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 .
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.
Claims 1, 4-6 and 8-9 are finally rejected under 35 U.S.C. 102(a)(1) as being anticipated by EP 0220827. Disclosed is a greeting card system comprising a greeting card (defined package), wherein the greeting card comprises a planar greeting card portion (12 and/or 22), wherein the system further comprises a gift storage compartment (10) and wherein the gift storage compartment comprises a volume and depth for storing an item, and wherein the gift storage compartment further comprises a gift storage compartment surface (14), wherein the gift storage compartment surface (at 14) comprises a window (20) covered by a transparent covering (see column 3, lines 23-25) to render a transparent window located on a front side (14; the face 12 identified as the front face and the face 14 identified as the rear face being arbitrary in the context of the claim and in context may be nomenclaturally reversed) of the greeting card system, wherein the greeting card further comprises a greeting card cover (16 or 18) coupled to the greeting card, and wherein the greeting card cover is movably coupled to the planar greeting card portion to move from an open position to a closed position adjacent the planar greeting card portion, and wherein the transparent window is visible when the greeting card cover is in the open position and when the greeting card cover is in the closed position.
As to claim 4, EP 0220827 discloses a flap (outermost foldable portion of 16 or 18) located on the greeting card cover (16 or 18).
As to claim 5, EP 0220827 discloses the greeting card cover (16 or 18) can be opened and closed relative to the planar greeting card portion (12) without moving the gift storage compartment (10).
As to claim 6, in a disposition of the card system EP 0220827 discloses the gift storage compartment (10) coupled below the planar greeting card portion (12).
As to claim 8, EP 0220827 is made of thin paper product, and accordingly of an inherently expandable nature to some degree.
As to claim 9, EP 0220827 discloses the gift storage compartment (10) hingedly and releasably coupled to the planar greeting card portion (22).
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, 4-6 and 8-9 are finally rejected under 35 U.S.C. 103 as being unpatentable over EP 0220827. Disclosed is a greeting card system comprising a greeting card (defined package), wherein the greeting card comprises a planar greeting card portion (12 and/or 22), wherein the system further comprises a gift storage compartment (10) and wherein the gift storage compartment comprises a volume and depth for storing an item, and wherein the gift storage compartment further comprises a gift storage compartment surface (14), wherein the gift storage compartment surface (at 14) comprises a window (20) covered by a transparent covering (see column 3, lines 23-25) to render a transparent window located on a side (14; the face 12 identified as the front face and the face 14 identified by EP 0220827 as the rear face being obviously arbitrary in the context of the claim) of the greeting card system, wherein the greeting card further comprises a greeting card cover (16 or 18) coupled to the greeting card, and wherein the greeting card cover is movably coupled to the planar greeting card portion to move from an open position to a closed position adjacent the planar greeting card portion, and wherein the transparent window is visible when the greeting card cover is in the open position and when the greeting card cover is in the closed position.
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to provide the greeting card system of EP 0220827 with sides of reverse nomenclature from the prior art of EP 0220827 as claimed, as such a modification would predictably provide the same structure but reversely claimed.
As to claim 4, EP 0220827 discloses a flap (outermost foldable portion of 16 or 18) located on the greeting card cover (16 or 18).
As to claim 5, EP 0220827 discloses the greeting card cover (16 or 18) can be opened and closed relative to the planar greeting card portion (12) without moving the gift storage compartment (10).
As to claim 6, in a disposition of the card system EP 0220827 discloses the gift storage compartment (10) coupled below the planar greeting card portion (12).
As to claim 8, EP 0220827 is made of thin paper product, and accordingly of an inherently expandable nature to some degree.
As to claim 9, EP 0220827 discloses the gift storage compartment (10) hingedly and releasably coupled to the planar greeting card portion (22).
Claim 3 is finally rejected under 35 U.S.C. 103 as being unpatentable over EP 0220827 in view of either one of Pruett (8,899,413) and Pollock (6,070,719). EP 0220827 does not disclose a fastener to secure the greeting card cover to the greeting card portion. However, Pruett and Pollock each disclose a greeting card cover (6 or 11; 106) further comprising a fastener (15 or 16; 87) to secure the greeting card cover to a greeting card portion (5; 98 or 102). It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to provide the greeting card system of EP 0220827 with a fastener to secure the greeting card cover to a greeting card portion in the manner of either one of Pruett and Pollock as claimed, as such a modification would predictably provide a better closed condition of the greeting card system.
