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 2 – 21 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1, 3 – 11 and 13 of U.S. Patent No. 12,211,400 to Vigunas in view of U. S. Patent Publication 2015/0159034 to Wild et al.
Vigunas discloses a label comprising a substrate; and diamond-shaped adhesive patches of a same size disposed in a pattern on a backside of the substrate; wherein each diamond-shaped adhesive patch intersects at least two other diamond-shaped adhesive patches within the pattern (Claims 1 and 9) as in claim 2. With respect to claim 3, the pattern includes void areas devoid of any adhesive that alternate between and abut the diamond-shaped adhesive patches (Claims 1, 3, and 7). Regarding claim 4, first void areas of the void areas are diamond shaped (Claims 1, 3, and 4). For claim 5, the first void areas are discontinuous areas on the backside of the substrate (Claim 5). In claim 6, second void areas of the void areas abut sides of the backside of the substrate and are continuous areas along a periphery of the backside of the substrate (Claim 6). With regard to claim 7, the diamond-shaped adhesive patches are arranged in rows and columns within the pattern (Claims 7 and 9). As in claim 8, the pattern is configured to ensure consistent pull and energy exerted by a printer as the label proceeds through a printer web path (Claim 8). With respect to claim 9, the pattern enables consistent wear of a platen roller of the printer (Claim 9). Regarding claim 10, the pattern is configured to minimize adhesive buildup on components of a printer (Claim 10). For claim 11, the label comprises a peel value within a range of 130-150 gram force (gf) per inch (gf/in) based on the pattern (Claim 11). Vigunas further discloses a roll of labels, comprising: a web of a substrate; and diamond-shaped adhesive patches disposed in a pattern on a backside of the substrate, wherein each instance of the pattern on the backside of the substrate defines a label for the roll; wherein each diamond-shaped adhesive patch intersects at least two other diamond-shaped adhesive patches within the pattern (Claims 9 and 13) as in claim 13. With respect to claim 14, the pattern includes void areas devoid of any adhesive that alternate between and abut the diamond-shaped adhesive patches (Claims 13 and 3). Regarding claim 15, first void areas of the void areas are diamond shaped and discontinuous on the backside of the substrate (Claims 4 and 5). For claim 16, second void areas of the void areas abut sides of the backside of the substrate and are continuous areas along a periphery of the backside of the substrate (Claims 3 – 7). In claim 17, the pattern is configured to ensure consistent pull and energy exerted by a printer as each label proceeds through a printer web path (Claims 1 and 13). With regard to claim 18, the pattern enables consistent wear of a platen roller of the printer (Claims 1 and 13). As in claim 19, the pattern is configured to minimize adhesive buildup on components of a printer (Claims 1 and 13). Vigunas also discloses a label comprising: a substrate having a front side and a backside; diamond-shaped adhesive patches disposed in a pattern on the backside of the substrate, wherein each diamond-shaped adhesive patch intersects at least two other diamond-shaped adhesive patches within the pattern (Claims 1 and 3 – 7) as in claim 20. However, Vigunas fail to disclose a front side of the substrate includes a thermal- sensitive coating configured to be imaged when heat is applied by a thermal printer, a release coating disposed over a thermal-sensitive coating on the front side of the substrate to permit the front side to be wound with adhesive disposed on the backside, and the release coating comprises a non-silicon based release coating configured to prevent premature thermal print head wear.
Wild et al. teach a label comprising a substrate (Abstract; Figures) having a front side of the substrate includes a thermal- sensitive coating configured to be imaged when heat is applied by a thermal printer (Abstract; Paragraph 0010), a release coating disposed over a thermal-sensitive coating on the front side of the substrate to permit the front side to be wound with adhesive disposed on the backside (Paragraphs 0022 - 0031), and the release coating comprises a non-silicon based release coating configured to prevent premature thermal print head wear (Paragraphs 0021 - 0031) for the purpose of having a label with a silicone-free release layer that does adversely impact printers that image the label (Paragraph 0007).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have a non-silicone release coating over a thermal coated substrate in Vigunas in order to have a label with a silicone-free release layer that does adversely impact printers that image the label as taught by Wild et al.
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.
(a)(2) the claimed invention was described in a patent issued under section 151, or in an application for patent published or deemed published under section 122(b), in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention.
Claims 2 – 7, and 13 – 16 are rejected under 35 U.S.C. 102(a)(1) and (a)(2) as being anticipated by Rusincovitch et al. (USPN 5,487,929).
