DETAILED ACTION
This is a first action reissue examination of U.S. Patent No. 11,350,776 B2 (hereafter “the ‘776 patent” and equivalent) addressing the filing dated 28 March 2024.
The following is the status of the claim under current review:
Claims 1 and 8-10 are pending and examined. Of those;
Claim 1 is amended, and
Claims 8-10 remain as patented.
Claims 2-7 are cancelled.
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 .
Original Disclosure - Definition
The present application is a reissue of US Patent No. 11,350,776 B2 which issued from App. No. 17/198,321 having a filing date of 21 March 2021. Any subject matter added during either the examination of the present reissue application or the earlier concluded examination of the 17/198,321 application does not constitute part of the “original disclosure”.
Maintenance Fees
Applicant should respectfully note that the window for the 3.5-year maintenance fee opened 07 June 2025. The window for the surcharge begins 09 December 2025 and the last day to pay is 08 June 2026. Please see https://fees.uspto.gov/MaintenanceFees/ for information to remedy this matter.
Information Disclosure Statement
This Information Disclosure Statement dated 28 March 2024, is entered.
Drawings
The drawings submitted 28 March 2024, are object to for the following:
the submitted figures appear to change the shading of the claimed invention (see, e.g., patented Fig. 4b, which shows several different shades, in comparison to amended Fig. 4b which shows only 2). Amended figures must be identified as “Amended” (see below).
Figs. 2 and 3 have multiple images, however each one is not individually labeled as “Fig. X”.
Fig. 1, element 3 is labeled as “drawings” (Col. 2, line 39); this does not appear to coincide with what element 3 identifies.
The figures contain different numbers for the same element. For example, Fig. 2 labels the tray as “4” and Fig. 3 labels the tray as “3”; a second example is that Fig. 7 appears to labels 17 and 19 as the same limitation, but lists 17 as “two surfaces” and 18 as “longitudinal edge” (Col. 3). The reference characters should be kept consistent with respect to the same features. These are intended to be examples and not inclusive.
Corrected drawing sheets in compliance with 37 CFR 1.173(b)(3) are required in reply to the Office action to avoid abandonment of the application. Amendments in reissue applications are different from standard utility application practice and are governed by 37 CFR 1.173. In particular, 37 CFR 1.173(b)(3) reads, with emphasis added:
Drawings. One or more patent drawings shall be amended in the following manner: Any changes to a patent drawing must be submitted as a replacement sheet of drawings which shall be an attachment to the amendment document. Any replacement sheet of drawings must be in compliance with § 1.84 and shall include all of the figures appearing on the original version of the sheet, even if only one figure is amended. Amended figures must be identified as "Amended," and any added figure must be identified as "New." In the event that a figure is canceled, the figure must be surrounded by brackets and identified as "Canceled." All changes to the drawing(s) shall be explained, in detail, beginning on a separate sheet accompanying the papers including the amendment to the drawings.
(i) A marked-up copy of any amended drawing figure, including annotations indicating the changes made, may be included. The marked-up copy must be clearly labeled as "Annotated Marked-up Drawings" and must be presented in the amendment or remarks section that explains the change to the drawings.
(ii) A marked-up copy of any amended drawing figure, including annotations indicating the changes made, must be provided when required by the examiner.
The objection to the drawings will not be held in abeyance. See also MPEP 1453.
Specification
Specification – generalities:
Content of Specification
(a) TITLE OF THE INVENTION: See 37 CFR 1.72(a) and MPEP § 606. The title of the invention should be placed at the top of the first page of the specification unless the title is provided in an application data sheet. The title of the invention should be brief but technically accurate and descriptive, preferably from two to seven words. It may not contain more than 500 characters.
(b) CROSS-REFERENCES TO RELATED APPLICATIONS: See 37 CFR 1.78 and MPEP § 211 et seq.
(c) STATEMENT REGARDING FEDERALLY SPONSORED RESEARCH OR DEVELOPMENT: See MPEP § 310.
(d) THE NAMES OF THE PARTIES TO A JOINT RESEARCH AGREEMENT. See 37 CFR 1.71(g).
