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 ACTION
Applicant’s amendment filed 08/29/2025 is hereby acknowledged. The merits of this case have been carefully examined again in light of applicant's response. The objection to the specification has been overcome and is withdrawn; however, the rejection under 35 USC § 102(a)(1) as not been fully overcome with applicant’s arguments, and is therefore made again. 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).
Final Rejection under 35 USC § 102(a)(1)
The claim is rejected again and FINALLY under 35 USC § 102(a)(1) as being anticipated by Non-Patent Document #U (Page 2) - Away Instagram Post, dated 10/23/2016, because the claimed invention was 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. The appearance of the luggage in the Away Instagram Post is substantially the same as that of the claimed design. See comparison below:
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The ordinary observer test is the sole test for anticipation. International Seaway Trading Corp. v. Walgreens Corp., 589 F.3d 1233, 1237-38, 1240, 93 USPQ 2d. 1001 (Fed. Cir. 2009).
“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, 81 U.S. at 528.)
“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.” Intl. Seaway, supra (citing Litton Sys., Inc. v. Whirlpool Corp., 728 F.2d 1423, 1444 (Fed. Cir, 1984)).
Rebuttal of Applicant Arguments/Remarks
The examiner is responding to the applicant’s arguments/remarks filed 08/29/2025 in accordance to the differences outlined in numbers 1-2:
“The Away Instagram Post fails to show key surfaces of the claimed luggage.”
The single Instagram Post citation shows a front view, handle-side view, and top angle view of the prior art that demonstrates in overall comparison the two designs are substantially the same in showing: rectangular, vertical pieces of luggage with hard-shell sides, two fixed handles (one on the top, one on the left side), a telescoping handle on top, two zippers with lock on the top, four wheels, and repeating parallel grooves.
The Away Instagram account itself includes other images in its posts that shows the same luggage set from various other angles, showing key surfaces and enabling further overall comparison between the claimed design and prior art design. See below for examples (cited as non-patent documents U, V and W):
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“The claimed luggage is patentably distinct from the luggage of the Away Instagram Post.”
The Examiner understands that the Instagram disclosure aligns with the D880,156 patent. However, under the ordinary observer test, the claimed design is still anticipated by the Instagram post. The ‘156 patent also could have served as the basis for rejection itself.
The claimed design differs from the prior art because it includes a slightly different shape of handle surround for the telescoping handle. It also includes a grab handle on the underside. These elements, were they claimed separately from the overall luggage, would be patentably distinct from the prior art.
However, it is the overall appearance which must be considered. An ordinary observer would mistake the claimed design for the prior art design. The Examiner acknowledges the differences, but they are too trivial to alter the overall appearance of the claim. Importantly, aside from the differences identified, the bags are absolutely identical.
Conclusion
Accordingly, the claim stands rejected under 35 USC § 102(a)(1) as set forth above.
THIS ACTION IS MADE FINAL. Applicant is reminded of the extension of time policy as set forth in 37 C.F.R. § 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.
CONTACT INFORMATION
Any inquiry concerning this communication or earlier communications from the examiner should be directed to ALEXANDRIA DUBUS whose telephone number is (703)756-1979. The examiner can normally be reached M-F | 12:00 PM - 9:00 PM ET.
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/A.D./Examiner, Art Unit 2936 /BRETT MILLER/Examiner, Art Unit 2934