DETAILED ACTION
Utility Vs. Design Patent
In general terms, a "utility patent" protects the way an article is used and works, while a "design patent" protects the way an article looks. The ornamental appearance for an article includes its shape/configuration or surface ornamentation applied to the article, or both. Both design and utility patents may be obtained on an article if invention resides both in its utility and ornamental appearance. (MPEP 1502.01).
In the instant case, the “navigation aid device” is an intended use of a figurine. The figurine does not have any mechanical features or functionalities, only that it may be orientated in a particular direction by a user. If this is to be considered how the article is “used or works”, this is anticipated for the reasons stated below. All other features of the figurine, e.g. “shape being configured to resemble a crocodile”, “front leg members”, “back leg members” etc. which may distinguish from the cited prior art, have no mechanical function and are purely ornamentation. In fact, the definition of a figurine is: a small ornamental figure of pottery, metal, plastic, etc.; statuette. (Dictionary.com).
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 1-x are rejected under 35 U.S.C. 103 as being unpatentable over How to Make a Crocodile (HTMAC) (NPL) in view of Bacchus, Trawler Forum (NPL).
In respect to claims 1 and 2, HTMAC discloses a figurine comprising a front portion and a rear portion, each having a top side, a bottom side, and a peripheral side extending therebetween, the front portion “configured to resemble” a head of a crocodile and the rear portion “configured to resemble” a tail of a crocodile; a front leg member having a planner upper surface and coupled to the bottom surface of the front portion, wherein the figurine is elevated by the front leg member (since it is placed at the bottom level of the figurine), the front leg portion extends outwardly; and a rear leg member having a planner upper surface and coupled to the bottom surface of the rear portion, wherein the figurine is elevated by the rear leg member (since it is placed at the bottom level of the figurine), the rear leg portion extends outwardly (See Figure from NPL, below).
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HTMAC does not disclose providing a first color of green to the front portion and a second color or red to the rear portion (for the purpose of indicating a vessel position among buoys at sea). However, Bacchus teaches a navigation aid device comprising: a figurine having a front portion and a rear portion (it is notable that “front” and “rear” are orientations that provide no structural distinction), the front portion being a first color (green) and the rear portion being a second color (red) (See NPL). Although the device need only be structurally capable of positioning in the way claimed, Bacchus further discloses using the device to position either facing a port side or a starboard side of a vessel, whether the vessel is traveling upstream or downstream as a navigation aid. Trawlers Forum includes several other disclosures of devices for the same purpose, all functioning on the same principle of a red portion and a green portion for navigation. It would have been obvious to provide any figurine, including the crocodile figurine taught by HTMAC with green and red coloration at its head portion and rear portion in view of Bacchus to imbue the figurine with direction red/green color to act as an orientation aid in boating (See NPL).
In respect to claims 4 and 6, although Bacchus does not disclose a logo printed on the bottom side (or arrows, which may be printed, and curved as claimed), where the only difference between a prior art and a claimed product is printed matter that is not functionally related to the product, the content of the printed matter will not distinguish the claimed product from the prior art. In re Ngai, 367 F.3d 1336,70 USPQ2d 1862, 1864 (Fed. Cir. 2004).
In respect to claim 8, Bacchus does not explicitly disclose the exact shape of the rear leg member, however, matters relating to ornamentation only, which have no mechanical function, cannot be relied upon to patentably distinguish the claimed invention from the prior art. In re Seid, 161 F.2d 229, 73 USPQ 431 (CCPA 1947). In the instant case, the rear member, along with all members of the figurine (See Utility vs. Design, above) has no mechanical function, particularly any difference between the rear leg members of HTHAC. Furthermore, the red/green coloration is not seen as a function of a structure or article, but an intended use by a user. Even if regarded as a functionality, this is irrelevant to the rear leg members, which are not colored.
In respect to claims 9-11, Bacchus does not disclose the particular dimensional range height, width, and length of the device, however, where the only difference between the prior art and the claims was a recitation of relative dimensions of the claimed device and a device having the claimed relative dimensions would not perform differently than the prior art device, the claimed device was not patentably distinct from the prior art device. In Gardner v. TEC Systems, Inc., 725 F.2d 1338, 220 USPQ 777 (Fed. Cir. 1984), cert. denied, 469 U.S. 830, 225 USPQ 232 (1984). Such dimensional differences could further be rolled into the ornamentation analysis in claim 8 above.
In respect to claim 12, HTMAC in view of Bacchus teaches the claimed invention for the reasons stated above.
Response to Arguments
Applicant’s arguments with respect to claims have been considered but are moot because the new ground of rejection does not rely on any reference applied in the prior rejection of record for any teaching or matter specifically challenged in the argument. HTMAC has been newly applied as new base reference anticipates most structural features of the figurine.
The applicant has only challenged the alleged deficiencies in the previously cited figurine.
The assertion the application as a whole is drawn to a design rather than a utility invention has not been addressed. However, the applicant suggests that “the claimed positioning and structure elevates the top side of the figurine to enhance visibility of the top side” which is not persuasive. Any ornamental figure could be nebulously construed as imbuing “functionality”. The general spacing of the parts of the figure are still squarely how it looks vs. how it works.
Regardless, HTMAC in view of Bacchus further teaches most of the structural limitations, including that “the figure is elevated by the front/rear leg member”. Any slight structure distinction (e.g. claim 8) is clearly drawn to an ornamental differentiation.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. Make a Lumpy, Bumpy, Cardboard Crocodile! (NPL) further teaches a similar crocodile figurine.
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). 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.
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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/KYLE R GRABOWSKI/Primary Examiner, Art Unit 3637