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 .
Response to Amendment
Those rejections that have not been repeated in this Office Action have been withdrawn.
Claims 1-10, 12-20 are currently pending and rejected.
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 1-4 are rejected under 35 U.S.C. 103 as being unpatentable over
“Cutefetti – DIY Cupcake Decorating Kit,” (referred to as Cutefetti) in view of Gushiken (JP 2016137922) and Huang (TW M284640).
Regarding Gushiken (JP 2016137922) and Huang (TW M284640) a machine translation has been relied on and is included with this Office Action.
Regarding claim 1, Cutefetti discloses a “party activity” kit device that provides a user with a kit that is capable of being distributed at parties, the party activity kit device comprising:
a container component (see the box as shown in page 4 and 5 of the reference); a dessert (see page 6 which recites, “unfrosted cupcakes”; see page 7 which shows cupcakes); and a decorating component (page 6, “sprinkles” “frosting”; page 7); wherein the dessert is housed within the container component for storage (see page 7).
Regarding the limitations of, “wherein a user uses the decorating component to decorate the dessert at a party; and wherein the user after decorating the dessert can either eat the dessert at the party or bring the dessert home after the party, as a take-home favor” these are intended use limitations that the structure as taught by Cutefetti would have been capable of performing. It is noted that the claim is directed to the product and not the method of using the product. 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.
Regarding the new limitation of “an indicia stamped onto the container component,” as shown at least on page 7, Cutefetti teaches indicia on the container component, such as the rainbow indicia. While the claim recites that the indicia is “stamped” Applicant’s specification does not provide any specificity as to the bounds of being “stamped.” (see paragraph 43 as filed). In view of this, stamped can be construed as a method step, such that in a product claim, the method step would only have been limiting based on the implied structure. In this case, the implied structure would have been indicia provided on the container component, which Cutefetti teaches.
Nonetheless, claim 1 has also been construed to differ from Cutefetti in specifically reciting that the party activity kit device comprises “a bead ornamentation component attached to the container component” and “an indicia stamped onto the container component.”
Regarding the bead ornamentation, it is noted that Gushiken teaches that it has been conventional to provide a variety of ornamentation onto a packaging box for the purpose of providing great visual appeal (see the abstract). Gushiken teaches that the contents of the container can be a cake (see paragraph 21 of the machine translation) and further teaches that the ornamentation can also include printing or embossing indicia and therefore reads on indicia stamped onto the container component (see paragraph 11 and 13 and also see 20 of the machine translation directed to designs being embossed; see figure 1, item 4), where embossing would also suggest some form of stamping, especially because at paragraph 27 Gushiken teaches using a die to create the design crease, which therefore reads on stamping.
Further regarding “bead ornamentation” attached to the container component, Huang also teaches storages boxes for cake, for example (see the title) and where decorative beads can be positioned on the box to increase the beauty of the box (see the last two lines on page 1 onto page 2 of the machine translation and the last five lines above the claims on page 2 of the machine translation).
The prior art therefore teaches that it has been conventional and desirable to include a variety of ornamental indicia and decorations on a storage container for cakes, for the purpose of enhancing the visual appeal of the storage container. To therefore modify Cutefetti and to include a bead ornamentation component attached to the container component and indicia stamped onto the container component would have been obvious to one having ordinary skill in the art, for the purpose of providing additional decorative ornamentation for visual appeal, and as an obvious matter of engineering and/or design based on the desired decorations to apply to Cutefetti’s container component.
Regarding claim 2, as shown on page 7, Cutefetti discloses that the container component is a rectangular receptacle for the dessert.
Regarding claim 3, Cutefetti’s container component comprises opposing right and left sides, opposing front and back sides, a top side and a bottom side (see page 7)
Regarding claim 4, Cutefetti discloses that the opposing right and left sides, opposing front and back sides, the top side and the bottom side are configured to form an inner cavity (see page 7, where there is clearly an inner cavity).
Claims 5-10, 12-14 are rejected under 35 U.S.C. 103 as being unpatentable over the combination, as applied to claim 4 above, which relies on “Cutefetti – DIY Cupcake Decorating Kit,” (referred to as Cutefetti) as the primary reference, and in further view of Baryshyan (US 20160107830) and Adams (US 20140097235).
