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 .
Election/Restrictions
Applicant’s election without traverse of Group I, claims 1-16, in the reply filed on 03 July 2024 is acknowledged.
Drawings
The drawings are objected to as failing to comply with 37 CFR 1.84(p)(5) because they do not include the following reference sign(s) mentioned in the description: reference signs “310a” and “310d) are missing from the drawings. 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. 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 Rejections - 35 USC § 112
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 4, 5, and 8 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.
Regarding claim 4, “the overall dimensions of the gift item” lack antecedence.
Regarding claim 4, since gift items are available in different dimensions, one of ordinary skill in the art would not be able to determine with any degree of certainty or precision, the particular limits of the length and width recited in the claim so as to ascertain the metes and bounds of the claim.
Regarding claim 5, “the overall dimensions of the gift item” lack antecedence.
Regarding claim 5, since gift items are available in different dimensions, one of ordinary skill in the art would not be able to determine with any degree of certainty or precision, the particular limits of the length and width recited in the claim so as to ascertain the metes and bounds of the claim.
Regarding claim 8, “the pressure-sensitive adhesive” lacks antecedence. For the purpose of examination, claim 8 will be considered as depending from claim 7.
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.
Claims 1, 4, 5, 7, and 9-11 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by U.S. Patent No. 6,343,734 to Smith (hereafter Keller).
Regarding claim 1, Smith discloses gift wrapper (sheet 10), comprising: a main surface (panel 11); a plurality of side flaps (panels 12,14,16, 18) extending from the main surface of the gift wrapper, wherein an adhesive zone is located on one or more of the panels making of the sheet (column 3, lines 48-61) and the adhesive zones comprise peel-and-stick assemblies (column 4, lines 4-11), which encompasses the recitation “each of the side flaps…comprises a self-adhesive strip”; and the adhesive zone (peel-and-stick assemblies; column 4, lines 4-11) located on one or more of the panels making up the sheet (10) provides a convenient way to releasably engage the various panels of the sheet (10) with the walls of a gift box (column 3, lines 48-61), which meets the structure implied by the functional recitation “wherein the self-adhesive strip…of the plurality of side flaps…is configured to be removably connected to at least one of: a plurality of top flaps…and/ or a plurality of sidewalls…of the gift item…in order to at least internally cover the gift item…concealing a gifting product held within a cavity…of the gift item”.
Regarding claim 4, Smith discloses the sheet 10 is symmetrical about both a horizontal and vertical line of bi-section (column 4, lines 12-29), which meets the recitation “each of the side flaps…are identical in length and width depending on the overall dimensions of the gift item”, to the degree the claim can be understood.
Regarding claim 5, Smith discloses panels (12, 14) vary from panels (16, 18) in Figs. 1, which meets the recitation “each of the side flaps…have varying length and width depending on the overall dimensions of the gift item”, to the degree the claim can be understood.
Regarding claim 7, Smith discloses the adhesive zones comprise peel-and-stick assemblies incorporating double-sided tape and a passive cover tape. The double-sided tape is first stuck to a portion(s) of a top face of a panel. Then the sticky second side of the tape is covered with a peel away tape that, when peeled off, does not affect the adhesion strength of the second side of the tape (column 4, lines 4-11), which meets the recitation “the self-adhesive…comprises a pressure-sensitive adhesive.”
Regarding claim 9, Smith discloses the adhesive zones comprise peel-and-stick assemblies incorporating double-sided tape and a passive cover tape. The double-sided tape is first stuck to a portion(s) of a top face of a panel. Then the sticky second side of the tape is covered with a peel away tape that, when peeled off, does not affect the adhesion strength of the second side of the tape (column 4, lines 4-11), which encompasses the recitation “the self-adhesive strip…comprises a peelable backing paper to prevent loss of adhesion used in the self-adhesive strips”.
Regrading claim 10, Smith discloses the plurality of side flaps (12, 14, 16, 18) are bendable relative to the main surface (11) along a plurality of fold lines (32, 34, 36, 38).
