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 .
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.
Priority
Receipt is acknowledged of certified copies of papers required by 37 CFR 1.55.
Information Disclosure Statement
The information disclosure statement (IDS) submitted on 3/5/2025 is in compliance with the provisions of 37 CFR 1.97. Accordingly, the information disclosure statement is being considered by the examiner.
Drawings
The drawings are objected to under 37 CFR 1.83(a). The drawings must show every feature of the invention specified in the claims. Therefore, the notches formed at both side edge portions extending in the longitudinal direction of the heat-resistant substrate (claim 3) and perforations formed over both side edge portions extending in the longitudinal direction of the heat-resistant substrate must be shown or the feature(s) canceled from the claim(s) (claims 3 and 4). No new matter should be entered. (It is noted that the Figures illustrate perforations (Fig. 1) and notches (Fig. 5), however the Figures do not illustrate the perforations and notches extend in the longitudinal direction (L) of the heat-resistant substrate.)
Corrected drawing sheets in compliance with 37 CFR 1.121(d) are required in reply to the Office action to avoid abandonment of the application. Any amended replacement drawing sheet should include all of the figures appearing on the immediate prior version of the sheet, even if only one figure is being amended. The figure or figure number of an amended drawing should not be labeled as “amended.” If a drawing figure is to be canceled, the appropriate figure must be removed from the replacement sheet, and where necessary, the remaining figures must be renumbered and appropriate changes made to the brief description of the several views of the drawings for consistency. Additional replacement sheets may be necessary to show the renumbering of the remaining figures. Each drawing sheet submitted after the filing date of an application must be labeled in the top margin as either “Replacement Sheet” or “New Sheet” pursuant to 37 CFR 1.121(d). If the changes are not accepted by the examiner, the applicant will be notified and informed of any required corrective action in the next Office action. The objection to the drawings will not be held in abeyance.
Claim Objections
Claims 1, 13 and 14 are objected to because of the following informalities:
Claims 1, 13 and 14 contain acronyms (e.g. IC, RFID), however does not provide the full names. If the applicant is to claim the acronym, the full name should be referenced at least once within the claims in parentheses (e.g. radio frequency identification (RFID)).
Claim 14 recites the limitation "the same plane of the adherence in the vicinity” There is insufficient antecedent basis for these limitations (“the same plane” and “the vicinity”) in the claim. Suggested language is "a same plane of the adherence in a vicinity”.
Appropriate correction is required.
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 1-14 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.
Claims 1, 13 and 14 recite “a second adhesive layer provided on the first portion to be attached to an adherend and having heat resistance”. Although this same recitation is in para [0049] of the specification, the specification does not appear to describe what an adhesive layer that has heat resistance could be. The specification fails to provide any examples and therefore, one of ordinary skill in the art cannot ascertain what a heat resistant adhesive layer would encompass, especially since there is no temperature range with respect the adhesive layer being heat-resistant to, nor any specific material described.
Claim 12 recites “the first adhesive layer has heat resistance”. The specification does not appear to describe what an adhesive layer that has heat resistance could be. The specification fails to provide any examples and therefore, one of ordinary skill in the art cannot ascertain what a heat resistant adhesive layer would encompass, especially since there is no temperature range with respect the adhesive layer being heat-resistant to, nor any specific material described.
Claims 3 and 6 recite “a pair of notches formed at both side edge portions extending in the longitudinal direction of the heat-resistant substrate”. Claims 4 and 7 recite “a perforation formed over both side edge portions extending in the longitudinal direction of the heat-resistant substrate.” It is noted that specification describes in paras [0078]-[0080]: “[0078] The pair of notches 22, 23 facilitate bending of the heat-resistant substrate 10 at the positions corresponding to the boundary portion 21 on the base point portion 11 side of the first adhesive layer 16. [0079] The heat-resistant substrate 10 is formed with a perforation M1 at a position corresponding to the boundary portion 21on the base point portion11 side of the first adhesive layer 16. The perforation M 1 is formed over both the side edge portions 10C, 10D extending in the longitudinal direction of the heat-resistant substrate 10. That is, the perforation M1 is formed over the width direction W of the heat-resistant substrate 10. [0080] Both the perforation M1 and the pair of notches 22, 23 facilitate the bending of the heat-resistant substrate 10 at the positions corresponding to the boundary portion21 on the base point portion11 side of the first adhesive layer 16“. These paragraphs are with respect to Figs. 1 and 5. However, the Figures fail to illustrate the perforation/notches being in a longitudinal direction (L) of the heat-resistant substrate. Instead, the Figures illustrate perforation/notches being in a width direction of the heat-resistant substrate. As such, the specification does not appear to describe a working embodiment of how the RFID label functions/is folded when the perforation/pair of notches extend in a longitudinal direction of the heat-resistant substrate.
Claims not specifically addressed fail to comply with the written description requirement due to their dependency.
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 1-14 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.
