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 .
Amendments
The amendments to the drawing disclosure, submitted 19 January 2024, have been received and are acknowledged.
After consideration of the applicant’s amendments, the drawing objections have been overcome. However, the applicant’s arguments are not found persuasive that the rejection of record under 35 USC § 103 be withdrawn. Thus, the rejection is set forth again and made final. THIS ACTION IS MADE FINAL.
Refer to “Response to Applicant’s Arguments” below.
Final Rejections – 35 USC § 103
The claim is finally rejected under 35 U.S.C. 103 as being unpatentable over United States patent D930,148 by Dantanarayana et al. (Dantanarayana) in view of United States patent D956,956 by Eves et al. (Eves).
Although the invention is not identically disclosed or described as set forth in 35 U.S.C. 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 designer having ordinary skill in the art to which the claimed invention pertains, the invention is not patentable.
The design of Dantanarayana has design characteristics that are basically the same as those of the claimed design.
An oblong frame with a central circular opening
Small rectangular openings above and below the central circular opening of the frame
Two thin arms on either side of the oblong frame, angling outward and upward
Two rectangular connectors that taper inward and curve from the arms to the connections on either side of the oblong frame
Wide, angled structural elements joining the connectors to the arms.
An offset inner frame on the rear interior of the article that shares the same general shape and curvature as the outer frame
Small ridges or protrusions on the top, bottom, and sides of the rear inner frame
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The claimed design differs from Dantanarayana in that:
The circular opening projects perpendicular from the face of the frame
There is a small lip or ridge on the front of the circular opening.
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Eves teaches a circular opening that projects perpendicularly from the face of the frame and a small lip or ridge on the front of the circular opening.
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It would have been obvious to a designer of ordinary skill not later than the effective filing date of the present claimed invention to modify Dantanarayana to have a circular opening that projects perpendicularly from the face of the frame with a small lip or ridge on the front of the circular opening as taught by Eves. Further, the inclusion of the encircled letters “R” and “L” on the connectors, the small openings on either side of the frame, and the oval seam or edge on the front of the frame are de minimis and do not distinguish the overall appearance of the claimed design when compared to the examiner’s combination of references.
The claimed design would have no patentable distinction over the examiner’s combination of references.
“For design patents, the role of one skilled in the art in the obviousness context lies only in determining whether to combine earlier references to arrive at a single piece of art for comparison with the potential design or to modify a single prior art reference. Once that piece of prior art has been constructed, obviousness, like anticipation, requires application of the ordinary observer test, not the view of one skilled in the art.” Int' l Seaway Trading Corp. v. Walgreens Corp., 589 F.3d 1233, 1237-38, 1240
(Fed. Cir. 2009).
This modification of the primary reference in light of the secondary references is proper because the applied references are so related that the appearance of features shown in one would suggest the application of those features to the other. See In re Rosen, 673 F.2d 388, 213 USPQ 347 (CCPA 1982); In re Carter, 673 F.2d 1378, 213 USPQ 625 (CCPA 1982), and In re Glavas, 230 F.2d 447, 109 USPQ 50 (CCPA 1956). Further, it is noted that case law has held that a designer skilled in the art is charged with knowledge of the related art; therefore, the combination of old elements, herein, would have been well within the level of ordinary skill. See In re Antle, 444 F.2d 1168,170 USPQ 285 (CCPA 1971) and In re Nalbandian, 661 F.2d 1214, 211 USPQ 782 (CCPA 1981).
Response to Applicant’s Arguments
The applicant argues that there are additional differences between the claimed design and the examiner’s combination of references as enumerated below, with the examiner’s response to each of these items immediately following in italics:
In the claimed design the sides of the circular opening projection sides are parallel not tapered as shown below. The slight taper shown in Fig. 4 of Dantanarayana would be considered de minimis in view of the overall design. However, it can also be seen that the Eves reference teaches parallel side projections as seen in the above Fig. 7.
In the claimed design the circular opening projection is mounted on the mask base so that it points straight out not down as shown below. The circular projection as taught by Eves also projects perpendicular or straight out from the face of the frame. The orientation of the design in Fig. 7 of Eves shows the projection angling slightly downward, but it only does so to match the angle of the face of the frame. This does not detract from the understanding that the circular projection in Eves is perpendicular or straight out from the face of the frame.
