DETAILED ACTION
Election/Restrictions
No restriction is being required at this time between the article of claims 32-44 and the method of claims 45-47. Although the article could be used in a materially different way, the method claim is minimal, and requires a significant portion of the article (via incorporation of claim 32). Further steps such as “placing the wrapped item within a package or box” and “shipping the package or box” are extensively well-known and are obvious, thus there is currently no search burden.
The applicant is advised however that significant amendments to the method step, which are not simple, obvious steps, and would require search outside the originally filed claims, would likely result in withdrawal by original presentation (the “original presentation” being the article, with minimal method steps of using that article).
Drawings
The drawings are objected to under 37 CFR 1.83(a). The drawings must show every feature of the invention specified in the claims. Therefore, the “said expandable slit sheet paper being rolled in a generally cylindrical configuration in an unexpanded state” (claim 32) must be shown or the feature(s) canceled from the claim(s). No new matter should be entered.
Corrected drawing sheets in compliance with 37 CFR 1.121(d) are required in reply to the Office action to avoid abandonment of the application. Any amended replacement drawing sheet should include all of the figures appearing on the immediate prior version of the sheet, even if only one figure is being amended. The figure or figure number of an amended drawing should not be labeled as “amended.” If a drawing figure is to be canceled, the appropriate figure must be removed from the replacement sheet, and where necessary, the remaining figures must be renumbered and appropriate changes made to the brief description of the several views of the drawings for consistency. Additional replacement sheets may be necessary to show the renumbering of the remaining figures. Each drawing sheet submitted after the filing date of an application must be labeled in the top margin as either “Replacement Sheet” or “New Sheet” pursuant to 37 CFR 1.121(d). If the changes are not accepted by the examiner, the applicant will be notified and informed of any required corrective action in the next Office action. The objection to the drawings will not be held in abeyance.
Claim Rejections - 35 USC § 112
The following is a quotation of the first paragraph of 35 U.S.C. 112(a):
(a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
The following is a quotation of the first paragraph of pre-AIA 35 U.S.C. 112:
The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention.
Claims 32-47 are rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the enablement requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to enable one skilled in the art to which it pertains, or with which it is most nearly connected, to make and/or use the invention.
Independent claim 32, the recitation “said expandable slit sheet paper being rolled in a generally cylindrical configuration in an unexpanded state”, is not enabled. The Specification does not describe how the paper is rolled in an unexpanded state; one would readily recognize that bending forces in a rolling operation would at least somewhat expand the paper. There are furthermore no Figures (see Drawing objection) that would inform how one of ordinary skill in the art would roll the paper in an unexpanded state.
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 32-47 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.
In independent claim 32, the recitation “said expandable slit sheet paper being rolled in a generally cylindrical configuration in an unexpanded state”, is not unclear and indefinite. The claim is a claim to an article, and thus the “cylindrical configuration” merely appears to be a functional recitation i.e. the article is capable of being rolled into a generally cylindrical configuration, since neither or the Specification or Drawings shows or explains how this cylindrical configuration is maintained. Thus, for examination, it will be construed as a functional limitation. In independent claim 32, the recitation “about 5/8 inches or less” is further indefinite. The term “about” indefinitely renders the upper bound of the slit length. The term “about” is repeated in further dependent claims, which are further indefinite for the same reason as above.
In respect to claim 34, the recitation “wherein said adhesive adheres layers of said expandable sheet paper to one another” is unclear and indefinite. Claim 32 is drawn to an expandable sheet paper. Claim 34 lacks proper antecedent basis for the term “layers of said expandable sheet paper”. It is unclear if a single sheet contains layers, which is suggested by the claim. However, this directly conflicts with the Specification, which uses adhesive to adhere multiple sheets in a stack. Thus, the claim is unclear, as well as all claims dependent from claim 34.
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.
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.
Claims 32-33 and 40-42 are rejected under 35 U.S.C. 103 as being unpatentable over Mulvey et al. (US 2017/0341845) in view of Goodrich et al. (US 5,667,871).
In respect to claims 32 and 40-42, the claims are not enabled and indefinite/unclear for several reasons detailed in the 35 USC 112(a) and 35 USC 112(b) rejections above, however, Mulvey et al. disclose an expandable slit sheet paper comprising: an array of slits 12 extending across a width of the expandable slit sheet paper (Fig. 1), expanding in thickness with said slits forming hexagonal cells when manually stretched (Fig. 4B); said slits having a slit length of “about 5/8 inches or less” as can be readily inferred (the “height” 20 may be six inches, and there are approximately 12 slits, also provided with spacing therebetween, thus less than 0.5” (Fig. 1)); adhesive may be applied to only one side of the sheet across a width (0036); the expandable slit sheet paper is capable of being rolled into a generally cylindrical configuration in an unexpanded state; the expandable slit sheet paper is capable of being manually wrapped around items, and in fact is explicitly disclosed to do so (Fig. 4A).
Mulvey et al. disclose the invention, including that expandable slit sheet paper is paper, but do not explicitly disclose Kraft paper, however, Goodrich et al. disclose a very similar expandable slit sheet paper which utilizes Kraft paper, and it would have been obvious to one of ordinary skill in the art at the effective filing date of the present application to provide the paper taught in Mulvey et al. as Kraft paper in view of Goodrich et al. as a suitable paper since it has been held to be within the general skill of a worker in the art to select a known material on the basis of its suitability for the intended use as a matter of obvious design choice. In re Leshin, 125 USPQ 416.
In respect to claim 33, Mulvey et al. disclose that the paper weight may be preferably be 50# (0033).
In respect to claims 34-36, 38-39, and 43-44, the claims are impossible to ascertain. The extent of adhesive and use of a “releasable” adhesive is impossible to construe from a single “expandable slit sheet paper”, particularly between “layers” thereof, which lacks any antecedent basis. Thus, any comparative analysis to the cited prior art cannot be made. As best can be determined, the prior art discloses the claims.
In respect to claims 45-47, Mulvey et al. further disclose manually stretching: the sleeve (rolled expandable slit sheet paper) is “inserted onto an object” which wraps around the object, where the object (item) is then placed in a box (Abstract); the box is shipped (0032).
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. Lawrence (WO 2020/172109) and Cheich et al. (US 11,260,615) disclose similar inventions.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to KYLE ROBERT GRABOWSKI whose telephone number is (571)270-3518. The examiner can normally be reached M-Th 8am-6pm.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Daniel Troy, can be reached at 571-270-3742. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/KYLE R GRABOWSKI/Primary Examiner, Art Unit 3637
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