Rusincovitch et al. discloses a label (Figures; Abstract) comprising a substrate (Column 4, lies 35 – 42); and diamond-shaped adhesive patches of a same size disposed in a pattern on a backside of the substrate (Column 4, lines 43 – 56; Figure 2, #14); wherein each diamond-shaped adhesive patch intersects at least two other diamond-shaped adhesive patches within the pattern (Column 4, lines 43 – 56; Figure 2, #14) as in claim 2. With respect to claim 3, the pattern includes void areas devoid of any adhesive that alternate between and abut the diamond-shaped adhesive patches (Figure 2, #12 and 16). Regarding claim 4, first void areas of the void areas are diamond shaped (Figure 2, # 16). For claim 5, the first void areas are discontinuous areas on the backside of the substrate (Figure 2, # 16). In claim 6, second void areas of the void areas abut sides of the backside of the substrate and are continuous areas along a periphery of the backside of the substrate (Figure 2, #12). With regard to claim 7, the diamond-shaped adhesive patches are arranged in rows and columns within the pattern (Figure 2, #14). Rusincovitch et al. further discloses a roll of labels (Column 9, lines 37 – 46) comprising: a web of a substrate (Column 4, lies 35 – 42); and diamond-shaped adhesive patches disposed in a pattern on a backside of the substrate (Column 4, lines 43 – 56; Figure 2, #14), wherein each instance of the pattern on the backside of the substrate defines a label for the roll (Column 4, lines 43 – 56; Figure 2, #14); wherein each diamond-shaped adhesive patch intersects at least two other diamond-shaped adhesive patches within the pattern (Column 4, lines 43 – 56; Figure 2, #14; Column 9, lines 37 – 46) as in claim 13. With respect to claim 14, the pattern includes void areas devoid of any adhesive that alternate between and abut the diamond-shaped adhesive patches (Figure 2, #12 and 16). Regarding claim 15, first void areas of the void areas are diamond shaped and discontinuous on the backside of the substrate (Figure 2, #16). For claim 16, second void areas of the void areas abut sides of the backside of the substrate and are continuous areas along a periphery of the backside of the substrate (Figure 2, #12).
Claims 2 – 4, 6, 7, 13, 14, and 16 are rejected under 35 U.S.C. 102(a)(1) and (a)(2) as being anticipated by Roth et al. (USPN 11,224,043).
Roth et al. discloses a label (Figures 1A, 1B, and 1H; Abstract) comprising a substrate (Column 3, lines 22 – 34); and diamond-shaped adhesive patches of a same size disposed in a pattern on a backside of the substrate (Figures 1A, 1B, and 1H; Column 3, lines 22 – 34); wherein each diamond-shaped adhesive patch intersects at least two other diamond-shaped adhesive patches within the pattern (Figures 1A, 1B, and 1H) as in claim 2. With respect to claim 3, the pattern includes void areas devoid of any adhesive that alternate between and abut the diamond-shaped adhesive patches (Figures 1A, 1B, and 1H; Column 3, lines 22 – 34). Regarding claim 4, first void areas of the void areas are diamond shaped (Figures 1A, 1B, and 1H; Column 3, lines 22 – 34). In claim 6, second void areas of the void areas abut sides of the backside of the substrate and are continuous areas along a periphery of the backside of the substrate (Figures 1A, 1B, and 1H; Column 3, lines 22 – 34). With regard to claim 7, the diamond-shaped adhesive patches are arranged in rows and columns within the pattern (Figures 1A, 1B, and 1H; Column 3, lines 22 – 34). Roth et al. further discloses a roll of labels (Column 1, lines 45 – 55) comprising: a web of a substrate (Column 3, lines 22 – 34); and diamond-shaped adhesive patches disposed in a pattern on a backside of the substrate (Figures 1A, 1B, and 1H; Column 3, lines 22 – 34), wherein each instance of the pattern on the backside of the substrate defines a label for the roll (Column 1, lines 45 – 55; Figures 1A, 1B, and 1H); wherein each diamond-shaped adhesive patch intersects at least two other diamond-shaped adhesive patches within the pattern (Figures 1A, 1B, and 1H) as in claim 13. With respect to claim 14, the pattern includes void areas devoid of any adhesive that alternate between and abut the diamond-shaped adhesive patches (Figures 1A, 1B, and 1H). For claim 16, second void areas of the void areas abut sides of the backside of the substrate and are continuous areas along a periphery of the backside of the substrate (Figures 1A, 1B, and 1H).
