DETAILED ACTION
This Office action is in response to the applicant's filing of 05/14/2024 and response to the election/restriction requirement filed on 07/09/2025. Claims 1-6 have been elected without traverse and claims 7-20 have been withdrawn.
Claims 1-6 are pending and currently under consideration for patentability.
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
Examiner notes that no 35 USC § 101 rejection was applied due to claims 1-6 being directed to an improvement to admail advertising systems that includes a plurality of stacked sheets of printing substrate, the sheets of printing substrate including one or more fold lines and being configured to fold along the fold lines, wherein the system weighs 200 grams or less and wherein the system, when folded, include maximum dimensions of 245 mm x 156 mm x 5 mm.
Information Disclosure Statement
The information disclosure statement(s) (IDS) submitted on 05/14/2024 has/have been considered by the examiner.
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.
Claim(s) 1-6 are rejected under 35 U.S.C. 103 as being unpatentable over U.S. Publication 2020/0051463 to Melo in view of U.S. Patent 6,520,542 to Thompson.
With respect to Claim 1:
Melo teaches:
An admail advertising system including content from a plurality of clients, the system comprising: a plurality of stacked sheets of printing substrate, the sheets of printing substrate including one or more fold lines and being configured to fold along the fold lines (i.e. smart advertisement comprises layers of printing substrate including fold lines) (Melo: ¶¶ [0029] [0031] “As shown in FIG. 3, the intelligent advertisement 310 comprises a substrate 300, with a bottom face 300a and a top face 300b. As illustrated, a layer of adhesive 302 may be applied on the top face 300b of the substrate 300. A smart element 104, such as an RFID inlay, may be applied to the adhesive layer 302… In other embodiments still, substrate 300 may comprise two or more layers (not illustrated). In such embodiments, a smart element 304 may be disposed between two adjacent layers of substrate 300. Adjacent layers of the substrate 300 may be secured together by any suitable means known in the art, such as by one or more layers of adhesive.” Furthermore, as cited in ¶ [0034] “In another embodiment the advertisement 100, may be foldable, advantageously concealing or otherwise protecting the smart element 104. The folded advertisement 400 (FIG. 4) may resemble, for example, a traditional birthday or greeting card. The advertisement may have more than one fold 402. In the same context, the fold 402 of the advertisement may be a perforation 502 as can be seen in FIG. 5. Therefore, the advertisement may also have more than one perforation 502. The at least one fold 402 and at least one perforation 502 may be simultaneously utilized on the same advertisement.”);
printed indicia on the one or more sheets, the printed indicia corresponding to one or more content blocks, each content block being associated with one client (i.e. perforation separates advertisement into content blocks wherein each content is associated with a manufacturer) (Melo: ¶ [0034] “The advertisement may have more than one fold 402. In the same context, the fold 402 of the advertisement may be a perforation 502 as can be seen in FIG. 5. Therefore, the advertisement may also have more than one perforation 502. The at least one fold 402 and at least one perforation 502 may be simultaneously utilized on the same advertisement. The perforation 502 may serve as a separator or divider between the smart element 104 and the printed content 102. This particular embodiment enables the user to clearly distinguish between "advertisement" and "smart element". For example, if a retail store is having a sale (or other event with a deadline/termination date), half ( or any other fraction of the advertisement as desired by a manufacturer) of the advertisement 100 could contain printed content detailing the events of the sale e.g. percent discounted, expiration date etc. And the remaining fraction of the advertisement may contain the smart element.”);
wherein the system weighs 200 grams or less and [[wherein the system, when folded, include maximum dimensions of 245 mm x 156 mm x 5 mm]] (Examiner takes official notice that the standard weight for mail is 1 ounce or 6.75 grams) (i.e. weight of advertisement will not result in additional fees, therefore must be less than 1 ounce or 6.75 grams) (Melo: ¶¶ [0037] [0038] “Further, in some embodiments, smart element 104 may be of substantially insignificant weight, as compared to advertisement 100 so that if advertisement 100 is mailed or shipped, for example, smart element 104 will not result in additional mailing or shipping fees for advertisement 100…For example, the weight of the smart element 104 alone may be approximately half of the weight of the advertisement 100 without smart element 104. In some embodiments, the weight of the smart element 104 alone is approximately a quarter, approximately a tenth, approximately a fifth, approximately one percent, or less than one percent of the weight of the advertisement 100 without smart element.”).