Regarding claim 11, Smith discloses the adhesive on some or all of the panels releasably or permanently fixes that particular panel to a wall of the box, or to a previously folded panel of sheet (column 5, lines 32-35), which meets the structure implied by the product-by process recitation “the self-adhesive strip…or…is pressed and bonded against a plurality of top flaps...or a plurality of sidewalls…of the gift item…to conceal the gifting product placed in the cavity…of the gift item”.
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, 3, 6, and 12 are rejected under 35 U.S.C. 103 as being unpatentable over U.S. Patent No. 6,343,7934 to Smith (hereafter Smith) and Patent Application Publication No. 2012/0051669 to Keller (hereafter Keller).
Regarding claim 2, Smith discloses the claimed invention, except for the main surface comprising a pocket. Keller teaches that it is known in the art to provide a pocket (compartment 286, 300, 320) on the main surface of an analogous gift wrapper. It would have been obvious to a person having ordinary skill in the art before the effective filing date of the claimed invention to provide a pocket on the main surface of the Smith gift wrapper, as in Keller, in order to retain a secondary gift.
Regarding claim 3, Smith and Keller disclose the claimed invention, as discussed above. Keller especially discloses a secondary gift comprises any secondary item given with a primary gift. Examples of secondary gifts comprise greeting cards, gift cards, candy, pre-paid gift cards, credit or debit cards, data storage devices, camera flash card, CD disks, DVD disks, flash drives, photos, and other items typically given with a primary gift to enhance the pleasure or enjoyment of the gift giving experience (paragraph [0080]). Therefore, providing a pocket on the main surface of the Smith gift wrapper for the purpose of retaining a secondary gift, as in Keller and discussed above, meets the recitation “the removable object…comprises a card, a paper, a plastic film, or a token with a predefined message for a gift-giving occasion.”
Regarding claim 6, Smith discloses the claimed invention, except for the gift wrapper being concealed inside the gift item in the closed position. Keller teaches that it is known in the art conceal (store) an analogous gift wrapper (cover 190) inside a gift item (gift container 130) in a closed position (ship state; Figs. 16a-16c). It would have been obvious to a person having ordinary skill in the art before the effective filing date of the claimed invention to conceal the gift wrapper of Smith inside a gift item in a closed position, as in Keller, in order to prepare the gift wrapper and gift item for a ship state, which meets the functional recitation “remains protected from wear and tear during shipping of the gift item”.
Regarding claim 12, Smith discloses the claimed invention, except for the gift wrapper being made of a biodegradable and/or recyclable material consisting of a material selected from a group of cellulose-based paper, wood, cotton, hemp, pulp, clothing material. Keller teaches that it is known in the art to use pulp for an analogous gift wrapper (paragraph [0104]). It would have been obvious to a person having ordinary skill in the art before the effective filing date of the claimed invention to use pulp for the Smith gift wrapper (thus meeting the structure implied by the functional recitation “biodegradable and/or recyclable material”), as in Klein, 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.
Claim 8 is rejected under 35 U.S.C. 103 as being unpatentable over U.S. Patent No. 6,343,7934 to Smith (hereafter Smith) and Patent Application Publication No. 2003/0134070 to Klein (hereafter Klein).
Regarding claim 8, Smith discloses the claimed, as discussed above regarding the claimed “pressure-sensitive adhesive”. However, it is unclear if the pressure-sensitive adhesive comprises rubber-based, acrylic, modified acrylic, and silicone formulations. Klein teaches that it is known in the art to use an acrylic copolymer adhesive for the pressure-sensitive adhesive in an analogous gift wrapper (paragraph [0009]). It would have been obvious to a person having ordinary skill in the art before the effective filing date of the claimed invention to use an acrylic copolymer adhesive for the pressure-sensitive adhesive in the Smith gift wrapper, as in Klein, 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.
Claims 13, 14, and 16 are rejected under 35 U.S.C. 103 as being unpatentable over U.S. Patent No. 6,000,849 to Keller et al. (hereafter Keller ‘849) and U.S. Patent No. 6,343,734 to Smith (hereafter Keller).
