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 .
Allowable Subject Matter
Claims 7-9 are objected to as being dependent upon a rejected base claim, but would be allowable if rewritten in independent form including all of the limitations of the base claim and any intervening claims.
The following is a statement of reasons for the indication of allowable subject matter: the aforementioned claims set forth a series of physical structures/configurations that are well beyond that which is disclosed within the Petkovsek reference (discussed in greater depth infra), which is the prior art closest to Applicants’ claimed invention, and there would be no obvious reason to modify Petkovsek to the extent necessary to satisfy each of Applicants’ pertinent limitations.
With respect to claim 7 (and claims 8-9 depending therefrom), the provision of a single-layer label is well known, but the Petkovsek reference specifically calls for the provision of a secondary layer 32. Note that Petkovsek is the art closest approximating Applicants’ claimed invention, comparing Applicants’ figs. 2 and 5-6 to Petkovsek figs. 4 and 6). If one were to modify Petkovsek to eliminate said secondary layer 32, the overall label would be fundamentally changed in the manner in which it functions and attaches to packages for mailing. The Office encourages Applicants to duly cure the deficiencies under 35 USC 112 identified infra, particularly with regard to the “easy to tear”/”easily torn” nature of the of the claimed tear line, so as to enable objective evaluation of whether Petkovsek continues to be the reference that best approximates Applicants’ desired physical construction.
In view of the foregoing, the modifications necessary to satisfy each of Applicants’ claim limitations would be likely to render the Petkovsek assembly incapable of continuing to operate/behave in the particular manner set forth within the reference itself (given the particularly sensitive nature of such multi-part mailing label assemblies), which would be strongly indicative of an application of improper hindsight reasoning.
Claims 7-9 would be allowable if rewritten to overcome the rejections under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), 2nd paragraph, set forth in this Office action and to include all of the limitations of the base claim and any intervening claims.
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 1-9 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 terms “easily” and “easy” in claims 1, 5 and 9 are relative terms which render the claims indefinite. The terms “easily” and “easy” are not defined by the claims, the specification does not provide a standard for ascertaining the requisite degree, and one of ordinary skill in the art would not be reasonably apprised of the scope of the invention.
The claim 1 recitation of “such that a first area easy to tear is divided from the first surface” is unclear, as it is unknown whether this “first area easy to tear” is initially supposed to actually be a part of the earlier claimed “body” layer, or alternatively, may simply be a totally different layer that is “easy to tear” and located at a position that is divided from the body layer’s first surface. Exactly what structure/configuration is sought? Please review/revise/clarify.
The claim 8 recitations of “part of the bonding surface corresponding to the first area” and “part of the bonding surface corresponding to the second area” are unclear, as neither claims 8, 7 nor 1 declare any earlier “correspondence” between the respective parts. Exactly what structure/configuration is sought? Please review/revise/clarify.
Claim 9 recites the limitation "the part of the bonding surface corresponding to the first area and the release film". There is insufficient antecedent basis for this limitation in the claim.
Claims 2-4 and 6-7 rejected as depending (directly or indirectly) from rejected independent claim 1.
Claim Rejections - 35 USC § 102
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 1-2 and 4-6 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by U.S. Patent No. 6,676,794 to Petkovsek (“Petkovsek”).
Regarding claim 1, Petkovsek anticipates a mailing waybill (e.g. mailing label 10, as shown in figs. 1-4), comprising: i) a body (e.g. layers 30 and 32, together, as shown in figs. 3-4), the body (30 and 32, together) having a first surface (e.g. front side 12, as shown in figs. 3-4) and a bonding surface (e.g. surface 34, as shown in figs. 3-4) opposite to (figs. 3-4) the first surface (12); and ii) a release film (e.g. protective layer 62, as shown in figs. 3-4) arranged on (at least indirectly on, as shown in figs. 3-4) the bonding surface (34); iii) wherein the first surface (12) has an easily torn line (e.g. tear line 40, as shown in figs. 1 and 3), such that a first area (e.g. receipt flap 42, as shown in figs. 1-4) easy to tear (compare figs. 1-4) is divided from (figs. 2 and 4) the first surface (12).
Regarding claim 2, Petkovsek anticipates the mailing waybill according to claim 1, further comprising a first symbol mark (e.g. indicia shown in fig. 1) arranged in (fig. 1) the first area (42).
Regarding claim 4, Petkovsek anticipates the mailing waybill according to claim 1, wherein the first surface (12) further comprises a second area (e.g. edge portion 44, as shown in figs. 1 and 3-4) adjacent to (figs. 1 and 3-4) the first area (42), and the mailing waybill (10) further comprises a second symbol mark (e.g. indicia shown in fig. 1) arranged in (fig. 1) the second area (44).
Regarding claim 5, Petkovsek anticipates the mailing waybill according to claim 1, wherein by means of the easily torn line (40), the second area (44) forms an area easy to tear (figs. 1-4; note that the paper construction renders it “easy” to tear).
Regarding claim 6, Petkovsek anticipates the mailing waybill according to claim 1, wherein the body (30 and 32, together) comprises a surface layer (e.g. layer 30, as shown in figs. 3-4) and a bottom layer (e.g. layer 32, as shown in figs. 3-4) which are stacked (figs. 3-4), the surface layer (30) has the first surface (12) and a second surface (36, as shown in figs. 3-4) opposite to (figs. 3-4) the first surface (12), the bottom layer (32) has (figs. 3-4) the bonding surface (34) and a third surface (e.g. back side 14, as shown in figs. 3-4) opposite to (figs. 3-4) the bonding surface (34), and the second surface (36) is connected to (figs. 3-4) the third surface (14).
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.
Claim 3 is rejected under 35 U.S.C. 103 as being unpatentable over Petkovsek.
Regarding claim 3, Petkovsek discloses the mailing waybill according to claim 2, but does not disclose wherein the first symbol mark (aforementioned indicia shown in fig. 1) indicates personal information, and the first symbol mark comprises an address, phone numbers and a name.
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 as desired, in order to provide the invention of presenting information to an ostensible viewer as desired.
Conclusion
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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/JUSTIN V LEWIS/Primary Examiner, Art Unit 3637