Regarding claim 5, Cutefetti teaches that the container component is a box. When comparing Cutefetti’s interior as shown on page 7 with the exterior, as shown on page 5, the reference is teaching and suggesting the container compartment is a box that is white. If it could have been construed that this was not the case, it is not seen that patentability can be predicated on the particular color of the container compartment, as this would have been an obvious matter of engineering and/or design to one having ordinary skill in the art.
Claim 5 differs from the combination in specifically reciting that the container component also comprises a transparent area for viewing, such that the dessert can be seen.
Baryshyan teaches containers for holding desserts such as cupcake, which can comprise a transparent area that can be used for viewing the contents (see figure 8 and paragraph 9, 23 and 40).
Adams teaches transparent areas for viewing desserts such as cupcakes (see paragraph 22: “cupcake box”) within a closed box (see paragraph 15 and 27; figure 2, item 27, 25)
It would have been obvious to one having ordinary skill in the art to have modified Cutefetti in view of Baryshyan’s and Adams’ teachings and to have included a transparent area, for the known purpose of being able to see the contents within Cutefetti’s kit without having to open the kit.
Regarding claim 6, in view of Baryshyan (see figure 9, item 22B; paragraph 25, 40) and Adams (figure 2, item 27; paragraph 15), the combination teaches that the top side includes a transparent area
Regarding claim 7, Baryshyan (paragraph 25, 40) and Adams (paragraph 15) teach the transparent area, and Adams further teaches that this area can be made with a food approved material, such as polystyrene films (see Adams paragraph 15). Since the prior art teaches packaging foods within the containers, it would have been obvious to one having ordinary skill in the art to use food safe materials for the transparent area such as transparent polystyrene films, as an obvious matter of engineering and/or design.
Regarding claim 8, it would appear that Cutefetti’s container component is made from paper, since the reference is teaching a foldable carton/box.
Nonetheless, the claim differs from Cutefetti in specifically reciting that the container component is comprised of a food-safe cardboard or plastic.
However, it would have been obvious to one having ordinary skill in the art to have used food safe materials since Cutefetti is packaging foods within the container compartment. Nonetheless, Baryshyan teaches using cardboard as a material for the container compartment (see figure 8 and paragraph 25) and Adams teaches food approved materials for the transparent area (paragraph 15) while also teaching a cardboard container compartment (see paragraph 13). If the transparent area is food safe, then it would have been obvious to one having ordinary skill in the art to have also made the container compartment food safe to prevent contamination of the food via the packaging materials. It is noted that paragraph 11 of Applicant’s specification as filed appears to indicate that the use cardboard and plastic as materials that would have been construed to be food-safe (“food-safe materials, such as cardboard, plastic…”)
Regarding claim 9, as shown by Baryshyan (figure 8 and 9) and Adams (figure 1 and 2), the combination teaches a top side comprising a lid component that is utilized to cover the inner cavity. It would have been obvious to one having ordinary skill in the art to have modified Cutefetti and used such a configuration for the container compartment and top side as an obvious matter of engineering and/or design.
Regarding claim 10, Baryshyan (figure 4, 8 and 9, and the hinged lid with tuck tab 24X) and Adams (see figure 1, item 8 and paragraph 13 and 20) teach the lid component hinged to the front or back side. Cutefetti also teaches a hinged lid section (see page 4, 5 and 7) which can be construed as being hinged to the front or back side.
Regarding claim 12, Cutefetti teaches that the dessert can be cupcake and the figure on page 7 shows at least two cupcakes.
Regarding claims 13 and 14, Cutefetti teaches that the decorating component comprises icing and sprinkles (see page 6 and page 8, last line, “sprinkles and icing”).
Claim 15 is rejected under 35 U.S.C. 103 as being unpatentable over “Cutefetti – DIY Cupcake Decorating Kit,” (referred to as Cutefetti) in view of Huang (TW M284640) and Johnson (US 20100127053) and in further view of Baryshyan (US 20160107830) and Thiolat (FR 2964368).
Regarding claim 15, Cutefetti, Huang and Baryshyan have been incorporated herein as discussed above with respect to claims 1, 2, 5, 6, 9, 10 and 12-14 to teach the claimed rectangular container component being a white boxy with an inner cavity and a transparent area for viewing cupcakes, at least two cupcakes housed within the inner cavity, a decorating component that comprises icing and sprinkles.
