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 .
Information Disclosure Statement
The information disclosure statement (IDS) submitted on 10/31/2024 is considered by the examiner.
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 11, 12 and 13 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.
Regarding claim 11, the entire claim is indefinite as it is unclear what structural features are required for the claimed label. Independent claim 1 recites “a printable portion” wherein “the printable portion configured to be marked with a first indicia” (emphasis added). This means that the printable portion is capable of being printed with indicia at a later point in time, but is not currently printed with indicia. Claim 11 positively recites printed indicia, and therefore appears to be reciting a method of making or using the claimed printable label of claim 1. Claim 11 will be treated as a product by process limitation until further clarification is provided by the Applicant.
Regarding claim 12, the entire claim is indefinite as it is unclear what structural features are required for the claimed label. Independent claim 1 recites “a printable portion” wherein “the printable portion configured to be marked with a first indicia” (emphasis added). This means that the printable portion is capable of being printed with indicia at a later point in time, but is not currently printed with indicia. Claim 12 positively recites printed indicia, and therefore appears to be reciting a method of making or using the claimed printable label of claim 1. Claim 12 will be treated as a product by process limitation until further clarification is provided by the Applicant.
Regarding claim 13, the entire claim is indefinite as it is unclear what structural features are required for the claimed label. Independent claim 1 recites “a printable portion” wherein “the printable portion configured to be marked with a first indicia” (emphasis added). This means that the printable portion is capable of being printed with indicia at a later point in time, but is not currently printed with indicia. Claim 13 positively recites printed indicia, and therefore appears to be reciting a method of making or using the claimed printable label of claim 1. Claim 13 will be treated as a product by process limitation until further clarification is provided by the Applicant.
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, 2, 5, 6, 7, 8, 12, 14, 15 and 16 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Caveney et al. (US 2020/0258429, cited on IDS).
Regarding claim 1, Caveney et al. teaches a self-laminating rotating cable marker label as shown in Figure 8 reproduced below (Abstract).
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The label is comprised of an elongated strip of thin film material (transparent body portion) made from a transparent flexible material such as vinyl, polyolefin, polyester, etc. ([0027-0037]). The elongated strip of thin film material (transparent body portion) comprises a first end (left side) and opposite second end (right side), a top side and opposing bottom side as shown in the image above ([0027-0037]). The label is comprised of a first portion (116; tab portion) proximal to the first end, an overlay portion (124) distal to the first end and a printed label area (120; printable portion) located between the first portion (116; tab portion) and the overlay portion, and a pressure sensitive adhesive coating the underside of the elongated strip of thin film material (transparent body portion) (Figure 8-11, [0027-0037).
The limitations reciting “configured to wrap around an article” in line 1, “configured to reposition to connect to a surface of the article” in lines 5-6, “the printable portion configured to be marked with a first indicia” in line 9 and “the overlay portion configured to wrap over a wrap portion of the label” in lines 10-11 are considered functional language related to the intended use of the product and is accorded limited weight as the language does not further limit the structure or the process.
Furthermore, Caveney et al. teaches all the structural features of the claimed label as described in the rection above, and is capable of performing in the manner claimed as shown at least by Figures 8-11 ([0027-0037]).
Regarding claim 2, Caveney et al. teaches all the limitations of claim 1 above. The limitation reciting “wherein the wrap portion of the label further comprises at least one of the tab or the printable portion” is considered functional language related to the intended use of the product and is accorded limited weight as the language does not further limit the structure or the process.
Furthermore, Caveney et al. teaches all the structural features of the claimed label as described in the rection of claim 1 above, and is capable of performing in the manner claimed as shown at least by Figures 8-11 ([0027-0037]), which illustrates the label being wrapped around a cable, and the overlay portion covers both the first portion (116; tab portion) and the printed label area (120; printable portion).
Regarding claim 5, Caveney et al. teaches all the limitations of claim 1, and further teaches that the first end is the one with first portion (116; tab portion), which is the leading end of the label (see Figures 8-11, [0027-0037]).
The limitation reciting “wherein the repositionable connection of the tab to the surface of the article is configured to permit rotation of the label at the tab from an initial position to an aligned position, and wherein in the aligned position the leading edge of the transparent body portion is visually aligned with a longitudinal axis of the article” is considered functional language related to the intended use of the product and is accorded limited weight as the language does not further limit the structure or the process. The label taught by Caveney et al. is capable of performing in the manner claimed.
Regarding claim 6, Caveney et al. teaches all the limitations of claim 1 above, and as shown by Figure 8, the tab is centered on the first end of the elongated strip of thin film material (transparent body portion) ([0027-0037]).
