DETAILED ACTION
Claim Rejections - 35 USC § 103
Claims 16, 18-23, 25, 26, 28, 29, and 31-39 are rejected under 35 U.S.C. 103 as being unpatentable over Zhong (CN 2465521 Y) in view of Sloane (US Pat. No. 3,513,063), optionally Joo (KR 920000842 B1), which was cited according to an English language translation, and optionally DeCosmo (US PG Pub. No. 2016/0207349) or Huang (US PG Pub. No. 2006/0158872) for the reasons discussed in the previous Office Action.
Alternatively or additionally, claims 16, 18-23, 25, 26, 28, 29, and 31-39 are rejected under 35 U.S.C. 103 as being unpatentable over Sloane in view of Zhong, optionally Joo, and optionally, DeCosmo or Huang for the reasons discussed in the previous Office Action.
Response to Arguments
Applicant's arguments filed May 18, 2026 have been fully considered but they are not persuasive.
Applicant has argued the claimed gradient of colors extending along the length of the claimed artificial pine needles was not properly rejected in the previous Office Action because the identification of the recited color pattern being an obvious aesthetic design choice does not establish a prima facie case of obviousness due to it allegedly not identifying a teaching or reason supplied by the prior art that would lead to such a selection. However, legal precedent was and may be used as a source of supporting rationale in establishing that certain selections, such as selections of aesthetic design, dimensions, shapes, and others, are prima facie obvious in view of the prior art. See MPEP 2144.04. As discussed in MPEP 2144.04 (I), it has been held that matters relating to ornamentation only that have no mechanical function cannot be relied upon to patentably distinguish the claimed invention from the prior art. As prior art references teaching colorful, artificial decorative pine needles have been identified (discussed in the previous Office Action), as the instant claims are directed to artificial pine needles that are intended to be decorative, and as Applicant discloses that the choice of colors creates the appearance of natural pine needles (Applicant’s published application; Abstract, par. 33), the claim limitations directed to a particular color scheme are prima facie obvious aesthetic design choices that do not define the claimed invention over the prior art, because they are of ornamentation only with no mechanical function. See MPEP 2144.04 (I).
Applicant has also argued that the claimed color scheme is distinguished over the prior art because Zhong teaches having different colors on the front and back of his pine needles, Sloane teaches a speckled color design, and Joo was cited for teaching that printing can be used to print artificial leaf materials. However, as discussed in the previous Office Action, Zhong also teaches to use colors to achieve a particular aesthetic effect, including using a combination of green and brown on the same side of a needle to achieve a natural “withered” look (par. 22, 28), Joo teaches using multi-color printing to achieve colors of natural leaves (par. 3), and Sloane teaches applying colors to branches to achieve a desired appearance (col. 2, ln. 1-4; col. 2, ln. 19-32; col. 5, ln. 10-11). Therefore, the prior art clearly teaches the concept of using color, including multiple, applied colors, to achieve a desired appearance with decorative products imitating trees and tree parts, including decorative artificial pine tree needles. The selection of a specific color scheme is a prima facie obvious aesthetic design choice, as discussed in MPEP 2144.04 (I), because it is of ornamentation only without providing any mechanical function.
Applicant has also argued that the discussion in the rejection of one of ordinary skill in the art configuring Zhong’s green and brown, “withered” needles to have a gradual change between green and brown to achieve a natural appearance is not an articulated reason why someone would redesign Zhong’s needles to have such a color scheme and that such a conclusion of obviousness employs Applicant’s disclosure as a roadmap. However, the stated desire of achieving a natural appearance, as is intended by Zhong (par. 22, 28), is the stated reason for making such a change, and Applicant has presented no reason or rationale as to why such a change would require a “redesign” of Zhong’s green and brown artificial pine needles. Additionally, in response to Applicant's argument that the Examiner's conclusion of obviousness is based upon improper hindsight reasoning, it must be recognized that any judgment on obviousness is in a sense necessarily a reconstruction based upon hindsight reasoning. But so long as it takes into account only knowledge which was within the level of ordinary skill at the time the claimed invention was made, and does not include knowledge gleaned only from the applicant's disclosure, such a reconstruction is proper. See In re McLaughlin, 443 F.2d 1392, 170 USPQ 209 (CCPA 1971). Creating the claimed color scheme on the prior art artificial pine needles would have been well within the level of ordinary skill in the art at the time of invention and would have been obvious in view of the cited prior art for the reasons discussed in the previous Office Action.
Applicant has also argued that the cited secondary references do not cure the deficiencies Applicant alleges are present with Zhang. However, as discussed above, the cited prior art clearly teaches the concept of using color, including multiple, applied colors, to achieve a desired appearance with decorative products imitating trees and tree parts, including artificial pine tree needles. The claim to a specific color scheme, also used to achieve a desired decorative effect rather than any mechanical function, is a prima facie obvious aesthetic design choice that does not distinguish the claimed invention over the prior art. MPEP 2144.04 (I).
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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/JULIA L. RUMMEL/
Examiner
Art Unit 1784
/HUMERA N. SHEIKH/ Supervisory Patent Examiner, Art Unit 1784
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