Notice of Pre-AIA or AIA Status
The present application is being examined under the pre-AIA first to invent provisions.
Continued Examination Under 37 CFR 1.114
A request for continued examination under 37 CFR 1.114, including the fee set forth in 37 CFR 1.17(e), was filed in this application after final rejection. Since this application is eligible for continued examination under 37 CFR 1.114, and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114. Applicant's submission filed on 9/24/25 has been entered.
Claim Rejections - 35 USC § 103
The following is a quotation of pre-AIA 35 U.S.C. 103(a) which forms the basis for all obviousness rejections set forth in this Office action:
(a) A patent may not be obtained though the invention is not identically disclosed or described as set forth in section 102, if the differences between the subject matter sought to be patented and the prior art are such that the subject matter as a whole would have been obvious at the time the invention was made to a person having ordinary skill in the art to which said subject matter pertains. Patentability shall not be negatived by the manner in which the invention was made.
The factual inquiries set forth in Graham v. John Deere Co., 383 U.S. 1, 148 USPQ 459 (1966), that are applied for establishing a background for determining obviousness under pre-AIA 35 U.S.C. 103(a) 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 27 and 30-33 are rejected under pre-AIA 35 U.S.C. 103(a) as being unpatentable over Lamm (D622, 763) in view of Galm (US 5,884,770), Slater (US 6,886,685), Offenhauer (US 6,112,441) Stich (US 5,760,381), Clark (US 6,732,459), Cole (US 7,490,720) and Glosh (US 7,654,577).
Regarding claims 27 and 31, Lamm (figs. 1-8) discloses a holder for a transaction card comprising:
a forming sheet, the sheet initially having an upper first portion (i.e., portion with a bow), a second portion below the first portion, a third portion (i.e., portion with two curved cutouts) below the second portion,
the front of the third portion including an area to which the transaction card is securable;
a hanging tag (see fig. 2) attached to the back side of the second portion, the hanging tag comprising an upper portion and a lower portion, the lower portion attached to the back side of the second portion of the sheet, the upper portion comprising a peg hole for hanging the notepad and gift card in a transaction card display;
each of the portions having a front and back side;
wherein the holder is configured to be disposed in a concealed state wherein the third portion is folded up and over the front of the second portion thus sandwiching the card between the back face of the third portion and the back face of the second portion, and
the front of the first portion being folded over and configured to be received into a slot existing in the third portion to maintain the concealed state;
a ribbon disposed in the first portion, wherein the ribbon is configured to be grasped in removing the first portion from the concealed state thus opening the holder while the ribbon remains in a tied configuration.
Lamm fails to disclose a fourth portion below the third portion, wherein the front of the fourth portion is folded onto the front of the third portion and adhered to the front of the third portion, forming a reinforcing arrangement by folding so as to allow the holder to be die cut from a single forming sheet;
a notepad secured to the second portion configured for immediate enjoyment by a recipient;
the notepad and the gift card being both displayed to the recipient upon removal from the concealed state or upon opening;
a ribbon disposed through at least one aperture in the first portion; the ribbon configured to be pulled to disengage the top flap from the lateral slot;
wherein paper or material in the notepad provides customizable surface for receiving decorations, images, or messages to the recipient;
wherein when the holder is in the concealed state, the holder, notepad, and transaction card fit in a transaction card display; and
the hanging tag comprising an upper portion and a lower portion divided from each other by a line of perforations, the lower portion attached to the back side of the second portion of the sheet using permanent adhesive;
the main panel having a machine readable indicia printed on a first side, the machine readable indicia comprising a bar code for facilitation purchase of the holder; and
the notepad comprising a backer made of a rigid material, the backer adhered to a second side of the main panel.
However, Glam teaches a double-walled flap formed from two portions being adhered together; wherein a non-adhered face of the flap is configured to receive a transaction card (col. 2, lines 35-38 and col. 3, lines 58-61).
