DETAILED ACTION
Election/Restrictions
Applicant’s election of Species 1C, directed to a light-emitting hanging piece with a sheet-shaped main component, and 3A, directed to a light-emitting hanging piece including an illumination device arranged on the top of the main body, in the reply filed on December 12, 2025 is acknowledged. Because Applicant did not distinctly and specifically point out any supposed errors in the restriction requirement, the election has been treated as an election without traverse (MPEP § 818.01(a)).
Applicant also confirmed by telephone on January 30, 2026 that they wish to change their Species Group 2 election to Species 2A, directed to an illumination source including a light-emitting diode, controller, and battery, rather than Species 2B. Resultant of this election, Applicant confirmed that claims 8-10 should be considered withdrawn from consideration, while claim 4 should be considered no longer withdrawn. Therefore, claims 1-5 are examined herein, as being encompassed by the elected species, and claims 6-10 are withdrawn from consideration.
Claim Rejections - 35 USC § 112
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.
Claims 1-6 are rejected under 35 U.S.C. 112(b) as being indefinite for failing to particularly point out and distinctly claim the subject matter the inventor regards as the invention.
The meaning of claim 1 is unclear because it recites “a main body made of transparent material, in which an image customized by thermal transfer is provided.” As the instant disclosure teaches that thermal transfer printing applies an image to another surface, it is unclear if the recited “in which an image…is provided” is intended to indicate that the image is literally inside of the main body or if the image is part of the main body, or even “on” the main body. Appropriate correction and/or explanation are required.
Claim 1 is further indefinite because it recites a “chain rope for hanging is provided on the upper part of the main body”. The meaning of the limitation is unclear because the term “chain rope” is not defined in the instant disclosure and does not appear to have an accepted meaning in the art. The recited “the upper part of the main body” is indefinite because “an upper part of the main body” has not been previously defined and, therefore, the terms lacks proper antecedent basis in the claim. For the sake of compact prosecution and because it is consistent with what is depicted in Figure 1, a “chain rope” is considered herein to refer to a “string” or “strand”. Appropriate correction and explanation are required.
Claim 1 is further indefinite because it recites that a thermal transfer printing emits light. However, as the only device or material disclosed that is necessarily capable of emitting light is a light emitting diode (“LED”), it appears that the usage of the term “emit” to describe light exiting the thermal transfer printed layers is inconsistent with what actually occurs and is not commensurate with Applicant’s intended invention. For the sake of compact prosecution, an image that “transmits” light is considered herein to qualify as “emitting” light in the context of the claims. Appropriate correction and/or explanation are required.
Claims 2-6 are also rejected under 35 U.S.C. 112(b) because they depend from claim 1.
Claim Rejections - 35 USC § 102/103
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.
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 1-5 are rejected under 35 U.S.C. 102(a)(1) as anticipated by or, in the alternative, under 35 U.S.C. 103 as obvious over Wang (US Pat. No. 10,274,179).
Regarding claims 1-3 and 5, Wang teaches a light-emitting hanging piece comprising a sheet-shaped main body (3) made of light-transmissive (i.e. “transparent”) material in/on which an layers of images (33, 36) are provided and one illumination device (4, 41-44) arranged on an upper part of the main body that injects light into the main body to make the images transmit (i.e. “emit”) light (Figs. 1-4; col. 2, ln. 32-67; col. 3, ln. 36-51). The images may be formed by color printing and/or fluorescent coating (col. 2, ln. 63-64).
The illumination device on the ornament also includes a through-hole (25) and Wang teaches that a string (i.e. “chain rope”) can be provided through the through-hole for hanging the ornament (col. 3, ln. 28-31). Therefore, Wang anticipates an ornament, as just described, wherein the discussed illumination device includes a string (i.e. “chain rope”) arranged as claimed.
The claim requirement that the recited image(s) are formed by thermal transfer printing is a product-by-process limitation. Product-by-process claims are not limited by the recited processing steps, but rather by the structure implied by the recited procedure. See MPEP 2113. As no composition or structure is recited for the images other than that they are in the form of one or more layers, each of Wang’s layers of images meet the claim requirement because it has the limited structure that is implied.
The images disclosed by Wang meet the claim requirement of the recited images having been customized because there is no apparent, structural difference between images that have been customized and images that have not been customized.
Regarding claim 4, Wang’s ornament includes one illumination device arranged on the upper part of the main body that comprises color-changing light emitting diodes (“LEDs”), a switch (i.e. “controller”) for controlling the device, a battery, and a through-hole(col. 3, ln. 9-36).
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 1-5 are rejected under 35 U.S.C. 103 as being unpatentable over Wang in view of MrErdreich (MrErdreich, “Unique Glossy Photo Ornaments”, 2020, p. 1-19).
Regarding claims 1-5, as discussed above, Wang teaches an ornament that is considered herein to have the structure required of claims 1-5.
To the extent that Wang’s lack of an explicit teaching of forming images with thermal transfer printing is considered a difference from the current invention, it is noted that Wang does disclose that the images on the main body may be formed by a variety of different methods, including painting, color printing, and others (col. 2, ln. 62-67), making clear that the method of forming the image layers is not particularly limited. MrErdreich further teaches that dye sublimation printing is a type of color printing that uses heat to transfer dye onto a material (i.e. dye sublimation printing is a type of thermal transfer printing), is relatively cost effective, is versatile, is applicable to various materials, and can be used to make unique and professional-looking ornaments (p. 1-2, text). Accordingly, it would have been obvious to one of ordinary skill in the art to utilize dye sublimation printing, which is a type of color thermal transfer printing, to form the layers of images on/in the main body of Wang’s ornament because it is cost-effective, versatile, and can be used to make unique and professional-looking ornaments.
As noted above, the main body in Wang’s ornament is light-transmissive and, therefore, considered herein to qualify as “transparent” in the context of the claimed invention. To the extent that Wang’s lack of an explicit teaching of the main body being made from a “transparent” material is considered a difference from the current invention, it is noted that it would have been obvious to one of ordinary skill in the art to make the main body from one or more transparent materials because the main body is made up of multiple, sheet-like layers including images and Wang makes clear that the images in all of the layers (Figs. 2-4; col. 2, ln. 45-51), including the backmost layer, are intended to be visible depending on how they are illuminated, and in order to make the images in the back layers as visible as possible, which would be best achieved with at least the front and/or middle layers being transparent, at least in areas that are not printed with part of an image.
As also noted above, Wang’s images, which transmit light, are considered herein to meet the limitation of being able to “emit light” when the illumination device injects light into them. To the extent that Wang’s lack of an explicit teaching of the images emitting light is considered a difference from the current invention, it is noted that Wang does teach that the images may be formed with fluorescent paint (col. 2, ln. 62-67). As such, it would have been obvious to one of ordinary skill in the art to make Wang’s images from at least some fluorescent paint, including wherein the paint fluoresces (i.e. emits light) when illuminated by the LEDs because Wang explicitly teaches that fluorescent paint may be used and there would be little point in using fluorescent paint if it was not intended to fluoresce, and in order to achieve a desired decorative effect.
To the extent that Wang’s lack of explicitly exemplifying an ornament that includes a string, or “chain rope”, positioned as claimed is considered a difference from the current invention, it is noted that it would have been obvious to one of ordinary skill in the art to place a string, or “chain rope”, as claimed in order to hang the ornament and because Wang explicitly teaches doing so to be appropriate. The requirement that the string is “chain” or “rope” shaped, to the extent that such a requirement applies, is a prima facie obvious selection of shape that does not distinguish the claimed invention over the prior art. See MPEP 2144.05.
Conclusion
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