Office Action
Applicant’s election, amendments, and arguments filed May 12, 2025 and July 30, 2025 have been fully considered.
Election of Embodiment 2 was made without traverse in the replies filed on May 12, 2025 and July 30, 2025. Embodiments 1 and 3 are withdrawn from further consideration by the examiner, 37 CFR 1.142(b), as being for nonelected designs.
Applicant’s arguments concerning the rejection of Embodiment 2 under 35 USC 102(a)(1) are not persuasive, and the rejection is given again and made final. THIS ACTION IS MADE FINAL. Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
Final Rejection
35 USC 102(a)(1)
The claim is rejected under 35 U.S.C. 102(a)(1) as being anticipated by the “Salone del Mobile 2022 | ART NOVA - Filippo Piotti Curve and Kintai sofas and Bobbin coffee tables” video posted to Youtube.com by Archiproducts on June 22, 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 the angled “Curve” sofa component featured between 0:05-0:08, 0:31-0:38, 0:43-0:54, and 1:05-1:08 of the video is substantially the same as that 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.
Response to Argument
In the response, applicant argues that the “Curve” sofa shown in the video cannot anticipate the claimed design because:
the claimed design includes the bottom of the sofa but the bottom of the “Curve” sofa is not shown in the video;
the claimed design includes stitching around the perimeters of the ends of the backrest pillows and on the corners of the base that the “Curve” sofa lacks;
the “Curve” sofa includes stitching around the perimeter of the faces of the backrest pillows and at the center of the front surface of the base that the claimed design lacks; and
the shape of the base of the claimed design has a “smoother” curve than the shape of the base of the “Curve” sofa.
This argument is not persuasive.
MPEP 1504.02 states,
The ordinary observer test requires consideration of the design as a whole. See Seaway, 589 F.3d at 1243, 93 USPQ2d at 1008; Egyptian Goddess, 543 F.3d at 677, 88 USPQ2d 1667. In applying the ordinary observer test, "determine whether ‘the deception that arises is a result of the similarities in the overall design not of similarities in ornamental features in isolation.’" See Richardson v. Stanley Works Inc., 597 F.3d 1288, 1295, 93 USPQ2d 1937, 1941 (Fed. Cir. 2010), citing Amini Innovation Corp. v. Anthony California Inc., 439 F.3d 1365, 1371, 78 USPQ2d 1147, 1151 (Fed. Cir. 2006) (holding that the overall infringement test is not to be converted to an element-by-element comparison when factoring out the functional aspects of various design elements). See Apple Inc. v. Samsung Elecs. Co., 786 F.3d 983, 998, 114 USPQ2d 1953, 1962 (Fed. Cir. 2015); Ethicon Endo-Surgery, Inc. v. Covidien, Inc., 796 F.3d 1312, 1333, 115 USPQ2d 1880, 1896 (Fed. Cir. 2015); and Sport Dimension, Inc. v. Coleman Co. Inc., 820 F.3d, 1316, 1320-21, 118 USPQ2d 1607, 1609-10 (Fed. Cir. 2016). "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." Seaway, 589 F.3d at 1243, 93 USPQ2d at 1008. "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." Id. (internal quotation marks omitted).
[…]
When a claim is rejected under 35 U.S.C. 102 as being unpatentable over prior art, those features of the design which are functional and/or hidden during end use may not be relied upon to support patentability. See In re Cornwall, 230 F.2d 457, 109 USPQ 57 (CCPA 1956); Jones v. Progress Ind., Inc., 163 F. Supp. 824, 119 USPQ 92 (D. R.I. 1958).
Applicant is correct – the claimed design of the present application includes the bottom surface, yet the underside of the “Curve” sofa is not shown in the prior art video, and the claimed design and the “Curve” sofa do exhibit the identified differences in stitching placement and the slight difference in the curvature of the base.
The prior art video shows the “Curve” sofa during end use. The video shows that during end use, the underside of the “Curve” sofa is not visible. Additionally, when considering the claimed design as a whole, and comparing it to the “Curve” design as a whole, the identified differences in stitching and curvature are minor.
Because the designs must be considered as a whole rather than comparing differences in isolation, because the comparison between the designs should take into account significant rather than minor or trivial differences, and because features of the design which are hidden in end use (such as the underside of a sofa) may not be relied upon to support patentability, the fact that the “Curve” sofa shows minor differences in stitching and degree of curvature and does not show the underside of
the sofa cannot prevent it from anticipating the claimed design. Despite these minor differences, the appearance of the “Curve” sofa is substantially the same as the claimed design.
______________________________________________________________________________
The claim is finally rejected under 35 USC 102(a)(1).
The references cited but not applied are considered cumulative art related to the claimed design.
Response Time Period
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 nonprovisional extension fee (37 CFR 1.17(a)) 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.
Examiner Contact Information
Any inquiry concerning this communication or earlier communications from the examiner should be directed to DEANNA L PRATT whose telephone number is (571)272-7649. The examiner can normally be reached on Monday-Friday, 9am-5pm. Examiner interviews are available via telephone 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, George Bugg can be reached on (571)272-2998. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
Application Status Information
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.
/DEANNA L PRATT/Primary Examiner, Art Unit 2911