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 .
This action is in response to applicant’s remarks and amendments dated 07/23/2025. Claims 1-10 have been amended. Claims 13-27 have been cancelled. Claims 28-30 are new.
Claim Objections
Claim 5 is objected to because of the following informalities: Claim 5 appears to recite what is already recited in claim 1 lines 9-11. Presumably this is the result of a previous amendment but is now duplicate claim language. Appropriate correction is required.
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.
(a)(2) the claimed invention was described in a patent issued under section 151, or in an application for patent published or deemed published under section 122(b), in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention.
Claims 1 and 5-7 are rejected under 35 U.S.C. 102(a)(1)(a)(2) as being anticipated by Jackson, Jr. (US PGPub. No. 2016/0340074 A1).
In Reference to Claims 1 and 5-7
Jackson teaches (Claim 1) A roll wrap paper sheet comprising: a sheet of gift wrap (item 100 (or 200 / 300), fig’s 1-8), the sheet oriented along a horizontal axis that is parallel to the vertical axis to form a roll of wrapping paper (fig. 8), the sheet comprising: a first surface comprising a decoration (items 114 and 116, fig’s 2 and 4); and a second surface opposite the first surface (item 106, fig’s 1-4), wherein the second surface comprises a plurality of design templates (e.g. items 110, alternately or additionally, some of items 112, fig’s 2-4), wherein each of the plurality of design templates is configured to make at least one DIY project such that the roll wrap paper sheet is configured to make a plurality of DIY projects (this is merely functional / intended use language, items 110 and 112 could be used to make DIY projects, meeting these limitations), and wherein each of said plurality of design templates comprises template cut lines that define at least one shaped area (border lines of items 110 and / or some of items 112), each of the at least one shaped areas is positioned at a distinct location on the second surface from the other at least one shaped areas such that none of the at least one shaped areas overlap (items 110 do not overlap, many of items 112 also do not overlap, fig’s 2-4) and wherein the template cut lines are positioned relative to corresponding portions of the decoration such that portions of the decoration are oriented in a pre-defined decoration position within the shaped area (items 116 are continuous and homogeneous and correspond to backs of items 110 and 112), and wherein the plurality of design templates are spaced apart from each other along the horizontal axis such that a first portion of the sheet of gift wrap including a first of the plurality of design templates is configured to wrap a gift while a second portion of the sheet of gift wrap including a second of the plurality of design templates is configured to create one of the DIY projects (part of roll could be used for wrapping and the other for DIY projects; again, this is intended use language which is fully met by the reference);
(Claim 5) wherein each of the plurality of design templates comprises template cut lines that define a plurality of shaped areas (border lines of items 110 and / or some of items 112);
(Claim 6) wherein at least one of the plurality of design templates comprises template cut lines that define a first shaped area and at least one of the plurality of design templates comprises template cut lines that define a second shaped area that is different in size, shape, or size and shape from the first shaped area (fig’s 2-4, two differently sized items 112, or an item 11o and an item 112);
(Claim 7) wherein each of the at least one DIY projects are the same, and wherein the DIY projects are selected from the group consisting of a bow, a gift box, a gift tag, a gift accessory, a party decoration, a home decoration, and a fashion accessory (fig’s 2-4, two items 110 or two items 112, either could be considered a decoration).
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 2-4 are rejected under 35 U.S.C. 103 as being unpatentable over Jackson in view of Merrill (US PGPub. No. 2016/0016710 A1).
In Reference to Claim 2-4
Jackson teaches all of claim 1 as discussed above.
Jackson fails to teach the feature of claims 2-4.
Merill teaches (Claim 2) wherein the second surface additionally comprises at least one alignment key oriented relative to at least one of the [sheet] templates and to the sheet gift wrap in a pre-defined alignment position (fig’s 3 and 4);
(Claim 3) wherein the at least one alignment key comprises at least one line oriented parallel an outer edge of the sheet of gift wrap (fig’s 3 and 4);
(Claim 4) wherein [] at least one alignment key comprises a plurality of grid lines consisting of horizontal straight lines and vertical straight lines extending along at least a portion of [a] surface generally parallel to corresponding horizontal and vertical outer edges of [a] sheet of gift wrap (fig’s 3 and 4 and paragraphs 0057-0059).