It would have been obvious to one of ordinary skill in the art at the time of the invention to have made the bottom flap of Lamm, double-walled so that portions can be cut from the inside of the panel without being visible at the exterior as taught by Glam in col. 3, lines 58-61. This would provide an astatically pleasing package that also minimizes damage to the card by accidental tearing of the cut.
Regarding the fourth portion being folded onto the front of the third portion, it would have been obvious to one of ordinary skill in the art at the time of the invention to have made the third and fourth portions integral since it has been held “that the use of a one-piece construction instead of the structure disclosed in [the prior art] would be merely a matter of obvious engineering choice.”); but see Schenck v. Nortron Corp.,713 F.2d 782, 218 USPQ 698 (Fed. Cir. 1983) MPEP 2144.04 V. B.
Regarding the bottom flap being double walled such that the top flap can be inserted without striking the transaction card, it is noted that the top flap of the modified device of Lamm is capable of being inserted without striking the transaction card.
Further, Slater teaches notepad being attached to a panel of an enclosure at note pad attachment site 40, 50, the panel being opposite to a panel having card holder site 30; wherein the notepad is sandwiched between the card and the front of the enclosure when the enclosure is in the concealed state or closed state; and
the notepad and the card being both displayed to the recipient upon removal from the concealed state or upon opening (fig. 1).
It would have been obvious to one of ordinary skill in the art at the time the invention was made to have provided the front side of the main panel of the modified Lamm (i.e., the side opposite to the card), a notepad, for continence as taught by Slater in col. Col. 1, lines 6-12. The convenience could for example be determining what gifts, offers, and/or rewards are remaining on the gift card.
Regarding the limitation “wherein paper or material in the notepad provides customizable surface for receiving decorations, images, or messages to the recipient”, it is noted that the notepad of the modified device of Lamm provides a surface capable of receiving a decorations, images, or messages to the recipient. It has been held that a recitation of the intended use of the claimed invention must result in a structural difference between the claimed invention and the prior art in order to patentably distinguish the claimed invention from the prior art. If the prior art structure is capable of performing the intended use, then it meets the claim.
Further, Offenhauer teaches a card having a ribbon passing through apertures (fig. 2).
It would have been obvious to one of ordinary skill in the art at the time of the invention to have provided the first panel of the modified device of Lamm apertures, for attaching the ribbon through the apertures as taught by Offenhauer, for decorative purposes. Also, it has been held that when a patent claims a structure already known in the prior art (i.e., attaching ribbons through apertures) that is altered by the mere substitution of one element for another known in the field, the combination must do more than yield a predictable result. KSR, 127 S.Ct. at 1740, 82 USPQ2d at 1395 (citing United States v. Adams, 383 U.S. 50-51, 148 USPQ 479, 483 (1966)).
It is noted that the ribbon (taught by Offenhauer) of the modified Lamm is capable of being pulled to disengage the top flap from the lateral slot.
Regarding the limitation “wherein when the holder is in the concealed state, the holder, notepad, and transaction card fit in a transaction card display”, Stich teaches mounting or fitting a card holder or envelope (in a transaction card display) for display at a point of purchase location (col. 8, lines 58-59).
It would have been obvious to one of ordinary skill in the art at the time the invention was made, to have mounted/fitted the transaction card of the modified Lamm in a transaction card display, for display at a point of purchase location, as taught by Stich in col. 8, lines 58-59. This would allow a purchaser to easily find and pick a card.
Regarding the hanging tag, Clark teaches at the time the invention was filed, it was well known to attach two panels with adhesive and to have provided a hanging tag a perforated line 38 (fig. 6 and col. 5, lines 8-10).
It would have been obvious to one of ordinary skill in the art at the time the invention was filed, to have attached the hanging tag of the modified Lamm with an adhesive and have provided the hanging tag, a perforated line, for detaching the tag after purchase by a consumer/sender of the holder and before giving the holder to a recipient as taught by Clark in col. 3, lines 3-7.
