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.
Value of Assistance
The following are suggested, not required additional, services and resources for applicant’s consideration should applicant seek additional assistance.
Hiring of Legal Representation
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A listing of registered patent practitioners is available at oedci.uspto.gov/OEDCI/. Applicants may also obtain a list of registered patent practitioners located in their area by writing to Mail Stop OED, Director of the U.S. Patent and Trademark Office, P.O. Box 1450, Alexandria, VA 22313-1450.
Inventor Resources
Information regarding the general overview of the patent process, general FAQs, searching for patents, and the like may be found at the following link: Inventors Assistance Center | USPTO www.uspto.gov/learning-and-resources/support-centers/inventors-assistance-center-iac
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DETAILED ACTION
A basic Template for helping draft a response to this office action can be found at the following link: Microsoft Word - FORMAT FOR REVISED AMDT PRACTICE_9-23_1.doc www.uspto.gov/sites/default/files/web/offices/pac/dapp/opla/preognotice/formatrevamdtprac.pdf
Election/Restrictions
Applicant’s election without traverse of Claims 1-4 in the reply filed on September 30, 2025 is acknowledged.
Claims 5-7 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected invention, there being no allowable generic or linking claim.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 September 30, 2025.
Drawings
The drawings are objected to because they do not conform to the drawing standards set forth in 37 C.F.R. 1.84 because:
Reference characters must be plain and legible and should not cross or mingle with the reference lines, 37 CFR 1.84(p).
The same part of an invention appearing in more than one view
The lead lines do not originate in the immediate proximity of the reference character and extend to the feature indicated. Lead lines are required for each reference character, 37 CFR 1.84(q). See the illustrations below as examples:
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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.
Specification
The use of the term Blue4est, which is a trade name or a mark used in commerce, has been noted in this application. The term should be accompanied by the generic terminology; furthermore the term should be capitalized wherever it appears or, where appropriate, include a proper symbol indicating use in commerce such as ™, SM , or ® following the term.
Although the use of trade names and marks used in commerce (i.e., trademarks, service marks, certification marks, and collective marks) are permissible in patent applications, the proprietary nature of the marks should be respected and every effort made to prevent their use in any manner which might adversely affect their validity as commercial marks.
trade name is used to identify a source of goods, and not the goods themselves. Thus, a trademark or trade name does not identify or describe the goods associated with the trademark or trade name. In the present case, the trademark/trade name is used to identify/describe a smokeable receipt paper and, accordingly, the identification/description is indefinite. The examiner suggests amending the claim to replace “ Koehler Blue4est” with the term, “a thermal printer paper”.
Claim Objections
Claim 1 is objected to because of the following informalities:
“the receipt paper” in line 7 should read “the smokeable receipt paper”,
“Ink composed of soy-based,” in line 4 should read “An ink composed of soy-based,”
Appropriate correction is required.
Claim 3 is objected to because of the following informalities: “the paper” in line 3 should read “the smokeable receipt paper”. Appropriate correction is required.
Claim 4 is objected to under 37 CFR 1.75(c) as being in improper form because a multiple dependent claim cannot depend from any other multiple dependent claim. Claim 4 is written with a dependency that includes claim 3, claim 3 is a multiple dependent claim, therefore claim 4 is an improper multiple dependent claim. See MPEP § 608.01(n). Accordingly, claim 4 has not been further treated on the merits.
Claim Interpretation
The following is a quotation of 35 U.S.C. 112(f):
(f) Element in Claim for a Combination. – An element in a claim for a combination may be expressed as a means or step for performing a specified function without the recital of structure, material, or acts in support thereof, and such claim shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof.
The following is a quotation of pre-AIA 35 U.S.C. 112, sixth paragraph:
An element in a claim for a combination may be expressed as a means or step for performing a specified function without the recital of structure, material, or acts in support thereof, and such claim shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof.
The claims in this application are given their broadest reasonable interpretation using the plain meaning of the claim language in light of the specification as it would be understood by one of ordinary skill in the art. The broadest reasonable interpretation of a claim element (also commonly referred to as a claim limitation) is limited by the description in the specification when 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is invoked.
