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 .
Election/Restrictions
Applicant’s election without traverse of Group I, claims 1-8 and 15 in the reply filed on March 30, 2026 is acknowledged.
Claims 9-14 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected invention, there being no allowable generic or linking claim. Election was made without traverse in the reply filed on March 30, 2026.
Priority
Receipt is acknowledged of certified copies of papers required by 37 CFR 1.55.
Information Disclosure Statement
The information disclosure statements (IDS) submitted on 11/14/2024 and 06/06/2025 have been considered by the examiner.
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.
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 1-8 and 15 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.
Regarding claim 1, the limitation reciting “wherein a relative distance between the successive carriers when the carriers extend in the same plane is alternately equal to or less than one millimetre or equal to twice a thickness of a carrier or deviates less than one millimetre therefrom” is indefinite because the scope of the phrase “equal to twice a thickness of a carrier or deviates less than one millimetre therefrom” is not clear.
Specifically, it is not clear whether this limitation is intended to require that the distance between the successive carriers is: (1) less than or equal to 1 mm, (2) equal to twice the thickness of a carrier, or (3) within 1 mm of the thickness of a carrier, or if this limitation is intended to require that the distance between the successive carriers is: (1) less than or equal to 1 mm, or (2) within 1 mm of twice the thickness of a carrier. In other words, it is not clear whether the phrase “deviates less than one millimetre therefrom” is intended to refer to an amount of deviation from the thickness of the carrier or to an amount of deviation from twice the thickness of the carrier.
The instant specification merely repeats the same language as is used in the claim and does not provide any further clarification as to what is meant by the aforementioned limitation. For the purpose of applying prior art, either of the interpretations set forth above will be interpreted as satisfying the current language of the claim. Clarification from the Applicant is respectfully requested.
Regarding claim 4, the limitation reciting “wherein the carrier is produced from…” is indefinite because the term “the carrier” lacks proper antecedent basis in the claims. In order to maintain proper antecedent basis throughout the claims, the limitation in claim 4 should be amended to recite --wherein the carriers are produced from…--, consistent with the language set forth in claim 1.
Regarding claims 2, 3, 5-8, and 15, the claims are rejected based on their dependency on claim 1.
Claim Rejections - 35 USC § 102
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 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.
(a)(2) the claimed invention was described in a patent issued under section 151, or in an application for patent published or deemed published under section 122(b), in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention.
Claims 1-5, 7, 8, and 15 are rejected under 35 U.S.C. 102(a)(1) and 35 U.S.C. 102(a)(2) as being anticipated by Raymond et al. (US 5,868,429).
Regarding claim 1, Raymond et al. teaches a foldable product (10; semi-finished product) having a plurality of spaced apart rectangular panels (P1, P2) which are arranged in horizontal rows and vertical columns (col 3, Ln 1-5; Figs. 1-2). Each panel is made up of a central, relatively stiff, paperboard sheet (12) having upper and lower display surfaces and waterproof, transparent upper and lower outer laminating sheets (14, 16) which extend across the paperboard sheets and across the spaces between them (col 3, Ln 5-12; Figs. 3-5).
PNG
media_image1.png
269
550
media_image1.png
Greyscale
Raymond et al. teaches that the paperboard sheet of each panel may be entirely separate from each other paperboard sheet (col 2, Ln 2-4). The paperboard sheets (12) therefore correspond to the claimed carriers which are successively applied on the second side of the lower laminating sheet (16; film). Raymond et al. further teaches that the outer laminating sheets may be formed of polyester or polypropylene (col 4, Ln 1-5), such that the first side of the lower laminating sheet is capable of being printed on (i.e., printable).
It is noted that the preamble limitation reciting “for producing a photo book” is considered functional language related to the intended use of the semi-finished product. See MPEP 2111.02(II). The foldable product taught by Raymond et al. corresponds to the claimed semi-finished product which is capable of being used for producing a photo book, thus satisfying the claimed functional limitation.