Regarding the barcode, Cole teaches a greeting card system having a barcode 107 on a panel (fig. 1c).
It would have been obvious to one of ordinary skill in the art at the time the invention was filed, to have provided the modified device of Lamm, a barcode, to manage the sale of the device and to provide for activation of the card, as taught by Cole in col. 2, lines 41-44.
Regarding the location of the barcode, It has been held that rearranging parts of an invention involves only routine skill in the art. In re Japikse, 86 USPQ 70.
Regarding the notepad having a backing material, Glosh teaches notepads having backing material 34 (fig. 2).
It would have been obvious to one of ordinary skill in the art at the time the invention was filed, to have provided the notepad of the modified Lamm, a backing material adhered to the panel, to add rigidity to prevent the notepad from flexing when writing on it.
Regarding claim 30, Galm further teaches a card held by two tabs T (fig.1).
It would have been obvious to one of ordinary skill in the art at the time of the invention to have held the card of the modified Lamm by two tabs, as further taught by Galm, since it has been held that when a patent claims a structure already known in the prior art (i.e., attaching a gift card by silts) that is altered by the mere substitution of one element for another known in the field, the combination must do more than yield a predictable result. KSR, 127 S.Ct. at 1740, 82 USPQ2d at 1395 (citing United States v. Adams, 383 U.S. 50-51, 148 USPQ 479, 483 (1966)).
Regarding claim 32-33, the modified Lamm fails to disclose the sheet comprising cardboard or card stock.
It would have been obvious to one having ordinary skill in the art at the time the invention was made to have made the modified device of Lamm, of cardboard or card stock, 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.
Claims 1, 8, 22, 25-26 and 35 are rejected under pre-AIA 35 U.S.C. 103(a) as being unpatentable over Lamm (D622,763) in view of Galm (US 5,884,770), Slater (US 6,886,685) and Offenhauer (US 6,112,441), Stich (US 5,760,381) and Clark (US 6,732,459) further in view of Crofton (US D421,457), Cole (US 7,490,720) and Glosh (US 7,654,577).
Regarding claims 1 and 26, Lamm (figs. 1-8) discloses a holder formed from a sheet, the holder comprising:
the sheet including a first portion (i.e., portion with a bow) , a second portion below the first portion, a third portion (i.e., portion with two curved cutouts) below the second portion, each of the portions having a front and back side;
a top flap formed from the first portion of the sheet;
a main panel formed from the second portion of the sheet;
a bottom flap formed from the third portion;
wherein the bottom flap is preconfigured to receive a transaction card; and
a lateral slot existing in the third potion being configured to receive an edge of the top flap;
a hanging tag (see fig. 2) attached to the back side of the second portion, the hanging tag comprising an upper portion and a lower portion, the lower portion attached to the back side of the second portion of the sheet, the upper portion comprising a peg hole for hanging the notepad and gift card in a transaction card display;
wherein the top flap and the bottom flap are selectively foldable over the main panel into a closed position in which: (i) the transaction card is enclosed between the bottom flap and the main panel when the bottom flap is folded up over the main panel, and, (ii) wherein the closed position is completed by the edge of the upper flap being received in the slot in the bottom flap;
a ribbon disposed in the top flap;
Lamm fails to disclose:
a fourth portion below the third portion, wherein the bottom flap is a double-walled bottom flap formed from the front side of the fourth portion being folded over and adhered to the front side of the third portion;
wherein the bottom flap is formed by folding so as to allow the holder to be die cut from a single sheet;
wherein the fourth portion is preconfigured such that the still exposed back side of the fourth portion is able to receive the transaction card;
and
wherein the bottom flap is double walled such that the top flap can be inserted without striking a transaction card;
and the lateral slot discussed above configured into a centralized area in the third portion such that the still exposed back side of the third portion optionally receives an edge of the top flap;
a notepad attached to the main panel;
wherein the note pad is sandwiched between the card and the front of the second portion when the holder is in the concealed state or closed state, such that neither the notepad nor the card can be used when the holder is in the concealed state; and
the notepad and the gift card being both displayed to the recipient upon removal from the concealed state or upon opening and are available for use by the recipient, the notepad available for immediate use and the gift card available for subsequent use; and
the ribbon discussed above being disposed through two or more apertures in the top flap; the ribbon configured to be pulled to disengage the top flap from the lateral slot; and
the hanging tag comprising an upper portion and a lower portion divided from each other by a line of perforations, the lower portion attached to the back side of the second portion of the sheet using permanent adhesive; and
the main panel having a machine readable indicia printed on a first side, the machine readable indicia comprising a bar code for facilitation purchase of the holder; and
the notepad comprising a backer made of a rigid material, the backer adhered to a second side of the main panel.
