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 .
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.
Election/Restrictions
Applicant’s election of claims 1-11 in the reply filed on 11/20/2025 is acknowledged. Because applicant did not distinctly and specifically point out the supposed errors in the restriction requirement, the election has been treated as an election without traverse (MPEP § 818.01(a)). The election inadvertently stated claims 1-14 and 18, Examiner confirmed via telephone the elected claims are Group I, claims 1-11.
Claims 12 and 13 withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected invention, there being no allowable generic or linking claim.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 11/20/2025.
Claim Objections
Claim 9 is objected to because of the following informalities:
The claim appears to end in a comma which should be a period.
Appropriate correction is required.
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 5-9 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.
In reference to claim 5:
Claim 5 recites the limitation “wherein the bag has a rectangular shape including a bag width ranging from 2 inches to 4 inches and a bag length ranging from 5 inches to 10 inches” (ln 1-3, emphasis added). It is unclear from the use of “including” whether the bag is limited to the recited dimensions or whether these are exemplary as dimensions “included” within the claimed rectangular shape. For the purposes of examination the term “including” has been interpreted at “comprising”.
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.
Claim(s) 1-9 is/are rejected under 35 U.S.C. 103 as being unpatentable over Siciliano (US20240238059A1) in view of Sal-Tech (8 Advantages of Shrink Wrapping You Should Know) and Smits (US20160060430A1).
In reference to claim 1:
Siciliano discloses a tattoo machine covering system (abstract) comprising:
a tattoo machine having a top side and a bottom side, the top side including a connector configured to connect with a power source, the bottom side having an aperture therein configured to receive a needle cartridge (para 0053);
a bag being configured to receive the tattoo machine such that the tattoo machine is covered by the bag (Fig. 1A), the bag having a bottom end (Fig. 1A numeral 104) opposite an open-mouth end (Fig. 1A numeral 148), the open-mouth end providing access to an interior pocket of the bag (para 0046, Fig. 1A), the bottom end having a hole therein providing access to the interior pocket (para 0046, Fig. 1A numeral 104), the hole being configured to align with the needle aperture when the tattoo machine is inserted into the bag (para 0046).
Siciliano does not disclose the bag being formed of a heat shrinkable film material, the heat shrinkable film material being configured to conform to a shape of the tattoo machine when heated by the heat gun. However this would have been obvious in view of Sal-Tech. Sal-Tech teaches a system for sealing an object to prevent contamination (paras 1-3). Sal-Tech further teaches that using heat shrink wrap provides a conformal, self-sealing, waterproof barrier (para 0001). 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 a heat shrink material in the system of Siciliano in order to obtain a system which proves a cover which is conformal, self-sealing, and waterproof.
Siciliano, as modified by Sal-Tech, does not explicitly disclose a heat gun. However, the use of a heat gun for application of heat to a heat shrink film is well-known in the art as evidenced by Smits (para 0106). It would have been obvious to a person having ordinary skill in the art before the effective filing date of the claimed invention to utilize a heat gun to effect the heat-shrink of the bag because the use of a heat gun is well known and the combination would yield predictable results, e.g. the bag is heated by a known device. See MPEP 2144.07.
In reference to claim 2:
In addition to the discussion of claim 1, above, Siciliano further discloses wherein the hole is further configured to receive the needle cartridge (para 0046).
In reference to claims 3 and 4 :
In addition to the discussion of claim 1, above, Siciliano further discloses that the opening 104 may be configured to receive a needle cartridge (para 0046) but does not explicitly disclose wherein the hole has a diameter ranging from ¼ inch to ¾ inch (claim 3) or wherein the hole has a diameter of ½ inch (claim 4). However, “where the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation.” See In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955). As applied to the instant application, the prior art discloses the general conditions of the hole being sized to receive a needle cartridge, as such it is not inventive to discover the optimum or workable size which allows for the hole to receive the cartridge. Additionally, a change in shape is generally recognized as being within the level of ordinary skill in the art. In re Dailey, 357 F.2d 669, 149 USPQ 47 (CCPA 1966). See MPEP 2144.04 (IV).
In reference to claims 5, 6, 7, and 8:
In addition to the discussion of claim 1, above, Siciliano further discloses wherein the bag has a rectangular shape (Fig. 5) and is sized such that it covers an outer surface of the tattoo machine (para 0046). Siciliano does not explicitly disclose including a bag width ranging from 2 inches to 4 inches and a bag length ranging from 5 inches to 10 inches (claim 5), wherein the bag has a bag width of 3 inches (claim 6), wherein the bag has a bag length of 6½ inches (claim 7), or wherein the bag has a bag length of 8 inches (claim 8). However, it is the Examiner’s first position that as the general conditions of the claim are known, that the bag must fit the tattoo machine, it is not inventive to find the optimum or workable range of bag sizes. It is the Examiner’s second position that a change in shape is generally recognized as being within the level of ordinary skill in the art. In re Dailey, 357 F.2d 669, 149 USPQ 47 (CCPA 1966). See MPEP 2144.04 (IV).