Regarding claim 7, Caveney et al. teaches all the limitations of claim 1 above, and as shown by annotated Figure 8 below, when oriented in the same direction as the figures of the instant specification and in the manner to which the label is applied to the cable (see Figures 3-7), the elongated strip of thin film material (transparent body portion) has a longitudinally extending axis that extends from the first end to the second end defining a centerline.
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As can be seen in the annotated figure above, the tab has a first side and opposite second side defining a width therebetween and the width of the tab is centered on the first end of the elongated strip of thin film material (transparent body portion) at the centerline.
Regarding claim 8, Caveney et al. teaches all the limitations of claim 1 above, and as shown in Figure 8 above (both annotated and unannotated), the tab has a first side opposite a second side defining a width and the first and second sides of the tab are spaced apart from the respective first and second ends of the elongated strip of thin film material (transparent body portion) ([0027-0037]).
Regarding claim 11, Caveney et al. teaches all the limitations of claim 1 above.
The limitation “wherein the printable portion is marked with the first indicia, and wherein the first indicia renders at least a portion of the printable portion opaque and wherein the printable portion is further marked with a second indicia on top of the first indicia” is a method limitation and does not determine the patentability of the product, unless the method produces a structural feature of the product. The method of forming 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 Caveney et al. discloses the structure of claim 1 as described above.
Regarding claim 12, Caveney et al. teaches all the limitations of claim 1 above.
The limitation “wherein the printable portion is marked with the first indicia, and wherein the first indicia renders at least a portion of the printable portion opaque” is a method limitation and does not determine the patentability of the product, unless the method produces a structural feature of the product. The method of forming 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 Caveney et al. discloses the structure of claim 1 as described above.
Regarding claim 13, Caveney et al. teaches all the limitations of claim 1 above.
The limitation “wherein the printable portion is further marked with a second indicia on top of the first indicia” is a method limitation and does not determine the patentability of the product, unless the method produces a structural feature of the product. The method of forming 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 Caveney et al. discloses the structure of claim 1 as described above.
Regarding claim 14, Caveney et al. teaches all the limitations of claim 1 above.
The limitations reciting “wherein the tab is configured to reposition to connect to the surface of the article to enable the label to be temporarily applied to the article and repositioned without removing the label from the article and before the printable portion and the overlay portion are applied to the article” are considered functional language related to the intended use of the product and is accorded limited weight as the language does not further limit the structure or the process.
Furthermore, Caveney et al. teaches all the structural features of the claimed label as described in the rection above, and is capable of performing in the manner claimed as shown at least by Figures 8-11 ([0027-0037]).
Regarding claim 15, Caveney et al. teaches all the limitations of claim 1 above, and further teaches, as shown by Figure 8, that the first portion (116; tab portion) is polygonal shaped ([0027-0037]).
Regarding claim 16, Caveney et al. teaches all the limitations of claim 1 above, and further teaches a throw away liner or substrate on the side of the label comprising the pressure sensitive adhesive ([0011, 0041-0042, 0052]).
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.
Claims 3, 4, 9, 10, 17, 18, 19 and 20 are rejected under 35 U.S.C. 103 as being unpatentable over Caveney et al. (US 2020/0258429; cited on IDS).
Regarding claim 3, Caveney et al. teaches all the limitations of claim 1. While Caveney et al. does not expressly teach a pivot point defined on the tab, it would have been obvious to one of ordinary skill in the art to define a central point on the tab to ensure the label is properly applied.
The limitation reciting “wherein the label is configured to pivot about a point before the overlay portion is wrapped over at least one of the tab or printable portion” is considered functional language related to the intended use of the product and is accorded limited weight as the language does not further limit the structure or the process. The label taught by Caveney et al. is capable of performing in the manner claimed.
Regarding claim 4, Caveney et al. teaches all the limitations of claims 1 and 3.
As shown by annotated Figure 8 below, when oriented in the same direction as the figures of the instant specification and in the manner to which the label is applied to the cable (see Figures 3-7), the elongated strip of thin film material (transparent body portion) has a longitudinally extending axis that extends from the first end to the second end defining a centerline.
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As can be seen in the annotated figure above, the tab has a first side and opposite second side defining a width therebetween and the width of the tab is centered on the first end of the elongated strip of thin film material (transparent body portion) at the centerline.
While not expressly stated, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to locate a pivot point on the centerline to ensure the label is properly applied.
Regarding claim 9, Caveney et al. teaches all the limitations of claim 1 above. As shown in Figure 8 above, the first potion (116; tab portion) is shown as having a first side and opposite second side defining a width therebetween ([0027-0037]). While the reference teaches in the embodiment of Figure 8 that the lateral width of the printed label area (120; printable portion) is greater than the width of the first portion (116; tab portion), the reference does not expressly teach that the width of the first portion (116; tab portion) is less than half a width of the printed label area (120; printable portion).