With respect to the claimed relative distance between the successive carriers, Raymond et al. teaches that the panels are arranged in at least two rows of plural panels and a plurality of columns of panels, wherein each pair of panels (P1) in a row is spaced apart by a distance (D1) which is minimally equal to at least the total thicknesses of the panels in the row so that when the panels in the columns are accordion-folded, the product will fold into a compact stack without substantial resistance to movement and will be substantially flat (col 1, Ln 47-65; Figs. 2-3). Raymond et al. teaches that in a preferred embodiment, the paperboard sheets are about 0.008 inch in thickness, and the outer laminating sheets are of a thickness of 0.003 inch (col 3, Ln 66-col 4, Ln 2). Given the distance (D1) is equal to at least the total thickness of the panels in a row, in the case where the product contains two rows and three columns, the distance between adjacent panels in a row may be about 0.042 inch (3 x (0.008 inch + 2 x 0.003 inch)), equivalent to about 1.07 mm. The distance (D1) between adjacent paperboard sheets therefore deviates less than 1 mm from the thickness of the paperboard sheet (i.e., about 0.20 mm) or from twice the thickness of the paperboard sheet (i.e., about 0.41 mm).
Regarding claims 2 and 15, Raymond et al. teaches all of the limitations of claim 1 above. As noted above, Raymond et al. teaches that the paperboard sheets (12; carriers) are about 0.008 inch in thickness (col 3, Ln 66-67), equivalent to about 0.20 mm, which falls squarely within the ranges of claims 2 and 15.
Regarding claims 3 and 4, Raymond et al. teaches all of the limitations of claim 1. As noted above, Raymond et al. teaches that the outer laminating sheet (film) may be formed of polypropylene (synthetic material), and that that the paperboard sheets (carriers) are about 0.008 inch in thickness (thick paper) (col 3, Ln 66-col 4, Ln 5).
Regarding claim 5, Raymond et al. teaches all of the limitations of claim 1 above and further teaches that the panels are desirably about 4 ¼ inches by about 9 inches in size (col 2, Ln 1-2). As shown in Figs. 1-2, the dimensions of the panels (P1, P2) are substantially identical.
Regarding claim 7, Raymond et al. teaches all of the limitations of claim 1 above and further teaches that the edges of the laminate may be trimmed to provide a butt edge of paperboard and laminating film (col 6, Ln 52-62; Fig. 5), such that the length of the laminating sheet (film) equals the sum of the lengths of all of the paperboard sheets (carriers) and the distances between the paperboard sheets.
Regarding claim 8, Raymond et al. teaches all of the limitations of claim 1 above and further teaches that the laminating sheets may be provided with an adhesive (layer of glue) which will permanently bond the laminating sheets to the paperboard during the laminating process (col 5, Ln 13-20).
Claims 1, 4, 5, and 8 are rejected under 35 U.S.C. 102(a)(1) and 35 U.S.C. 102(a)(2) as being anticipated by Parker et al. (US 2008/0073899, previously cited).
Regarding claims 1 and 8, Parker et al. teaches a photo album (semi-finished product) comprising a sheet of photographic album paper (48; film) which is printed to form images (54A-54L) thereon and is secured to front and rear cover sections (36A, 36B; carriers) by pressure sensitive adhesive layers (56A, 56L; layer of glue) ([0011]-[0012], Figs. 4A-4D). As shown in Fig. 4C, the photographic album paper is printed with images on a first side, while a second side of the paper is secured to the front and rear cover sections.
It is noted that the preamble limitation reciting “for producing a photo book” is considered functional language related to the intended use of the semi-finished product. See MPEP 2111.02(II). The photo album taught by Parker et al. corresponds to the claimed semi-finished product which is capable of being used for producing a photo book (e.g., by including additional embellishments such as a title on the front cover), thus satisfying the claimed functional limitation.