Regarding claim 13, Keller ‘849 discloses a gift wrapper (bag topper 10), comprising: a main surface (11) having a predefined thickness so as to allow integration of adhesive strips (column 4, lines 4-11) on at least one of a plurality of side edges (fold line 13 via side panels 12) of the gift wrapper (10) thereof that meet a plurality of sidewalls of a gift item (30) when wrapped to cover the gift item internally (Fig. 4); wherein the adhesive strips provide for reusable adhesion to the gift item (column 4, lines 4-11), which meets the limitation that the adhesive strip “is configured to be removably connected to the gift item…in order to internally cover the gift item… concealing a gifting product held within a cavity of the gift item”.
However, Keller ‘849 does not disclose the adhesive strips as self-adhesive strips. Smith teaches that it is known in the art to provide adhesive zones comprising peel-and-stick assemblies (column 4, lines 4-11), which encompass the recitation “self-adhesive strip”; and the adhesive zone (peel-and-stick assemblies; column 4, lines 4-11) provide a convenient way to releasably engage an analogous gift wrapper (10) with a gift item (column 3, lines 48-61). It would have been obvious to a person having ordinary skill in the art before the effective filing date of the claimed invention to use self-adhesive strips as the adhesive strips in the Keller ‘849 gift wrapper, as in Smith, in order to removably connect the gift wrapper to the gift item.
Regarding claim 14, Smith discloses the adhesive zones comprise peel-and-stick assemblies incorporating double-sided tape and a passive cover tape. The double-sided tape is first stuck to a portion(s) of a top face of a panel. Then the sticky second side of the tape is covered with a peel away tape that, when peeled off, does not affect the adhesion strength of the second side of the tape (column 4, lines 4-11). Therefore, using self-adhesive strips as the adhesive strips in the Keller ‘849 gift wrapper, as in Smith and discussed above, meets the recitation “the self-adhesive…comprises a pressure-sensitive adhesive.”
Regarding claim 16, Smith discloses the adhesive zones comprise peel-and-stick assemblies incorporating double-sided tape and a passive cover tape. The double-sided tape is first stuck to a portion(s) of a top face of a panel. Then the sticky second side of the tape is covered with a peel away tape that, when peeled off, does not affect the adhesion strength of the second side of the tape (column 4, lines 4-11). Therefore, using self-adhesive strips as the adhesive strips in the Keller ‘849 gift wrapper, as in Smith and discussed above, meets the recitation “the self-adhesive…comprises a peelable backing paper to prevent loss of adhesion used in the self-adhesive strips.”
Claim 15 is rejected under 35 U.S.C. 103 as being unpatentable over U.S. Patent No. 6,000,849 to Keller et al. (hereafter Keller ‘849) and U.S. Patent No. 6,343,734 to Smith (hereafter Keller) as applied to claim 13 above, and further in view of Patent Application Publication No. 2003/0134070 to Klein (hereafter Klein).
Regarding claim 15, Keller ‘849 and Smith disclose the claimed, as discussed above regarding the claimed “pressure-sensitive adhesive”. However, it is unclear if the pressure-sensitive adhesive comprises rubber-based, acrylic, modified acrylic, and silicone formulations. Klein teaches that it is known in the art to use an acrylic copolymer adhesive for the pressure-sensitive adhesive in an analogous gift wrapper (paragraph [0009]). It would have been obvious to a person having ordinary skill in the art before the effective filing date of the claimed invention to use an acrylic copolymer adhesive for the pressure-sensitive adhesive in the modified Keller ‘849 gift wrapper, as in Klein, 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.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
Applicant is duly reminded that a complete response must satisfy the requirements of 37 C.F. R. 1.111, including: “The reply must present arguments pointing out the specific distinctions believed to render the claims, including any newly presented claims, patentable over any applied references.” A general allegation that the claims “define a patentable invention” without specifically pointing out how the language of the claims patentably distinguishes them from the references does not comply with the requirements of this section. Moreover, “The prompt development of a clear Issue requires that the replies of the applicant meet the objections to and rejections of the claims.” Applicant should also specifically point out the support for any amendments made to the disclosure. See MPEP 714.02 and MPEP 2163.06. The “disclosure” includes the claims, the specification and the drawings.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to JES F PASCUA whose telephone number is (571)272-4546. The examiner can normally be reached M-F; 9:00 am - 5:00 pm.
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/JES F PASCUA/Primary Examiner, Art Unit 3734