Melo does not explicitly disclose wherein the system, when folded, include maximum dimensions of 245 mm x 156 mm x 5 mm.
However, Thompson further discloses wherein the system, when folded, include maximum dimensions of 245 mm x 156 mm x 5 mm (i.e. length of mail is between 5 and 6 inches or less than 245 mm, width of mail is between 3.5 and 4.25 inches or less than 156 mm, and thickness of mail is between 0.007 to 0.016 inches or less than 5 mm) (Thompson: Col. 3 Lines 45-50 “Although not limited to such, the overall size of the promotional mailer is preferably limited to a first class post card, wherein the peripheral edges define a quadrilateral having a length of between 5.0" and 6.0", in a width of between 3.5" and 4.25".” Furthermore, as cited in Col. 2 Lines 58-63 “In a particularly preferred embodiment, the redemption card 16 comprises single card which approximates the size of a credit card so as to be carried in one's wallet. The card 16 itself is thin, 0.007" to 0.016" in thickness, and has approximate dimensions of 3.375" in length and 2.125" in width.”).
Therefore, it would have been obvious to one of ordinary skill in the art, at the time the invention was made, to add Thompson’s system, when folded, include maximum dimensions of 245 mm x 156 mm x 5 mm to Melo’s admail advertising system including content from a plurality of clients. One of ordinary skill in the art would have been motivated to do in order “to incorporate the advantages and popularity of the mini-coupons or other retail incentive means into the convenience of a first class or bulk rate promotional mailer.” (Thompson: Col. 1 Lines 50-52).
With respect to Claim 2:
Melo teaches:
The system according to claim 1, wherein the system is configured to be folded in quarters (Examiner notes that if the system includes two folds then the system will be configured to be folded in quarters because 1 fold configures the system to be folded in halves) (i.e. system includes more than 1 fold such that the advertisement mail is folded in quarters) (Melo: Figs. 4 and 5 and ¶ [0034] “In another embodiment the advertisement 100, may be foldable, advantageously concealing or otherwise protecting the smart element 104. The folded advertisement 400 (FIG. 4) may resemble, for example, a traditional birthday or greeting card. The advertisement may have more than one fold 402. In the same context, the fold 402 of the advertisement may be a perforation 502 as can be seen in FIG. 5. Therefore, the advertisement may also have more than one perforation 502. The at least one fold 402 and at least one perforation 502 may be simultaneously utilized on the same advertisement.”).
With respect to Claim 3:
Melo teaches:
The system according to claim 2, wherein at least one of the plurality of clients is selected from the group consisting of retailers and news outlets (i.e. clients includes newspaper outlets and/or manufacturers of the consumer good) (Melo: ¶ [0023] “Referring now to exemplary FIG. 1, an intelligent notice such as an advertisement may be provided. The advertisement or notice 100 can be provided as a printed advertisement, for example in the form of paper, newsprint, or the like. The notice 100 may be such that it can be mailed, hand delivered, disposed or carried in a periodical, such as a magazine or newspaper, printed in a magazine or newspaper, printed on a label or adhesive shipping label, utilized as a bangtail or on a bangtail envelope, or otherwise printed and disseminated.” Furthermore, as cited in ¶ [0034] “For example, if a retail store is having a sale (or other event with a deadline/termination date), half (or any other fraction of the advertisement as desired by a manufacturer) of the advertisement 100 could contain printed content detailing the events of the sale e.g. percent discounted, expiration date etc.”).
