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 .
Detailed Office Action
Election
In the paper received 05/20/2025 Applicants elect without traverse the design shown in Group I (Embodiment 1: Figs. 1-11). Accordingly, the design shown in Group II (Embodiment 2: Figs. 12-20) stands withdrawn, and the corresponding drawings and figure descriptions are canceled from further prosecution. 37 CFR 1.142(b).
Drawings
The following formal matters are noted:
The broken lines are shown at varying line weights throughout the drawings. Broken lines in the drawings should be uniform in size, length and weight in order to contrast with the solid line disclosure of claimed subject matter. Applicants may choose to amend the views for consistency, to clarify the meaning and purpose of the lines used in the drawings. (See example below.)
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Fig. 2
“A”: The broken lines have a heavier line weight.
“B”: The broken lines have a lighter line weight.
A response from Applicants are not required regarding the above-noted formal matter, but Applicants are strongly encouraged to consider the above, may wish to do so for clarity and to place the application in better form to move toward allowability.
The drawings meet the requirements of 37 CFR 1.84; however, the drawings are objected to as follows:
The drawing disclosure must be amended to delete Group II (Figs. 12-20) per Applicants’ 05/20/2025 election.
Any corrected drawings submitted in response to this Office action must be compliant with 37 CFR 1.121(d).
An amended replacement drawing sheet should include all the figures appearing on the immediate prior version of the sheet, even if only one figure is amended. The figure (or figure number) of an amended view should not be labeled as amended. If a drawing figure is canceled, that figure must be removed from the replacement sheet and the remaining figures and their related figure descriptions must be renumbered, as necessary.
Additional replacement sheets may be necessary to show the renumbering of the remaining figures. If all the figures on a drawing sheet are canceled, a replacement sheet is not required. A marked-up copy of the drawing sheet (labeled as "Annotated Sheet") including an annotation showing that all the figures on that drawing sheet have been canceled must be presented in the amendment or remarks section that explains the change to the drawings.
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 Examiner, Applicants will be notified and informed of any required corrective action in the next Office action.
When preparing new or replacement drawings, be careful to avoid introducing new matter. New matter is prohibited by 35 U.S.C. 132 and 37 CFR 1.121(f).
Specification
The specification is objected to as follows:
The title, “Thermal Transfer Apparatus,” is misdescriptive and unclear because it is generic and does not specifically identify the article in which the design is embodied by the name generally known and used by the public, and may contribute to defining the scope of the claim. MPEP § 1504.04.I.A. See Curver Luxembourg, SARL v. Home Expressions, Inc., 938 F.3d 1334, 1340, 2019 USPQ2d 341902 (Fed. Cir. 2019).
The verbiage is not entirely descriptive of the claim and could be subject to multiple interpretations. The drawings show a package of temperature reactive cells typically used in rehabilitation. However, an "apparatus" is typically defined as a collection of individual elements, working together to perform a specific function. This term is not supported by the drawings in the instant claim.
Moreover, a search for the current title in analogous arts yields numerous unrelated results, including heat conduction lab equipment, heat transfer index testing devices, and thermal air duct systems. A title descriptive of the actual article contributes to a stronger prior art search and also aids in accurate classification of applications both entering and exiting the office. 37 CFR 1.153. Applicants are recommended to consider a title that describes the physical appearance of their claim.
Therefore, for proper description, clarity, so that the title accurately describes the design by a name generally known and used by the public, and so that the nature and intended use of the design is clearly explained, the title should be amended throughout the application, original oath or declaration excepted. This assertion is inclusive of the preamble, the figure description, the broken line statement and the claim statement. Examiner suggests:
-- Thermal Pack --, or another similar title.
Per MPEP 2103 C.IV.A., the teaching of the disclosure is understood in light of the disclosure as it would be interpreted by one of ordinary skill in the art. Applicants’ design offers the familiar appearance of a flexible, therapeutic gel pack. The claim would be easily recognized by someone having general knowledge in the art of heating/cooling gel packs. Accordingly, an amendment of the title to include the term “pack” is not considered new matter.