(e) INCORPORATION-BY-REFERENCE OF MATERIAL SUBMITTED ON A READ-ONLY OPTICAL DISC, AS A TEXT FILE OR AN XML FILE VIA THE PATENT ELECTRONIC SYSTEM: The specification is required to include an incorporation-by-reference of electronic documents that are to become part of the permanent United States Patent and Trademark Office records in the file of a patent application. See 37 CFR 1.77(b)(5) and MPEP § 608.05. See also the Legal Framework for Patent Electronic System posted on the USPTO website (https://www.uspto.gov/sites/default/files/documents/2019LegalFrameworkPES.pdf) and MPEP § 502.05
(f) STATEMENT REGARDING PRIOR DISCLOSURES BY THE INVENTOR OR A JOINT INVENTOR. See 35 U.S.C. 102(b) and 37 CFR 1.77.
(g) BACKGROUND OF THE INVENTION: See MPEP § 608.01(c). The specification should set forth the Background of the Invention in two parts:
(1) Field of the Invention: A statement of the field of art to which the invention pertains. This statement may include a paraphrasing of the applicable U.S. patent classification definitions of the subject matter of the claimed invention. This item may also be titled “Technical Field.”
(2) Description of the Related Art including information disclosed under 37 CFR 1.97 and 37 CFR 1.98: A description of the related art known to the applicant and including, if applicable, references to specific related art and problems involved in the prior art which are solved by the applicant’s invention. This item may also be titled “Background Art.”
(h) BRIEF SUMMARY OF THE INVENTION: See MPEP § 608.01(d). A brief summary or general statement of the invention as set forth in 37 CFR 1.73. The summary is separate and distinct from the abstract and is directed toward the invention rather than the disclosure as a whole. The summary may point out the advantages of the invention or how it solves problems previously existent in the prior art (and preferably indicated in the Background of the Invention). In chemical cases it should point out in general terms the utility of the invention. If possible, the nature and gist of the invention or the inventive concept should be set forth. Objects of the invention should be treated briefly and only to the extent that they contribute to an understanding of the invention.
(i) BRIEF DESCRIPTION OF THE SEVERAL VIEWS OF THE DRAWING(S): See MPEP § 608.01(f). A reference to and brief description of the drawing(s) as set forth in 37 CFR 1.74.
(j) DETAILED DESCRIPTION OF THE INVENTION: See MPEP § 608.01(g). A description of the preferred embodiment(s) of the invention as required in 37 CFR 1.71. The description should be as short and specific as is necessary to describe the invention adequately and accurately. Where elements or groups of elements, compounds, and processes, which are conventional and generally widely known in the field of the invention described, and their exact nature or type is not necessary for an understanding and use of the invention by a person skilled in the art, they should not be described in detail. However, where particularly complicated subject matter is involved or where the elements, compounds, or processes may not be commonly or widely known in the field, the specification should refer to another patent or readily available publication which adequately describes the subject matter.
(k) CLAIM OR CLAIMS: See 37 CFR 1.75 and MPEP § 608.01(m). The claim or claims must commence on a separate sheet or electronic page (37 CFR 1.52(b)(3)). Where a claim sets forth a plurality of elements or steps, each element or step of the claim should be separated by a line indentation. There may be plural indentations to further segregate subcombinations or related steps. See 37 CFR 1.75 and MPEP 608.01(i) - (p).
(l) ABSTRACT OF THE DISCLOSURE: See 37 CFR 1.72 (b) and MPEP § 608.01(b). The abstract is a brief narrative of the disclosure as a whole, as concise as the disclosure permits, in a single paragraph preferably not exceeding 150 words, commencing on a separate sheet following the claims. In an international application which has entered the national stage (37 CFR 1.491(b)), the applicant need not submit an abstract commencing on a separate sheet if an abstract was published with the international application under PCT Article 21. The abstract that appears on the cover page of the pamphlet published by the International Bureau (IB) of the World Intellectual Property Organization (WIPO) is the abstract that will be used by the USPTO. See MPEP § 1893.03(e).
(m) SEQUENCE LISTING: See 37 CFR 1.821 - 1.825 and MPEP §§ 2421 - 2431. The requirement for a sequence listing applies to all sequences disclosed in a given application, whether the sequences are claimed or not. See MPEP § 2422.01.
The specification is objected to as it does not contain any of the headings listed above other than the title.
Objection – different reference numbers used for the same limitation
See drawings objections above, which addresses that the same limitation incorporates different reference characters.
Objection – general informalities:
The specification is objected to, as the specification is replete with issues that render the disclosure unclear. For example, Col. 1, lines12 and 13 appears to be an incomplete sentence; line 16 “empts” is interpreted as “empties”; lines 50, 51 are a second example of an incomplete sentence. Applicant is encouraged to review the disclosure to ensure what is provided is what is intended.