As explained in MPEP § 2181, subsection I, claim limitations that meet the following three-prong test will be interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph:
(A) the claim limitation uses the term “means” or “step” or a term used as a substitute for “means” that is a generic placeholder (also called a nonce term or a non-structural term having no specific structural meaning) for performing the claimed function;
(B) the term “means” or “step” or the generic placeholder is modified by functional language, typically, but not always linked by the transition word “for” (e.g., “means for”) or another linking word or phrase, such as “configured to” or “so that”; and
(C) the term “means” or “step” or the generic placeholder is not modified by sufficient structure, material, or acts for performing the claimed function.
Use of the word “means” (or “step”) in a claim with functional language creates a rebuttable presumption that the claim limitation is to be treated in accordance with 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. The presumption that the claim limitation is interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is rebutted when the claim limitation recites sufficient structure, material, or acts to entirely perform the recited function.
Absence of the word “means” (or “step”) in a claim creates a rebuttable presumption that the claim limitation is not to be treated in accordance with 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. The presumption that the claim limitation is not interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is rebutted when the claim limitation recites function without reciting sufficient structure, material or acts to entirely perform the recited function.
Claim limitations in this application that use the word “means” (or “step”) are being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, except as otherwise indicated in an Office action. Conversely, claim limitations in this application that do not use the word “means” (or “step”) are not being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, except as otherwise indicated in an Office action.
This application includes one or more claim limitations that do not use the word “means,” but are nonetheless being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, because the claim limitation(s) uses a generic placeholder that is coupled with functional language without reciting sufficient structure to perform the recited function and the generic placeholder is not preceded by a structural modifier.
Claim 1 reciting “a perforation mechanism” has been interpreted to invoke 112(f) as a means plus function limitation because of the combination of a non-structural term “means; mechanism, etc.” and functional language “a perforation mechanism designed to allow...to be easily separated” without reciting sufficient structure to achieve the function.
Because this claim limitation is being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, it is being interpreted to cover the corresponding structure described in the specification as performing the claimed function, and equivalents thereof. The specification discloses on page 9, last paragraph: “112...the perforation in Figure 2 emphasizes the precision with which the perforation is applied to the paper.” The language in claim 1 will be interpreted as requiring the disclosed structure on page 2, last paragraph, or equivalents.
If applicant does not intend to have this limitation interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, applicant may: (1) amend the claim limitation(s) to avoid it/them being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph (e.g., by reciting sufficient structure to perform the claimed function); or (2) present a sufficient showing that the claim limitation(s) recite(s) sufficient structure to perform the claimed function so as to avoid it/them being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph.
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.
Claims 1-3 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.
The claim(s) are narrative in form and replete with indefinite language. The structure which goes to make up the device must be clearly and positively specified. The structure must be organized and correlated in such a manner as to present a complete operative device. The claim(s) must be in one sentence form only. Note the format of the claims in the patent(s) cited. Each claim may only be one sentence and have only one period.
Claims 1-3 have numerous indefinite issues based on the manner of the claims.
Claim 1 contains the term “easily”. The term “easily” is a relative term which renders the claim indefinite. The term “easily” 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. The separation of the receipt paper into two equally sized rolling papers is rendered indefinite by the use of the term “easily”.
Claim 2 contains the trademark/trade name Blue4est®. Where a trademark or trade name is used in a claim as a limitation to identify or describe a particular material or product, the claim does not comply with the requirements of 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph. See Ex parte Simpson, 218 USPQ 1020 (Bd. App. 1982). The claim scope is uncertain since the trademark or trade name cannot be used properly to identify any particular material or product. A trademark or trade name is used to identify a source of goods, and not the goods themselves. Thus, a trademark or trade name does not identify or describe the goods associated with the trademark or trade name. In the present case, the trademark/trade name is used to identify/describe a smokeable receipt paper and, accordingly, the identification/description is indefinite. The Examiner suggests amending the claim to replace Blue4est with “a thermal paper”.