Parker et al. does not expressly teach that a relative distance between the front and rear cover sections is within one millimeter of the thickness of the front and rear cover sections or within one millimeter of the twice the thickness of the front and rear cover sections when the cover sections extend in the same plane.
It would, however, have been obvious to one of ordinary skill in the art to arrive at the claimed relationship by modifying the thickness of the cover sections and/or the distance between the front and rear cover sections. For example, one of ordinary skill in the art would be motivated to increase or decrease the thickness of the cover sections as necessary to achieve the desired rigidity or flexibility for the photo album. One of ordinary skill in the art would also be motivated to adjust the distance between the front and rear cover sections (36A, 36B), such as by increasing or decreasing the dimension of the intermediate spine section (36C) extending between the front and rear cover sections, depending upon the size of the photographic album paper (48) provided therein, where a larger paper sheet used to accommodate more images will increase the relative distance between the front and rear cover sections.
Regarding claim 4, Parker et al. teaches all of the limitations of claim 1 above and further teaches that front and rear cover sections (36A, 36B; carriers) may form a hardcover of the photo album ([0006]-[0009]), such that the cover sections are understood to be produced from cardboard or thick paper.
Regarding claim 5, Parker et al. teaches all of the limitations of claim 1 above. Given that the front and rear cover sections (36A, 36B) correspond to the front and back covers of the photo album, the dimensions of the cover sections are understood to be substantially identical.
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.
This application currently names joint inventors. In considering patentability of the claims the examiner presumes that the subject matter of the various claims was commonly owned as of the effective filing date of the claimed invention(s) absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and effective filing dates of each claim that was not commonly owned as of the effective filing date of the later invention in order for the examiner to consider the applicability of 35 U.S.C. 102(b)(2)(C) for any potential 35 U.S.C. 102(a)(2) prior art against the later invention.
Claims 2 and 15 are rejected under 35 U.S.C. 103 as being unpatentable over Parker et al. (US 2008/0073899, previously cited) as applied to claim 1 above.
Regarding claims 2 and 15, Parker et al. teaches all of the limitations of claim 1 above. Although Park et al. teaches that front and rear cover sections (36A, 36B; carriers) may form a hardcover of the photo album ([0006]-[0009]), Parker et al. differs from the claimed invention in that the reference is silent to a thickness of the front and rear cover sections.
It would, however, have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the photo album of Parker et al. by setting a thickness of the cover sections within an appropriate range, such as within the range of 0.1 to 2 mm, in order for the cover sections to have the desired rigidity and weight for a particular application of the book.
Claims 1-8 and 15 are rejected under 35 U.S.C. 103 as being unpatentable over Hanlon (WO 2002/102599) in view of Lein (US 4,906,024).
Regarding claims 1 and 3, Hanlon teaches a foldable strip-like article (semi-finished product) having relatively stiff panels separated by a straight hinge band (30) created by differential rigidity of a continuous substrate (35) which is stiffened by intermittent, localized patches of treatment (40) (p. 16, Ln 15-23; Figs. 1-5). The treatment may be applied in the form of a coating or lamination sheets or films (carriers) which are used to vary the rigidity of selected regions of the substrate (p. 9, Ln 31-p. 10, Ln 2; p. 16, Ln 25-28).
PNG
media_image2.png
277
685
media_image2.png
Greyscale
Hanlon teaches that the substrate (film) is preferably suitable for use in various print processes, wherein examples of substrates include synthetic materials such as polypropylene (p. 1, Ln 19-32). As shown in Figs. 1-5, the treatment (40) is applied on the second side of the substrate (35), while at least the portion of the first side of the substrate which is exposed at the hinge band (30) is considered to be printable.
It is noted that the preamble limitation reciting “for producing a photo book” is considered functional language related to the intended use of the semi-finished product. See MPEP 2111.02(II). The foldable article taught by Hanlon corresponds to the claimed semi-finished product which is capable of being used for producing a photo book, thus satisfying the claimed functional limitation.