Claims 1, 13 and 14 recite “a second adhesive layer provided on the first portion to be attached to an adherend and having heat resistance”, and Claim 12 recites “the first adhesive layer has heat resistance”. It is not clear what the applicant deems as an adhesive having “heat-resistance”. The claim, nor the specification, do not provide for any examples of what an adhesive that is heat-resistant would be. There is no way to determine the metes and bounds of this limitation. The term “heat-resistant” considered a relative term which renders the claim indefinite. The term “heat-resistant” is not defined by the claim, the specification does not provide a standard for ascertaining the requisite degree, and one of ordinary skill in the art would not be reasonably apprised of the scope of the invention. For example, the claim nor the specification describe a temperature range as to what the adhesive layer would be resistant to.
Claims 3, 4, 6 and 7 recite “both side edge portions”. It is unclear what edge portions the applicant is referring to. Please clarify.
Claims not specifically addressed are indefinite due to their dependency.
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.
Claim(s) 1, 2, 4, 8, 9, 12 and 13 is/are rejected under 35 U.S.C. 103 as being unpatentable over Bohn (DE 10136502) in view of Fujiki et al. (US 2004/0262404) and Schroer (US 11,928,534).
With respect to claims 1 and 12, Bohn discloses a radio frequency identification (RFID) label comprising:
a substrate that is formed in a band shape, has a first portion (7) and a second portion (3, 4, 5) divided by a base point portion (11) intersecting a longitudinal direction and extending in a width direction ([0035], Figs. 1-5);
an antenna and an integrated circuit (IC) chip connected to the antenna that are provided in the second portion ([0005], [0034]);
a first adhesive layer (adhesive 6 of section 5) provided on the second portion ([0035], Fig. 2); and
a second adhesive layer (adhesive 6 of section 7) provided on the first portion to be attached to an adherend (13) ([0035], [0036]),
wherein a length of the second portion (3, 4, 5) in the longitudinal direction is formed to be larger than a length of the first portion (7) in the longitudinal direction (Fig. 2).
Bohn fails to expressly disclose the substrate being a heat-resistant substrate that has heat resistance. Bohn also fails to expressly disclose the first and second adhesive layers have heat resistance.
Bohn teaches the substrate being made of plastic and label is used for luggage tags ([0006], [0035]). It is well known in the art for RFID luggage tags to have substrate material made of polypropylene or polyethylene terephthalate, as taught by Fujiki et al. ([0039]). Fujiki et al. additionally teaches it is well known in the art for an adhesive to for the luggage tag to be made an acrylic adhesive ([0078]).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the substrate to be made of polypropylene or polyethylene terephthalate in order to provide a substrate that has a large tearing strength. Since the applicant has listed these same materials as being heat-resistant in para. [0039] of the applicant’s specification, the modified substrate of Bohn would necessarily have a same property of being heat-resistant. See MPEP 2112.01(II) – if the composition is physically the same, it must have the same properties. Further, 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. In re Leshin, 125 USPQ 416.
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the first and second adhesive layers to be made of an acrylic adhesive in order to provide a strong adhering-type adhesive. By modifying the second adhesive layer to be an acrylic adhesive, the modified second adhesive layer would necessarily have a property of being heat-resistant, as evidenced by Schroer (col. 4, lines 56-65). See MPEP 2112.01(II) – if the composition is physically the same, it must have the same properties. Further, 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. In re Leshin, 125 USPQ 416.
With respect to claim 2, the modified Bohn discloses the first adhesive layer is disposed on a first surface of the heat-resistant substrate on an end portion side of the second portion opposite to the base point portion, and the second adhesive layer is disposed on at least a part of a second surface opposite to the first surface (adhesive 6 of section 5 is disposed on a first surface of the heat-resistant substrate (surface of the heat-resistant substrate of section portion 5) on an end portion side of the second portion (5) opposite to the base point portion (11), and the adhesive layer 6 of section 7 is disposed on at least a part of the a second surface (surface of the heat-resistant substrate of section 7) opposite, with respect to the base point portion 11, to the first surface (the surface of the heat-resistant substrate of section 5) (Bohn: Figs. 1 and 2).
With respect to claim 4, as best understood, the modified Bohn discloses the heat-resistant substrate has, at a position corresponding to a boundary portion on a base point portion side of the first adhesive layer, a perforation (10) extending between two longitudinal edges of the heat-resistant substrate (Bohn: [0035], Fig. 2).
With respect to claim 8, the modified Bohn discloses the antenna and the IC chip are formed on a first surface of the heat-resistant substrate at the second portion (Bohn: Fig. 2).
With respect to claim 9, the modified Bohn discloses the antenna and the IC chip are formed on a second surface of the heat-resistant substrate at the second portion (Bohn: Fig. 2) (The examiner notes that “second surface” is merely a title for a surface since there is no reference with respect to what a “second surface” is).
With respect to claim 13, Bohn discloses a method of using a radio frequency identification (RFID) label, the RFID label including:
a substrate that is formed in a band shape, has a first portion (7) and a second portion (3, 4, 5) divided by a base point portion (11) intersecting a longitudinal direction and extending in a width direction ([0035], Figs. 1-5);
an antenna and an integrated circuit (IC) chip connected to the antenna that are provided in the second portion ([0005], [0034]);
a first adhesive layer (adhesive 6 of section 5) provided on the second portion ([0035], Fig. 2); and
a second adhesive layer (adhesive 6 of section 7) provided on the first portion to be attached to an adherend (13) ([0035], [0036], Fig. 5),
wherein a length of the second portion (3, 4, 5) in the longitudinal direction is formed to be larger than a length of the first portion (7) in the longitudinal direction (Fig. 2);
the method comprising: folding at the base point portion, overlapping an end portion of the second portion and an end portion of the first portion, and bonding the second portion and the first portion by using the first adhesive layer (Figs. 1, 4 and 5).