It would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to have provided the wrapping paper system of Jackson with the feature of grid lines as taught by the wrapping paper system of Merrill for the purpose of allowing the paper to additionally be used to wrap items such as gifts as taught by Merrill (paragraph 0057), making the system more versatile, useful, easier to use, and more attractive to the users.
Further, it has been held that when the claimed printed matter is not functionally related to the substrate in an unobvious manner, it will not distinguish the invention from the prior art in terms of patentability. See In re Lowry, 32 F.3d 1579, 1583-84, 32 USPQ2d 1031, 1035 (Fed. Cir. 1994); In re Ngai, 367 F.3d 1336, 70 USPQ2d 1862 (Fed. Cir. 2004); In re Gulack, 703 F.2d 1381, 1385, 217 USPQ 401, 403-04 (Fed. Cir. 1983). The fact that the content of the printed matter placed on the substrate may render the device more convenient by providing an individual with a specific type of playing card does not alter the functional relationship. Mere support by the substrate for the printed matter is not the kind of functional relationship necessary for patentability. Thus, there is no novel and unobvious functional relationship between the printed matter e.g. grid line indicia and the substrate e.g. paper sheet, which is required for patentability.
Claim 9 is rejected under 35 U.S.C. 103 as being unpatentable over Jackson in view of McMillan (US Patent No. 7,971,721).
In Reference to Claim 9
Jackson teaches all of claim 1 as discussed above.
Jackson fails to teach the instructions of claim 9.
McMillan teaches (Claim 9) wherein [a] surface additionally comprises an instructions section (column 3 lines 36-43).
It would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to have provided the wrapping paper kit of Jackson with the feature of instructions as taught by the wrapping paper kit of McMillan for the purpose of providing a user with suggested arrangement displays as taught by McMillan (abstract), making the kit easier to use, and more interesting and attractive to the users.
Further, it has been held that when the claimed printed matter is not functionally related to the substrate in an unobvious manner, it will not distinguish the invention from the prior art in terms of patentability. See In re Lowry, 32 F.3d 1579, 1583-84, 32 USPQ2d 1031, 1035 (Fed. Cir. 1994); In re Ngai, 367 F.3d 1336, 70 USPQ2d 1862 (Fed. Cir. 2004); In re Gulack, 703 F.2d 1381, 1385, 217 USPQ 401, 403-04 (Fed. Cir. 1983). The fact that the content of the printed matter placed on the substrate may render the device more convenient by providing an individual with a specific type of wrapping paper does not alter the functional relationship. Mere support by the substrate for the printed matter is not the kind of functional relationship necessary for patentability. Thus, there is no novel and unobvious functional relationship between the printed matter e.g. instruction indicia and the substrate e.g. wrapping paper, which is required for patentability.
Claims 10-11 are rejected under 35 U.S.C. 103 as being unpatentable over Jackson in view of Merrill and further in view of McMillan.
In Reference to Claims 10-11
Jackson teaches (Claim 10) A [] roll wrap comprising: a sheet of gift wrap (item 100 (or 200 / 300), fig’s 1-8), the sheet oriented along a horizontal axis and a vertical axis, the sheet rolled around an axis that is parallel to the vertical axis to form a roll of wrapping paper (fig. 8), the sheet comprising: a first decorated surface (items 114 and 116, fig’s 2 and 4); and a second surface opposite the first decorated surface (item 106, fig’s 1-4), [], a plurality of design templates (e.g. items 110, alternately or additionally, some of items 112, fig’s 2-4) each of which is configured for making at least one project such that the roll wrap is configured to make a plurality of projects (note this is merely functional / intended use language), wherein each of the plurality of design templates is configured such that at least a portion of the decorated surface is positioned on an exterior of the project when the project is made (items 116 are continuous and homogeneous and would correspond to backs of items 110 and 112), []; wherein each of the plurality of design templates comprises a plurality of cut lines that define a plurality of shapes (border lines of items 110 and / or some of items 112), [], and wherein each of the plurality of shapes is positioned at a distinct location on the second surface from the other plurality of shapes such that none of the plurality of shapes overlap (items 110 do not overlap, many of items 112 also do not overlap, fig’s 2-4) wherein the plurality of design templates are spaced apart from each other along the horizontal axis such that a first portion of the sheet of gift wrap including a first of the plurality of design templates is configured to wrap a gift while a second portion of the sheet of gift wrap including a second of the plurality of design templates is configured to create one of the projects (part of roll could be used for wrapping and the other for DIY projects; again, this is intended use language which is fully met by the reference);
(Claim 11) wherein the at least one project is selected from the group consisting of a bow, a gift box, a gift tag, a gift accessory, a party decoration, a home decoration, and a fashion accessory (fig’s 2-4, items 110 or 112, either could be considered a decoration).
