DETAILED ACTION
Claim Rejections - 35 USC § 102
The rejections made under 35 U.S.C. 102 in view of Idaho3DPrinting (Idaho3DPrinting, “Hats - Astronaut - Magnetic *Hat Only*” on Etsy.com, p. 1-5, Available for sale as early as 1/30/2021) in the previous Office Action are withdrawn in view of Applicant’s amendment, filed December 24, 2025.
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.
Claims 1 and 2 are rejected under 35 U.S.C. 103 as being unpatentable over Jost (US Pat. No. 7,954,264) in view of Quaine (US PG Pub. No. 2015/0272369) and, optionally, Syntego (Syntego, “Masking Tape Decorative Self Adhesive Washi Tape 15 mm x 10 m (Holographic Stars)”, available for public sale as early as 7/18/2020 on Amazon.de, p. 1-11).
Regarding claims 1 and 2, Jost teaches an ornament (“modular Christmas ornament”) comprising an ornament body (3, 8, 10, 12, 14, 16; 20), an ornament cap (2; 22), and a hook (6) connected to a top portion of the cap (Figs. 1-3; col. 2, 51-65; col. 4, ln. 7-26).
The ornament body is made up of strips of material whose interior surfaces are decorated with reflective materials (col. 2, ln. 51-65; col. 3, ln. 60-col. 4, ln. 6). In addition to the reflective materials being visible when the ornament is in an expanded confirmation, Jost teaches that there are gaps between the strips of material (col. 2, ln. 58-59), which allow the internal decorations to be visible from outside the ornament body even when the ornament is not in an expanded state. As such, Jost’s ornament includes an internal decoration (i.e. the reflective materials on the inner surfaces of the strips) disposed within the ornament body and positioned as claimed. Jost’s ornament body (22) further includes a permanent magnet “attachment plate” (35) that is disposed at the top portion of the body (Fig. 3; col. 4, ln. 37-40).
The teachings of Jost differ from the current invention in that he does not teach that the internal decoration includes a star, snowman, Santa Clause, or a reindeer. However, Joss does teach that suitable materials for the strips include holographic materials and materials with different colors and designs (col. 3, ln. 60-col. 4, ln. 6). Accordingly, it would have been obvious to one of ordinary skill in the art to configure the reflective inner surfaces of Jost’s strips, which are internal decorations, to be holographic and/or have a design because Jost explicitly teaches doing so to be appropriate.
Syntego further teaches a holographic tape with a star design that is perfect for arts and crafts, including for Christmas, that can be safely used to add color to almost any project (p. 2). As shown in the photograph on page 1, the disclosed decorative, holographic tape has a decorative pattern with many stars (p. 1). As such, it would have been obvious to one of ordinary skill in the art to utilize Syntego’s decorative holographic tape with a star pattern as the holographic tape adorning the interior of Jost’s ornament because Syntego’s tape is perfect for arts and crafts, including Christmas arts or crafts, and can be used to safely add color to almost any project, and in order to achieve a desired decorative effect. Therefore, the product of Jost and Syntego includes an internal decoration disposed within the ornament body that is a star. Furthermore, given that it is of ornamentation only, with no mechanical function, the claim requirement that the internal decoration be a star, snowman, Santa Clause, or reindeer, is a prima facie obvious aesthetic design choice that does not distinguish the claimed invention over the prior art. See MPEP 2144.04.
The teachings of Jost might be considered to differ from the current invention in that his ornament cap is not explicitly taught to include a magnet that “corresponds” to, couples to, and interacts with the ornament body magnet as claimed. However, Jost does teach that the cap includes a coupling plate (33) within it that is intended to be magnetically attracted to the attachment plate (35), which behaves as claimed (Fig. 3; col. 4, ln. 37-40). Jost also teaches that the coupling plate may be made from a material that is attracted to magnets (col. 4, ln. 17-19). Quaine further teaches using sets of two cooperating magnets that may be removably secured to each other to form connections and serve as removable fasteners in an ornamental display system (par. 18). Therefore, it would have been obvious to one of ordinary skill in the art to utilize an additional magnet as the coupling plate in Jost’s ornament cap because Jost teaches that the coupling plate may be made of a material that is attracted to magnets and Quaine discloses that pairs of magnets are attracted to each other, thereby establishing that another magnet is one of such materials referenced by Jost, and because Quaine teaches and demonstrates that pairs of magnets are effective and useful as connectors and for forming connections in ornamental displays. As noted above, the internal decorations in Jost’s ornament are visible even when the ornament is not expanded. Therefore, the internal decoration in the ornament of Jost and Quaine remains visible from the outside of the ornament body when the cap is connected to the ornament body magnet.
The claim requirements that the recited product is modular and is an ornament for Christmas, and that the hanger is “to allow the modular Christmas ornament to be hung from an external object” are statements of intended use. The prior art ornament meets the claim requirements because it is capable of being used as claimed.
Response to Arguments
Applicant's arguments filed December 24, 2025 have been fully considered but they are not persuasive or are moot in view of the current rejections.
Applicant has argued that claim 1, as now amended, is distinguished over Jost because Jost does not teach an internal decoration that is one of the recited figures. However, as discussed above, Jost does teach including internal decorations in his ornament that are visible from the outside, which he further discloses can have various decorative designs and it would have been obvious in view of Syntego to include stars in those internal decorations for the reasons discussed above. Furthermore, given that it is of ornamentation only, with no mechanical function, the claim requirement that the internal decoration be a star, snowman, Santa Clause, or reindeer, is a prima facie obvious aesthetic design choice that does not distinguish the claimed invention over the prior art. See MPEP 2144.04.
Applicant’s arguments regarding Idaho3DPrinting are moot because they do not apply to the current rejections.
Conclusion
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.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to JULIA L RUMMEL whose telephone number is (571)272-6288. The examiner can normally be reached Monday-Thursday, 8:30 am -5:00 pm PT.
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/JULIA L. RUMMEL/
Examiner
Art Unit 1784
/HUMERA N. SHEIKH/Supervisory Patent Examiner, Art Unit 1784