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 .
DETAILED ACTION
Response to Election
1. Applicant’s election of claims 1-4 and 7-9 without traverse in the reply filed on September 4, 2025, is acknowledged.
Claims 5-6 and 10-15 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected invention, there being no allowable generic or linking claim.
The requirement is deemed proper and is therefore made FINAL.
Information Disclosure Statement
2. The references disclosed within the information disclosure statement (IDS) submitted on January 18, 2024, has been considered and initialed by the Examiner.
Claim Rejections – 35 USC § 102(a)(1)
3. 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.
4. Claims 1-3 and 7 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by JP 2017-108746 A (JP ‘746).
JP ‘746 discloses a packaging material (1), comprising: a main body sheet (3a); at least one first tape (3b, 3c) adhered to the main body sheet; and at least two second tapes (3d, 3e) adhered to the main body sheet, wherein when a longitudinal direction of the at least one first tape is a first direction, the at least two second tapes are disposed such that the first direction is longitudinal, the at least two second tapes are disposed to form a gap in a second direction intersecting the first direction, and the at least one first tape is disposed between the at least two second tapes in the second direction, and disposed to form a gap in the second direction from the at least two second tapes, as shown in Figures 1-2 below:
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, as in claim 1. In claim 1, the phrase, “for wrapping an article therein” is an intended use. 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. In a claim drawn to a process of making, the intended use must result in a manipulative difference as compared to the prior art. See In re Casey, 152 USPQ 235 (CCPA 1967) and In re Otto, 136 USPQ 458, 459 (CCPA 1963).
Concerning claim 2, Figures 1-2 of JP ‘746 shows one of the at least two second tapes is disposed closer to one end in the second direction of the body sheet than a middle portion between the at least one first tape and the one end in the second direction of the body sheet, another one of the at least two second tapes is disposed closer to another end in the second direction of the body sheet than a middle portion between the at least one first tape and the other end in the second direction of the body sheet, and the at least one first tape is disposed to overlap a central portion in the second direction of the body sheet.
Concerning claim 3, Figures 1-2 of JP ‘746 shows at least two second tapes are disposed at positions away from respective both end parts in the second direction of the body sheet toward a central portion in the second direction of the body sheet.
Concerning claim 7, Figures 1-2 of JP ‘746 shows the at least two second tapes are disposed at positions away from respective both end parts in the second direction of the body sheet toward the central portion in the second direction of the body sheet.
Claim Rejections – 35 USC § 103
5. 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 may not be obtained though the invention is not identically disclosed or described as set forth in section 102 of this title, 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.
6. Claims 4 and 8-9 are rejected under 35 U.S.C. 103 as being unpatentable over JP 2017-108746 A (JP ‘746).
JP ‘746 is taken as above. JP ‘746 discloses a packaging material (1), comprising: a main body sheet (3a); at least one first tape (3b, 3c) adhered to the main body sheet; and at least two second tapes (3d, 3e) adhered to the main body sheet, wherein when a longitudinal direction of the at least one first tape is a first direction, the at least two second tapes are disposed such that the first direction is longitudinal, the at least two second tapes are disposed to form a gap in a second direction intersecting the first direction, and the at least one first tape is disposed between the at least two second tapes in the second direction, and disposed to form a gap in the second direction from the at least two second tapes, as shown in Figures 1-2 below:
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, as in claims 4 and 8-9. In claims 4 and 8-9, the phrase, “the body sheet has at least two cut parts formed by cutting one end part in the first direction of the body sheet with a space therebetween in the second direction, one end part of the at least one first tape is located between the at least two cut parts, and in the second direction, one of the at least two cut parts is located between one of the at least two second tapes and the at least one first tape, and an other one of the at least two cut parts is located between an other one of the at least two second tapes and the at least one first tape” introduces a process limitation to the product claim.
For purposes of examination, product-by-process claims are not limited to the manipulation of the recited steps, only the structure implied by the steps. See MPEP 2113. In the present case, the recited steps imply a structure having a body sheet with at least one first tape and two second tapes. The reference suggests such a product because JP ‘746 discloses a packaging material (1), comprising: a main body sheet (3a); at least one first tape (3b, 3c) adhered to the main body sheet; and at least two second tapes (3d, 3e) adhered to the main body sheet, wherein when a longitudinal direction of the at least one first tape is a first direction, the at least two second tapes are disposed such that the first direction is longitudinal, the at least two second tapes are disposed to form a gap in a second direction intersecting the first direction, and the at least one first tape is disposed between the at least two second tapes in the second direction, and disposed to form a gap in the second direction from the at least two second tapes.
Conclusion
7. Any inquiry concerning this communication or earlier communications from the examiner should be directed to Lawrence Ferguson whose telephone number is 571-272-1522. The examiner can normally be reached on Monday through Friday 9:00 AM – 5:30PM.
If attempts to reach the examiner by telephone are unsuccessful, the examiner's supervisor, Frank Vineis, can be reached on 571-270-1547. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/LAWRENCE D FERGUSON/Examiner, Art Unit 1781
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