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 .
Response to Amendment
Receipt is acknowledged of an amendment, filed 29 January 2026, which has been placed of record and entered in the file.
Status of the claims:
Claims 1-8 are pending.
Claims 1-8 are amended.
Specification and Drawings:
Amendments to the specification and drawings have not been submitted in the amendment filed 29 January 1016.
Claim Objections
Claims 1-8 are objected to because of the following informalities:
In claim 1, line 1, the numeral “1” identifying the claim number has been struck through. It appears that this is an editorial error, and this claim will be examined as claim “1”.
In claim 5, line 9, it appears that “second send” should be changed to --second end--.
Claim 8 is objected to as depending from claim “9”, which does not appear in the claim set. For examination purposes, claim 8 is considered to depend from claim 5.
Claims 2-4 and 6-7 depend from claims 1 and 5, and are likewise objected to.
Appropriate correction is required.
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 1-8 are rejected under 35 U.S.C. 103 as being unpatentable over Hagen (US Patent No. 5,855,434) in view of Ciani (US Patent No. 4,911,563).
With respect to claim 1, Hagen discloses A bag closure system for use with a bag having a front panel, an opposing back panel and an opening between the front panel and the back panel (label 10 for use with package P having first and second panels and opening at flap F, figs. 1, 2), comprising: a strip of material (label 10, figs. 2, 7) comprising: a top ply with a bottom surface that is coated with an adhesive (top sheet 14 has a bottom surface 26 coated with adhesive 38, 40, adhesive 38 may be applied to surface 26 of top sheet 14, fig. 4, col. 3, l. 21-49); a bottom ply with a bottom surface coated with an adhesive and a top surface that is partially coated with a release coating proximate to a first end (base sheet 12 having bottom side 18 with adhesive 34 and top side 16 which may be coated with an agent to facilitate release, fig. 4, col. 4, l. 33-48); wherein the bottom surface of the top ply is applied directly to the top surface of the bottom ply thereby releasably attaching the top ply to the bottom ply at the first end and non-releasably attaching the top ply to the bottom ply at a second end forming a hinge (top sheet 14 is applied directly to base sheet 12, releasably attached at adhesive 38, and non-releasably attached at adhesive 36 forming a hinge, figs. 2, 4, 5, col. 3, l. 10-49).
Hagen fails to disclose the bottom surface of the top ply is coated entirely with an adhesive, and the bottom surface of the top ply is laid flush against the top surface of the bottom ply.
Ciani discloses a bag closure system for use with a bag (figs. 2, 3, 4) including a bottom ply (base portion 19) adhered to the bag (adhesive 20), and a top ply (second member 21) having a bottom surface that is coated entirely with an adhesive such that the bottom surface of the top ply is laid flush against the top surface of the bottom ply (bottom surface has a less aggressive adhesive applied thereto to permit the user to peel back the second member 21 and open the jaws of the closure; since the surface is coated entirely, the bottom surface of the top ply is laid flush with the top surface of the bottom ply, fig. 8, col. 4, l. 30-35).
It 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 to modify the Hagen device to replace the bottom surface of the top ply coated with an adhesive with the bottom surface of the top ply coated entirely with an adhesive and the bottom surface of the top ply is laid flush against the top surface of the bottom ply as taught by Ciani, as the substitution of an art-recognized equivalent for releasably adhering one member to another. MPEP 2144.06 II.
With respect to claim 2, Hagen, as modified by Ciani, discloses a method of sealing a bag having a front panel, an opposing back panel and an opening between the front panel and the back panel using the system of Claim 1, comprising the steps of applying the bottom surface of the bottom ply to an exterior surface of the front panel at a point that is adjacent to the opening (base sheet 12 is adhered to the front panel, fig. 1); separating a portion of the top ply away from a portion of the bottom ply that is partially coated with the release coating revealing a portion of the bottom surface of the top ply (top sheet 14 is separated, base sheet 12 having top side 16 which may be coated with an agent to facilitate release, fig. 4, col. 4, l. 33-48); applying the portion of the bottom surface of the top ply to an exterior surface of the back panel (bottom surface of the top sheet 14 is applied to back panel of package P, figs. 3, 5).
With respect to claim 3, Hagen discloses the steps of folding a top edge of the opposing back panel over a top edge of the front panel before applying the portion of the bottom surface of the top ply to an exterior surface of the back panel (opening F is folded with back panel over front panel before top sheet 14 is applied to exterior of back panel, figs. 3, 5).
With respect to claim 4, Hagen discloses the step of applying a release coating to a corner of the bottom surface of the top ply proximate to the first end of the top ply (top sheet 14 may be coated with an agent to facilitate release, fig. 4, col. 4, l. 33-48). Hagen discloses that a release agent may be applied to the top sheet 14, and thus is considered to teach applying the release agent to any surface thereof, including the corners. Further, Hagen specifically discloses that the end section of top sheet 14 beyond adhesive 40 is to be left unadhered to provide a grip for the user (fig. 4, col. 3, l. 36-49).
