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 .
Claim Objections
Claims 3, 5, 6, 11, 13, 14, and 15 are objected to because of the following informalities:
In line 2 of claim 3, the phrase “and a balloon” should read “and the foil balloon”
In line 1 of claim 5, the phrase “the stem is an inflation tube” should read “the stem portion is the inflation tube”
In lines 1-2 of claim 6, the phrase “a open, flat state and folded, use state” should read “an open, flat state and the folded, use state”
In line 6 of claim 11, the phrase “the inflatable interior” should read “an inflatable interior”
In line 8 of claim 11, the phrase “along a fold line to a folded, use state” should read “along the fold line to the folded, use state”
In line 9 of claim 11, the phrase “the uninflated” should read “an uninflated”
In line 13 of claim 11, the phrase “the balloon” should read “the foil balloon”
In line 6 of claim 13, the phrase “the inflatable interior” should read “an inflatable interior”
In line 8 of claim 13, the phrase “along a fold line to a folded, use state” should read “along the fold line to the folded, use state”
In line 9 of claim 13, the phrase “the uninflated” should read “an uninflated”
In lines 12-13 of claim 14, the phrase “the body” should read “the inflatable body”
In line 14 of claim 14, the phrase “the uninflated state” should read “an uninflated state”
In lines 6-7 of claim 15, the phrase “along a fold line to a folded, use state” should read “along the fold line to the folded, use state”
In line 9 of claim 15, the phrase “the balloon” should read “the foil balloon”
Appropriate correction is required.
Claim Rejections - 35 USC § 101
35 U.S.C. 101 reads as follows:
Whoever invents or discovers any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof, may obtain a patent therefor, subject to the conditions and requirements of this title.
Section 33(a) of the America Invents Act reads as follows:
Notwithstanding any other provision of law, no patent may issue on a claim directed to or encompassing a human organism.
Claim 18 is rejected under 35 U.S.C. 101 and section 33(a) of the America Invents Act as being directed to or encompassing a human organism. See also Animals - Patentability, 1077 Off. Gaz. Pat. Office 24 (April 21, 1987) (indicating that human organisms are excluded from the scope of patentable subject matter under 35 U.S.C. 101). As written, claim 18 expressly requires an “interested party” (i.e., human organism) to express desire for a combination foil balloon and balloon holder to be filled as part of the claimed process.
While claim 18 is currently excluded from patentable subject matter for per se claiming a human organism, the claim is analyzed below under the assumption that amendments will be made to eliminate a human organism from the scope of the claim.
Claims 17 and 18 are rejected under 35 U.S.C. 101 because the claimed invention is directed to an abstract idea without significantly more.
Step 1 of the USPTO’s eligibility analysis entails considering whether the claimed subject matter falls within the four statutory categories of patentable subject matter identified by 35 U.S.C. 101: Process, machine, manufacture, or composition of matter.
Claims 17 and 18 are directed to a method (process). As such, the claims are directed to statutory categories of invention.
If the claim recites a statutory category of invention, the claim requires further analysis in Step 2A. Step 2A of the 2019 Revised Patent Subject Matter Eligibility Guidance is a two-prong inquiry. In Prong One, examiners evaluate whether the claim recites a judicial exception.
Claims 17 and 18 recite abstract limitations including: “shipping the plurality of combination foil balloon and balloon holders to a sales location” and “offering one or more of the plurality of combination foil balloon and balloon holder to an interested party, and inflating the foil balloon of a combination foil balloon and balloon holder when the interested party desires a filled foil balloon supported by a balloon holder.”
These limitations, as drafted, are a process that, under its broadest reasonable interpretation, represents a commercial interaction and are therefore a method of organizing human activity.
If the claim recites a judicial exception (i.e., an abstract idea enumerated in Section I of the 2019 Revised Patent Subject Matter Eligibility Guidance, a law of nature, or a natural phenomenon), the claim requires further analysis in Prong Two. In Prong Two, examiners evaluate whether the claim recites additional elements that integrate the exception into a practical application of that exception.
The judicial exception of claims 17 and 18 is not integrated into a practical application because the claims do not recite additional elements beyond the abstract ideas identified above and, therefore, no meaningful limits on practicing the abstract idea are present in the claims.
If the additional elements do not integrate the exception into a practical application, then the claim is directed to the recited judicial exception, and requires further analysis under Step 2B to determine whether they provide an inventive concept (i.e., whether the additional elements amount to significantly more than the exception itself).