Although Hanlon teaches that the hinge band (30) is relatively flexible by virtue of the lack of a treatment (40) at that region, so that the successive stiffened panels overlie each other when in the fully folded position (p. 16, Ln 21-23; p. 17, Ln 1-3; Figs. 3, 4, 8), the reference does not expressly teach a relative distance between the successive patches of treatment as claimed.
However, in the analogous art of foldable articles, Lein teaches a foldable sheet usable for maps and advertising brochures (col 1, Ln 5-7). Lein teaches that the foldable sheet comprises a plurality of foldable portions which may be foldable along folding edges in one direction or in two directions (col 2, Ln 20-32; Figs. 2-4). In the areas where the foldable portions are designed to be foldable in two directions, the foldable portions are provided with a reinforcing coating (15) on both sides, where the reinforcing coatings are spaced apart by a gap (16) having a width twice their thickness (col 2, Ln 43-57; Fig. 4). Leaches that the reinforcing coatings provide the necessary stability in order to be used as support for images or text and to enable folding in two directions (col 2, Ln 28-32; col 4, Ln 20-28).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the foldable article of Hanlon by setting a relative distance between the successive patches of treatment to a value of approximately twice the thickness of the treatment, as suggested by Lein, in order to enable the treatment to provide the requisite support and rigidity to the substrate while ensuring that the substrate can be folded in two directions.
Regarding claims 2 and 15, Hanlon in view of Lein teaches all of the limitations of claim 1 above but is silent to a value of the thickness of the patches of treatment (carriers).
Hanlon does, however, further teach that the treatment can be used to vary the rigidity of selected areas of the substrate, where the components within the treatment may be varied to control the rigidity (p. 10, Ln 4-10). Hanlon further teaches that the use of selected materials, weights, and dimensions may enable folding and unfolding to be achieved by a self-weighting mechanism enabling the use of only one hand to operate, wherein the thickness of the treatment is one way in which the self-weighting of the article can be controlled (p. 7, Ln 4-14; p. 21, Ln 19-21).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the foldable article of Hanlon in view of Lein by setting a thickness of the treatment within an appropriate range, such as within the range of 0.1 to 2 mm, in order to provide the treated areas of the substrate with the desired rigidity and weight for a particular application of the article.
Regarding claim 4, Hanlon in view of Lein teaches all of the limitations of claim 1 above, and Hanlon further teaches that the treatment (carriers) may be in the form of layers of metallic laminated sheets (p. 10, Ln 22-29).
Regarding claims 5-7, Hanlon in view of Lein teaches all of the limitations of claim 1 above. As shown in Figs. 1-5 of Hanlon, the patches of treatment (40; carriers) have substantially identical dimensions, the breadth of the patches of treatment (40) corresponds to the breadth of the substrate (35; film), and the length of the substrate corresponds to the sum of the lengths of all the patches of treatment and the distances therebetween.
Regarding claim 8, Hanlon in view of Lein teaches all of the limitations of claim 1 above, and Hanlon further teaches that adhesive material (layer of glue) can be used to secure the treatment (carriers) in the form of laminations sheets or films to the substrate (p. 9, Ln 31-p. 10, Ln 2).
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
Kruchko et al. (US 2005/0057039) teaches a multiple fold product comprising a relatively rigid substrate (12), such as paperboard, and a pair of upper and lower flexible sheets (14, 16), wherein the rigid substrate is divided into an array of rectangular sections (26) by horizontal and vertical slots (22, 24) which are positioned where the product is intended to fold ([0011]-[0012], Figs. 1-2).
Any inquiry concerning this communication or earlier communications from the examiner should be directed to REBECCA L GRUSBY whose telephone number is (571) 272-1564. The examiner can normally be reached Monday-Friday, 8:30 AM-5:30 PM.
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, Mark Ruthkosky can be reached at (571) 272-1291. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/Rebecca L Grusby/Examiner, Art Unit 1785
Prosecution Insights