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 .
Election/Restrictions
Applicant’s election without traverse of Species 3 of figures 4-5, claims 1-21 readable upon the elected species, in the reply filed on May 1, 2026 is acknowledged.
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.
Claim(s) 1-21 is/are rejected under 35 U.S.C. 103 as being unpatentable over Breen, US 5,005,264 in view of Helseth, US 2017/0259969.
Regarding claim 1, Breen discloses a twist-tie fastener comprising: a main body (10) with a length extending from a first end (14) to a second end (15) and a width extending from a first side to a second side (see figures 3 and 3A); a first label area (33) adjacent the first end; and a second label (34) area adjacent the second end. Breen further discloses that the first and second labels (33, 34) are different from the center zone of the fastener main body to direct user interaction toward the ends (optionally provided with different colors to aid the user in locating the tabs; col. 5, ll. 21-26).
Breen does not explicitly disclose a pre-marked portion positioned at an intermediate location between the first end and the second end of the main body; [wherein the combination of the pre-marked portion and the first and second label areas is configured to signal a user to label the twist-tie fastener only in the first and second label areas].
Helseth teaches a twist tie fastener (10) wherein a pre-marked portion (18) includes pre-applied or printed indicia such as coupon codes, advertising or trademarks applied by a printing process (see paragraph [0022]) and wherein said portion (18) is positioned at an intermediate location between the first end (14) and the second end (16) of the fastener main body. Additionally, Helseth teaches the tie fastener may include a blank space/area for the consumer to write notes, label the good, and apply other indicia thereon in the grocery store (see paragraph [0006]) and thereby teaching a configuration to signal a user to label the twist-tie fastener only in the first and second label areas.
It would have been obvious to a person having ordinary skill in the art before the effective filing date of the claimed invention to modify the tie fastener of Breen to include a pre-marked portion positioned at an intermediate location between the first and second ends as taught by Helseth so as to configure the first and second label areas (33, 34 of Breen) as blank writable areas for user markings in order to provide the pre-marked portion with a barcode on the fastener tie for checkout at a grocery store.
Claim language set in brackets [] set forth above and below in this office action are considered by the examiner to be intended use that fails to further limit the structure of the claimed invention. Since the claimed invention is directed solely to that of the twist-tie fastener, the prior art must only be capable of performing the functional recitations in order to be applicable, and in the instant case, the examiner maintains that tie fastener taught by the combination of Breen (US 5,005,264) and Helseth (US 2017/0259969), is indeed capable of the intended use statements. Note that it has been held that a recitation with respect to the manner in which a claimed apparatus is intended to be employed does not differentiate the claimed apparatus from a prior art apparatus satisfying the claimed structural limitations.
Regarding claim 2, the combination of Breen and Helseth teaches the twist-tie fastener of claim 1. Breen further discloses wherein the main body (10) includes a malleable material (13) surrounded by an outer coating (12), [the malleable material configured to allow the main body (10) of the twist-tie to be affixed to an object].
Regarding claim 3, the combination of Breen and Helseth teaches the twist-tie fastener of claim 2. Breen further discloses wherein the outer coating (12) is paper or a polymeric material (plastic strip).
Regarding claim 4, the combination of Breen and Helseth teaches the twist-tie fastener of claim 1. Breen further discloses wherein a majority of the first and second label areas (33, 34) are defined by a blank portion (by default). Additionally, Helseth teaches that the label areas of the tie fastener may include a blank space/area for the consumers to write notes, label the goods, and apply other indicia thereon (paragraph [0006]).