Jackson fails to teach the grid lines and instructions of claim 10.
Merrill teaches (Claim 10) [a] second surface comprising a plurality of grid lines (fig’s 3 and 4 and paragraphs 0057-0059).
McMillan teaches (Claim 10) and instructions (column 3 lines 36-43); and the instructions provide instructions for assembling [a] plurality of shapes into at least one project with at least a portion of [a] decorated surface positioned on the exterior of the project (column 3 lines 36-43, fig. 4).
It would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to have provided the paper system of Jackson with the feature of grid lines as taught by the paper wrapping system of Merrill for the purpose of allowing the paper to additionally be used to wrap items such as gifts as taught by Merrill (paragraph 0057), making the system more versatile, useful, easier to use, and more attractive to the users.
It would have further been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to have provided the wrapping paper kit of Jackson with the feature of instructions as taught by the wrapping paper kit of McMillan for the purpose of providing a user with suggested arrangement displays as taught by McMillan (abstract), making the kit easier to use, and more interesting and attractive to the users.
Further, it has been held that when the claimed printed matter is not functionally related to the substrate in an unobvious manner, it will not distinguish the invention from the prior art in terms of patentability. See In re Lowry, 32 F.3d 1579, 1583-84, 32 USPQ2d 1031, 1035 (Fed. Cir. 1994); In re Ngai, 367 F.3d 1336, 70 USPQ2d 1862 (Fed. Cir. 2004); In re Gulack, 703 F.2d 1381, 1385, 217 USPQ 401, 403-04 (Fed. Cir. 1983). The fact that the content of the printed matter placed on the substrate may render the device more convenient by providing an individual with a specific type of wrapping paper does not alter the functional relationship. Mere support by the substrate for the printed matter is not the kind of functional relationship necessary for patentability. Thus, there is no novel and unobvious functional relationship between the printed matter e.g. grid line and instruction indicia and the substrate e.g. wrapping paper, which is required for patentability.
Claim 8 is rejected under 35 U.S.C. 103 as being unpatentable over Jackson in view of Fascio (US Patent No. 6,030,669).
In Reference to Claim 8
Jackson teaches all of claim 1 as discussed above.
Jackson fails to teach the feature of claim 8.
Fascio teaches (Claim 8) wherein [a] project is a bow (fig’s 1-4).
It would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to have provided the sheet folding system of Jackson with the feature of making the foldable object a bow as taught by the sheet folding system of Fascio for the purpose of providing additional decorative items to the system that can be used for additional purposes as taught by Fascio (summary), making the system more versatile, and more interesting and attractive to the users.
Further, the examiner notes that it has been held that matters relating to ornamentation only with no mechanical function cannot be relied upon to patentably distinguish the claimed invention from the prior art. See In re Seid, 161 F.2d 229, 73 USPQ 431 (CCPA 1947). Whether the folded item is a character, a bow, a bird, a decorative item, or any other design element is simply a matter of ornamentation which does not have any mechanical function and is, therefore, not a patentable advance.
Claim 12 is rejected under 35 U.S.C. 103 as being unpatentable over Jackson in view of Merrill, McMillan. and further in view of Fascio.
In Reference to Claim 12
The modified device of Jackson teaches all of claim 10 as discussed above.
Jackson fails to teach the feature of claim 12.
Fascio teaches (Claim 12) wherein the at least one project is a bow (fig’s 1-4).
It would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to have provided the sheet folding system of Jackson with the feature of making the foldable object a bow as taught by the sheet folding system of Fascio for the purpose of providing additional decorative items that match the folded item as taught by Fascio (summary), making the system more versatile, and more interesting and attractive to the users.
Further, the examiner notes that it has been held that matters relating to ornamentation only with no mechanical function cannot be relied upon to patentably distinguish the claimed invention from the prior art. See In re Seid, 161 F.2d 229, 73 USPQ 431 (CCPA 1947). Whether the folded item is a character, a bow, a bird, a decorative item, or any other design element is simply a matter of ornamentation which does not have any mechanical function and is, therefore, not a patentable advance.
Claims 28-30 are rejected under 35 U.S.C. 103 as being unpatentable over Jackson.
