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 .
Election/Restrictions
Applicant’s election of Group I Claims 1-16 in the reply filed on 05/04/2026 is acknowledged. Because applicant did not distinctly and specifically point out the supposed errors in the restriction requirement, the election has been treated as an election without traverse (MPEP § 818.01(a)). Claims 17-20 are withdrawn as non-elected invention.
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.
Claim 1, 3, 7, 9, 11-13 and 15 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Maule et al. (US 2018/0322811 A1).
Claim 1: Maule teaches a label 400 teaches a paper facestock 406, a second layer 418, a first layer 416 and an adhesive 412 in the order thereof (Fig. 4 and [0053]), wherein the first layer 416 comprises metallic flakes as particulates [0055]. The paper facestock 406 meets the claimed label substrate and the first layer 416 meets the claimed light-blocking layer. Maule teaches the metallic flakes are used to increase opacity [0055].
Claim 3: It is interpreted that the first layer 416 is a magnetizable material because of the present of the metal flakes.
Claim 7: Maule teaches the label 400 further comprises an indicia-accepting layer 214 on the paper facestock 406 on a surface opposite the second layer 418, wherein the indicia-accepting layer 214 can be any of those known in the art to allow acceptance of ink-jet ink, laser toner, or hand-held writing instrument markings (Fig. 2, Fig. 4 and [0069]). The markings meet the claimed ink layer.
Claim 9: The indicia-accepting layer 214 of Maule meets the claimed white ink layer.
Claims 11 and 13: Maule teaches the label 400 has an L* value of 95.0 {instant claim 13} (Table and [0071]) which is within the claimed range of greater than or equal to 80 and the claimed range of greater than or equal to 88.
Claim 12: Maule teaches the label 400 has an opacity 99.8% (Table and [0071]) which is within the claimed range of greater than or equal to 98%.
Claim 15: Maule teaches the label 400 has a higher L* value than an otherwise identical label, (i.e., Labels 1-4) (see Table).
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 2 and 4-6 are rejected under 35 U.S.C. 103 as being unpatentable over Maule et al. (US 2018/0322811 A1) as applied to claim 1 above, and further in view of Fan et al. (2010/0092759 A1).
Maule teaches the claimed invention as set forth above.
Claim 2: Maule teaches the metallic flakes are used to increase opacity [0055]. Maule does not teach the type of metal flakes. However, Fan teaches a protective sheet use of aluminum flakes to enhance opacity (abstract and [0013]). Maule and Fan are analogous art because they are from the same field of endeavor that is the opaque film art. It would have been obvious to a person of ordinary skill in the art before the effective filing date of the invention to combine the aluminum flakes of Fan with the invention of Maule, and the motivation for combining would be to enhance the opacity of the label/film.
Claims 4 and 5: Fan teaches the particle size of the particulate can be 0.1-10 µm {instant claim 5} [0012], and this range overlaps with the claimed 4-15 µm range and the claimed approximately 6 µm.
Claims 4-6: Fan teaches in another embodiment use of particles having nonuniform size including a range of 0.1-20 µm {instant claims 5 and 6} [0090], and this range overlaps with the claimed 4-15 µm range, the claimed approximately 6 µm and the claimed approximately 11 µm.
Claims 8 and 10 are rejected under 35 U.S.C. 103 as being unpatentable over Maule et al. (US 2018/0322811 A1) as applied to claims 1 and 7 above, and further in view of Erdodi et al. (US 2017/0233595 A1).
Maule teaches the claimed invention as set forth above.
Claim 8: Maule does not teach overprint varnish. However, Erdodi teaches an overprint varnish applied over a printed image [0041]. The overprint varnish meets the claimed varnish layer. Maule and Erdodi are analogous art because they are from the same field of endeavor that is the inkjet recoding medium art. It would have been obvious to a person of ordinary skill in the art before the effective filing date of the invention to combine the overprint varnish of Erdodi with the invention of Maule, and the motivation for combining would be, as Erdodi suggested, to form high vibrancy and water resistance images [0042].
Claim 10: Erdodi does not teach duplicating the overprint varnish. However, it would have been obvious to one having ordinary skill in the art before the effective filing date of the invention to duplicate the overprint varnish, since it has been held that a mere duplication of the essential working parts of an article involves only routine skill in the art. St. Regis Paper Co. v. Bemis Co., 193 USPQ 8. The outermost overprint varnish meets the claimed varnish layer, and the other overprint varnish meets the claimed second label substrate.
Claim 14 is rejected under 35 U.S.C. 103 as being unpatentable over Maule et al. (US 2018/0322811 A1) as applied to claim 1 above, and further in view of Tsuzawa (2005/0127236 A1).
Maule teaches the claimed invention as set forth above.
Claim 14: Maule does not teach use of a crystal paper as the paper facestock. However, Tsuzawa teaches a support made of a crystal paper ([0006] and [0060]). Maule and Tsuzawa are analogous art because they are from the same field of endeavor that is the printing sheet or film art. It would have been obvious to a person of ordinary skill in the art before the effective filling date of the invention to combine the crystal paper of Tsuzawa with the invention of Maule, and the motivation for combining would be, as Tsuzawa suggested, to provide a label having high strength and resistance to breakage [0006].
Claim 16 is rejected under 35 U.S.C. 103 as being unpatentable over Maule et al. (US 2018/0322811 A1) as applied to claim 1 above.
Maule teaches the claimed invention as set forth above.
Claim 16: It has been held that the recitation that an article is “configured to be” performing a function is not a positive limitation but only requires the ability to so perform. It does not constitute a limitation in any patentable sense. In re Hutchison, 69 USPQ 138.
Correspondence
Any inquiry concerning this communication or earlier communications from the examiner should be directed to BETELHEM SHEWAREGED whose telephone number is (571)272-1529. The examiner can normally be reached Monday -Friday 7am-4:30pm.
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, Mark Ruthkosky can be reached at 571-272-1291. 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.
BS
July 10, 2026
/BETELHEM SHEWAREGED/
Primary Examiner
Art Unit 1785
Prosecution Insights