Regarding the limitation of, wherein a user uses the icing and sprinkles to decorate the at least two miniature cupcakes at a party; and wherein the user after decorating the at least two cupcakes can either eat the at least two cupcakes at the party or bring the at least two cupcakes home after the party, as a take-home favor,” since the claim is directed to the device kit, these limitations are intended use limitations that the prior art would have been capable of perform.
Claim 15 newly recites, “a stone ornamentation component attached to the container component” and differs from Cutefetti in this regard.
However, Huang as already applied to claim 1 above, teaches that it has been conventional to attach various decorative elements to a container component capable of being used for packaging products such as cakes. Furthermore, Johnson also teaches that it has been conventional to provide decorative elements to the exterior of a container such as stone ornamentation (see paragraph 27 and 37). It is additionally noted that neither the claims nor specification provide specify as to what encompasses “a stone ornamentation,” such that spherical beads and rhinestones are seen to fall within what one could construe as “stone ornamentation.” Therefore, since it was recognized in the art, as taught by Huang to attach decorative elements to a container for holding cakes, it is not seen that patentability can be predicated on the specific type of decorative element attached to the container, especially when such attachments would have been known in the art to be used for ornamentation. Nonetheless, to modify Cutefetti and to also attach stone ornamentation would have been obvious to one having ordinary skill in the art, as an obvious matter of engineering and/or design, especially since the art teaches that stone ornamentation has been desirable for providing a desired appearance and texture to a storage box.
Claim 15 newly recites, “wherein the container component comprises a detachable lid component comprising a PVC viewing window that is utilized to cover the inner cavity. In this regard Baryshyan as already discussed in the rejections above, teaches a lid component comprising a transparent viewing window that is utilized to cover the inner cavity. Regarding such as lid being detachable, Baryshyan’s lid would clearly have been capable of being detachable, because the container component is also made from cardboard (see at least the abstract) and because the claim does not detail with respect to what is the lid detachable. In this regard, since Baryshyan teaches that the lid comprises a tuck tab to secure the lid in position (see paragraph 25 and 36), the lid is seen to be detachable from the dust flaps and the rear panel of the container. Baryshyan also teaches that the container component comprises a transparent viewing window, but the claim differs in specifically reciting a PVC viewing window.
In this regard, Thiolat teaches a transparent window (see figure 1, item 30) for a cardboard box for foods such as pastries (page 4 of the machine translation, last four lines) and which transparent window can be made from PVC (see page 5, lines 11-12 of the machine translation). Thiolat also teaches what can be construed as a detachable lid (see page 3 of the machine translation, lines 5-10).
To therefore modify the combination and use another known material usable as a transparent film for providing a viewing window would have been obvious to one having ordinary skill in the art, as a matter of engineering and/or design, based on known expedients for providing transparent viewing windows for cake boxes.
Claim 16 is rejected under 35 U.S.C. 103 as being unpatentable over the combination, as applied to claim 15 above, which relies on “Cutefetti – DIY Cupcake Decorating Kit,” as the primary reference, and in further view of “Dorothy Ann Bakery & Cafe” (referred to as “Dorothy Ann”), “Taylored Cupcakes” and Verba (US 20040022905).
Claim 16 differs from the combination as applied to claim 15 in specifically reciting that “the icing comprises multiple flavors.”
It is initially noted that the kit of Cutefetti would clearly have been capable of including multiple icing flavors.
In any case, it is noted that “Dorothy Ann” teaches multiple packages of icing that are included with the cupcake decorating kit (see the three piping bags with icing as shown on page 2). “Taylored Cupcakes” also teaches cupcake decorating kits comprising unfrosted cupcakes and where the kit includes two flavors of frosting such as chocolate chip cookie dough frosting, cookies & cream frosting and vanilla buttercream frosting (see page 1 “cupcake decorating kit”; page 3-4, “Cookie Monster Cupcake Kit”). Verba also teaches dessert decorating kits that can comprise multiple flavored icings (see paragraph 16 and 29). It would therefore have been obvious to one having ordinary skill in the art to have modified Cutefetti and to have provided multiple icing flavors for the purpose of allowing the user to provide more colorful and multiple flavored decorations on the cupcakes.