In Reference to Claims 28
Jackson teaches (Claim 28) A kit of roll wrap paper sheets comprising: at least two separate sheets of gift wrap (any two of items 100, 200, and 300), each sheet of gift wrap comprising: a first surface comprising decoration (items 114 and 116, fig’s 2 and 4); and a second surface opposite the first surface (item 106, fig’s 1-4), wherein the second surface comprises a plurality of design templates (e.g. items 110, alternately or additionally, some of items 112, fig’s 2-4), wherein at least one of the plurality of design templates is configured to make at least one DIY project such that the roll wrap paper sheet is configured to make a plurality of DIY projects (note this is merely functional / intended use language), and wherein each of said plurality of design templates comprises template cut lines that define at least one shaped area (border lines of items 110 and / or some of items 112), each of the at least one shaped areas is positioned at a distinct location on the second surface from the other at least one shaped areas such that none of the at least one shaped areas overlap (items 110 do not overlap, many of items 112 also do not overlap, fig’s 2-4) and wherein the template cut lines are positioned relative to corresponding portions of the decoration such that portions of the decoration are oriented in a pre-defined decoration position within the shaped area (items 116 are continuous and homogeneous and correspond to backs of items 110 and 112), [a variety of different indicia on the wraps] (fig’s 1-8);
(Claim 29) wherein a first of the separate sheets of gift wrap is configured to wrap a gift, and a second of the separate sheets of gift wrap is configured to make at least one of the DIY projects that is applied to the wrapped gift (these are intended uses, one roll could be used to wrap a gift and another roll could be used to make projects, meeting these limitations);
(Claim 30) wherein the first design template comprises multiple design pieces configured to be combined to make a first DIY project of the plurality of DIY projects, and wherein the first DIY project is configured to be made from at least one design piece from one of the sheets of gift wrap and at least one design piece from another of the sheets of gift wrap (fig’s 1-8, again this is intended use language, items 110, 112, 210, 308 could be used in a variety of ways to produce a variety of DIY projects).
Jackson fails to teach the specific indicia on specific sides of the first and second sheets of gift wrap of claim 28.
It would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to have provided different decorations on different gift wraps, and different or the same design templates on different gift wraps, simply as a matter of design choice, since, it has been held that when the claimed printed matter is not functionally related to the substrate in an unobvious manner, it will not distinguish the invention from the prior art in terms of patentability. See In re Lowry, 32 F.3d 1579, 1583-84, 32 USPQ2d 1031, 1035 (Fed. Cir. 1994); In re Ngai, 367 F.3d 1336, 70 USPQ2d 1862 (Fed. Cir. 2004); In re Gulack, 703 F.2d 1381, 1385, 217 USPQ 401, 403-04 (Fed. Cir. 1983). The fact that the content of the printed matter placed on the substrate may render the device more convenient by providing an individual with a specific type of wrapping paper does not alter the functional relationship. Mere support by the substrate for the printed matter is not the kind of functional relationship necessary for patentability. Thus, there is no novel and unobvious functional relationship between the printed matter e.g. decoration and design template indicia and the substrate e.g. wrapping paper, which is required for patentability.
The examiner further notes that since multiple different rolls of wrapping paper with multiple different designs are taught in Jackson, and, since they could be used together, all of the limitations of a kit with separate sheets of gift wrap are taught, broadly interpreted. However, in the alternate view that these rolls are somehow not intended exist together, an alternate rejection is set forth below:
It would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to have provided a kit including multiple rolls of gift wrap simply as a matter of engineering design choice, since, it has been held that mere duplication of parts has no patentable significance unless a new and unexpected result is produced. See In re Harza, 274 F.2d 669, 124 USPQ 378 (CCPA 1960). Simply providing more wrapping paper rolls with additional design templates and / or additional decorations would not change the operation of the device and is, therefore, simply a duplication of parts and is not a patentable distinction.
Response to Arguments
Applicant's arguments filed 07/23/2025 have been fully considered but they are not persuasive.
Applicant’s arguments regarding the Thurmond reference are noted but are moot in view of the new grounds of rejection applying the Jackson reference as necessitated by the amendment. See action above for further details.
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 JOSEPH B BALDORI whose telephone number is (571)270-7424. The examiner can normally be reached Monday - Friday 9am to 5pm EST.
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/JOSEPH B BALDORI/Primary Examiner, Art Unit 3711