Regarding claim 3,
the claim contains the term “featuring” as the transitional phrase in the claim preamble. The claim scope is uncertain since it is unclear what the scope of “featuring” is, in other words, does “featuring” mean comprising, consisting of, or consisting essentially? The Examiner will interpret the term “featuring” to mean “further comprising” and suggests the claim preamble be amended to read “The smokeable receipt paper of claim 1 or 2, further comprising a reactive side,” which is an acceptable transitional phrase for a multiply dependent claim. See MPEP 608.01(n),
the term “suitable” contained in the claim is a relative term which renders the claim indefinite. The term “suitable” 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. The reactive side of the smokeable receipt paper is rendered indefinite by the use of the term “suitable”,
the term “standard” contained in the claim is a relative term which renders the claim indefinite. The term “standard” 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. The side of the smokeable receipt paper is rendered indefinite by the use of the term “standard”.
Claim 3 is rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite in that it fails to point out what is included or excluded by the claim language. For instance, the claim recites “dual-use functionality” which is unclear as to the metes and bounds of the claim. This claim is an omnibus type claim.
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 is rejected under 35 U.S.C. 102(a)(1) as being anticipated by Rolly Receipts, internet archived web page, May 13, 2021.
Regarding claim 1, Rolly Receipts discloses a smokeable receipt paper comprising:
a base material made from non-toxic wood pulp paper approved for smoking,
ink composed of soy-based, food grade components approved for human consumption, and
a perforation mechanism designed to allow the smokable receipt paper to be separated into two equally sized rolling papers. (see web page)
Claim 1 recites the functional language: “used for printing on the paper to maintain user safety and environmental sustainability”. A claim containing a “recitation with respect to the manner in which a claimed apparatus is intended to be employed does not differentiate the claimed apparatus from a prior art apparatus” if the prior art apparatus teaches all the structural limitations of the claim. Ex parte Masham, 2 USPQ2d 1647 (Bd. Pat. App. & Inter. 1987). (see MPEP § 2144).
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 2 and 3 are rejected under 35 U.S.C. 103 as being unpatentable over Rolly Receipts as applied to claim 1 above, and further in view of Koehler Paper, internet archived web page, November 4, 2022.
Rolly Receipts teaches all the claim limitations as set forth above.
Regarding claim 2, Rolly Receipts does not explicitly teach a thermal paper.
Koehler Paper teaches Blue4est® thermal paper that is sustainable and can be recycled as it has no chemical developers (reads over environmental sustainability), approved for direct contact with food, and is compatible with most POS thermal printers (reads over compatibility with thermal printing technologies). (page 2)
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to practice the invention of Rolly Receipts and include Blue4est® thermal paper as taught by Koehler Paper which results in a thermal paper that is sustainable and can be recycled as it has no chemical developers and is compatible with most POS thermal printers.
Regarding claim 3, Rolly Receipts does not explicitly teach a reactive side.
Koehler Paper teaches instead of a chemical reaction to heat, the image is released by a purely physical process in the functional layer (reads over a reactive side) of Blue4est®, the “bubbles” contained in the functional layer collapse when exposed to the heat of the print head so that the black coating underneath becomes visible. (page 2 figure reproduced below for clarity)
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It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to practice the invention of Rolly Receipts and include Blue4est® thermal paper as taught by Koehler Paper which results in a thermal paper comprising a functional layer containing “bubbles” in the functional layer that collapse when exposed to the heat of the thermal printer print head so that the black coating underneath the functional layer becomes visible after it is used in the thermal printer.
Claim 3 recites the functional language: “enabling the smokeable receipt paper to function as a standard receipt before being repurposed”. A claim containing a “recitation with respect to the manner in which a claimed apparatus is intended to be employed does not differentiate the claimed apparatus from a prior art apparatus” if the prior art apparatus teaches all the structural limitations of the claim. Ex parte Masham, 2 USPQ2d 1647 (Bd. Pat. App. & Inter. 1987). (see MPEP § 2144).
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to RONNIE KIRBY JORDAN whose telephone number is 571-272-5214. The examiner can normally be reached M-F 8AM - 4PM (EST).
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Michael H. Wilson can be reached on 571-270-3882. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/RONNIE KIRBY JORDAN/Examiner, Art Unit 1747
/Michael H. Wilson/Supervisory Patent Examiner, Art Unit 1747