DETAILED ACTION
Claim Objections
Claim 2 is objected to because of the following informalities: “the printed indicia of the first napkin” lacks antecedent basis. Appropriate correction is required.
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.
Claim 1 is 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. The claim recites a plurality of napkins each having a top surface and a second layer, but the claim then proceeds to recite “the top surface” and “the second layer.” While Examiner understands the intention, because there is technically a plurality of top surfaces and a plurality of second layers, to recite the top surface and the second layer is indefinite because it is not clear as to which of the plurality of napkins the top layer and the second layer is to refer. In other words, the terms “the top layer,” “the top outer surface of the top layer,” “the bottom surface of the top layer” and “second layer” should all be followed by “of each napkin.” Correction is required.
Because all other claims depend from claim 1, they are also rejected on this basis.
Claim Rejections - 35 USC § 103
The following is a quotation of pre-AIA 35 U.S.C. 103(a) which forms the basis for all obviousness rejections set forth in this Office action:
(a) A patent may not be obtained though the invention is not identically disclosed or described as set forth in section 102, if the differences between the subject matter sought to be patented and the prior art are such that the subject matter as a whole would have been obvious at the time the invention was made to a person having ordinary skill in the art to which said subject matter pertains. Patentability shall not be negated by the manner in which the invention was made.
Claims 1-7 are rejected under pre-AIA 35 U.S.C. 103(a) as being obvious over Nakajima (2006/0055752) in view of Tojo (2009/0148602) and official notice.
Regarding claim 1, Nakajima teaches a set of printed, folded napkins made of paper or paper-based material and printed in a single production run, the set comprising:
a plurality of print media ([0030]), wherein printed ink or toner stands on the top surface of the top layer of the printed media and does not substantially penetrate the top surface, and wherein a bottom surface of the top layer is substantially free of the liquid ink or toner from the top surface ([0018]), wherein each of the print media has a printed indicia having a print resolution of dots per inch ([0030], note that anything printed is a print indicia, and anything printed has a resolution that can be converted to dots per inch).
Nakajima does not teach wherein the plurality of print media is a plurality of napkins. Tojo teaches wherein napkins are a print media (Tojo, [0285], Note that common paper and napkins are obvious variants of print media). It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to use a napkin as a print medium, as disclosed by Tojo, instead of paper disclosed by Nakajima because doing so would amount to the simple substitution of one known print medium for another to yield predictable results.
Nakajima in view of Tojo does not expressly teach wherein napkins are folded to have at least two layers and wherein the second layer is substantially free of the liquid ink from the top layer. Examiner takes official notice that one of skill in the art at the time of invention would have known that napkins are generally folded. As such using Nakajima in view of Tojo’s printer to print on an as-yet unfolded napkin substrate and then folding the napkin substrate to arrive at a final, folded napkin product would have been obvious. This would yield a product with a second layer that would be substantially free of the liquid ink from the top layer.
Upon folding the napkin above so as to create a top layer and a second layer, the resultant napkins would have top layers and second layers that meet the claimed limitations.
Nakajima in view of Tojo also does not expressly teach wherein the printed indicia on the first napkin is different from printed indicia of at least one other napkin of the plurality of napkins. Nonetheless, Nakajima in view of Tojo’s printer can be used to print any number of indicia on any number of napkins, and thus simply because the reference does not expressly state that two napkins have different indicia does not mean such is not implied. It could be said that one of skill in the art at the time of invention would have found it obvious to use a printer to print more than one image on more than one substrate.
According to MPEP 2111.05, because the claimed printed indicia on the napkins is not functionally or structurally related to the napkin, the printed indicia falls into the category of printed matter and is owed no patentable weight. This is to be applied to all claims. Note as above, that the term “substantially penetrate” has not been defined in any way. Further, the neither the claims nor the specification seem to detail any particular mechanism that is used in the immediate invention to limit such penetration. That is, it does not appear that any specific top layer material or any specific ink/toner deposition technique has been specified that would differentiate the claimed invention from the prior art.