Objection – title:
The title of the invention is objected to as it is directed to “Tablecloth for Trays” whereas the claim is directed to a “Paper mat for fast food trays”. A tablecloth, as used in the art, covers a table; however the claimed invention covers a fast food tray, which is different from a table.
A new title is required that is clearly indicative of the invention to which the claims are directed.
35 USC §251
The following is a quotation of 35 USC §251:
(a) IN GENERAL.—Whenever any patent is, through error, deemed wholly or partly inoperative or invalid, by reason of a defective specification or drawing, or by reason of the patentee claiming more or less than he had a right to claim in the patent, the Director shall, on the surrender of such patent and the payment of the fee required by law, reissue the patent for the invention disclosed in the original patent, and in accordance with a new and amended application, for the unexpired part of the term of the original patent. No new matter shall be introduced into the application for reissue.
(b) MULTIPLE REISSUED PATENTS.— The Director may issue several reissued patents for distinct and separate parts of the thing patented, upon demand of the applicant, and upon payment of the required fee for a reissue for each of such reissued patents.
(c) APPLICABILITY OF THIS TITLE.— The provisions of this title relating to applications for patent shall be applicable to applications for reissue of a patent, except that application for reissue may be made and sworn to by the assignee of the entire interest if the application does not seek to enlarge the scope of the claims of the original patent or the application for the original patent was filed by the assignee of the entire interest.
(d) REISSUE PATENT ENLARGING SCOPE OF CLAIMS.—No reissued patent shall be granted enlarging the scope of the claims of the original patent unless applied for within two years from the grant of the original patent.
35 USC 251 – recapture:
Claims 1 and thereby 8-10 are rejected under 35 U.S.C. 251 as being an improper recapture of broadened claimed subject matter surrendered in the application for the patent upon which the present reissue is based. See Greenliant Systems, Inc. et al v. Xicor LLC, 692 F.3d 1261, 103 USPQ2d 1951 (Fed. Cir. 2012); In re Shahram Mostafazadeh and Joseph O. Smith, 643 F.3d 1353, 98 USPQ2d 1639 (Fed. Cir. 2011); North American Container, Inc. v. Plastipak Packaging, Inc., 415 F.3d 1335, 75 USPQ2d 1545 (Fed. Cir. 2005); Pannu v. Storz Instruments Inc., 258 F.3d 1366, 59 USPQ2d 1597 (Fed. Cir. 2001); Hester Industries, Inc. v. Stein, Inc., 142 F.3d 1472, 46 USPQ2d 1641 (Fed. Cir. 1998); In re Clement, 131 F.3d 1464, 45 USPQ2d 1161 (Fed. Cir. 1997); Ball Corp. v. United States, 729 F.2d 1429, 1436, 221 USPQ 289, 295 (Fed. Cir. 1984). A broadening aspect is present in the reissue which was not present in the application for patent. The record of the application for the patent shows that the broadening aspect (in the reissue) relates to claimed subject matter that applicant previously surrendered during the prosecution of the application. Accordingly, the narrow scope of the claims in the patent was not an error within the meaning of 35 U.S.C. 251, and the broader scope of claim subject matter surrendered in the application for the patent cannot be recaptured by the filing of the present reissue application.
MPEP 1412.02 establishes a three-step test for recapture. The three-step process is as follows:
(1) first, we determine whether, and in what respect, the reissue claims are broader in scope than the original patent claims;
(2) next, we determine whether the broader aspects of the reissue claims relate to subject matter surrendered in the original prosecution; and
(3) finally, we determine whether the reissue claims were materially narrowed in other respects, so that the claims may not have been enlarged, and hence avoid the recapture rule.
Step 1:
Claim 1, and thereby dependent claims 8-10 are broader than patented claims 1 and 8-10, respectively. Claim 1, as amended does not require an upper ceiling of four folding areas, as the language “at most” has been deleted.
Therefore step 1 of the three-step test is met for claims 1 and 8-10.
Step 2:
The step of determining whether the broader aspects of the reissue claims relate to subject matter surrendered in the original prosecution includes two sub-steps. The first sub-step is to determine whether the applicant surrendered any subject matter in the prosecution of the original application. MPEP 1412.02 defines surrendered subject matter as a claim limitation that was originally relied upon by applicant in the original prosecution to make the claims allowable over the art.
