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. Correction is required.
Because all other claims depend from claim 1, they are also rejected on this basis.
Furthermore, the term “substantially penetrate” in claim 1 is a relative term which renders the claim indefinite. The term “substantially penetrate” is not defined by the claim, the specification does not provide a standard for ascertaining the requisite degree, and one of ordinary skill in the art would not be reasonably apprised of the scope of the invention.
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 1-8 are rejected under pre-AIA 35 U.S.C. 103(a) as being obvious over Sharma et al. (6,506,456) in view of official notice.
Regarding claim 1, Sharma teaches a set of napkins made of paper or paper-based material, the set comprising:
a plurality of napkins (col. 5, lines 23-27),
wherein the top layer of each napkin includes printed ink or toner thereon (cols. 5-6, lines 66-30) defining printed indicia (note that anything printed is an indicia) having a print resolution of dots per inch (col. 5, lines 62, note that that anything printed with an inkjet printer is printed in a resolution of dpi), wherein the printed ink or toner stands on a top surface of the top layer so as to not substantially penetrate the top surface (cols. 5-6, lines 66-30, note that the ink necessarily stands on the top surface of the napkin. Note that Sharma teaches precise control of the amount of penetration of the ink into the substrate, and thus ink can be deposited so as not to substantially penetrate the napkin),
wherein a first napkin of the plurality of napkins includes printed indicia (cols. 5-6, lines 66-30),
wherein a print resolution of the printed indicia is dots per inch (col. 5, lines 62, Note further that that anything printed with an inkjet printer is printed in a resolution of dpi).
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.
Sharma does not expressly disclose 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 Sharma’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 ink would already be dried and thus would could not contact the second layer, meaning the second layer is substantially free of the liquid ink or toner from the top layer (cols. 5-6, lines 66-30).
Sharma 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. First, note that Sharma’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.
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, Sharma 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).
Regarding claim 3, Sharma 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 Sharma prints graphics on napkins).
Regarding claim 4, Sharma 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, col. 5, lines 62).
Regarding claim 5, Sharma 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, Sharma 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).
Regarding claim 7, Sharma 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).
Regarding claim 8, Sharma teaches the set of napkins of claim 6, wherein the set of napkins are printed during a single production run (see claim 1 rejection. Note that the claims are directed to a set of napkins, and the claimed limitation is directed to how a printer would make the napkins, which is not patentable. Even if, for the sake of argument, the claims were directed to a printing apparatus for printing napkins, such a limitation would not be patentable under MPEP 2114 because the limitation would be directed to the manner of operating the device, not the structure of the device itself).
Response to Arguments
Applicant's arguments filed 9/29/2025 have been fully considered but they are not persuasive. The claims have been amended to further specify the specifics of the claimed napkins, but the amendments fail to distinguish the napkins from the prior art. The rejections above have been updated to reflect the changes to the claims.
Specifically, Applicant argues Sharma teaches away from the claimed invention. It should be noted, however, that teaching away is a rationale for arguing against the proper combination of a secondary reference with a primary reference, not a rationale that a single, primary reference does not teach certain claimed language. Nonetheless, Applicant argues that Sharma essentially teaches only substantial penetration of printing fluid in a top layer. This is incorrect.
Sharma teaches precisely controlling an amount of penetration of a printing fluid in a top layer of a printing substrate (col. 6, lines 18-30). Examiner maintains that this precise control can include substantial penetration or no penetration at all and not, as Applicant insists, only substantial penetration.
The standing prior art rejection is maintained.
Conclusion
THIS ACTION IS MADE FINAL. 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.
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/ALEJANDRO VALENCIA/Primary Examiner, Art Unit 2853