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 18-27 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-43 of U.S. Patent No. 12,151,496.
Although the claims at issue are not identical, they are not patentably distinct from each other because the subject matter claimed in the instant application is disclosed in the US Patent (496) and is covered by the US Patent, since the US Patent and the instant application are claiming common subject matter.
Claims 18-27 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-51 of copending Application No. 18/941534 (reference application).
Although the claims at issue are not identical, they are not patentably distinct from each other because the subject matter claimed in the instant application is disclosed in the co-pending application and is covered by the co-pending application since the co-pending application and the instant application are claiming common subject matter.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Claims 18-27 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 13-83 of copending Application No. 18/916145 (reference application).
Although the claims at issue are not identical, they are not patentably distinct from each other because the subject matter claimed in the instant application is disclosed in the co-pending application and is covered by the co-pending application since the co-pending application and the instant application are claiming common subject matter.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Claims 18-27 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-45 of copending Application No. 19/096928 (reference application).
Although the claims at issue are not identical, they are not patentably distinct from each other because the subject matter claimed in the instant application is disclosed in the co-pending application and is covered by the co-pending application since the co-pending application and the instant application are claiming common subject matter.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Claims 18-27 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-43 of copending Application No. 19/379508 (reference application).
Although the claims at issue are not identical, they are not patentably distinct from each other because the subject matter claimed in the instant application is disclosed in the co-pending application and is covered by the co-pending application since the co-pending application and the instant application are claiming common subject matter.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
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.
(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.
Claim(s) 18-22 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Falser et al. (# US 2010/0283811).
Falser et al. discloses:
18. A printing apparatus (element: 1, figure: 1-5) for creating a multiple layered print structure, comprising:
a movable carriage assembly (element: 10, figure: 1-5);
a first print-head 3attached to the movable carriage assembly, wherein the first print-head is adapted to print at least one print layer having a design on a removable substrate using a digital ink-jet print method (element: 32, figure: 3-4);
a second print-head attached to the movable carriage assembly; wherein the second print-head is adapted to print at least one opaque layer on top of the design using a digital ink-jet print method (element: 31, figure: 3-4; see claims 1-6).
19. The printing apparatus for creating a multiple layer print structure of claim 18, wherein the first print-head is adapted to print the design in mirror image format ([0056]-[0117]).
20. The printing apparatus for creating a multiple layer print structure of claim 18, wherein the printing apparatus further comprises a print-head adapted to print at least one release layer underlying said at least one print layer, where the printed release layer creates a shape profile (element: 40, figure: 4).
21. The printing apparatus for creating a multiple layer print structure of claim 18, wherein the movable carriage assembly comprises more than one of the first print-head; wherein each of the more than one first print-head is adapted to print at least one print layer on a removable substrate using a digital ink-jet print method; wherein, the at least one print layer forms a design (figure: 4).
22. The printing apparatus for creating a multiple layer print structure of claim 18, wherein the movable carriage assembly comprises more than one of the second print-head; wherein each of the more than one second print-head is adapted to print at least one opaque layer on top of the design using a digital ink-jet print method (figure: 4).
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
(1) Truog (# US 2004/0161564) discloses a dry paint transfer laminate (100) comprises a dry paint film layer (110) has an upper surface and a lower surface, an adhesive layer (120) overlying the upper surface (112) of the dry paint film layer, and a release liner (130) overlying the lower surface (114) of the dry paint film layer. The dry paint film layer comprises a binder and a pigment (see Abstract).
(2) La Costa (# US 2013/0004742) discloses a method of transfer printing onto articles, particularly dark articles, is disclosed. A design, preferably in color, is printed onto a transfer sheet in sublimation dye using a commercially-available printer. White toner is then printed over at least a portion of the design using an electrostatic printing device. Heat and pressure are applied to transfer the design and the white toner to an article. In some preferred embodiments, the transfer sheet is a self-weeding transfer paper. In some preferred embodiments, the same printer is used to print both the sublimation dye design and the white toner. In some preferred embodiments, the color palette of the image is inverted prior to printing with white toner. The invention is particularly well suited to the transfer printing of dark textile articles (see Abstract).
(3) Daley et al.(# US 2016/0358519) discloses a digitally printed heat transfer label and method of manufacture is disclosed. The heat transfer label and method of manufacture provides a more efficient process with less waste, as well as prevents halos. The method comprises adding adhesive powder to a digital image printed on a substrate to produce a high stretch, multi-color photographic quality label for the apparel industry (see Abstract).
(4) McGovern et al. (# US 2019/0118575) discloses a thermal transfer and process for producing it that provides a fully-digital printed heat transfer capable of little to no process changeover between different graphics. Specifically, the method comprises printing a digital image onto a treated adhesive substrate, applying the image side to a carrier substrate, then digitally cutting and removing substrate not containing graphic elements through a combination of kiss-and-through cutting to produce a high stretch, multi-color photographic quality print transfers for the apparel and soft goods industry (see Abstract).
(5) Weedlun et al. (# US 2020/0096910) discloses the method involves digitally printing an image onto the protective coating to form a printed area and an unprinted area of the protective coating on a protective coating receptive to ink and/or toner. An attractant is digitally printed precisely onto the printed area and not onto the unprinted area. An adhesive powder is applied onto the printed area and the unprinted area. The adhesive powder is removed (208) from the unprinted area. The remaining adhesive powder is bonded to the printed area. A release layer is applied onto a substrate. The protective coating is applied onto the release layer (see Abstract).
Any inquiry concerning this communication or earlier communications from the examiner should be directed to MANISH S SHAH whose telephone number is (571)272-2152. The examiner can normally be reached 8:00am-4:00pm.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Ricardo Magallanes can be reached at 571-272-5960. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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MANISH S. SHAH
Primary Examiner
Art Unit 2853
/Manish S Shah/Primary Examiner, Art Unit 2853