As discussed above, claims 17 and 18 do not recite additional elements and, therefore, do not recite additional elements that provide an inventive concept. Thus, nothing in the claims adds significantly more to the abstract idea.
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.
Claims 1-8 and 10-15 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Esposito (EP 0105179 A1).
Regarding claim 1, Esposito discloses a balloon holder (see fig 18) for a foil balloon (16) having an inflatable body (body of 16) and a neck (21) extending from and communicating with the inflatable body (see fig 18), the neck having an inflation port (into which 22 is inserted; see fig 18) providing access to an inflatable interior for inflation gas (see fig 18), the balloon holder comprising: a foldable body (48+60) having a neck grip portion (58+60) having a fold line (lower 56) along which the neck grip portion is foldable to a folded, use state, wherein, in the folded, use state, the neck grip portion is adapted to grip the neck of the foil balloon in an uninflated state and yet provide access for an inflation tube to the inflation port of the foil balloon such that the balloon holder is adapted to be attached to an uninflated foil balloon and yet allow the inflation of the uninflated foil balloon with the balloon holder secured thereto (see paragraphs 2 and 3 on page 9 of the machine translation); a first balloon support (49) extending upwardly from the neck grip portion on one side of the fold line; a second balloon support (50) extending upwardly from the neck grip portion on the opposite side of the fold line, wherein the first balloon support and the second balloon support extend to support the inflatable body of the foil balloon when the neck of the foil balloon is gripped by the neck grip portion and the foil balloon is inflated from the uninflated state to an inflated state (i.e., when the foil balloon is inflated from the uninflated state to the inflated state, 49 and 50 support the balloon; see paragraph 4 on page 9 of the machine translation).
Regarding claim 2, Esposito discloses the balloon holder of claim 1, further comprising a stem portion (22) extending downwardly from the neck grip portion.
Regarding claim 3, Esposito discloses the balloon holder of claim 2, wherein the stem portion serves as a handle for the balloon holder for a user to hold the balloon holder and a balloon secured thereto (see paragraph 4 on page 9 of the machine translation).
Regarding claim 4, Esposito discloses the balloon holder of claim 2, wherein the stem portion is adapted to mate with an elongate balloon stick (note: it has been held that the recitation that an element is "adapted to" perform a function is not a positive limitation but only requires the ability to so perform [see MPEP 2111.04]; in this case, 22 has the ability to mate with a balloon stick).
Regarding claim 5, Esposito discloses the balloon holder of claim 2, wherein the stem is an inflation tube, and, in the folded, use state of the neck grip portion, the inflation tube is adapted to be received in the inflation port of the uninflated foil balloon, thus allowing inflation of the uninflated foil balloon with the balloon holder already secured thereto (see fig 18).
Regarding claim 6, Esposito discloses the balloon holder of claim 1, wherein the balloon holder folds between a open flat state (with lower 56 fully open; see fig 18) and folded, use state (per rejection of claim 1).
Regarding claim 7, Esposito discloses the balloon holder of claim 1, wherein the first balloon support includes spaced apart support arms (on either side of 51; see fig 18), and the second balloon support, in the folded, use state, extends between the spaced apart support arms (via 53).
Regarding claim 8, Esposito discloses the balloon holder of claim 1, wherein the neck grip portion includes a closure member (62) serving to maintain the neck grip portion in the folded, use state.
Regarding claim 10, Esposito discloses the balloon holder of claim 8, wherein the closure member includes a latch (62) that catches on a catch portion (edge portion of 25; see fig 18) of the neck grip portion in the folded, use state.
Regarding claim 11, Esposito discloses a combination foil balloon and balloon holder comprising: the balloon holder of claim 1; and a foil balloon including: an inflatable body in an uninflated state; a neck extending from and communicating with the inflatable body; an inflation port in the neck and providing access to the inflatable interior for inflation gas, wherein the neck grip portion of the balloon holder is folded along a fold line to a folded, use state gripping the neck of the foil balloon and providing access to the inflation port of the foil balloon such that the uninflated foil balloon can be inflated with an inflation tube with the balloon holder secured to the foil balloon, and wherein the first balloon support and the second balloon support extend to support the inflatable body of the foil balloon, when the balloon is inflated from the uninflated state to an inflated state (per rejection of claim 1).