The claim preamble as it pertains to the single production run is not being given patentable weight because it does not define essential structure or steps necessary foy the invention.
Further, it should be noted that any two napkins with different images located anywhere, in the same location or not, could be said to anticipate this claim.
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Regarding claim 2, Nakajima in view of Tojo and official notice teaches the set of napkins of claim 1, wherein the printed indicia of the first napkin comprises a printed identifier that correlates at least a portion of the set of napkins with a customer order (see claim 1 rejection. Note that “customer order” is being taken simply as a user print job request, and note that any printer can print an identifying image requested by a user on a print medium or several print media in a print job).
Regarding claim 3, Nakajima in view of Tojo and official notice teaches the set of napkins of claim 1, wherein the printed indicia of at least one other napkin comprises one or more of a printed photograph, graphics, text, a barcode, and a QR code (see claim 1 rejection, Note that all printers print “graphics”).
Regarding claim 4, Nakajima in view of Tojo and official notice teaches the set of napkins of claim 1, the print resolution is in a range from about 300 to about 3600 dots per inch (see claim 1 rejection).
Regarding claim 5, Nakajima in view of Tojo and official notice teaches the set of napkins of claim 1, wherein the plurality of napkins includes a second napkin with printed indicia that is different from printed indicia of the first napkin and the at least one other napkin napkins of the plurality of napkins (see claim 1 rejection).
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Regarding claim 6, Nakajima in view of Tojo and official notice teaches the set of napkins of claim 5, wherein the printed indicia of the first napkin comprises a printed identifier that correlates a first portion of the plurality of napkins with a first customer order, and wherein the printed indicia of the second napkin comprises a printed identifier that correlates a second portion of the plurality of napkins with a second customer order (see claim 1 rejection, Note that “a printed identifier that correlates” to a customer order could simply be the image a customer has asked to have printed. Note that a “customer order” is being defined as above).
Regarding claim 7, Nakajima in view of Tojo and official notice teaches the set of napkins of claim 6, wherein printed indica of the first portion of the plurality of napkins is different than printed indicia on the second portion of the plurality of napkins (see claim 1 rejection. Note that two napkins with different images meet the limitation).
Claims 21 and 22 are rejected under pre-AIA 35 U.S.C. 103(a) as being unpatentable over Nakajima in view of Tojo as applied to claims 2 and 6 above, and further in view of Rosenbaum et al. (5,249,687).
Regarding claims 21 and 22, Nakajima in view of Tojo and official notice teaches the set of napkins of claims 2 and 6, respectively. Nakajima in view of Tojo does not teach wherein the printed identifier is configured to be read optically by a sensor to automatically sort the set of napkins correlated with the customer order from other napkins of the set of napkins correlated with the customer order. Rosenbaum teaches wherein printed mail pieces are scanned by an optical sensor and sorted according to first and second distinct identifiers (Rosenbaum, col. 3, lines 4-35, Note that the local sort code of each printed mail piece is scanned, and the mail pieces are sorted according to the differences in those sort codes). It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to apply the sorting technique disclosed by Rosenbaum to the set of napkins disclosed by Nakajima in view of Tojo because doing so would allow for sorting and arrangement of napkins in different sets.
Examiner acknowledges that Rosenbaum is directed to sorting mail pieces and not napkins, as claimed. Nonetheless, Examiner maintains it would have been obvious to one of ordinary skill in the art apply the sorting technique to any printed media in need of sorting.
Response to Arguments
Applicant’s arguments with respect to claim(s) 1 have been considered but are moot in light of the new ground(s) of rejection.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to ALEJANDRO VALENCIA whose telephone number is (571)270-5473. The examiner can normally be reached M-F.
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/ALEJANDRO VALENCIA/Primary Examiner, Art Unit 2853
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