In the claimed design there are no side openings "A" as shown in Dantanarayana FIG. 1 (annotated below) and Eves FIG. 1 as shown below. The presence or absence of small side openings does not distinguish the claimed design over the primary reference such that it would not be considered basically the same. These openings are considered de minimis in view of the overall design. However, it can also be seen that teaching a frame with no additional side openings would be obvious in view of Eves and other previously cited art, such as Henry (U.S. Patent Publication 2016/0296720, ref. Fig. 31). The elements identified as “A” in Eves are not being taught in the rejection and are irrelevant.
In the claimed design there is no oval ring "B" as shown in Dantanarayana FIG. 1 (annotated below). The presence or absence of a single edge or seam on the front of the frame does not distinguish the claimed design over the primary reference such that it would not be considered basically the same. This line or “ring” is considered de minimis in view of the overall design.
In the claimed design the central circular projection is smooth between the base of the projection where it mounts the frame and the small lip on the front of the circular opening; there are not multiple ridges or segments "C" as shown in Dantanarayana FIG. 1 (annotated below) and Eves FIG. 1 as shown below. The circular projection taught by Eves removes the elements “C” from Dantanarayana from the combination of references, and elements “C” from Eves are not being taught in the rejection, only the circular projection from the frame and the lip at the front. As such, the combination of references would have a seam where the circular projection connects to the frame (as shown in Dantanarayana and the claimed design), with the parallel walls of the circular projection and the lip at the front of the projection, consistent with the appearance of the claimed design.
The applicant also argues that Dantanarayana is not a proper primary reference because, “The overall visual impression of the claimed design (which does not have side openings, an oval ring, a tapered projection with ridges or segments, and which has a central projection coming straight out and not down), is a much cleaner design.” This argument is not found to be persuasive as the examiner has outlined both the similarities and the differences between the claimed design and Dantanarayana to establish the prima facie case for obviousness. As outlined in the enumerated responses above, the differences between the claimed design and the primary reference asserted by the applicant were not relevant to the consideration of the design as a whole, or were taught by the secondary reference.
The applicant further argues that, “Eves, which has a notably different appearance from the claimed design, is not analogous art,” and “replacing the central circular projection of Dantanarayana with that of Eves is a change in configuration. Thus, the modification of Dantanarayana with the non-analogous art of Eves is improper.” These arguments are not found to be persuasive as Eves is analogous art.
MPEP 2141.01(a)(I) provides guidance on what is considered analogous art:
A reference is analogous art to the claimed invention if: (1) the reference is from the same field of endeavor as the claimed invention (even if it addresses a different problem); or (2) the reference is reasonably pertinent to the problem faced by the inventor (even if it is not in the same field of endeavor as the claimed invention).
The primary reference (Dantanarayana) and the secondary reference (Eves) are both directed to respiratory masks or interfaces. Further, they are both comprised of a frame with straps with and a central opening. Based on definition (1) of analogous art as presented above, the primary reference and secondary reference would certainly be considered analogous art to the claimed invention, which is comprised of a frame with straps and a central opening. Further, the modification of one circular projection with the appearance of another circular projection is not a change in configuration, it is only a change in appearance. The modification of Dantanarayana in view of Eves is proper as they are considered to be analogous art.
For these reasons, the applicant’s arguments are not found persuasive and the rejection of record under 35 USC § 103 is maintained and made final.
Final Action
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 extension fee 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.
Conclusion
The claimed design is finally rejected under 35 U.S.C. § 103, as set forth above.
The references cited but not applied are considered cumulative art related to the claimed design.
Contact Information
Any inquiry concerning this communication or earlier communications from the examiner should be directed to LEE STARR whose telephone number is (571)272-9581. The examiner can normally be reached Mon-Fri, 8:30 AM - 3:30 PM.
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, Holly Thurman can be reached on (571) 272-8068. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/L.D.S./Examiner, Art Unit 2919
/DANIEL J DOMINO/Primary Examiner, Art Unit 2919