MPEP 1412.02(I)(B)(1)(A) states “[w]ith respect to whether applicant surrendered any subject matter, it is to be noted that a patent owner (reissue applicant) is bound by the argument that applicant relied upon to overcome an art rejection in the original application for the patent to be reissued, regardless of whether the Office adopted the argument in allowing the claims. Greenliant Systems, Inc. v. Xicor LLC, 692 F.3d 1261, 1271, 103 USPQ2d 1951, 1958 (Fed. Cir. 2012). As pointed out by the court, ‘[i]t does not matter whether the examiner or the Board adopted a certain argument for allowance; the sole question is whether the argument was made.’ Id.”
During the prosecution of the ‘776 patent, the Examiner rejected filed claims 1 and 2 under 35 USC 112(b) and under 35 USC 102(a)(1) citing Cohen (U.S. Patent 5,28,099). Remaining filed claims 3-5 were withdrawn as being improper multiple dependent claims. The Applicant responded by cancelling claims 1-5 and submitting new claims 6-10, which were completely different in language from filed claims 1-5, respectively.
Therefore, the Patent Owner wrote new claim 6 and added completely new limitations, including the language at issue. Therefore, the presented claims as amended must include the limitations of claim 6. Claim 6, as now presented, fails to disclose the language noting that four is no longer an upper boundary for the number of fold areas, which was language that made the claim allowable.
Therefore, the limitation of “at least three and at most [four folding areas]” are limitations which are considered surrendered subject matter.
The second sub-step is to determine whether any of the broadening of the reissue claims is in the area of the surrendered subject matter. The examiner must analyze all of the broadening aspects of the reissue claims to determine if any of the omitted/broadened limitation(s) are directed to limitations relied upon by applicant in the original application to make the claims allowable over the art.
Therefore step 2 of the three-part test is met.
Step 3:
MPEP 1412.02(I)(B)(1)(B) states “[w]ith respect to the “second step” in the recapture analysis, it is to be noted that if the reissue claim(s), are broadened with respect to the previously surrendered subject matter, then recapture will be present regardless of other unrelated narrowing limitations. In the decision of In re Mostafazadeh, 643 F.3d 1353, 98 USPQ2d 1639 (Fed. Cir. 2011), the Federal Circuit stated:
[T]he recapture rule is violated when a limitation added during prosecution is eliminated entirely, even if other narrowing limitations are added to the claim. If the added limitation is modified but not eliminated, the claims must be materially narrowed relative to the surrendered subject matter such that the surrendered subject matter is not entirely or substantially recaptured. Id. at 1361.”
Therefore, the third step of the analysis does not need to be performed for claim 1, because the newly added language narrowing claim 1 does not materially narrow the surrendered subject matter of “at least three and at most four”.
Therefore, claim 1, and thereby dependent claims 8-10 improperly recapture surrendered subject matter, and as a result, are rejected under 35 USC 251.
Claim Rejections - 35 USC § 112
35 USC 112(a) – scope of enablement:
The following is a quotation of the first paragraph of 35 U.S.C. 112(a):
(a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
The following is a quotation of the first paragraph of pre-AIA 35 U.S.C. 112:
The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention.
Claims 1, and thereby 8-10 are rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, because the specification, while being enabling for the paper mat, it does not reasonably provide enablement for “generating information or publicity space” (claim 1, lines 13 and 14). The specification does not enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the invention commensurate in scope with these claims. The claim is directed to a paper mat used with fast food trays (preamble). The mat has folding areas and lines to have it conform to the shape of the tray. The claim has been amended to add language directed to “generating information or publicity space”. It is unclear how generating something relates to a paper mat and how a paper mat is capable of “generating information or publicity space”. Review of the specification only provides language related to what appears to be a summary of the invention (Col. 2, lines 16-19), but language directed to this feature are not clearly provided.
Those claims listed under this heading but not directly addressed are rejected as being dependent from a rejected claim, either directly or indirectly.
35 USC 112(b) - Indefiniteness:
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 1 and 8-10 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.
Below is a reproduction of the claims with the examiner’s comments in bold italics.
