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 .
Acknowledgement is made of the Applicant’s amendment and remarks filed August 20, 2024. The amendment overcomes the specification objection and the rejection under 35 U.S.C 112(a) and (b). However, the Applicant’s amendments have necessitated new objections, as set forth below. Additionally, based on the examiner’s newly cited art, the claim is newly rejected under 35 U.S.C 102(a)(1) as set forth below.
Reproduction Objection
The amended reproductions are objected to because of the following reasons:
Incorrect reproduction numbering. The numbering must conform to the numbering requirements of Hague Administrative Instruction 405, as required under 37 CFR 1.1026. "When the same industrial design is represented from different angles, the numbering shall consist of two separate figures separated by a dot (e.g., 1.1, 1.2, 1.3, etc. for the first design, 2.1, 2.2, 2.3, etc. for the second design, and so on)." The figure numbering appearing in the published international registration should be preserved during prosecution of the nonprovisional international design application before the USPTO. If designs are cancelled, for example, as a result of a restriction requirement, applicants should not renumber the figures of the remaining design(s). Figure numbering pursuant of 37 CFR 1.84(u) does not apply to Hague applications. See 37 CFR 1.1061 (b). See examiner's example below.
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[AltContent: connector][AltContent: textbox (1.5)][AltContent: textbox (Examiner’s Example)]
The reproduction 1.5 is a line drawing while reproductions 1.1-1.4 are photographs. “Photographs and drawings must not be combined in a submission of the visual disclosure of the claimed design in one application. The introduction of both photographs and drawings in a design application would result in a high probability of inconsistencies between corresponding elements on the drawings as compared with the photographs” (MPEP 1503.02(V)). Correction is required to show all reproductions consistently, as either photographs or line drawings.
Replacement Reproductions
Replacement reproduction sheets must include all of the reproductions appearing on the prior version of the sheet, even if only one reproduction is being amended. However, if the applicant cancels a reproduction, follow these steps:
Do not include the canceled reproduction on the replacement reproduction sheet.
Make appropriate changes to the reproduction descriptions for consistency.
Additional replacement sheets may be necessary to show renumbering of the remaining reproduction.
If all the reproductions on a drawing sheet are canceled, a replacement sheet is not required.
A marked-up copy of the reproduction sheet (labeled as “Annotated Sheet”) including an annotation showing that all the reproductions on that reproduction sheet have been canceled must be presented in the amendment or remarks section that explains the change to the reproductions.
Label the replacement reproductions in the top margin as either "Replacement Sheet” or “New Sheet” pursuant to 37 CFR 1.121(d). If the examiner rejects the amended reproductions, the applicant will be notified and informed of any required corrective action in the next Office action.
When preparing new or replacement reproductions, be careful to avoid introducing new matter. New matter is prohibited by 35 U.S.C. 132 and 37 CFR 1.121 (f).
Specification Objection
The description for 1.3 is objected to because it does not accurately describe the view. Based on the C-shaped feature shown in 1.5, the view for 1.3 shows only the front side of the lamp, not the back, right, and left side. Therefore, for clarity and accuracy (MPEP 1503.01 (II)), the description for 1.3 must be amended. The examiner suggests the following description:
--1.3: is a front view thereof; --
Claim Rejection — 35 U.S.C 102(a)(1)
The claim is rejected under 35 U.S.C. 102(a)(1) as being anticipated by the examiner’s cited Non-Patent Literature Document “U”, New Works Brolly Portable Lamp Steel Black, by RESIDENCE STORE, 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 design shown in the RESIDENCE STORE reference is substantially the same as that of the claimed design. See images below. The ordinary observer test is the sole test for anticipation. 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.
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[AltContent: textbox (Claimed Design )][AltContent: textbox (RESIDENCE STORE Design )]
“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 comparison takes 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,” (Litton, 728 F.2d at 1444), so too minor differences cannot prevent a finding of anticipation. Int'l Seaway, supra.
Applicant’s attention is directed to MPEP §2152.06 for information in overcoming the rejection under 35 U.S.C. 102(a)(1).