With respect to claim 5, Hagen discloses a method of sealing a bag (package P, fig. 1) having a front panel, an opposing back panel and an opening between the front panel and the back panel (first and second panels and opening at flap F, fig. 2) comprising the steps of: coating a bottom side of a top ply of a strip of material with an adhesive (top sheet 14 has a bottom surface 26 coated with adhesive 38, 40, adhesive 38 may be applied to surface 26 of top sheet 14, fig. 4, col. 3, l. 21-49); partially coating a top surface of a bottom ply of the strip of material with a release coating (base sheet 12 may be coated with an agent to facilitate release, fig. 4, col. 4, l. 33-48); attaching the bottom surface of the top ply to the top surface of the bottom ply forming an assembled strip of material wherein a first portion of the top ply is non-releasably attached to the bottom ply and a second portion of the top ply is releasably attached to the bottom ply (top sheet 14 and base sheet 12 are releasably attached at adhesive 38, and non-releasably attached at adhesive 36, forming an assembled strip , fig. 7, col. 3, l. 10-49) and wherein a first end of the top ply and a first end of the bottom ply are aligned and flush against each other (a first end of the top sheet 14 and a first end of the base sheet 12 are aligned and flush against each other, at the non-releasably sealed end, fig. 5).
Hagen fails to disclose a second end of the top ply and a second end of the bottom ply are also aligned and lay flush against each other.
Ciani discloses a first end of the top ply and a first end of the bottom ply are aligned and flush against each other (at the non-releasably sealed end, fig. 8) and a second end of the top ply and a second end of the bottom ply are also aligned and lay flush against each other (bottom surface has a less aggressive adhesive applied thereto to permit the user to peel back the second member 21 and open the jaws of the closure; since the surface is coated entirely, the bottom surface of the top ply is laid flush with the top surface of the bottom ply, fig. 8, col. 4, l. 30-35).
It 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 to modify the Hagen device to replace the second end of the top ply and the second end of the bottom ply with the second end of the top ply and the second end of the bottom ply aligned and laying flush against each other as taught by Ciani, for ease of manufacture, and as the substitution of an art-recognized equivalent for releasably adhering one member to another. MPEP 2144.06 II.
With respect to claim 6, Hagen discloses removing the top ply from the portion of the bottom ply that is coated with a release coating (top sheet 14 is separated from base sheet 12 having release coating, fig. 2, col. 3, l. 21-49; col. 4, l. 33-48); folding a top edge of the back panel over a top edge of the front panel (top edge of back panel is folded over top edge of front panel, figs. 3, 5); applying the bottom surface of the top ply that is no longer attached to the bottom ply to an exterior surface of the back panel thereby attaching the front panel to the back panel with the top ply (bottom surface of top sheet 14 is applied to back panel of package P, figs. 3, 5).
With respect to claim 7, Hagen discloses providing the top ply with a flexible portion that serves as a hinge when the top ply is partially removed from the bottom ply (top sheet 14 is a flexible film, top sheet 14 and base sheet 12 are releasably attached at adhesive 38, and non-releasably attached at adhesive 36 forming a hinge, figs. 2, 5).
With respect to claim 8, Hagen discloses the step of applying a release coating to a corner of the bottom surface of the top ply (top sheet 14 may be coated with an agent to facilitate release, fig. 4, col. 4, l. 33-48). Hagen discloses that a release agent may may be applied to the top sheet 14, and thus is considered to teach applying the release agent to any surface thereof, including the corners. Further, Hagen specifically disclose that the end section of top sheet 14 beyond adhesive 40 is to be left unadhered to provide a grip for the user (fig. 4, col. 3, l. 36-49).
Response to Arguments
With respect to the objection to claims 3-4 and 6-8, the claim amendments and applicant’s arguments have been fully considered and are persuasive. The objection is hereby withdrawn. The current amendment has necessitated a new claim objection, above.
With respect to the rejection of claims 2-3 and 6 under 35 U.S.C. 112(b), the claim amendments and applicant’s arguments have been fully considered and are persuasive. The rejection is hereby withdrawn.
With respect to the rejection of claims 1-8 under 35 U.S.C. 102(a)(1) over Hagen (US Patent No. 5,855,434), Applicant’s arguments have been considered but are moot because the new ground of rejection does not rely on any reference applied in the prior rejection of record for any teaching or matter specifically challenged in the argument.
Insofar as applicant’s arguments are still relevant to any references being applied, applicant argues that the Hagen label includes adhesives added to specific areas separated by areas that have no adhesive, that the Hagen label is not practical to manufacture due to flagging in use in a high speed machine, and that the Hagen label could not be provided on rolls since during manufacture the adhesive would be exposed.