With respect to Claim 4:
Melo teaches:
The system according to claim 2, wherein the system is an unaddressed admail system (Examiner notes, according to ¶¶ [0045] [0046] of the Applicant’s originally filed specification, “unaddressed” admail system includes mail “without an addressee and for generalized distribution”) (i.e. advertisement is distributed via newspaper/magazine) (Melo: ¶ [0023] “Referring now to exemplary FIG. 1, an intelligent notice such as an advertisement may be provided. The advertisement or notice 100 can be provided as a printed advertisement, for example in the form of paper, newsprint, or the like. The notice 100 may be such that it can be mailed, hand delivered, disposed or carried in a periodical, such as a magazine or newspaper, printed in a magazine or newspaper, printed on a label or adhesive shipping label, utilized as a bangtail or on a bangtail envelope, or otherwise printed and disseminated. In some exemplary embodiments, advertisement 100 could be utilized with respect to correspondence related to a recipient's mail or bills, for example, where advertisement 100 is included with mailed content in an envelope.”).
With respect to Claim 5:
Melo teaches:
The system according to claim 2, wherein the system is an addressed admail system (i.e. advertisement mail is addressed to recipient) (Melo: ¶ [0023] “Referring now to exemplary FIG. 1, an intelligent notice such as an advertisement may be provided. The advertisement or notice 100 can be provided as a printed advertisement, for example in the form of paper, newsprint, or the like. The notice 100 may be such that it can be mailed, hand delivered, disposed or carried in a periodical, such as a magazine or newspaper, printed in a magazine or newspaper, printed on a label or adhesive shipping label, utilized as a bangtail or on a bangtail envelope, or otherwise printed and disseminated. In some exemplary embodiments, advertisement 100 could be utilized with respect to correspondence related to a recipient's mail or bills, for example, where advertisement 100 is included with mailed content in an envelope.”).
With respect to Claim 6:
Melo teaches:
The system according to claim 2, wherein the system weight 150 grams or less (Examiner takes official notice that the standard weight for mail is 1 ounce or 6.75 grams) (i.e. weight of advertisement will not result in additional fees, therefore must be less than 1 ounce or 6.75 grams) (Melo: ¶¶ [0037] [0038] “Further, in some embodiments, smart element 104 may be of substantially insignificant weight, as compared to advertisement 100 so that if advertisement 100 is mailed or shipped, for example, smart element 104 will not result in additional mailing or shipping fees for advertisement 100…For example, the weight of the smart element 104 alone may be approximately half of the weight of the advertisement 100 without smart element 104. In some embodiments, the weight of the smart element 104 alone is approximately a quarter, approximately a tenth, approximately a fifth, approximately one percent, or less than one percent of the weight of the advertisement 100 without smart element.”).
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. The following references are cited to further show the state of the art:
U.S. Publication 2009/0087520 to Thuesen for disclosing packaging and distributing fortune cookies for dissemination to a target consumer group also are provided for. The methods comprise providing fortune cookies having an advertising insert which has an advertising message for a target consumer group. The fortune cookies are packed in a shipping carton having a machine readable indicator uniquely associated with the advertising message. The indicator is read and the carton is then shipped to consumer outlets associated with the target consumer group.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Azam Ansari, whose telephone number is (571) 272-7047. The examiner can normally be reached from Monday to Friday between 8 AM and 4:30 PM.
If any attempt to reach the examiner by telephone is unsuccessful, the examiner's supervisor, Waseem Ashraf, can be reached at (571) 270-3948.
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Applicants are invited to contact the Office to schedule either an in-person or a telephonic interview to discuss and resolve the issues set forth in this Office Action. Although an interview is not required, the Office believes that an interview can be of use to resolve any issues related to a patent application in an efficient and prompt manner.
Sincerely,
/AZAM A ANSARI/
Primary Examiner, Art Unit 3621
October 8, 2025