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.
Claims 8 – 12 and 17 – 21 are rejected under 35 U.S.C. 103 as being unpatentable over Roth et al. (USPN 11,224,043) in view of Wild et al. (USPGPub 2015/0159034 A1).
Roth et al. discloses a label (Figures 1A, 1B, and 1H; Abstract) comprising a substrate (Column 3, lines 22 – 34); and diamond-shaped adhesive patches of a same size disposed in a pattern on a backside of the substrate (Figures 1A, 1B, and 1H; Column 3, lines 22 – 34); wherein each diamond-shaped adhesive patch intersects at least two other diamond-shaped adhesive patches within the pattern (Figures 1A, 1B, and 1H). Roth et al. further discloses a roll of labels (Column 1, lines 45 – 55) comprising: a web of a substrate (Column 3, lines 22 – 34); and diamond-shaped adhesive patches disposed in a pattern on a backside of the substrate (Figures 1A, 1B, and 1H; Column 3, lines 22 – 34), wherein each instance of the pattern on the backside of the substrate defines a label for the roll (Column 1, lines 45 – 55; Figures 1A, 1B, and 1H); wherein each diamond-shaped adhesive patch intersects at least two other diamond-shaped adhesive patches within the pattern (Figures 1A, 1B, and 1H). However, Roth et al. fail to disclose the pattern is configured to ensure consistent pull and energy exerted by a printer as the label proceeds through a printer web path, the pattern enables consistent wear of a platen roller of the printer, the pattern is configured to minimize adhesive buildup on components of a printer, the label comprises a peel value within a range of 130-150 gram force (gf) per inch (gf/in) based on the pattern, a front side of the substrate includes a thermal- sensitive coating configured to be imaged when heat is applied by a thermal printer, a release coating disposed over a thermal-sensitive coating on the front side of the substrate to permit the front side to be wound with adhesive disposed on the backside, and the release coating comprises a non-silicon based release coating configured to prevent premature thermal print head wear.
Wild et al. teach a label (Figures; Abstract) comprising a substrate (Paragraph 0010); and adhesive patches of a same size disposed in a pattern on a backside of the substrate (Figures; Abstract), a front side of the substrate includes a thermal- sensitive coating configured to be imaged when heat is applied by a thermal printer (Abstract; Figure 3, #102 and 104), a release coating disposed over a thermal-sensitive coating on the front side of the substrate to permit the front side to be wound with adhesive disposed on the backside (Paragraph 0022 – 0031; Figure 3, #108), and the release coating comprises a non-silicon based release coating configured to prevent premature thermal print head wear (Paragraph 0022 – 0031; Figure 3, #108) for the purpose of having a label that helps with self-cleaning and avoids printer jamming (Paragraph 0068).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have a thermal- sensitive coating and a non-silicon based release coating in Roth et al. in order to have a label that helps with self-cleaning and avoids printer jamming as taught by Wild et al.
With regard to the limitations of the pattern is configured to ensure consistent pull and energy exerted by a printer as the label proceeds through a printer web path, the pattern enables consistent wear of a platen roller of the printer, the pattern is configured to minimize adhesive buildup on components of a printer, the label comprises a peel value within a range of 130-150 gram force (gf) per inch (gf/in) based on the pattern”, the combination of Roth et al. and Wild et al. disclose a label having a diamond-shaped adhesive patches of a same size disposed in a pattern on a backside of the substrate (Roth, Figures 1A, 1B, and 1H; Column 3, lines 22 – 34) to form a label that promotes self-cleaning and avoids printer jamming on a substrate coated with a thermal sensitive coating and silicone-free release coating made with adhesive patterns (Wild, Paragraph 0068; Figures). Therefore, it is reasonable to presume that said limitations are inherent to the invention. Support for said presumption is found in the use of similar materials (i.e. patterned adhesive on a paper substrate) and in the similar production steps (i.e. the substrate is sent through a thermal printer for printing) used to produce the liner less. The burden is upon the Applicant to prove otherwise. MPEP 2112.
Conclusion
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/Patricia L. Nordmeyer/
Primary Examiner
Art Unit 1788
/pln/Primary Examiner, Art Unit 1788 March 6, 2026