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 .
Priority
Acknowledgement is made of applicant’s claim for foreign priority under 35 U.S.C. 119. Receipt is acknowledged of certified copies of papers required by 37 CFR 1.55.
Response to Preliminary Amendment
Receipt is acknowledged of a preliminary amendment, filed 20 November 2025, which has been placed of record and entered in the file.
Status of the claims:
Claims 8-14 are pending.
Claims 8-14 are new.
Claims 1-7 are canceled.
Specification and Drawings:
Amendments to the specification and drawings have been submitted in the amendment filed 20 November 2025.
Claim Objections
Claim 11 is objected to under 37 CFR 1.75(c) as being in improper form because a multiple dependent claim cannot depend from any other multiple dependent claim. See MPEP § 608.01(n). Accordingly, the claim 11 not been further treated on the merits.
Claims 8-10 and 12-13 are objected to because of the following informalities:
In claim 8, line 16, “isuniformly” should be changed to --is uniformly--.
In claim 13, line 2, --a-- should be inserted before “rectangular”.
Appropriate correction is required.
Claims 9-10 and 12 depend from claim 8, and are likewise objected to.
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 8-10, and 12-13 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 written description requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for applications subject to pre-AIA 35 U.S.C. 112, the inventor(s), at the time the application was filed, had possession of the claimed invention.
There is inadequate written description of the subject matter of claim 8. Claim 8 recites “providing a first end cap and a second end cap each sealingly connected to one of the first end of the tube and the second end of the tube so as to create an air-tight hollow cylinder with end caps”. There is no disclosure in the originally filed application for “end caps” that are “sealingly connected to” the first and second ends of the tube. As described on page 5 of the written description, the web material is folded into two layers, and the layers are fastened along the perimeter, to form the tube. There is no disclosure of “end caps” that are “sealingly connected to” the first and second ends of the tube.
There is inadequate written description of the subject matter of claim 9. Claim 9 recites “spaced mechanical fasteners along the length of the tube”. There is no disclosure in the originally filed application for ““spaced mechanical fasteners along the length of the tube”.
There is inadequate written description of the subject matter of claim 12. Claim 12 recites “a height not exceeding about 0.30 m and a footprint not exceeding about 0.40 m x 0.40 m”. As described on page 6 of the written description, the compact structure is “0.3 m high, 0.4 m long and 0.4 m wide”. There is no disclosure in the originally filed application for “a height not exceeding about 0.30 m and a footprint not exceeding about 0.40 m x 0.40 m”.
The subject matter of these elements has not been described in the specification in such a way as to reasonably convey to one skilled in the art how to make and use the invention, and comprise new matter.
Accordingly, the claims contain subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor, at the time the application was filed, had possession of the claimed invention.
Accordingly, applicant is required to respond by: specifically pointing out where adequate written description can be found for the limitations; making an amendment to address the deficiency; or making appropriate correction.
Claims 10 and 13 depend from claim 8, and are likewise rejected.
While no prior art has been applied with respect to claims 8-10 and 12-13, this is not an indication of allowable subject matter in claim claims 8-10 and 12-13.
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 8-10 and 12-14 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.
Claim 8, line 23, is ambiguous as the phrase “layers folds” is confusing. It appears that words may be missing.
Regarding claim 9, the phrase "such as" renders the claim indefinite because it is unclear whether the limitations following the phrase are part of the claimed invention. See MPEP § 2173.05(d).
Claims 10 and 12-13 depend from claim 8, and are likewise rejected.
Claim 14 is ambiguous as the phrase “re-inflating the tube” is confusing and unclear. Since the claim does not set forth “inflating the tube”, it is unclear in what manner the tube is re-inflated.
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.
Claim 14 is rejected under 35 U.S.C. 103 as being unpatentable over Mazzola et al. (US Patent No. 5,453,152) in view of Banlier (US Patent No. 3,139,242).
Mazzola et al. disclose a method of installing a wide wallpaper sheet (wallpaper applicator 10 for applying wallpaper 16, wide is a relative term, fig. 1, col. 4, l. 62-64) comprising placing a package at a wall (placing an applicator 10 containing the wallpaper 16 at a wall, fig. 1); and unrolling the wallpaper laterally along the wall in one piece for application without an external support frame (the applicator 10 is oriented vertically, the roll of wallpaper 16 is moved horizontally, and the roll of wallpaper 16 unrolls, fig. 1, col. 5, l. 45-60). Mazzola et al. disclose an applicator 10 including a paper holding portion 18, thus the applicator 10 is considered a package. The applicator 10 includes a paper holding portion 18 that is received inside the core of the wallpaper roll 16, and thus the wallpaper is considered to be unrolled “without an external support frame”.
See MPEP 2111.02 II. which states:
During examination, statements in the preamble reciting the purpose or intended use of the claimed invention must be evaluated to determine whether or not the recited purpose or intended use results in a structural difference (or, in the case of process claims, manipulative difference) between the claimed invention and the prior art.
