DETAILED ACTION
Election/Restrictions
Claims 1-13 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected invention, there being no allowable generic or linking claim.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 07/28/26.
The applicant elected Group II and Species F (Fig. 9). The claims filed with the election (07/28/26) were not drawn to this species. The applicant filed new claims on 08/11/26. Claims 17, 18, and 20, are withdrawn.
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 14-16 and 19 are rejected under 35 U.S.C. 103 as being unpatentable over Mahn, Jr. (US 6,224,958) in view of Franer (US 2,984,596).
It is noted from the outset that the claims contain several instances of product-by-process limitations e.g. “digitally printed” and “non-digitally printed” and although product-by-process claims are limited by and defined by the process, determination of patentability is based on the product itself. The patentability of a product does not depend on its method of production. If the product in the product-by-process claim is the same as or obvious from a product of the prior art, the claim is unpatentable even though the prior product was made by a different process.” In re Thorpe, 777 F.2d 695, 698, 227 USPQ 964, 966 (Fed. Cir. 1985). Furthermore, several instances of relative orientation such as “disposed over” which are only functional limitations i.e. if the prior art has the same adjacent structures and can be orientated in the claimed manner (flipped) it reads on the claim.
In respect to claim 14, Mahn, Jr. discloses a heat transfer label comprising, in order: a protective layer 16; a printed layer 15 (although “digital” is not required, a barcode readily infers digital printing); and a second layer 12 comprising rubber, such that the printed layer 15 is between the protective layer 16 and the second layer 12 (Col. 2, 23-37; Fig. 2).
Mahn, Jr. further discloses a carrier sheet 20, however it as adhered to the adhesive, rather than contraposed as claimed, however, Franer teaches a very similar label for application to rubber surfaces, also having a rubber layer. Franer teaches the carrier layer 11 contraposed to the (adhesive) rubber 14. It would have been obvious to one of ordinary skill in the art at the effective filing date of the present invention to modify the carrier layer taught in Mahn, Jr. to be contraposed to the adhesive as taught by Franer to allow self-winding of the label into a roll, effectively using adjacent labels to provide the carrier layer protecting the adhesive while wound (Fig. 1), which is well known in the art. The provision of the carrier layer contraposed to the rubber layer would result in the protective layer between the carrier layer and the carrier layer. In both Mahn, Jr. and Franer the heat transfer label are configured to separate from the carrier layer to a rubber article during application of heat and pressure. Franer also teach using plastic (regenerated cellulose) as the material (Col. 2, 36-38).
In respect to claim 15, Mahn, Jr. discloses that the printed layer 15 is visible through the protective layer after adhesion, since the layer is clear (Col. 3, 46-55).
In respect to claim 16, Mahn, Jr. discloses an adhesive layer 18 disposed on the second layer 12.
In respect to claim 19, Mahn, Jr. does not disclose that the rubber is screen printing on, however, as previously mentioned, this amounts to a product-by-process limitation. Its use as a “backup layer” does not provide any structural distinction. The rubber is applied behind several layers and thus forms a “backup layer”.
Claims 21-33 are rejected under 35 U.S.C. 103 as being unpatentable over Mahn, Jr. (US 6,224,958) in view of Franer (US 2,984,596) and Amano et al. (US 6,357,941).
In respect to claims 21, 23, 26, Mahn, Jr. in view of Franer substantially disclose the claim for the reasons stated above, however they do not disclose a “surface treatment layer” between the protective layer and the printed layer. However, Amano teach a label which is further provided with an ink-receptive resin (“primer”/”coating”), which functions as a surface treatment. It would have been obvious to provide the printed ink layer taught in Mahn, Jr. and Franer with a surface treatment layer underneath in view of Amano et al. to improve fixing of the ink to a substrate with good durability (Col. 3, 57-61). Regarding the position of the surface treatment, it would be obvious to position it between the protective layer and the ink, depending on the direction of printing i.e. if printed on the protective layer.
In respect to claim 22 and 27, Mahn, Jr. discloses the structure (product-by-process has been previously addressed).
In respect to claim 24, Mahn, Jr. discloses many types of rubber, and that the rubber is vulcanized, many examples being black (Col. 2, 37-51).
In respect to claim 25, Mahn, Jr. discloses that the rubber or vulcanized article that the label applied to is e.g. a tire (Col. 2, 52-56). It is noted, however, that this claim is not within the scope of the structure, only an object related to intended use.
In respect to claims 28-33, Mahn, Jr. in view of Franer and Amano et al. teach the claimed invention for the reasons detailed above, including the indica including bar codes and a surface treatment layer (which changes surface roughness to improve adhesion).
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. Poschel (US 2,646,379), Cassidy et al. (US 2021/0312253), and Tanrikulu et al. (US 2015/0122410) disclose similar inventions.
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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