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 .
Claim Objections
Claim 4 objected to because of the following informalities: the claim 4 recitation of “wherein wherein” should simply read “wherein”. Appropriate correction is required.
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 1-7 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.
The claim 1 recitation of “a single sheet body” is inconsistent with the plurality of further layers recited thereafter, including (but not limited to) “an adhesive layer”, “a release film” and “a bottom film”. Exactly what structure/configuration is sought? Please review/revise/clarify.
Claims 4-5 recite the limitations "a second symbol mark" and “the second symbol mark”. There is insufficient antecedent basis for these limitations in the respective claims. Note that claim 1, from which claims 4-5 depend, makes no mention of a “first symbol mark”.
Claims 2-3 and 6-7 are rejected as depending (directly or indirectly) from rejected independent claim 1.
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.
This application currently names joint inventors. In considering patentability of the claims the examiner presumes that the subject matter of the various claims was commonly owned as of the effective filing date of the claimed invention(s) absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and effective filing dates of each claim that was not commonly owned as of the effective filing date of the later invention in order for the examiner to consider the applicability of 35 U.S.C. 102(b)(2)(C) for any potential 35 U.S.C. 102(a)(2) prior art against the later invention.
Claims 1-7 are rejected under 35 U.S.C. 103 as being unpatentable over U.S. Patent No. 6,410,113 to Roth (“Roth”) in view of U.S. Patent Application Publication No. 2007/0096912 to Rajan (“Rajan”).
Regarding claim 1, Roth discloses a mailing waybill (e.g. shipping laminate 12, as shown in figs. 13), comprising: i) a single-sheet body (e.g. label 14 and its border 14b, together, as shown in figs. 1-4) having a first surface (e.g. upper surface, as shown in figs. 1-4); and ii) a second surface (e.g. lower surface, as shown in figs. 1-4 ) opposite to (figs. 1-4) the first surface (aforementioned upper surface); iii) an adhesive layer (e.g. adhesive 20, as shown in figs. 3-4) disposed on (figs. 3-4) the second surface (aforementioned lower surface); iv) a release film (e.g. release liner 18 and liber border 18b, together, as shown in figs. 1-4) removably attached to (fig. 4 and col. 2, lines 34-36) the adhesive layer (20); v) a perforation line (e.g. die cut line 34, as shown in figs. 3-4) formed through (figs. 3-4) the single-sheet body (14 and 14b, together), wherein the perforation line (34) defines (figs. 3-4): 1) a detachable (figs. 1-4) first area (e.g. label 14, as shown in figs. 1-4) and a remaining (figs. 1-4) second area (e.g. border 14b, as shown in figs. 1-4), 2) wherein the detachable first area (14) is configured to be separated from (figs. 1-3) the single-sheet body (14 and 14b, together) along (fig. 3) the perforation line (34), 3) wherein the adhesive layer (20) comprises: a) a first adhesive region (e.g. portion of adhesive 20 underlying label 14, as shown in figs. 3-4) corresponding to (figs. 3-4) the detachable first area (14); and b) a second adhesive region (e.g. portion of adhesive 20 underlying label border 14b, as shown in fig. 4) corresponding to (fig. 4) the second area (14b), and c) a bottom film (e.g. release agent 22, as shown in figs. 2-4) disposed between (fig. 4) the first adhesive region (aforementioned portion of adhesive 20 underlying label 14) and the release film (18 and 18b, together), e) wherein a surface (e.g. lower surface, as shown in fig. 4) of the bottom film (22) facing (fig. 4) the release film (18 and 18b, together) is non-adhesive (per col. 2, line 38, release agent 22 may be a silicone layer).
Roth does not disclose: wherein an adhesion strength of the first adhesive region (aforementioned portion of adhesive 20 underlying label 14) is less than an adhesion strength of the second adhesive region (aforementioned portion of adhesive 20 underlying label border 14b).
Rajan teaches the concept of providing an adhesion strength of a first adhesive region (e.g. region containing first adhesive 26, as shown in fig. 2 and discussed at para. 30) being less than an adhesion strength (per para. 30, first adhesive 26 and second adhesive 28 may have different strengths, based on which portions of the label assembly are desired to be more difficult to remove from an object) of a second adhesive region (e.g. region containing second adhesive 28, as shown in fig. 2 and discussed at para. 30).
Given that Roth and Rajan both concern adhesive label assemblies, it would have been obvious to a person of ordinary skill in the art before the effective filing date to apply the Rajan differing adhesive strength teachings to the Roth assembly such that the portion of adhesive underlying Roth label 14 has a lower adhesion strength than the portion of adhesive underlying Roth border 14b, in order to provide the benefit of yielding a resultant assembly in which Roth label 14 may be removed while Roth border 14b remains attached to the assembly.
Regarding claim 2, Roth in view of Rajan discloses the mailing waybill according to claim 1, wherein the detachable first area (Roth 14) comprises a symbol mark (e.g. indicia provided on Roth label 14, as shown in fig. 1) including at least one of an address (Roth fig. 1), a name (Roth fig. 1), or a telephone number.
Regarding claim 3, Roth in view of Rajan discloses the mailing waybill according to claim 2, wherein the symbol mark (aforementioned indicia provided on Roth label 14) is printed on (Roth fig. 1) the detachable first area (Roth 14).
Regarding claim 4, Roth in view of Rajan discloses the mailing waybill according to claim 1, but does not disclose wherein wherein the second area (Roth 14b) comprises a second symbol mark.
However, it has been held that “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.” See In re Gulack, 703 F.2d 1381, 1385-86, 217 USPQ 401,404 (Fed. Cir. 1983).
Accordingly, it would have been obvious to a person of ordinary skill in the art before the effective filing date of the claimed invention to provide indicia upon the Roth border 14b as desired, in order to provide the benefit of yielding a resultant assembly presenting information as desired.
Regarding claim 5, Roth in view of Rajan discloses the mailing waybill according to claim 1, but does not disclose wherein the second symbol mark includes at least one of an address, a name, or a telephone number.
However, it has been held that “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.” See In re Gulack, 703 F.2d 1381, 1385-86, 217 USPQ 401,404 (Fed. Cir. 1983).
For the reasons set forth in the rejection of claim 4, supra, it would have been obvious to provide indicia upon the Roth border 14b as desired.
Regarding claim 6, Roth in view of Rajan discloses the mailing waybill according to claim 1, wherein the perforation line (Roth 34) is configured to allow manual separation (Roth fig. 3; note that the instant claim is drawn to a waybill- not a method of use or operation thereof) of the detachable first area (Roth 14) from the remaining second area (Roth 14b).
Regarding claim 7, Roth in view of Rajan discloses the mailing waybill according to claim 1, wherein the adhesion strength of the first adhesive region (aforementioned portion of Roth adhesive 20 underlying label 14) is substantially zero (note the presence of Roth release agent 22, as shown in fig. 4).
Response to Arguments
In view of Applicants’ claim amendments, a further search of the pertinent areas of prior art was executed. Within said search, the aforementioned Roth and Rajan references were identified. Accordingly, Applicants’ arguments have been considered, but are moot because the new ground of rejection does not rely on any reference applied in the prior rejection of record for any teaching or matter specifically challenged in the argument.
Conclusion
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). 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.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to JUSTIN V LEWIS whose telephone number is (571)270-5052. The examiner can normally be reached M-F 7:30AM-5:00PM.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Daniel J. Troy can be reached at (571) 270-3742. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/JUSTIN V LEWIS/Primary Examiner, Art Unit 3637
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