Claim 1: A paper mat (1) for fast food trays, characterized in that it (pronouns should not be used in place of the claimed limitation to avoid indefiniteness as to what is being referenced – e.g., “said paper mat”) comprises a central area (9) and, at both side ends (“both side ends” is indefinite as it lacks antecedent basis and the language is unclear as a mat can have more than two, in reference to “both” side ends), four folding areas (5, 6, 7, 8, 10, 11, 12, 13) defined and divided from one another and regarding such central area (9) (“such” is not proper reference to antecedent basis, as opposed to “the” or “said”, indefinite as written as to how a folding area can “regard” the central area) by parallel folding lines (2), matching each of such folding areas (“such” is indefinite for reasons previously provided, indefinite as to how “parallel folding lines” match folding areas as written) with the contour shape (lacks antecedent basis) of the side end (lacks antecedent basis) of such trays (indefinite for reasons previously provided), fully mimicking such contour (indefinite as to the metes and bounds of “mimicking” with respect to what is mimicking a contour) so as to completely cover each of such respective areas (indefinite as to what areas are being referenced) below each folding area (“each folding area” lacks antecedent basis; further “below” is indefinite as it is a constant direction regardless of the orientation of the limitations), such mat (indefinite for reasons previously provided) fully fitting the side ends (lacks antecedent basis) of such tray (indefinite for reasons previously provided) and, between the second and the third folding areas (“second’ and “third” are indefinite with respect to the folding areas, and it is unclear as to the relationship between the folding areas and mat) (6. 7, 11, 12) considered from such central area (indefinite for reasons previously provided) (9), skew folding lines (lacks antecedent basis, further indefinite as to with what the lines are “skew” – i.e., a relative direction that would make the folding lines skew) (3) intersecting at a point that is part of the parallel folding line dividing such second and third folding areas, which defines an additional folding area, in order to mimic the contour of a tray (indefinite as a “tray” has already been provided) with a curved or straight trapezoidal shape (indefinite as to the metes and bounds of what constitutes a “curved or straight trapezoidal shape”, e.g., a main surface of the tray or a cross section taken at a given location, etc.; further indefinite as to what constitutes a “curved…trapezoidal shape”), and a single folding area (18) (indefinite as to whether this references a folding area previously provided or references a different folding area) on such one or both longitudinal ends (“such” is indefinite for reasons previously provided; “longitudinal ends” lacks antecedent basis) of such central area (indefinite for reasons previously provided), and the single folding area exceeds said one or both longitudinal ends (“the single folding area exceeds…” is indefinite as to how an area, which is two-dimensional can exceed an “end” which is one-dimensional) generating information or publicity space (“indefinite as to the metes and bounds of what constitutes an “information or publicity space”, and it is unclear how this can be generated).
In addition to the above issues, the claim is indefinite as the preamble is directed to a paper mat, however, the language later claims the mat in combination with a tray. As a result, it is unclear if only the mat or the combination of mat with tray are claimed. Applicant is encouraged to either positively claim the combination of mat and tray in the preamble or claim the tray in functional terms only in the body of the claim.
Claim 8: The paper mat according to claim 1, characterized in that such folding lines (indefinite for reasons previously provided) are printed, weakened or die-cut lines, or the like (the phrase "or the like" renders the claim indefinite because the claim includes elements not actually disclosed, those encompassed by "or the like", thereby rendering the scope of the claim(s) unascertainable. See MPEP § 2173.05(d).)
.
Claim 9: The paper mat according to claim 1, characterized in that it (indefinite as to what “it” references) remains fully fit in such trays (indefinite for reasons previously provided) when in use.
Claim 10: The paper mat according to claim 1, characterized in that each of such folding areas (indefinite for reasons previously provided; also indefinite as multiple folding areas have been claimed) has a smaller surface than such central area (indefinite for reasons previously provided).
Those claims listed under this heading but not directly addressed are rejected as being dependent from a rejected claim, either directly or indirectly.
Claim Rejections - 35 USC § 103
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.
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 and 8-10 is/are rejected under 35 U.S.C. 103 as being unpatentable over Manor (U.S. Publication 2009/0254429). The claims are interpreted using the broadest reasonable interpretation in light of the specification and in light of the rejections and other matters addressed in this Action.
Below is a substantial reproduction of the claims under examination addressing all limitations, with the examiner’s comments in bold italics.
