer includes adhesive ([0066]).
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
(1) Truog (# US 2004/0161564) discloses a dry paint transfer laminate (100) comprises a dry paint film layer (110) has an upper surface and a lower surface, an adhesive layer (120) overlying the upper surface (112) of the dry paint film layer, and a release liner (130) overlying the lower surface (114) of the dry paint film layer. The dry paint film layer comprises a binder and a pigment (see Abstract).
(2) La Costa (# US 2013/0004742) discloses a method of transfer printing onto articles, particularly dark articles, is disclosed. A design, preferably in color, is printed onto a transfer sheet in sublimation dye using a commercially-available printer. White toner is then printed over at least a portion of the design using an electrostatic printing device. Heat and pressure are applied to transfer the design and the white toner to an article. In some preferred embodiments, the transfer sheet is a self-weeding transfer paper. In some preferred embodiments, the same printer is used to print both the sublimation dye design and the white toner. In some preferred embodiments, the color palette of the image is inverted prior to printing with white toner. The invention is particularly well suited to the transfer printing of dark textile articles (see Abstract).
(3) Daley et al.(# US 2016/0358519) discloses a digitally printed heat transfer label and method of manufacture is disclosed. The heat transfer label and method of manufacture provides a more efficient process with less waste, as well as prevents halos. The method comprises adding adhesive powder to a digital image printed on a substrate to produce a high stretch, multi-color photographic quality label for the apparel industry (see Abstract).
(4) McGovern et al. (# US 2019/0118575) discloses a thermal transfer and process for producing it that provides a fully-digital printed heat transfer capable of little to no process changeover between different graphics. Specifically, the method comprises printing a digital image onto a treated adhesive substrate, applying the image side to a carrier substrate, then digitally cutting and removing substrate not containing graphic elements through a combination of kiss-and-through cutting to produce a high stretch, multi-color photographic quality print transfers for the apparel and soft goods industry (see Abstract).
(5) Weedlun et al. (# US 2020/0096910) discloses the method involves digitally printing an image onto the protective coating to form a printed area and an unprinted area of the protective coating on a protective coating receptive to ink and/or toner. An attractant is digitally printed precisely onto the printed area and not onto the unprinted area. An adhesive powder is applied onto the printed area and the unprinted area. The adhesive powder is removed (208) from the unprinted area. The remaining adhesive powder is bonded to the printed area. A release layer is applied onto a substrate. The protective coating is applied onto the release layer (see Abstract).
Any inquiry concerning this communication or earlier communications from the examiner should be directed to MANISH S SHAH whose telephone number is (571)272-2152. The examiner can normally be reached 8:00am-4:00pm.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Ricardo Magallanes can be reached at 571-272-5960. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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MANISH S. SHAH
Primary Examiner
Art Unit 2853
/Manish S Shah/ Primary Examiner, Art Unit 2853