Discussion of the Merits of the Application
All discussions between the applicant and the examiner regarding the merits of a pending application will be considered an interview and are to be made of record. See MPEP
713. The examiner will not discuss the merits of the application with applicant's representative if the representative is not registered to practice before the USPTO. Appointment as applicant’s
representative before the International Bureau pursuant to Rule 3 of the Common Regulations under the Hague Agreement does NOT entitle such representative to represent the applicant before the USPTO. Furthermore, an applicant that is a juristic entity must be represented by a patent attorney or agent registered to practice before the USPTO. Additional information regarding interviews is set forth below.
Telephonic or in person interviews
A telephonic or in person interview may only be conducted with an attorney or agent registered to practice before the USPTO (“registered practitioner’) or with a pro se applicant (an applicant who is the inventor and who is not represented by a registered practitioner).
The registered practitioner may either be of record or not of record. To become “of record”, a power of attorney (POA) in accordance with 37 CFR 1.32 must be filed in the application. Form PTO/AIA /80 “Power of Attorney to Prosecute Applications Before the USPTO”, available at https:/www.uspto.gov/patent/forms/forms-patent-applications- filed-or- after-september-16-2012, may be used for this purpose. See MPEP 402.02(a) for further information. Interviews may also be conducted with a registered practitioner not of record provided the registered practitioner can show authorization to conduct an interview by completing, signing and filing an “Applicant Initiated Interview Request Form” (PTOL-413A) (available at the USPTO web page indicated above). See MPEP 405. For acceptable ways to submit forms to the USPTO, see “When Responding to Official USPTO Correspondence” below.
If a pro se applicant or registered practitioner located outside of the United States wishes to communicate by telephone, it is suggested that such person email the examiner at Vanessa.Martinez1@uspto.gov to arrange a time and date for the telephone interview. Please
include proposed days and times for the proposed call. When proposing a day/time for the interview, please take into account the examiner’s work schedule indicated in the last paragraph of this communication. The email should also be used to determine who will initiate the telephone call.
Email Communications
The merits of the application will not be discussed via email (or other electronic medium) unless appropriate authorization for internet communication is filed in the application. Form PTO/SB/439 “Authorization for Internet Communications in a Patent Application or Request to Withdraw Authorization for Internet Communications” may be used to provide such authorization and is available at the USPTO web page indicated above. The authorization may not be sent by email to the USPTO. For acceptable ways to submit the authorization form to the USPTO, see “When Responding to Official USPTO Correspondence” below. See MPEP 502.03 II for further information.
When Responding to Official USPTO Correspondence
When responding to official correspondence issued by the USPTO, including a notification of refusal, please note the following:
The USPTO transacts business in writing. All replies must be signed in accordance with 37 CFR 1.33(b). Pursuant to 37 CFR 1.33(b)(3), a reply submitted on behalf of a juristic applicant must be signed by an attorney or agent registered to practice before the USPTO. Applicants may submit replies to Office actions only by:
Online via the Online via the USPTO's Patent Center (Registered eFilers only)
https://www.uspto.gov/patents/apply/patent-center
Mail: Commissioner For Patents, P.O. Box 1450, Alexandria, VA, 22313-1450
Facsimile to the USPTO's Official Fax Number (571-273-8300)
Hand-carry to USPTO's Alexandria, Virginia Customer Service Window https://www.uspto.gov/patents-maintaining-patent/responding-office-actions
Refusal Reply Reminder
Applicant is reminded that any reply to this Refusal must be signed either by a patent practitioner (i.e., a patent attorney or agent registered to practice before the United States Patent and Trademark Office) or by the applicant. If the applicant is a juristic entity, the reply must be signed by a patent practitioner. See 37 CFR 1.33(b).
Conclusion
The claim is refused as set forth above.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to VANESSA MARTINEZ whose telephone number is (571)272-8335. The examiner can normally be reached Monday-Friday 9:00AM-5PM.
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, Amy C. Wierenga can be reached on (571)270-0216. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/V.M./Examiner, Art Unit 2914
/SHARON S OUM/Primary Examiner, Art Unit 2925
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