Bohn fails to expressly disclose the substrate being a heat-resistant substrate that has heat resistance. Bohn also fails to expressly disclose the second adhesive layer has heat resistance.
Bohn teaches the substrate being made of plastic and label is used for luggage tags ([0006], [0035]). It is well known in the art for RFID luggage tags to have substrate material made of polypropylene or polyethylene terephthalate, as taught by Fujiki et al. ([0039]). Fujiki et al. additionally teaches it is well known in the art for an adhesive to for the luggage tag to be made an acrylic adhesive ([0078]).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the substrate to be made of polypropylene or polyethylene terephthalate in order to provide a substrate that has a large tearing strength. Since the applicant has listed these same materials as being heat-resistant in para. [0039] of the applicant’s specification, the modified substrate of Bohn would necessarily have a same property of being heat-resistant. See MPEP 2112.01(II) – if the composition is physically the same, it must have the same properties. Further, 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. In re Leshin, 125 USPQ 416.
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the second adhesive layer to be made of an acrylic adhesive in order to provide a strong adhering-type adhesive. By modifying the second adhesive layer to be an acrylic adhesive, the modified second adhesive layer would necessarily have a property of being heat-resistant, as evidenced by Schroer (col. 4, lines 56-65). See MPEP 2112.01(II) – if the composition is physically the same, it must have the same properties. Further, 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. In re Leshin, 125 USPQ 416.
Claim(s) 3 is/are rejected under 35 U.S.C. 103 as being unpatentable over Bohn modified by Fujiki et al. and Schroer as applied to claim 1 above, and further in view of Ritamaki et al. ES 2303035).
With respect to claim 3, as best understood, the modified Bohn addresses all the limitations of claim 1, and further discloses the heat-resistant substrate has, at a position corresponding to a boundary portion on a base point portion side (10) of the first adhesive layer (adhesive 6 of section 5), a crease (10) extending between two longitudinal edges of the heat-resistant substrate (Bohn: [0035], [0036], Fig. 2).
However, the modified Bohn fails to expressly disclose the crease being a pair of notches.
Nevertheless, Bohn teaches the crease being formed by a perforation or other material weakening (Bohn: [0035], [0036], Figs. 1 and 2). It is well known in the art to fold a label via perforations or notches to improve fold operating characteristics ([0015]).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to try to modify the crease of Bohn to include notches in order to predictably improve the fold’s operating characteristics.
Claim(s) 10 and 11 is/are rejected under 35 U.S.C. 103 as being unpatentable over Bohn modified by Fujiki et al. and Schroer as applied to claim 1 above, and further in view of Tuttle (US 2008/0316035).
With respect to claims 10 and 11, the modified Bohn addresses all the limitations of claim 1.
However, the modified Bohn fails to expressly disclose the antenna and the IC chip are provided on an inlay substrate, and the inlay substrate is disposed on a first surface of the heat-resistant substrate at the second portion. The modified Bohn also fails to expressly disclose the antenna and the IC chip are provided on an inlay substrate, and the inlay substrate is disposed on a second surface of the heat-resistant substrate at the second portion.
Tuttle teaches a finite number of predictable solutions of attaching an IC chip and antenna to a substrate. More specifically, Tuttle teaches it is well known in the art for an RFID label to manufacture an IC chip and antenna directly on a substrate, or to provide an antenna and IC chip on an inlay substrate, and the inlay substrate is disposed on a first surface of a substrate ([0026]).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to try to modify the antenna and the IC chip to be provided on an inlay substrate, and dispose the inlay substrate on a first surface of the heat-resistant substrate at the second portion, in order to provide an alternative method of providing the IC chip and antenna to the heat-resistant substrate depending on the desired preference, e.g. made as an inlay or a preassembled type, as taught by Tuttle ([0028]).
The examiner notes that “a first surface” and “a second surface” are merely titles of a surface since the applicant has not provided any reference with respect to the surface(s). More specifically, both claims are dependent from claim 1, and regarding “a second surface”, the applicant has not recited a first surface nor a reference point for it, as such “a second surface” can be considered the same as “a first surface”.
Examiner’s Remarks
With respect to claim(s) 5-7 and 14, the examiner makes no prior art rejection. However, these claims are not allowable pursuant to the 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, rejections and 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, rejections.
Regarding claim 14, prior art fails to teach or reasonably suggest, either singly or in combination, folding at the base point portion, and attaching the first adhesive layer provided on the second portion and the second adhesive layer provided on the first portion to a same plane of the adherend in a vicinity of an end portion of the first portion, in addition to the other limitations of the claim.
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/SUEZU ELLIS/Primary Examiner, Art Unit 2876