In response to applicant's argument that the references fail to show certain features of the invention, it is noted that the features upon which applicant relies (i.e., that the Hagen label is not practical to manufacture due to flagging in use in a high speed machine, and that the Hagen label could not be provided on rolls since during manufacture the adhesive would be exposed) are not recited in the rejected claim(s). Although the claims are interpreted in light of the specification, limitations from the specification are not read into the claims. See In re Van Geuns, 988 F.2d 1181, 26 USPQ2d 1057 (Fed. Cir. 1993). Claims 1-8 neither recite nor require manufacture in a high speed machine or providing the labels on rolls.
Applicant argues that Hagen discloses a label with a top sheet that extends beyond the base sheet. In response, Ciani discloses a label with first and second ends of the top ply aligned with first and second ends of the bottom ply.
Applicant argues that the superiority of the claimed product is evidenced by its commercial success, that millions of the labels have been manufactured and sold, and that the sheer volume of sales before patent protection exists are very strong evidence that the differences of the Hagen reference are significant enough to warrant patent protection. Applicant provides photographs, and an email regarding a number of ordered “smoothpeels”.
In response, applicant’s arguments are not commensurate in scope with the claims.
An affidavit or declaration attributing commercial success to a product or process "constructed according to the disclosure and claims of [the] patent application" or other equivalent language does not establish a nexus between the claimed invention and the commercial success because there is no evidence that the product or process which has been sold corresponds to the claimed invention, or that whatever commercial success may have occurred is attributable to the product or process defined by the claims. Ex parte Standish, 10 USPQ2d 1454, 1458 (Bd. Pat. App. & Inter. 1988). MPEP 716.03(a) I.
Further, applicant has provided no evidence that commercial success must be attributable to the claimed invention.
In considering evidence of commercial success, care should be taken to determine that the commercial success alleged is a result of the invention claimed, in a marketplace where the consumer is free to choose on the basis of objective principles, and that such success is not the result of heavy promotion or advertising, shift in advertising, consumption by purchasers normally tied to applicant or assignee, or other business events extraneous to the merits of the claimed invention, etc. In re Mageli, 470 F.2d 1380, 176 USPQ 305 (CCPA 1973) (conclusory statements or opinions that increased sales were due to the merits of the invention are entitled to little weight); In re Noznick, 478 F.2d 1260, 178 USPQ 43 (CCPA 1973). See also UCB, Inc. v. Actavis Labs. UT, Inc., 65 F.4th 679, 696, 2023 USPQ2d 448 (Fed. Cir. 2023) (where market entry by others was precluded due to blocking patents, the inference of non-obviousness of the asserted claims from evidence of commercial success may be weak). [AltContent: rect]
In ex parte proceedings before the Patent and Trademark Office, an applicant must show that the claimed features were responsible for the commercial success of an article if the evidence of nonobviousness is to be given any weight. See In re Huang, 100 F.3d 135, 140, 40 USPQ2d 1685, 1690 (Fed. Cir. 1996) (Inventor’s opinion as to the purchaser’s reason for buying the product is insufficient to demonstrate a nexus between the sales and the claimed invention.). Merely showing that there was commercial success of an article which embodied the invention is not sufficient. Ex parte Remark, 15 USPQ2d 1498, 1502-02 (Bd. Pat. App. & Inter. 1990). Compare Demaco Corp. v. F. Von Langsdorff Licensing Ltd., 851 F.2d 1387, 7 USPQ2d 1222 (Fed. Cir. 1988) (In civil litigation, a patentee does not have to prove that the commercial success is not due to other factors. "A requirement for proof of the negative of all imaginable contributing factors would be unfairly burdensome, and contrary to the ordinary rules of evidence."). MPEP 716.03(b) I.
Further, applicant has provided no evidence of adequately defined sales figures.
Gross sales figures do not show commercial success absent evidence as to market share, Cable Electric Products, Inc. v. Genmark, Inc., 770 F.2d 1015, 226 USPQ 881 (Fed. Cir. 1985) (overruled on other grounds by Midwest Indus., Inc. v. Karavan Trailers, Inc., 175 F.3d 1356, 50 USPQ2d 1672 (Fed. Cir. 1999)), or as to the time period during which the product was sold, or as to what sales would normally be expected in the market, Ex parte Standish, 10 USPQ2d 1454 (Bd. Pat. App. & Inter. 1988). MPEP 716.03(b) IV.
Affidavit or Declaration under 37 CFR 1.132
The affidavit under 37 CFR 1.132 filed 29 January 2026 is insufficient to overcome the rejection of claims 1-8 based upon 35 U.S.C. 102(a) over Hagen as set forth in the last Office action because: the showing is not commensurate in scope with the claims.
The affidavit refers only to the system described in the above referenced application and not to the individual claims of the application. The affidavit has been fully considered but is not persuasive.
Conclusion
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any nonprovisional extension fee (37 CFR 1.17(a)) pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the mailing date of this final action.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Linda J. Hodge whose telephone number is (571)272-0571. The examiner can normally be reached Monday-Friday 8:00-5:00.
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, Shelley Self can be reached at (571) 272-4524. 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.
/LINDA J. HODGE/Examiner, Art Unit 3731