Descriptions of the drawings are not required to be written in a particular format; however, they should describe the views of the drawings clearly and accurately. MPEP 1503.01.II.
The descriptions for non-elected Figs. 12-20 must be deleted per Applicants’ election of 05/20/2025.
Because the Figs. 8, 9, 10, and 11 cross-sectional views show information in the background of the view, it must be properly described as “taken in the direction of…”. A cross-sectional view should be clearly described in the specification, inclusive of its reference view, its orientation, the type of view angle and descriptor.
The descriptions may be simplified, In re Freeman, 1904. Applicants may choose to enter the term “thereof”, if those drawings directly reference the three-dimensional configuration of the prior view.
Applicants are also encouraged to include view angles in their descriptions. This may aid in the interpretation of each drawing when compared to the other views.
Accordingly, for clarity and accuracy, the following amendments are suggested:
-- FIG. 1 is a front perspective view of a [title], showing our new design;
FIG. 2 is a front elevation view thereof;
FIG. 3 is a left side elevation view thereof;
FIG. 4 is a right side elevation view thereof;
FIG. 5 is a rear elevation view thereof;
FIG. 6 is a top plan view thereof;
FIG. 7 is a bottom plan view thereof;
FIG. 8 is a cross-sectional view of the [title] taken in the direction of line 8-8 of FIG. 6;
FIG. 9 is a cross-sectional view thereof, taken in the direction of line 9-9 of FIG. 6;
FIG. 10 is a cross-sectional view thereof, taken in the direction of line 10-10 of FIG. 6; and
FIG. 11 is a cross-sectional view thereof, taken in the direction of line 11-11 of FIG. 6. –
The meaning and purpose of the broken lines in a drawing must be made clear in the specification. Therefore, the broken-line description must expressly identify what is depicted by the broken lines in addition to defining their relationship to the claimed design. MPEP § 1503.02.III.
In the description of broken lines preceding the claim, the phrase "for the purpose of illustrating" does not properly describe the broken lines in the drawings as required by the MPEP.
Accordingly, for clarity and proper form, the broken line statement should be amended. Examiner suggests:
-- The broken lines in the drawings depict portions of the [title] that form no part of the claimed design. --
An amendment to the title is suggested above; this point is inclusive of the preamble, the figure descriptions, the broken line statement and the claim statement.
To ensure cohesion within the disclosure, a clean copy of the entire specification document is requested with Applicants’ response. See In re Freeman, 109 O.G. 1904 C.D. 619, 23 App. D.C. 226 (1904).
Claim Rejection - 35 USC § 102 (a)(1)
The claim is rejected under 35 USC § 102(a)(1) as being anticipated by the “CryoMax Cold Pack” reference (06/04/2025 Non-Patent Document Citation No. U). The claimed design was either patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention.
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Claimed Design Fig. 7
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“CryoMax Cold Pack” Reference
For anticipation to be found, the two designs must be substantially the same. Gorham Co. v. White, 81 U.S. 511, 528 (1871). The ordinary observer test is the sole test for anticipation and requires consideration of the design as a whole. International Seaway Trading Corp. v. Walgreens Corp., 589 F.3d 1233, 1237-38, 1240, 93 USPQ2d 1001 (Fed. Cir. 2009); Egyptian Goddess Inc. v. Swissa Inc., 543 F.3d 665, 676, 88 USPQ2d 1658, 1666-67 (Fed. Cir. 2008).
“Two designs are substantially the same if their resemblance is deceptive to the extent that it would induce an ordinary observer, giving such attention as a purchaser usually gives, to
purchase an article having one design supposing it to be the other.” Door-Master Corp. v.
Yorktowne Inc., 256 F.3d 1308, 1313 (Fed. Cir. 2001), (citing Gorham Co. v. White, supra).