However, Glam teaches a double-walled flap formed from two portions being adhered together; wherein a non-adhered face of the flap is configured to receive a transaction card (col. 2, lines 35-38 and col. 3, lines 58-61).
It would have been obvious to one of ordinary skill in the art at the time of the invention to have made the bottom flap of Lamm, double-walled so that portions can be cut from the inside of the panel without being visible at the exterior as taught by Glam in col. 3, lines 58-61. This would provide an astatically pleasing package that also minimizes damage to the card by accidental tearing of the cut.
Regarding the fourth portion being folded onto the front of the third portion, it would have been obvious to one of ordinary skill in the art at the time of the invention to have made the third and fourth portions integral and folded since it has been held “that the use of a one piece construction instead of the structure disclosed in [the prior art] would be merely a matter of obvious engineering choice.”); but see Schenck v. Nortron Corp.,713 F.2d 782, 218 USPQ 698 (Fed. Cir. 1983) MPEP 2144.04 V. B.
Regarding the bottom flap being double walled such that the top flap can be inserted without striking the transaction card, it is noted that the top flap of the modified device of Lamm is capable of being inserted without striking the transaction card.
Further, Slater teaches notepad being attached to a panel of an enclosure at note pad attachment site 40, 50, the panel being opposite to a panel having card holder site 30; wherein the notepad is sandwiched between the card and the front of the enclosure when the enclosure is in the concealed state or closed state; and
the notepad and the card being both displayed to the recipient upon removal from the concealed state or upon opening (fig. 1).
It would have been obvious to one of ordinary skill in the art at the time the invention was made to have provided the front side of the main panel of the modified Lamm (i.e., the side opposite to the card), a notepad, for continence as taught by Slater in col. Col. 1, lines 6-12. The convenience could for example be determining what gifts, offers, and/or rewards are remaining on the gift card.
Offenhauer teaches a card having a ribbon passing through apertures (fig. 2).
It would have been obvious to one of ordinary skill in the art at the time of the invention to have provided the first panel of the modified device of Lamm apertures, for attaching the ribbon through the apertures for decorative purposes. Also, it has been held that when a patent claims a structure already known in the prior art (i.e., attaching ribbons through apertures) that is altered by the mere substitution of one element for another known in the field, the combination must do more than yield a predictable result. KSR, 127 S.Ct. at 1740, 82 USPQ2d at 1395 (citing United States v. Adams, 383 U.S. 50-51, 148 USPQ 479, 483 (1966)).
It is noted that the ribbon (taught by Offenhauer) of the modified Lamm is capable of being pulled to disengage the top flap from the lateral slot.
Regarding the limitation “wherein when the holder is in the concealed state, the holder, notepad, and transaction card fit in a transaction card display”, Stich teaches mounting or fitting a card holder or envelope (in a transaction card display) for display at a point of purchase location (col. 8, lines 58-59).
It would have been obvious to one of ordinary skill in the art at the time the invention was made, to have mounted/fitted the transaction card of the modified Lamm in a transaction card display, for display at a point of purchase location, as taught by Stich in col. 8, lines 58-59. This would allow a purchaser to easily find and pick a card.
