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 .
Priority
Receipt is acknowledged of certified copies of papers required by 37 CFR 1.55.
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 21-40 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-20 of U.S. Patent No. 12,208,985 (hereafter U.S. Patent ’985). Although the claims at issue are not identical, they are not patentably distinct from each other because the claims in the instant application are obvious in view of the claims in the patent as discussed below.
Regarding claim 21, claim 1 of U.S. Patent ‘985 teaches a method for securely applying print to a web of polymeric film, the method comprising (claim 1 lines 11-13):
a folding board folding the web, the folding forming a crease into the web, the crease defining first and second partial widths of the web, the first partial width extending from the crease to a first edge of the web, the second partial width extending from the crease to an opposite second edge of the web (claim 1 lines 14-20),
a print head placing print onto a surface of the first partial width at a print location (claim 1 lines 21-22), and
the folding board collapsing the folded web such that a surface of the second partial width is in at least in partial contact with the print location (claim 1 lines 23-27).
Regarding claim 22, claim 2 of U.S. Patent ‘985 teaches wherein: the folding board forms a V-shaped cross-section into the web, the first and second partial widths of the web correspond to first and second legs of the V-shape and the crease corresponds to an apex of the V-shape, and the print head is located within the V-shape (claim 2).
Regarding claim 23, claim 3 of U.S. Patent ‘985 teaches wherein: the first and second partial widths equal an entire width of the web (claim 3).
Regarding claim 24, claim 5 of U.S. Patent ‘985 teaches wherein: the web is generally flat without any folds in the web prior to the folding board folding the web (claim 5).
Regarding claim 25, claim 6 of U.S. Patent ‘985 teaches wherein: the crease in the web is aligned with a centerline of the web and the centerline extends in a machine direction of the web (claim 6).
Regarding claim 26, claim 7 of U.S. Patent ‘985 teaches wherein: the first and second edges of the web extend in a machine direction of the web, a centerline of the web extends in the machine direction, the centerline is not aligned with the crease in the web which results in the first and second edges of the web being offset from each other in a cross direction once the folded web is collapsed, and the cross direction is perpendicular to the machine direction (claim 7).
Regarding claim 27, claim 8 of U.S. Patent ‘985 teaches wherein: the web comprises more than a single layer of film (claim 8).
Regarding claim 28, claim 9 of U.S. Patent ‘985 teaches wherein: the web comprises four layers of film (claim 9).
Regarding claim 29, claim 4 of U.S. Patent ‘985 teaches wherein: the web is transferred from the folding board to a set of post folding rollers once the folding is complete (claim 4).
Regarding claim 30, claim 10 of U.S. Patent ‘985 teaches wherein: the print comprises thermal wax print (claim 10).
Regarding claim 31, claim 11 of U.S. Patent ‘985 teaches an apparatus for securely applying print to a web of polymeric film, the apparatus comprising (claim 11 lines 7-9):
a folding board that folds the web (claim 11 line 10),
wherein the folding board forms a crease into the web to define first and second partial widths in the web, the first partial width extending from the crease to a first edge of the web, the second partial width extending from the crease to a second opposing edge of the web, the first and second partial widths each having a surface (claim 11 lines 10-15), and
a print head that applies the print onto the surface of the first partial width of the web at a print location (claim 11 lines 16-18),
wherein the folding board collapses the folded web once the folding is complete such that the surface of the second partial width at least partially contacts the print location (claim 11 lines 19-23).
Regarding claim 32, claim 12 of U.S. Patent ‘985 teaches wherein: the folding board comprises a V-shape such that the folding board forms a V-shaped cross-section into the web and the first and second partial widths of the web correspond to first and second legs of the V-shape (claim 12).
Regarding claim 33, claim 13 of U.S. Patent ‘985 teaches wherein: the crease in the web corresponds to an apex of the V-shape folding board (claim 13).
Regarding claim 34, claim 14 of U.S. Patent ‘985 teaches wherein: the first and second edges extend in a machine direction of the web, and the first and second partial widths equal an entire width of the web in a cross direction, the cross direction perpendicular to the machine direction (claim 14).
Regarding claim 35, claim 15 of U.S. Patent ‘985 teaches wherein: a centerline of the web is aligned with the crease in the web (claim 15).
Regarding claim 36, claim 16 of U.S. Patent ‘985 teaches wherein: a centerline of the web is not aligned with the crease in the web such that the first and second edges of the web are offset from each other once the folded web is collapsed (claim 16).
Regarding claim 37, claim 17 of U.S. Patent ‘985 teaches wherein: the web comprises more than a single layer of film (claim 17).
Regarding claim 38, claim 18 of U.S. Patent ‘985 teaches wherein: the web comprises four layers of film (claim 18).
Regarding claim 39, claim 19 of U.S. Patent ‘985 teaches wherein: the web transfers from the folding board to a set of post folding rollers (claim 19).
Regarding claim 40, claim 20 of U.S. Patent ‘985 teaches wherein: the print comprises thermal wax print (claim 20).
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to HENOK D LEGESSE whose telephone number is (571)270-1615. The examiner can normally be reached General Schedule 9:00 am- 5:00 pm, IFP.
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, Douglas Rodriguez can be reached at (571)431-0716. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/HENOK D LEGESSE/Primary Examiner, Art Unit 2853
Prosecution Insights