“The mandated overall comparison is a comparison taking into account significant differences
between the two designs, not minor or trivial differences that necessarily exist between any two
designs that are not exact copies of one another. Just as ‘minor differences between a patented
design and an accused article's design cannot, and shall not, prevent a finding of infringement,’
so too minor differences cannot prevent a finding of anticipation.” Int'l Seaway, supra (citing Litton
Sys., Inc. v. Whirlpool Corp., 728 F.2d 1423, 1444 (Fed. Cir. 1984)).
The standard for determining novelty under 35 USC § 102 is the “average observer”. In re Bartlett, 300 F. 2d 942, 133 USPQ 204 (CCPA 1962). This “average observer” has been described as having a less discerning eye. In re Nalbandian, 661 F. 2d 1214, 211 USPQ 782, footnote 2 at 784 (CCPA 1981). With that in mind, a minor variance between the claim and the “CryoMax Cold Pack” reference is noted.
The appearance of “CryoMax Cold Pack” reference is substantially the same as that of the claimed design. Applicants have defined the scope of their claim to include less than the entire article, i.e., broken lines depict unclaimed features in the drawings. The practice of claiming a design embodied in less than the entire article was confirmed in the decision of In re Zahn, 204 USPQ 988 (CCPA 1980). Since aspects of the claim are depicted in broken lines, the hypothetical removal of those features from the prior are is permissible in forming the basis for this rejection. These minor differences do not affect the appearance of the design as a whole and the impression it makes to the eye of the average observer.
Under this standard, the appearance of the “CryoMax Cold Pack” reference is substantially the same as that of the claimed design, Hupp v. Siroflex of America Inc., 122 F.3d 1456, 43 USPQ2d 1887 (Fed. Cir. 1997). That is, the appearance of the claimed thermal pack is deceptive to the extent that it would induce an ordinary observer to purchase it supposing it to be the “CryoMax Cold Pack” reference. Furthermore, the effective filing date of the claimed design is 06/27/2023; the published date of the “CryoMax Cold Pack” reference is 10/02/2002. Accordingly, the rejection under this statute is proper.
Applicants are cautioned that, should a proper affidavit be filed to overcome the present aforementioned 35 USC § 102(a)(1) rejection, the instant application may be subject to another 35 USC § 102(a)(1) rejection. The "ThermalMAX Heat Packs” reference (03/26/2025 Non-Patent Document Citation No. X) and “Cryo-MAX Cold Pack” (03/26/2025 Non-Patent Document Citation No. V) shows published dates of 07/28/2016 and 01/23/2009 respectively, that is also prior to the effective filing date of the instant application, anticipates the design shown in the instant application.
Applicants are further advised that the published date of the “CryoMax Cold Pack” (06/04/2025 NPL No. U) reference is more than 12 months before the effective filing date of the claimed TITLE. Unfortunately, this issue may make the claim defective.
Notwithstanding, Applicants may attempt to overcome this portion of the rejection by providing convincing evidence, in the form of an affidavit, that the disclosure was made one year or less before the effective filing date of the claimed invention, and 1) the disclosure was made by the inventor, a joint inventor, or by another who obtained the subject matter directly or indirectly from the inventor or joint inventor; or 2) before such disclosure, the subject matter disclosed had been publicly disclosed by the inventor or a joint inventor or another who obtained the subject matter disclosed directly or indirectly from the inventor or joint inventor.
In the future, Applicants are strongly advised to include in their original filing an affidavit (or declaration
under 37 CFR 1.130) that may clarify on the record their relationship to any potentially, conflicting prior
art, by naming any related Assignee on the application data sheet (ADS) in the file wrapper.
Conclusion
The claimed design stands rejected under 35 USC § 102(a)(1).
The references cited but not applied are considered cumulative art related to the claimed design.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to JAMESON PADRAIC CAREY whose telephone number is (703)756-1020. The examiner can normally be reached Mon-Fri, 8am-5pm PDT. Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicants are 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, Shawn T. Gingrich can be reached on (571)270-0218. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/J.P.C./
Design Examiner, Art Unit 2934
/Kendra Leslie Hamilton/Primary Examiner, Art Unit 2915 06/12/2025
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