Regarding the hanging tag, Clark teaches at the time the invention was filed, it was well known to attach two panels with adhesive and to having provided a hanging tag a perforated line 38 (fig. 6 and col. 5, lines 8-10).
It would have been obvious to one of ordinary skill in the art at the time the invention was filed, to have attached the hanging tag of the modified Lamm with an adhesive and have provided the hanging tag, a perforated line, for detaching the tag after purchase by a consumer/sender of the holder and before giving the holder to a recipient as taught by Clark in col. 3, lines 3-7.
Regarding the slot being in a centralized area Crofton teaches a card having a centralized slot (figs. 1-3).
It would have been obvious to one of ordinary skill in the art at the time of the invention to have provided the slot of the modified Lamm in a centralized area, as taught by Crofton, for using a triangular flap for aesthetic purposes.
Regarding the barcode, Cole teaches a greeting card system having a barcode 107 on a panel (fig. 1c).
It would have been obvious to one of ordinary skill in the art at the time the invention was filed, to have provided the modified device of Lamm, a barcode, to manage the sale of the device and to provide for activation of the card, as taught by Cole in col. 2, lines 41-44.
Regarding the location of the barcode, It has been held that rearranging parts of an invention involves only routine skill in the art. In re Japikse, 86 USPQ 70.
Regarding the notepad having a backing material, Glosh teaches notepads having backing material 34 (fig. 2).
It would have been obvious to one of ordinary skill in the art at the time the invention was filed, to have provided the notepad of the modified Lamm, a backing material adhered to the panel, to add rigidity to prevent the notepad from flexing when writing on it.
Regarding claim 8, Galm further teaches a card held by two tabs T (fig.1).
It would have been obvious to one of ordinary skill in the art at the time of the invention to have held the card of the modified Lamm by two tabs, as further taught by Galm, since it has been held that when a patent claims a structure already known in the prior art (i.e., attaching a gift card by silts) that is altered by the mere substitution of one element for another known in the field, the combination must do more than yield a predictable result. KSR, 127 S.Ct. at 1740, 82 USPQ2d at 1395 (citing United States v. Adams, 383 U.S. 50-51, 148 USPQ 479, 483 (1966)).
Regarding claim 22, the modified Lamm fails to disclose the material comprising cardboard.
It would have been obvious to one having ordinary skill in the art at the time the invention was made to have made the modified device of Lamm, of cardboard, 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.
Regarding claim 25, the modified Lamm the top flap being generally triangular in shape ( figs. 1-3 of Crofton) and including a distal point having a tapered width, wherein the distal point is received in the slit.
Regarding claim 35, it has been held that, where the only difference between the prior art and the claims is a recitation of relative dimensions of the claimed device and a device having the claimed relative dimensions would not perform differently than a prior art device, the claimed device is not patentably distinct from the prior art device. Gardner v. TEC Systems, Inc., 725 F.2d 1338, 220 USPQ 777 (Fed. Cir. 1984), cert. denied, 469 U.S. 830, 225 USPQ 232 (1984).
Claim 34 is rejected under pre-AIA 35 U.S.C. 103(a) as being unpatentable over Lamm (D622, 763) in view of Galm (US 5,884,770), Slater (US 6,886,685), Offenhauer (US 6,112,441) Stich (US 5,760,381), Clark (US 6,732,459), Cole (US 7,490,720) and Glosh (US 7,654,577) as applied to claim 27 above, further in view of Crofton (US D421,457).
Regarding claim 34, Lamm further discloses the first portion being configured to be received into the slot existing in the third portion.
However, the modified Lamm fails to disclose the first portion being formed in a generally triangular in shape that tapers upward to reach a distal point, wherein the first portion is able to be received into the slit in the third portion when the holder is in the concealed state.