It has been held that when the only difference between prior art and the claims is a recitation of relative dimensions of the claimed device and a device having the claimed relative dimensions would not perform differently than the prior art device and therefore, modifying the size of the first portion (116; tab portion) to be half the width of the first portion (120; printable portion) would have been obvious to one of ordinary skill in the art.
Regarding claim 10, Caveney et al. teaches all the limitations of claim 1, and while the reference teaches a pressure sensitive adhesive, it does not expressly teach that the adhesive is repositionable. It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention that the pressure sensitive adhesive taught by Caveney et al. would be capable of being repositioned (i.e. repositionable) as the instant application also teaches pressure sensitive adhesives as appropriate adhesives used in the claimed invention (see pg-pub [0031]).
Regarding claim 17, Caveney et al. teaches a self-laminating rotating cable marker label as shown in Figure 8 reproduced below (Abstract).
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The label is comprised of an elongated strip of thin film material (transparent body portion) made from a transparent flexible material such as vinyl, polyolefin, polyester, etc. ([0027-0037]). The elongated strip of thin film material (transparent body portion) comprises a first end (left side) defining a leading end and opposite second end (right side), a top side and opposing bottom side as shown in the image above ([0027-0037]). The label is comprised of a first portion (116; tab portion) proximal to the first end , an overlay portion (124) distal to the first end and a printed label area (120; printable portion) located between the first portion (116; tab portion) and the overlay portion, and a pressure sensitive adhesive coating the underside of the elongated strip of thin film material (transparent body portion) (Figure 8-11, [0027-0037).
While Caveney et al. does not expressly teach a pivot point defined on the tab, it would have been obvious to one of ordinary skill in the art to define a central point on the tab to ensure the label is properly applied.
Caveney et al. a pressure sensitive adhesive, however, the reference does not expressly teach that the adhesive is repositionable. It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention that the pressure sensitive adhesive taught by Caveney et al. would be capable of being repositioned (i.e. repositionable) as the instant application also teaches pressure sensitive adhesives as appropriate adhesives used in the claimed invention (see pg-pub [0031]).
The limitations reciting “configured to wrap around an article” in line 1, “the tab configured to reposition to connect to a surface of the article” in lines 6-7, “the printable portion configured to be marked with a first indicia” in line 11, “the overlay portion configured to wrap over a wrap portion of the label” in line 14, “wherein the label is configured to pivot about the pivot point before the overlay portion is wrapped over the wrap portion” in lines 15-16, “the repositionable connection of the tab to the surface of the article configured to permit rotation of the label at the tab from an initial position to an aligned position” in lines 17-18 are considered functional language related to the intended use of the product and is accorded limited weight as the language does not further limit the structure or the process.
Furthermore, Caveney et al. teaches all the structural features of the claimed label as described in the rection above, and is capable of performing in the manner claimed as shown at least by Figures 8-11 ([0027-0037]).
The limitation reciting “in the aligned position the leading edge of the transparent body portion is visually aligned with a longitudinal axis of the article” is a method limitation and does not determine the patentability of the product, unless the method produces a structural feature of the product. 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 Caveney et al. discloses the structure of claim 17 as described above and illustrated by Figures 8-11 ([0027-0037]).
Regarding claim 18, Caveney et al. teaches all the limitations of claim 17 above. The limitation reciting “wherein the wrap portion of the label further comprises at least one of the tab or the printable portion” is considered functional language related to the intended use of the product recited by claim 17 and is accorded limited weight as the language does not further limit the structure or the process.
Furthermore, Caveney et al. teaches all the structural features of the claimed label as described in the rection of claim 17 above, and is capable of performing in the manner claimed as shown at least by Figures 8-11 ([0027-0037]), which illustrates the label being wrapped around a cable, and the overlay portion covers both the first portion (116; tab portion) and the printed label area (120; printable portion).
Regarding claim 19, Caveney et al. teaches all the limitations of claim 17 above, and further teaches, as shown by Figure 8, that the first portion (116; tab portion) is polygonal shaped ([0027-0037]).
Regarding claim 20, Caveney et al. teaches all the limitations of claim 17 above, and further teaches a throw away liner or substrate on the side of the label comprising the pressure sensitive adhesive ([0011, 0041-0042, 0052]).
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
Oster (US 2017/0337852) teaches a label comprising an opening section (tab), printing region and transparent wrap section for being applied to an object by wrapping the label around the object (Figure 2, [0008, 0019-0046]).
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LAURA POWERS
Examiner
Art Unit 1785
/LAURA C POWERS/Primary Examiner, Art Unit 1785
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