Claim 17 is rejected under 35 U.S.C. 103 as being unpatentable over the combination, as applied to claim 16 above, which relies on “Cutefetti – DIY Cupcake Decorating Kit,” as the primary reference, and in further view of Folkmar (US 20170341820).
Regarding claim 17, in view of “Dorothy Ann” and Verba, the combination is teaching bags and tubes for storing multiple types of icing.
Claim 17 differs from the combination as applied to claim 16 in specifically reciting that the icing is stored in a self-locking 4”x6” plastic bag.
Folkmar teaches piping bags that are resealable and therefore self-locking (see paragraph 3, 10 and 41) and made from plastic (see paragraph 43).
To therefore modify the combination and to use another known type of storage for icing, such as self-locking plastic bags would have been obvious to one having ordinary skill in the art, for making it easy to dispense the icing for decoration and to subsequently seal the icing bags for fresh keeping of leftover icing.
Regarding the specific size of the bag, since the combination already teaches a self-locking bag, it is not seen that patentability can be predicated on the particular size of the bag. That is, the where the only difference between the prior art and the claims was a recitation of relative dimensions of the claimed device and a device having the claimed relative dimensions would not perform differently than the prior art device, the claimed device was not patentably distinct from the prior art device.
Claims 18-19 are rejected under 35 U.S.C. 103 as being unpatentable over the combination, as applied to claim 15 above, which relies on “Cutefetti – DIY Cupcake Decorating Kit,” as the primary reference, and in further view of “Pastry Madness.”
The claim differs from the combination, as applied to claim 15 above in specifically reciting, wherein the sprinkles are stored in a self-locking 2” x 2” plastic bag.
However, Pastry Madness teaches decorating kits that comprise a dessert (cookies) and that can include multiple bags of icing as well as sprinkles that are stored in self-locking bags (see pages 9 and 10 which show the sprinkles within resealable bags.
To therefore modify Cutefetti and to package sprinkles within self-locking bags as taught by Pastry Madness would have been obvious to one having ordinary skill in the art, as a substitution of one type of storage container for packaging sprinkles, for another, recognized for the same purpose.
Regarding the specific size of the bag, since the combination already teaches a self-locking bag, it is not seen that patentability can be predicated on the particular size of the bag. That is, the where the only difference between the prior art and the claims was a recitation of relative dimensions of the claimed device and a device having the claimed relative dimensions would not perform differently than the prior art device, the claimed device was not patentably distinct from the prior art device.
Regarding claim 19, the claim does not provide any specificity as to what constitutes “a plurality of indicia.” In this regard, Cutefetti teaches a plurality of indicia as part of the kit, such as the “Happy Birthday” decoration (see page 4), as well as the rainbow indicia on the candles (see page 4) in addition to the label “cupcake decorating kit” as shown on page 5.
Claim 20 is rejected under 35 U.S.C. 103 as being unpatentable over “Cutefetti – DIY Cupcake Decorating Kit,” (referred to as Cutefetti) in view of Baryshyan (US 20160107830) and Voigt (US 20100059580), and in further view of Thiolat (FR 2964368), and in further view of Verba (US 20040022905), Kinseth (“Mardi Gras King Cakes and Cake Decorating Kits for Kids at Benjamin’s Bakery”), Gunn (US 20070007291) and Priestley (US 20080121556), and in further view of Huang (TW M284640) and Johnson (US 20100127053)
Regarding claim 20, Cutefetti discloses a method of providing a party kit, the method comprising providing a party activity kit device comprising a container component at two cupcakes (see page 4 which shows two cupcakes) and decorating components, as discussed above with respect to claim 1.
Cutefetti obviously teaches removing the cupcakes and decorating components in order to use the decorating components to decorate the cupcakes, “as desired.” That is, it would have been obvious to one having ordinary skill in the art to have removed the cupcakes in order to have decorated the cupcakes, as desired.
Regarding the step of eating the cupcakes or packaging the cupcakes up to take home, it would have been obvious to one having ordinary skill in the art to eat the decorated cupcakes.
Regarding packaging the cupcakes up to take home, it is noted that Baryshan teaches containers that can secure cupcakes for travel (see figure 1 and paragraph 2). Voigt also teaches packaging and transport of decorated cupcakes (see figure 2 and 7 and paragraph 27).
It would therefore have been obvious to one having ordinary skill in the art to have packaged the cupcakes for travel so as to protect the decorated cupcakes during transport.