Claim 7 is finally rejected under 35 U.S.C. 103 as being unpatentable over EP 0220827 in view of Pruett (8,899,413). EP 0220827 does not disclose the greeting card comprising a hanger. However, Pruett discloses a hanger (31 or 32). It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to provide the greeting card system of EP 0220827 with a hanger in the manner of Pruett as claimed, as such a modification would predictably provide a suspension capability to the greeting card system.
The nonstatutory double patenting rejection is based on a judicially created doctrine grounded in public policy (a policy reflected in the statute) so as to prevent the unjustified or improper timewise extension of the “right to exclude” granted by a patent and to prevent possible harassment by multiple assignees. A nonstatutory double patenting rejection is appropriate where the conflicting claims are not identical, but at least one examined application claim is not patentably distinct from the reference claim(s) because the examined application claim is either anticipated by, or would have been obvious over, the reference claim(s). See, e.g., In re Berg, 140 F.3d 1428, 46 USPQ2d 1226 (Fed. Cir. 1998); In re Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993); In re Longi, 759 F.2d 887, 225 USPQ 645 (Fed. Cir. 1985); In re Van Ornum, 686 F.2d 937, 214 USPQ 761 (CCPA 1982); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Thorington, 418 F.2d 528, 163 USPQ 644 (CCPA 1969).
A timely filed terminal disclaimer in compliance with 37 CFR 1.321(c) or 1.321(d) may be used to overcome an actual or provisional rejection based on nonstatutory double patenting provided the reference application or patent either is shown to be commonly owned with the examined application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. See MPEP § 717.02 for applications subject to examination under the first inventor to file provisions of the AIA as explained in MPEP § 2159. See MPEP § 2146 et seq. for applications not subject to examination under the first inventor to file provisions of the AIA . A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
The filing of a terminal disclaimer by itself is not a complete reply to a nonstatutory double patenting (NSDP) rejection. A complete reply requires that the terminal disclaimer be accompanied by a reply requesting reconsideration of the prior Office action. Even where the NSDP rejection is provisional the reply must be complete. See MPEP § 804, subsection I.B.1. For a reply to a non-final Office action, see 37 CFR 1.111(a). For a reply to final Office action, see 37 CFR 1.113(c). A request for reconsideration while not provided for in 37 CFR 1.113(c) may be filed after final for consideration. See MPEP §§ 706.07(e) and 714.13.
The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The actual filing date of the application in which the form is filed determines what form (e.g., PTO/SB/25, PTO/SB/26, PTO/AIA /25, or PTO/AIA /26) should be used. A web-based eTerminal Disclaimer may be filled out completely online using web-screens. An eTerminal Disclaimer that meets all requirements is auto-processed and approved immediately upon submission. For more information about eTerminal Disclaimers, refer to www.uspto.gov/patents/apply/applying-online/eterminal-disclaimer.
Claims 1-9 are finally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-9, respectively, of U.S. Patent No. 12,116,200. Although the claims at issue are not identical, they are not patentably distinct from each other because the difference now added, “a transparent window located on a front side of said greeting card system” is encompassed by the previously claimed “gift storage compartment surface” and whether disclosed as such, such is merely a change in nomenclature or a change in surface identification, not a structural change in structure.
Applicant's arguments and amendments filed June 29, 2026 have been fully considered but they are not persuasive. While EP 0220827 recites the disclosed structure of element 12 as a “front face” and element 14 as a “rear face”, to switch these purely nomenclature designations in the reverse would fail to render any different structural difference from that of EP 0220827, as the claim 1 only defines a “front side” per se and does not distinguish from the arbitrarily designated “front face” and “rear face” of EP 0220827, which could be reversely named and not be an actual structural difference.
As to the double patenting rejection, the claim amendment has rendered such an obvious-type double patenting and no longer a 101 type double patenting. A terminal disclaimer may be necessary.
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.
Prior Art not relied upon: Please refer to the additional references listed on the attached PTO-892, which, while not relied upon for the claim rejection, these references are deemed relevant to the claimed invention as a whole.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to BRYON P GEHMANEHMAN whose telephone number is (571) 272-4555. The examiner can normally be reached on Tuesday through Thursday from 7:30 am to 5:00 pm.
If attempts to reach the examiner by telephone are unsuccessful, the examiner's supervisor, ORLANDO AVILES-BOSQUES, can be reached on (571) 270-5531. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/BRYON P GEHMAN/Primary Examiner, Art Unit 3736
BRYON P. GEHMAN
Primary Examiner
Art Unit 3736
BPG