In reference to claim 9:
In addition to the discussion of claim 5, above, Siciliano further discloses wherein the open mouth end and the bottom end are disposed along the bag width (Fig. 1A).
Claim(s) 10 is/are rejected under 35 U.S.C. 103 as being unpatentable over Siciliano, Sal-Tech, and Smits as applied to claim 1, above, and further in view of U.S. Packaging & Wrapping LLC (Flat Shrink Bags, hereinafter U.S. Packaging).
In addition to the discussion of claim 1, above, modified Siciliano does not teach wherein the heat shrinkable file material comprises 100 gauge shrink wrap film. However, the selection of a known material, which is based upon its suitability for the intended use, is within the ambit of one of ordinary skill in the art. See In re Leshin, 125 USPQ 416 (CCPA 1960) (see MPEP § 2144.07). As applied to the instant application, U.S. Packaging teaches shrink bags for wrapping items (para 1). U.S. Packaging further teaches 100 gauge shrink wrap film (the table showing all are 100 gauge). It would have been obvious to a person having ordinary skill in the art before the effective filing date of the claimed invention to utilize 100 gauge shrink wrap film based on its suitability for the intended use of shrink wrapping various objects.
Claim(s) 11 is/are rejected under 35 U.S.C. 103 as being unpatentable over Siciliano in view of Sal-Tech, Smits, and U.S. Packaging.
Siciliano discloses tattoo machine covering system (abstract) comprising:
the tattoo machine having a top side opposite a bottom side, the top side including a power cord, the bottom side having a needle aperture therein configured to receive a needle cartridge (para 0053); and
a bag being configured to receive the tattoo machine such that the tattoo machine is covered by the bag with the power cord extending outwardly from the bag (para 0053, Fig. 1A), the bag having a bottom end (Fig. 1A numeral 104) opposite an open-mouth end (Fig. 1A numeral 148), the open-mouth end providing access to an interior pocket of the bag (para 0046, Fig. 1A), the bottom end having a hole therein providing access to the interior pocket (para 0046, Fig. 1A numeral 104), the hole being configured to align with the needle aperture when the tattoo machine is inserted into the bag (para 0046), the hole being further configured to receive the needle cartridge (para 0046), wherein the open mouth end and the bottom end are disposed along the width (Figs. 1A, 5).
Siciliano does not disclose the hole having a ½ inch diameter, wherein the bag has a rectangular shape including a bag width ranging from 2 inches to 4 inches and a bag length ranging from 5 inches to 10 inches. However, it is the Examiner’s first position that as the general conditions of the claim are known, that the bag must fit the tattoo machine, it is not inventive to find the optimum or workable range of bag sizes. It is the Examiner’s second position that a change in shape is generally recognized as being within the level of ordinary skill in the art. In re Dailey, 357 F.2d 669, 149 USPQ 47 (CCPA 1966). See MPEP 2144.04 (IV).
Siciliano does not disclose wherein bag is formed of a heat shrinkable film material, the heat shrinkable film material being configured to conform to a shape of the tattoo machine when exposed to the heated airflow. However this would have been obvious in view of Sal-Tech. Sal-Tech teaches a system for sealing an object to prevent contamination (paras 1-3). Sal-Tech further teaches that using heat shrink wrap provides a conformal, self-sealing, waterproof barrier (para 0001). 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 a heat shrink material in the system of Siciliano in order to obtain a system which proves a cover which is conformal, self-sealing, and waterproof.
Modified Siciliano does not teach a heat gun configured to emit a heated airflow. However, the use of a heat gun for application of heat to a heat shrink film is well-known in the art as evidenced by Smits (para 0106). It would have been obvious to a person having ordinary skill in the art before the effective filing date of the claimed invention to utilize a heat gun to effect the heat-shrink of the bag because the use of a heat gun is well known and the combination would yield predictable results, e.g. the bag is heated by a known device. See MPEP 2144.07.
Modified Siciliano does not teach the heat shrinkable film material comprising 100 gauge shrink wrap. However, the selection of a known material, which is based upon its suitability for the intended use, is within the ambit of one of ordinary skill in the art. See In re Leshin, 125 USPQ 416 (CCPA 1960) (see MPEP § 2144.07). As applied to the instant application, U.S. Packaging teaches shrink bags for wrapping items (para 1). U.S. Packaging further teaches 100 gauge shrink wrap film (the table showing all are 100 gauge). It would have been obvious to a person having ordinary skill in the art before the effective filing date of the claimed invention to utilize 100 gauge shrink wrap film based on its suitability for the intended use of shrink wrapping various objects.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
Xiao (US20160184572A1)
Özkarsli (US20170196645A1)
Bonny (US20180200014A1)
Cohen (US20180339455A1)
Kupcikevicius (US5120553A)
Adair (US5433221A)
Chen (US7380480B1)
Any inquiry concerning this communication or earlier communications from the examiner should be directed to ANDREW L SWANSON whose telephone number is (571)272-1724. The examiner can normally be reached M-Th 0800-1900 and every other Friday 0800-1600.
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/ANDREW L SWANSON/ Examiner, Art Unit 1745