Crofton teaches a card having the claimed triangular first portion (figs. 1-3).
It would have been obvious to one of ordinary skill in the art at the time of the invention to have made the first portion of the modified Lamm, triangular, as taught by Crofton, for aesthetic purposes.
Claim 9 is rejected under pre-AIA 35 U.S.C. 103(a) as being unpatentable over Lamm (D622,763) in view of Galm (US 5,884,770), Slater (US 6,886,685), Offenhauer (US 6,112,441) , Stich (US 5,760,381) and Clark (US 6,732,459) further in view of Crofton (US D421,457), Cole (US 7,490,720) and Glosh (US 7,654,577) as applied to claim 1 above, further in view of Blank (US 7,374,095).
The modified Lamm fails to disclose the gift card being attached using a removable adhesive.
However, Blank teaches a transaction card being attached to a panel via removable adhesive (figs.3, 5, 12 and col. 5, lines 7-11).
It would have been obvious to one of ordinary skill in the art to substitute removable adhesives as, for example, taught by the Blank reference for attachment means of the modified device of Lamm, since it has been held that when a patent claims a structure already known in the prior art that is altered by the mere substitution of one element for another known in the field, the combination must do more than yield a predictable result. KSR, 127 S.Ct. at 1740, 82 USPQ2d at 1395 (citing United States v. Adams, 383 U.S. 50-51, 148 USPQ 479, 483 (1966)).
Response to Arguments
Applicant’s arguments, with respect to the 112 rejection have been fully considered and are persuasive. The 112 rejection has been withdrawn.
Applicant's arguments with respect to the 103 rejections have been fully considered but they are not persuasive.
In response to applicant's argument that the examiner's conclusion of obviousness using the Slater reference is based upon improper hindsight reasoning, it must be recognized that any judgment on obviousness is in a sense necessarily a reconstruction based upon hindsight reasoning. But so long as it takes into account only knowledge which was within the level of ordinary skill at the time the claimed invention was made, and does not include knowledge gleaned only from the applicant's disclosure, such a reconstruction is proper. See In re McLaughlin, 443 F.2d 1392, 170 USPQ 209 (CCPA 1971). Slater in col. 1, line 10 clearly states that carrying note pads in combination with one ore more other items such as credit card provides convenience. The motivation to combine the Stater reference is found in Stater in col. 1 line 10.
Applicant further argues that the Office attributes functionality to Lamm (regarding pulling ribbons and disengaging portions, etc.). However, contrary to applicant’s argument, Offenhauer is the reference used for the teaching of ribbons. The ribbons of Offenhauer ( or the modified Lamm) are capable of performing the intended use of being pulled by a user.
Regarding applicant’s third argument that the examiner's conclusion of obviousness is based upon improper hindsight reasoning, it must be recognized that any judgment on obviousness is in a sense necessarily a reconstruction based upon hindsight reasoning. But so long as it takes into account only knowledge which was within the level of ordinary skill at the time the claimed invention was made, and does not include knowledge gleaned only from the applicant's disclosure, such a reconstruction is proper. See In re McLaughlin, 443 F.2d 1392, 170 USPQ 209 (CCPA 1971).
In response to applicant's arguments against the Stich reference individually (i.e., that Stich teaches cards that are sold separately), one cannot show nonobviousness by attacking references individually where the rejections are based on combinations of references. See In re Keller, 642 F.2d 413, 208 USPQ 871 (CCPA 1981); In re Merck & Co., 800 F.2d 1091, 231 USPQ 375 (Fed. Cir. 1986). The holder and the concealed state (i.e., when the holder is closed) is disclosed by primary reference.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to BLAINE GIRMA NEWAY whose telephone number is (571)270-5275. The examiner can normally be reached Monday - Friday 9:00 AM- 5:00PM.
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/BLAINE G NEWAY/Examiner, Art Unit 3735
/Anthony D Stashick/Supervisory Patent Examiner, Art Unit 3735