See MPEP 2111.04 I. which states:
However, the court noted that a "‘whereby clause in a method claim is not given weight when it simply expresses the intended result of a process step positively recited.’"
See MPEP 2111.04 II which states:
The broadest reasonable interpretation of a method (or process) claim having contingent limitations requires only those steps that must be performed and does not include steps that are not required to be performed because the condition(s) precedent are not met.
See MPEP 2114 which states:
A claim containing a "recitation with respect to the manner in which a claimed apparatus is intended to be employed does not differentiate the claimed apparatus from a prior art apparatus" if the prior art apparatus teaches all the structural limitations of the claim.
The phrase in the preamble “shipped as a serpentine-folded flattened roll around a deflated inflatable tube within a package” is a statement reciting the intended use of the claimed invention that results in no manipulative difference between the claimed invention and the prior art. The claimed method neither recites nor requires any shipping, folding, flattening, or deflating. The claimed method recites manipulatives steps for placing a package at a wall, re-inflating a tube, and unrolling the wallpaper. There is no manipulative step of shipping, folding, flattening, or deflating; any shipping, folding, flattening, or deflating that may or may not be performed would be performed outside of the scope of the wallpaper installing method claimed. Thus, the phrase “shipped as a serpentine-folded flattened roll around a deflated inflatable tube within a package” is a statement of intended use of the contents of the package.
The intended use recitation language (some of which has been italicized supra) carries no weight in the absence of any distinguishing manipulative step. Mazzola et al., as modified by Banlier disclose the method steps as claimed and is thus capable of performing the functions.
Mazzola et al. disclose the roll of wallpaper 16 is positioned around a tube (paper holding portion 18, fig. 3), positioning a cylindrical core in a vertical orientation against a wall (the applicator 10 is oriented vertically, fig. 1, col. 5, l. 45-60). Mazzola et al. fail to disclose re-inflating the tube in situ to restore a cylindrical core.
Banlier disclose a method of unwinding yarn comprising deflating an inflatable tube 8 (fig. 1), attaching a roll of wound yarn 17 onto the tube 8, re-inflating the tube 8 with the roll thereon to restore the cylindrical core (fig. 2), and unwinding the roll on the re-inflated tube (col. 2, l. 10-19), to bear resiliently against the inside of the roll and facilitate the unwinding (col. 2, l. 10-19).
It 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 to modify the Mazzola et al. method to substitute re-inflating the tube in situ to restore a cylindrical core, as suggested by Banlier, for providing a tube of Mazzola et al., to bear resiliently against the inside of the roll and facilitate the unwinding. In this instance, a skilled artisan would have recognized that the substitution of re-inflating the tube to restore the cylindrical core from the Banlier reference for the tube providing of the Mazzola et al. reference involves no more than the predictable use of prior art elements according to their established function, and that one of ordinary skill in the art could have substituted one known element for another and the results of the substitution would have been predictable.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
McCullagh et al. (WO 2014/080224) disclose a method of inflating a tube, winding a sheet on the tube, deflating the tube, folding, and re-inflating the tube and unwinding the sheet.
Suzuki (JP 2005-59970) discloses a method of winding wallpaper ([0012]) including winding the wallpaper onto an inflatable and deflatable tube (figs. 1-3, [0017]).
Kracht et al. (DE 4106972) disclose a method of winding wallpaper (pg. 2, para. 11) including winding wallpaper on a tube, flattening the tube and the wound wallpaper into a flat structure, and forming layers of the flattened structures.
Stromeyer (GB 1,070,280) discloses a method of forming and inflating a tube, winding a sheet on the tube, deflating the tube, folding, and re-inflating the tube and unwinding the sheet.
Benoit (US Patent No. 4,597,494) discloses a method of winding a web material, and flattening the wound web (figs. 1-2).
Newcomer (US Patent 3,865,325) discloses a collapsible core that is re-expandable for winding and unwinding (figs. 5, 7).
Westendorf et al. (US Patent Publ. No. 2007/0205118) disclose a kit for applying a decorative laminate to a wall.
Saker (US Patent Publ. No. 2011/0005658) disclose a method of unwinding wallpaper laterally along a wall.
Barbe et al. (US Patent No. 4,711,682) disclose a method of wallpapering comprising placing a container at a wall, and unrolling the wallpaper along the wall.
Banta (US Patent No. 4,263,347) discloses a method of wallpapering comprising unrolling wallpaper laterally along a wall.
Gallien (US Patent No. 6,082,662) and Summa (US Patent Publ. No. 2006/0289107) disclose a wallpaper dispenser including wallpaper wound on a resilient tube.
Potthoff (DE 2016114712) discloses a wallpaper shipping package.
Brewer et al. (US Patent No. 7,213,631) disclose a method of wallpapering comprising unrolling wallpaper laterally along a wall.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Linda J. Hodge whose telephone number is (571)272-0571. The examiner can normally be reached Monday-Friday 8:00-5:00.
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/LINDA J. HODGE/Primary Examiner, Art Unit 3731
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