Regarding claim 12, Esposito discloses a balloon holder for a foil balloon having an inflatable body and a neck extending from and communicating with the inflatable body, the neck having an inflation port providing access to an inflatable interior for inflation gas, the balloon holder comprising: a foldable body having a neck grip portion having a fold line along which the neck grip portion is foldable to a folded, use state, wherein, in the folded, use state, the neck grip portion is adapted to grip the neck of the foil balloon in an uninflated state and yet provide access for an inflation tube to the inflation port of the foil balloon such that the balloon holder is adapted to be attached to an uninflated foil balloon and yet allow the inflation of the uninflated foil balloon with the balloon holder secured thereto (per rejection of claim 1).
Regarding claim 13, Esposito discloses a combination foil balloon and balloon holder comprising: the balloon holder of claim 12; and a foil balloon including: an inflatable body in an uninflated state; a neck extending from and communicating with the inflatable body; an inflation port in the neck and providing access to the inflatable interior for inflation gas, wherein the neck grip portion of the balloon holder is folded along a fold line to a folded, use state gripping the neck of the foil balloon and providing access to the inflation port of the foil balloon such that the uninflated foil balloon can be inflated with an inflation tube with the balloon holder secured to the foil balloon (per rejection of claim 1).
Regarding claim 14, Esposito discloses a balloon holder for a foil balloon having an inflatable body and a neck extending from and communicating with the inflatable body, the balloon holder comprising: a foldable body having: a neck grip portion having a fold line along which the neck grip portion is intended to fold to a folded, use state, a first balloon support extending upwardly from the neck grip portion on one side of the fold line; a second balloon support extending upwardly from the neck grip portion on the opposite side of the fold line, wherein, in the folded, use state, the neck grip portion is adapted to grip the neck of the foil balloon, and the first balloon support and the second balloon support are adapted to extend to support the body of the foil balloon when the neck of the foil balloon is so gripped and the foil balloon is inflated from the uninflated state to an inflated state (per rejection of claim 1).
Regarding claim 15, Esposito discloses a combination foil balloon and balloon holder comprising: the balloon holder of claim 14; and a foil balloon including: an inflatable body in an uninflated state; a neck extending from and communicating with the inflatable body, wherein the neck grip portion of the balloon holder is folded along a fold line to a folded, use state gripping the neck of the foil balloon, and wherein the first balloon support and the second balloon support extend to support the inflatable body of the foil balloon, when the balloon is inflated from the uninflated state to an inflated state (per rejection of claim 1).
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 16-18 are rejected under 35 U.S.C. 103 as being unpatentable over Esposito (EP 0105179 A1).
Regarding claims 16-18, Esposito does not explicitly disclose a method of providing foil balloons for inflation as claimed. However, given the structure of the combination foil balloon and balloon holder disclosed by Esposito (per rejection of claims 1-8 and 10-15 above), it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have used the method as claimed to provide foil balloons for inflation.
Claim 9 is rejected under 35 U.S.C. 103 as being unpatentable over Esposito (EP 0105179 A1), in view of Weisenthal (US 3900989 A).
Regarding claim 9, Esposito discloses the balloon holder of claim 8, but does not disclose wherein the closure member includes male and female members separated on different sides of the fold line of the neck grip portion, such that folding along the fold line causes the male and female members to mate, the mating of the male and female members serving, in use, to help secure the neck grip portion to the neck of the foil balloon.
Weisenthal, however, teaches that it is known in the art of balloon holders to have a variety of means (see figs 2-7) for constructing a closure member for a balloon holder, including male and female members separated on different sides of the fold line of the neck grip portion, such that folding along the fold line causes the male and female members to mate (see at least fig 6). The purpose for including male and female members is to ensure a secure closure. It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have modified the closure member disclosed by Esposito with male and female members as taught by Weisenthal in order to ensure a more secure closure for the balloon holder.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. The examiner notes that the prior art cited on PTO-892 but not relied upon for this rejection discloses balloon holders relevant in scope and structure to the claimed invention.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Christine M Mills whose telephone number is (571) 272-8322. The examiner can normally be reached from Monday - Thursday, 7:30 - 5:30 EST.
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, Namrata Boveja, can be reached on (571) 272-8105. The fax phone number for the organization where this application or proceeding is assigned is (571) 273-8300.
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/CHRISTINE M MILLS/Supervisory Patent Examiner, Art Unit 3675
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