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
Appendix to the Specification
The appendix submitted by applicant with the original papers is understood to form no part of the claim. However, the appendix may form antecedent basis for certain amendments to the application. As the appendix forms no part of the claimed design, Applicant must delete the reference to the appendix in the specification.
Specification Objection
Title
The Title is objected to for not identifies the article in which the design is embodied by the name generally known and used by the public. see 37 C.F.R. 1.153 and MPEP 1503.01,subsection I.
To overcome this objection, the following titles are suggested.
--Furniture section-- or -- Modular Sofa—
Any amendment to the language of the title should also be made at each occurrence thereof throughout the application, Original Oath or Declaration excepted.
Claim
The claim statement is objected to for not being in proper form because of a missing “a”, 37 CFR 1.153 or 37 CFR 1.1025. The claim statement must be amended to read:
-- The ornamental design for a [Amended Title] as shown and described—
Claim Rejection - 35 U.S.C. § 102(a)(1)
The following is a quotation of the appropriate paragraphs of 35 U.S.C. 102 that form the basis for the rejection under this section made in this Office action:
A person shall be entitled to a patent unless –
(a)(1) 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 claim is rejected under 35 U.S.C. 102(a)(1) as being anticipated by US Patent D941602, to Stephanie Lin (hereafter Lin), published January 25, 2022, 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 Lin reference is substantially the same as that of the claimed design. The ordinary observer test is the sole test for anticipation. Int’l Seaway Trading Corp. v. Walgreens Corp., 589 F.3d 1233, 1237-38, 1240 (Fed. Cir. 2009).
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Claimed Design
Lin, 1/25/2022
“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. 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 , 589 F.3d at 1243 (citing Litton Sys., Inc. v. Whirlpool Corp., 728 F.2d 1423, 1444 (Fed. Cir. 1984)).
Claim Rejection - 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.
A design may be embodied in less than the entire article, as applicant has also shown in the appendix drawings. In re Zahn, 204 U.S.P.Q. 988 (CCPA 1980). Therefore, it is reasonable to compare such a design to prior art embodied in less than the entire article. In a design patent application, the subject matter claimed is the design for an article and not of an article, and may therefore be embodied in only a portion. It is understood that the appearance of any part of the article not shown in the drawing or described in the specification forms no part of the claimed design. Therefore, the determination of patentability is based on the design for the article shown and described."
The claim is rejected under 35 U.S.C. 103 as being unpatentable over US Patent D951664, to TongPei Song (hereafter Song), published May 17, 2022, in view of US Patent D761583, to Jim H. Warren (hereafter Warren), published July 19, 2016.
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 Song reference has design characteristics that are basically the same as the claimed design in that they both show a sofa module that has:
straight and flat surfaces on three(3) vertical sides;
a slanted and flat surface on the top portion on one side;
parallel and flat top and bottom surfaces;
all rounded corners and soft edges;
See figures below for reference:
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Claimed Design
Song, 5/17/2022
The claim differs from the Song reference in having the same slanted surface connecting with a vertical flat surface appearance on both ends of the sofa module. The Warren reference teaches a sofa armrest module that shows the same appearance on both sides.
See figures below for reference:
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Claimed Design
Warren, 7/19/2016
Having an appearance of a slanted surface connecting with a vertical flat surface feature on a sofa or a sofa module, whether on an armrest or a backrest, is common and well-established in the art of sofa industry, as evidenced by the cited FOR references WO D202118-051 and AU 346875, US Patents 2852787, D181771, D103416, 2022/0346561, 2010/0244537, 2010/0270844, 2024/0016299, 2010/0244536, D640481, D893215, D737594, D640480, D930383, and D1074230. In addition, the Song and Warren references establish that there is a known technique within the sofa art, which would allow a designer of ordinary skill to make this appearance as shown in the claim, on both sides of a sofa module.
It would have been obvious to a designer of ordinary skill in the art before the effective filing date of the present claimed invention to modify the Song reference to show the same appearance on both sides of the sofa module as taught by the Warren reference, because such a modification is a simple deployment of known methods and substitution of a known design element to yield predictable results. Accordingly, the overall visual appearance of the claimed design is found to be obvious over the Song reference in view of the Warren reference.
The claimed design would have no patentable distinction over the examiner’s combination of references.
Claim Rejection - 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 claim is rejected under 35 U.S.C. 103 as being unpatentable over HONBAY Armrest Module (hereafter HONBAY), available March 1, 2024, in view of US Patent D761583, to Jim H. Warren (hereafter Warren), published July 19, 2016.
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 HONBAY reference has design characteristics that are basically the same as the claimed design in that they both show a sofa module that has:
straight and flat surfaces on three(3) vertical sides;
a slanted and flat surface on the top portion on one side;
parallel and flat top and bottom surfaces;
all rounded corners and soft edges;
See figures below for reference:
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Claimed Design
HONBAY, 9/10/2020
The claim differs from the HONBAY reference in having the same slanted surface connecting with a vertical flat surface appearance on both ends of the sofa module. The Warren reference teaches a sofa armrest module that shows the same appearance on both sides.
See figures below for reference:
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Claimed Design
Warren, 7/19/2016
Having an appearance of a slanted surface connecting with a vertical flat surface feature on a sofa or a sofa module, whether on an armrest or a backrest, is common and well-established in the art of sofa industry, as evidenced by the cited FOR references WO D202118-051 and AU 346875, US Patents 2852787, D181771, D103416, 2022/0346561, 2010/0244537, 2010/0270844, 2024/0016299, 2010/0244536, D640481, D893215, D737594, D640480, D930383, D1074230, and D951664. In addition, the HONBAY and Warren references establish that there is a known technique within the sofa art, which would allow a designer of ordinary skill to make this appearance as shown in the claim, on both sides of a sofa module.
It would have been obvious to a designer of ordinary skill in the art before the effective filing date of the present claimed invention to modify the HONBAY reference to show the same appearance on both sides of the sofa module as taught by the Warren reference, because such a modification is a simple deployment of known methods and substitution of a known design element to yield predictable results. Accordingly, the overall visual appearance of the claimed design is found to be obvious over the HONBAY reference in view of the Warren reference.
The claimed design would have no patentable distinction over the examiner’s combination of references.
Conclusion
The claim stands rejected under 35 U.S.C. § 102(a)(1) and 35 U.S.C. § 103.
A reply to this Office Action is required to avoid abandonment of the application.
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 QIAWEN WU WIECHERT whose telephone number is 703-756-1727. The examiner can normally be reached Mon-Fri, 8am-5pm.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Richard Kearney can be reached on 571-272-8312. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/Q.W.W./
Examiner, Art Unit 2938
/Richard Kearney/Supervisory Patent Examiner, Art Unit 2938