Regarding claim 5, the combination of Breen and Helseth teaches the twist-tie fastener of claim 1. Helseth further teaches that the indicia portion of a twist-tie may include both pre-printed material and blank space to allow the user to write upon (paragraphs [0006] and [0022]). It would have been obvious to a person having ordinary skill in the art before the effective filing date of the claimed invention to modify the first and second label areas of the combination of Breen and Helseth to further include a secondary pre-marked portion, [while still allowing the user to label the twist-tie fastener at the first and second label areas] to further guide the user toward writing in the correct location. Further, it is noted that where the only difference between a prior art product and a claimed product is printed matter that is not functionally related to the product, the content of the printed matter will not distinguish the claimed product from the prior art. In re Ngai, **>367 F.3d 1336, 1339, 70 USPQ2d 1862, 1864 (Fed. Cir. 2004)< (Claim at issue was a kit requiring instructions and a buffer agent. The Federal Circuit held that the claim was anticipated by a prior art reference that taught a kit that included instructions and a buffer agent, even though the content of the instructions differed.). See also In re Gulack, 703 F.2d 1381, 1385-86, 217 USPQ 401, 404 (Fed. Cir. 1983) ("Where the printed matter is not functionally related to the substrate, the printed matter will not distinguish the invention from the prior art in terms of patentability …. [T]he critical question is whether there exists any new and unobvious functional relationship between the printed matter and the substrate.").
Regarding claim 6, the combination of Breen and Helseth teaches the twist-tie fastener of claim 5. The combination does not expressly teach wherein the secondary pre-marked portion is a different marking than the pre-marked portion. However, it would have been obvious to a person having ordinary skill in the art before the effective filing date of the claimed invention to further modify the secondary pre-marked portion with a different marking than the pre-marked portion (at the intermediate location) since the two zones serve distinct functions (i.e., the center pre-marked portion carries branding/advertisement while the ends carry instructions and/or blank areas for the user to write on).
Regarding claim 7, the combination of Breen and Helseth teaches the twist-tie fastener of claim 1. Helseth further teaches wherein the pre-marked portion is marked by a registered printing process (see claim 7 of Helseth).
Regarding claim 8, the combination of Breen and Helseth teaches the twist-tie fastener of claim 1. Helseth further teaches wherein the pre-marked portion is provided along a majority of the main body (see figure 2).
Regarding claim 9, the combination of Breen and Helseth teaches the twist-tie fastener of claim 1. Helseth further teaches wherein the pre-marked portion is generally centered between the first and second ends (see figure 1). Additionally, it is noted that it has been held that rearrangement of parts would be obvious when it does not modify the operation of the device. In re Japikse, 181 F.2d 1019, 86 USPQ 70.
Regarding claim 10, the combination of Breen and Helseth teaches the twist-tie fastener of claim 1. Helseth further teaches wherein the pre-marked portion includes corporate branding information (paragraph [0022]).
Regarding claim 11, the combination of Breen and Helseth teaches the twist-tie fastener of claim 10. Helseth further teaches wherein the corporate branding information is a trademark (paragraph [0022]).
Regarding claim 12, the combination of Breen and Helseth teaches the twist-tie fastener of claim 1. Breen further discloses wherein the first and second label areas (33, 34) are the same size.
Regarding claim 13, the combination of Breen and Helseth teaches the twist-tie fastener of claim 1. Breen further disclose wherein the entirety of the first and second label areas (33, 34) are defined by a blank portion (by default).
Regarding claim 14, the combination of Breen and Helseth teaches the twist-tie fastener of claim 5. Helseth further teaches [wherein the secondary pre-marked portion (paragraphs [0006] and [0022]; figure 5) is configured to provide instructions to a user as to the content of the information to be labeled at the first and second label areas].
Regarding claim 15, Breen discloses a fastener comprising: a main body (10) with a length extending from a first end (14) to a second end (15) and a width extending from a first side to a second side (figure 3); wherein the main body (10) includes a portion between first and second label areas (33, 34), wherein the first and second label areas (33, 34) are adjacent the first and second ends (14, 15), respectively, of the fastener, [and wherein the first and second label areas are configured for marking by a user using the fastener].
