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 .
Examiner’s Comment
The merits of this case have been carefully reviewed in light of the applicant’s amendment received on 02/09/2026. The specification, drawing, and claim objections have been withdrawn as the applicant has addressed the objections by amendment. However, the 102(a)(1) and 103 prior art rejections have not been overcome. The arguments and affidavit submitted by the applicant did not provide any evidence that the seller VIVO, noted in the non-final, got the drawer directly from the inventor. Additionally, there is no connection made between CKnapp Sales Inc. and VIVO, so the prior art rejections still stand and are thus repeated made final.
Rejections
Rejection under 35 U.S.C. 102(a)(1)
The claim is again and finally rejected under 35 U.S.C. 102(a)(1) as being anticipated by “VIVO 14 inch Clamp-on Sliding Under Table Drawer for Office Desk on Amazon” (hereinafter NPL Reference U), 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.
Shown disclosed within NPL reference U is the appearance of the claimed design. See e.g., International Seaway Trading Corp. v. Walgreens Corp., 589 F.3d 1233, 1237-38, 1240, 93 USPQ2d 1001 (Fed. Cir. 2009) and MPEP § 1504.02.
“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 F3d.1308 (Fed. Cir. 2001) citing Gorham Co. v. White, 81 U.S. 511, 528 (1871).
“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 at 1444).
Under this standard, the appearance of NPL Reference U is substantially the same as that of the claimed design. Furthermore, the effective filing date of the claimed invention is 12/11/2023; the first available date of NPL Reference U is 08/28/2023. Accordingly, the rejection under this statute is proper.
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Claimed Design
The claimed design differs from NPL Reference U in that it does not show a logo on the left side of the drawer, it does not show claimed screw heads on the long oval cutouts on the clamps placed either side of the drawer, but does show them disclosed within the application, and lastly, the claimed design shows a cylindrical screw thread shape for the functional pieces of the clamps, whereas NPL Reference U shows a cylindrical screw thread shape with spiral ridges for the functional pieces of the clamps. The presence of the logo, the screw heads, and the lack of spiral ridges is considered by the examiner to be a de minimis difference and does not differentiate NPL Reference U from the claimed design. See MPEP 1504.03, B.
Applicants may overcome this rejection by providing convincing evidence 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.
Rejection under 35 U.S.C. 103
The claim is again and finally rejected under 35 U.S.C. 103 as being unpatentable over “VIVO 14 inch Clamp-on Sliding Under Table Drawer for Office Desk on Amazon” (hereinafter NPL Reference U).
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.
Disclosed within NPL U reference is design characteristics that are visually similar to those of the claimed design, in showing:
A rectangular shaped drawer with a solid bottom surface, and four vertical sides
Two clamps on either side of the drawer, with a rounded rectangular shape
A curved, rectangular-shaped notch opening for the drawer pull
Long cylindrical screws as part of the clamp portion
Four-sided screw tightener handle at the bottom of the clamp
The claimed design differs from NPL Reference U in that it does not show a logo on the left side of the drawer, it does not show claimed screw heads on the long oval cutouts on the clamps placed either side of the drawer, and the claimed design shows a cylindrical thread screw shape for the functional pieces of the clamps as part of a desk clamping drawer.
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NPL Reference U
It would have been obvious to a designer of ordinary skill before the effective filing date of the present claimed invention to modify NPL Reference U with no logo on the side of the drawer, no screws on the top portion of the clamp and to change the thread shape of a functional screw because the simple substitution of one known design element for another is obvious. It has been settled in the courts, that the logo does not override the underlying design because the claimed design is fully disclosed within the NPL reference U. See In re Daniels (CA FC) 46 USPQ2d 1788.
The claimed design would have no patentable distinction over the examiner’s combination of references.
Applicant is reminded that once the references are combined, the test of invalidity due to obviousness is left to the ordinary observer. “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 rest, not the view of one skilled in the art." International Seaway Trading Corp. v. Walgreens Corp., 589 F3d 1233, 93 USPQ2d 1001 (Fed. Cir. 2009
Conclusion
The claim stands finally rejected under 35 U.S.C. 102(a)(1) and 35 U.S.C. 103 as set forth above.
THIS ACTION IS MADE FINAL. Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
Contact Information
Any inquiry concerning this communication or earlier communications from the examiner should be directed to ELISABETH M LANGE whose telephone number is (571)272-7424. The examiner can normally be reached M-F, 8 a.m. - 5 p.m. ET.
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, Barbara Fox can be reached at (571) 272-4456. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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EML
/MARY ANN CALABRESE/Primary Examiner, Art Unit 2931
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