DETAILED ACTION
Election/Restrictions
Claims 10-12 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected invention, there being no allowable generic or linking claim. Election was made without traverse in the reply filed on 06/14/26.
Claim Rejections - 35 USC § 112
The following is a quotation of the first paragraph of 35 U.S.C. 112(a):
(a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
The following is a quotation of the first paragraph of pre-AIA 35 U.S.C. 112:
The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention.
Claims 1-9 are rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the written description requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for applications subject to pre-AIA 35 U.S.C. 112, the inventor(s), at the time the application was filed, had possession of the claimed invention.
The applicant recites a “tamper evident” device, as best can be ascertained by the Examiner, wherein do to differential areas of adhesive, some elements will remain on the substrate to which the label is applied, while other areas will adhere to the lifted label. However, there is absolutely no detail described as to various adhesion between the layers. The only adhesion properties claimed, is claim 9 which recites that the “cold foil adhesive” (lacquer? See below) has a “bond strength less than a bond strength of the sensitive adhesive”, which is unclear. Bond strength is variable depending on the material, and each material is bonding to two different materials on each side.
The adherence properties of the “plurality of coating material” is unclear. The claim states that the “release coat” is “coated on a specific area”, which assumes that if the label is pulled off, the bottom layer (22/23/24) remains on the applied substrate (since the “sensitive adhesive” 22 is stronger), however this does provide any functionality to the rest of the label. It is assumed, without sufficient support, that the “coil foil adhesive” will have a pattern of release coat on top (21), which will either adhere to the coating materials and have them remain to the applied substrate (in areas without the release coat) and will release the coating material to the top substrate 9 (in areas with release coat). However, the coating materials are inks which would be assumed to be assimilated into the paper, and the paper appears to be uniformly removed during tearing, which makes the purpose of a patterned release coat impossible to ascertain as described in the Specification.
Due to the lack of accurate structural definition (see 35 USC 112(b), below), as well as properties between the structures (relative adherences during “tampering”) application of accurate prior art is difficult if not impossible.
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.
Independent claim 1 contains unclear language which does not conform to its standard meaning. In particular the claimed recitation “said cold foil adhesive (24) is coated to stick metal fumes from a metallized sheet roll (29) and form said tamper evident holographic layer (23)”, is indefinite and unclear. It is unclear whether the “tamper evident holographic layer (23)” is a self-sustained holographic layer (e.g. an embossed lacquer with a metal coating, as is traditionally known) or, as confusingly suggested by the Specification and claims, states that the coil foil adhesive is part of the holographic layer: “[t]he cold foil adhesive (24) is coated on the substrate (9) and tamper evident holographic effect is given to the substrate (9) forming the tamper evident holographic layer (23)”.
Also, the claimed recitation “tamper evident holographic layer (23)” is unclear on its own. As claimed in claim 9, which recites “the cold foil adhesive (24) has a bond strength lesser than a bond strength of the sensitive adhesive (22)” which suggests that the holographic layer (23) would be uniformly bonded by the sensitive adhesive to the applied substrate. Thus, the holographic layer (which is already structurally indefinite for the reasons detailed above) would not be destroyed “tamper evident” since the weaker adhesive is suggested to cleanly pull off (as opposed to destruction of the layer).
Ultimately, the actual description of the structure of Figure 4 only consists of two short paragraphs (0036-0037) and insufficiently describes either of the structure or operation of the label.
In claim 2, the term “preferably" renders the claim indefinite because it is unclear whether the limitation(s) following the phrase are part of the claimed invention. See MPEP § 2173.05(d).
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 and 6-9 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Banahan (US 2001/0035261).
In respect to claims 1 and 9, although impossible to ascertain the claimed structure for several reasons explained in the 35 USC 112(b) rejection above, Banahan discloses a label stock comprising: a substrate 10; a plurality of coating materials 11; a “sensitive” adhesive 16; a tamper evident holographic layer 15 (comprising a breakable metallic layer); and a release paper 17 (0017-0027; Fig. 1), wherein the release paper may contain a coat having release agents (e.g. paper coated with wax) (0026); the plurality of coating materials (forming a security feature) are formed on separate portions of the label (e.g. forming a checkerboard pattern (Fig. 4A-4B). The invention is shown upside down in its formation compared to the application, and thus viewing from the rear of the document would result in the reflective holographic layer 15 masking of the coating materials 11 (Fig. 1); the “cold foil adhesive” is impossible to ascertain, however given the language “used to stick metal fumes…and form said tamper evident holographic material” it will be construed as a lacquer, which is disclosed by Banahan at 14 (Fig. 1) which is known to not have strong adhesive compared to an adhesive for bonding (thus, the “cold foil adhesive” has a bond strength less than the “sensitive adhesive”
In respect to claims 6 and 7, Banahan discloses that the label stock is used in preventing counterfeiting e.g. via tamper evident destruction of layers (Abstract; Fig. 3), wherein it is applied to product (Fig. 4A); there is no disclosed printing on the front side of the substrate,.
In respect to claim 8, Banahan discloses that the “sensitive” adhesive is pressure sensitive or heat-activated (0026).
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 2-5 are rejected under 35 U.S.C. 103 as being unpatentable over Banahan (US 2001/0035261).
In respect to claim 2, Banahan discloses that the substrate is preferably polyester but may be any film. Biodegradable films are well known and it would have been obvious to choose a biodegradable film for ecological reasons since it has been held to be within the general skill of a worker in the art to select a known material on the basis of its suitability for the intended use as a matter of obvious design choice. In re Leshin, 125 USPQ 416.
In respect to claims 3-5, Banahan discloses that the coating materials (Security features) 11 may be fluorescent or else include other “special inks” readable with specialized readers (0018). Banahan does not teach use of all the particular inks claimed such as “thermochromic”, “taggant”, and “bi-chromic”, however these inks are all well known in the art. The claim would have been obvious because a particular known technique was recognized as part of the ordinary capabilities of one skilled in the art, namely, in Banahan any additional “special inks” in addition to the UV inks may be used, and the inks claimed are all general types of “special inks” well known to those of ordinary skill in the art.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to KYLE ROBERT GRABOWSKI whose telephone number is (571)270-3518. The examiner can normally be reached M-Th 8am-6pm.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Daniel Troy, can be reached at 571-270-3742. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/KYLE R GRABOWSKI/Primary Examiner, Art Unit 3637
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