Breen does not explicitly disclose wherein the main body (10) includes a pre-printed portion. Helseth teaches a twist tie fastener (10) wherein a pre-marked portion (18) includes pre-applied or printed indicia such as coupon codes, advertising or trademarks applied by a printing process (see paragraph [0022]) and wherein said portion (18) is positioned at an intermediate location between the first end (14) and the second end (16) of the fastener main body. It would have been obvious to a person having ordinary skill in the art before the effective filing date of the claimed invention to modify the tie fastener of Breen to include a pre-marked portion positioned at an intermediate location between the first and second ends as taught by Helseth in order to provide the pre-marked portion with a barcode on the fastener tie for checkout at a grocery store.
Regarding claim 16, the combination of Breen and Helseth teaches the twist-tie fastener of claim 15. Breen further discloses wherein the fastener is a twist-tie fastener (with a malleable wire material).
Regarding claim 17, the combination of Breen and Helseth teaches the twist-tie fastener of claim 16. Breen further discloses wherein the main body (10) includes a malleable material (13) surrounded by an outer coating (12), [the malleable material (13) configured to allow the main body (10) of the twist-tie fastener to be affixed to an object].
Regarding claim 18, the combination of Breen and Helseth teaches the twist-tie fastener of claim 17. Breen further discloses wherein the outer coating (12) is paper or a polymeric material (plastic material).
Regarding claim 19, the combination of Breen and Helseth teaches the twist-tie fastener of claim 15. Breen further discloses wherein a majority of the first and second label areas (33, 34) defines a blank portion (by default).
Regarding claim 20, the combination of Breen and Helseth teaches the twist-tie fastener of claim 15. Helseth further teaches that the indicia portion of a twist-tie may include both pre-printed material and blank space to allow the user to write upon (paragraphs [0006] and [0022]). It would have been obvious to a person having ordinary skill in the art before the effective filing date of the claimed invention to modify the first and second label areas of the combination of Breen and Helseth to further include a secondary pre-marked portion, [while still allowing the user to label the twist-tie fastener at the first and second label areas] to further guide the user toward writing in the correct location. Further, it is noted that where the only difference between a prior art product and a claimed product is printed matter that is not functionally related to the product, the content of the printed matter will not distinguish the claimed product from the prior art. In re Ngai, **>367 F.3d 1336, 1339, 70 USPQ2d 1862, 1864 (Fed. Cir. 2004)
Regarding claim 21, Breen discloses a fastener comprising: a main body (10) with a length extending from a first end (14) to a second end (15) and a width extending from a first side to a second side (figure 3); wherein the main body includes a portion between blank portions (33, 34), the blank portions (33, 34) being adjacent the first and second ends (14, 15), respectively, [the blank portions (33, 34) configured for marking by a user].
Breen does not explicitly disclose wherein the main body includes a pre-printed portion. Helseth teaches a twist tie fastener (10) wherein a pre-marked portion (18) includes pre-applied or printed indicia such as coupon codes, advertising or trademarks applied by a printing process (see paragraph [0022]) and wherein said portion (18) is positioned at an intermediate location between the first end (14) and the second end (16) of the fastener main body. It would have been obvious to a person having ordinary skill in the art before the effective filing date of the claimed invention to modify the tie fastener of Breen to include a pre-marked portion positioned at an intermediate location between the first and second ends as taught by Helseth in order to provide the pre-marked portion with a barcode on the fastener tie for checkout at a grocery store.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. See PTO-892 for similar art cited. For example, Goodwin (US 3,857,139) discloses a tie strip (10) having a flat paper ribbon (14) bonded to a plastic ribbon (12), wherein the flat paper surface is adapted to receive printed matter (35) at any desired location and thereby making the positioning of pre-marked indicia at a specific location on a twist-tie body as a routine design choice within the level of ordinary skill.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to ROWLAND DO whose telephone number is (571)270-5737. The examiner can normally be reached Monday-Thursday 8:30 - 7:00 PT.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Jason San can be reached at (571) 272-6531. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/R.D./ Examiner, Art Unit 3677
/JASON W SAN/ SPE, Art Unit 3677
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