Claim 20 newly recites that “the container component is a PVC container comprising a stone ornamentation component attached to an exterior of the PVC container.”
It is noted that the limitation “the container component is a PVC container,” encompass and been construed to mean that “the container component comprises a PVC container” such that a PVC transparent area as part of a container component would read on the limitation.
Nonetheless, regarding the container component is a PVC container, the claim differs from Cutefetti in this regard.
Baryshyan teaches containers for holding desserts such as cupcake, which can comprise a transparent area that can be used for viewing the contents (see figure 8 and paragraph 9, 23 and 40) and Thiolat teaches a transparent window (see figure 1, item 30) for a cardboard box for foods such as pastries (page 4 of the machine translation, last four lines) and which transparent window can be made from PVC (see page 5, lines 11-12 of the machine translation). Thiolat also teaches what can be construed as a detachable lid (see page 3 of the machine translation, lines 5-10). Since Baryshyan already suggests a transparent viewing area to modify the combination and to use transparent PVC as the material of the viewing area would have been obvious to one having ordinary skill in the art, based on conventional transparent films for viewing the contents of a container.
Further regarding the container component is a PVC container, Verba teaches decorating kits that can comprise cupcakes (see paragraph 24, 29 and figure 4) within a plastic container (see paragraph 29, “plastic inert 51”) and which container is closed by a clear plastic top (see paragraph 27). This would have suggested a plastic container for a decorating kit. Kinseth further teaches plastic containers for packaging decorating kits (see the image on page 2 and 4). Nonetheless, Gunn further teaches containers for transporting cupcakes and other pastry items, and which container can be made from plastics such as PVC (see paragraph 28). Priestley further teaches packaging systems that can comprise boxes (see figure 3 and paragraph 37 and 39) and which box can be used as providing a gift (see the abstract) and which box can be made from materials including paper and cardboard as well as PVC (see paragraph 45).
Since the prior art is teaching party favors (i.e. gifts) as well as packages that are used for decorating kits and kits to contain foods such as cupcakes, to therefore modify the combination and use another type of container for kits and for transporting cupcakes such as PVC would have been obvious to one having ordinary skill in the art, as a matter of engineering and/or design.
Regarding the container comprising a stone ornamentation, Huang and Johnson have been relied on as already discussed above with respect to claims 1 and 15 to teach attaching ornamentation such as beads and stone ornamentation to the exterior of a container for visual appeal and to accordingly modify Cutefetti in this regard would have been obvious to one having ordinary skill in the art for this same purpose.
Response to Arguments
Applicant’s arguments on pages 6-8 have been considered and the rejections under 35 U.S.C. 112b have been withdrawn in light of the amendments to the claims.
Applicant’s arguments on pages 8-9 of the response are moot in view of the new grounds of rejection necessitated by the amendment to the claims.
Applicant’s arguments on pages 9-13 are also directed to the newly presented limitations and are moot in view of the new grounds of rejection as necessitated by the amendment to the claims.
On page 10 of the response, Applicant urges that Baryshyan does not teach or suggest a completely removable lid, as now required in claim 15.
This argument is not persuasive in view of the new grounds of rejection and because Applicant’s arguments are not commensurate in scope with the claims. That is, the claims do not recite “a completely removable lid” but rather, only recites “a detachable lid” without providing any specificity regarding what constitutes a lid that is detachable. Furthermore, as Baryshyan’s lid is made from cardboard, and as claim 15 is a product claim, it would have been obvious to one having ordinary skill in the art that Baryshyan’s lid would have been capable of being detached, such as by cutting the lid (i.e. detachable). It is also noted however, that Thiolat also teaches a lid that can be construed as being completely detachable (see figure 2, item 30 and page 2, lines 5-10 of the machine translation).
Applicant’s remarks on pages 12-13 of the response directed to the new limitations presented in claim 20 have been considered but are moot in view of the new grounds of rejection, as presented in this Office Action.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
Chen (TW M322757 U) teaches that it has been known in the art of providing decoration to storage boxes, to attach stone such as gemstones onto the exterior of the box for the purpose of providing a particular design to the box (see page 2 of the machine translation, lines 9-11).
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.
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/VIREN A THAKUR/Primary Examiner, Art Unit 1792