Claim 1: Manor discloses A paper mat (paragraph [0049]) for fast food trays (paragraphs [0023], [0024]), characterized in that it comprises a central area (11) and, at both side ends, a folding area (12, 13) defined and divided from one another and regarding such central area by parallel folding lines (as shown, the fold lines separating 12 and 13 from 11 are parallel), matching each of such folding areas with the contour shape of the side end of such trays (the examiner takes the position that this would occur based on the shape of the tray, as the tray is not positively claimed and 2), fully mimicking such contour so as to completely cover each of such respective areas below each folding area (as would be the result based on the shape of the tray), such mat fully fitting the side ends of such tray (as would be the result based on the shape of the tray). As best understood, Manor discloses generating information or publicity space (the coupon space 31, 32, interpreted as coupons). While Manor does not specifically disclose four folding areas, or between the second and the third folding areas (6. 7, 11, 12) considered from such central area (9), skew folding lines (3) intersecting at a point that is part of the parallel folding line dividing such second and third folding areas, which defines an additional folding area, in order to mimic the contour of a tray with a curved or straight trapezoidal shape, and a single folding area (18) on such one or both longitudinal ends of such central area, and the single folding area exceeds said one or both longitudinal ends, it is clear that a foldable area can be in “any combination or shape…having any number or combination of foldable area(s) and/or coupon(s) area” (paragraph [0062]). See also Fig. 8 which shows four folding points and Figs. 3-8 which show numerous configurations for folding the mat. It would have been obvious at the time of filing to a person having ordinary skill in the art as a matter of design choice to have this limitation because a configuration of an invention is a matter of choice that a person of ordinary skill in the art would have found obvious absent persuasive evidence that the particular configuration of the claimed subject matter was significant. In re Dailey, 357 F.2d 669, 149 USPQ 47 (CCPA 1966). See MPEP §2144.04. One having ordinary skill in the art would clearly use the language and images provided in Manor to make a mat that would conform to the shape of the underlying device as claimed.
Claim 8: the obvious modification of the prior art provides The paper mat according to claim 1, characterized in that such folding lines are printed, weakened or die-cut lines, or the like (paragraph [0047] notes the lines are “clearly printed”).
Claim 9: the obvious modification of the prior art provides The paper mat according to claim 1, characterized in that it remains fully fit in such trays when in use. The examiner takes the position that as the tray is not positively claimed, the language directed to the interrelation of the mat with the tray is fully capable of being met by the prior art based on the capability of the mat to be made in virtually any shape.
Claim 10: the obvious modification of the prior art provides The paper mat according to claim 1, characterized in that each of such folding areas has a smaller surface than such central area (as best understood, compare e.g., Fig. 8, folding area 121 to central area 11) .
Relevant Art
Clarke (U.S. Patent 2,531,255): this references teaches a similarly shaped device that has folds and areas that can conform to the shape of a tray, which is not positively claimed in the reissue.
Lebras (U.S. Publication 2004/0011860): this reference teaches a foldable container with folds and areas that can conform to the shape of a tray.
Roth (U.S. Publication 2012/0074149 A1): the reference teaches a wrap member to surround a planar surface.
Inman (U.S. Patent 2,873,060): the reference teaches a liner for a receptacle that includes parallel and skewed fold lines.
Biggs (U.S. Patent 2,330,262): this reference teaches a liner that includes parallel and skewed fold lines.
Lossner (DE 324860): this references teaches a foldable article of similar shape to the present invention that includes parallel and skewed fold lines.
Continuing Obligations
Applicant is reminded of the continuing obligation under 37 CFR 1.178(b), to timely apprise the Office of any prior or concurrent proceeding in which Patent No. 11,350,776 is or was involved. These proceedings would include any trial before the Patent Trial and Appeal Board, interferences, reissues, reexaminations, supplemental examinations, and litigation. Applicant is further reminded of the continuing obligation under 37 CFR 1.56, to timely apprise the Office of any information which is material to patentability of the claims under consideration in this reissue application. These obligations rest with each individual associated with the filing and prosecution of this application for reissue. See also MPEP §§ 1404, 1442.01 and 1442.04.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to WILLIAM V GILBERT whose telephone number is (571)272-9055. The examiner can normally be reached M-F 0800-0430 Eastern.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Eileen Lillis can be reached at 571.272.6928. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/WILLIAM V GILBERT/Reexamination Specialist, Art Unit 3993
CONFEREES:
/MATTHEW J KASZTEJNA/Reexamination Specialist, Art Unit 3993
/EILEEN D LILLIS/SPRS, Art Unit 3993