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 .
Applicant’s Response
Acknowledgement is here made of the Applicant’s Remarks and Amendment of 10/16/2025. The merits of the application have been carefully reconsidered in view of the Remarks and Amendment of 10/16/2025.
Applicant’s Response to Claim Rejection - 35 USC § 102(a)(1)
The declaration under 37 CFR 1.130(a) filed on 10/16/2025 is sufficient to overcome the rejection of the claim based on 35 U.S.C. 102(a)(1). Applicant has filed a declaration of attribution under 37 CFR 1.130(a) to invoke the 102(b)(1)(A) exception. Per the declaration, the claimed design originated with one or more members of the inventive entity, as listed on the application (whose signature is on the declaration). As such, the subject matter disclosed in the prior art was obtained directly from the inventor in the present application.
Since the declaration disqualifies the prior art by establishing the subject matter disclosed was owned by the inventor, and was made 1 year or less before the effective filing date of the claimed design, the rejection under 35 U.S.C. 102(a)(1) has been overcome. However, additional prior art that is substantially the same as that of the claimed design has been discovered. See Rejection below.
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 Examiner's cited Non-Patent Document “U”, FAS THE BLACK AC OIL SERUM (hereinafter FAS). 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 FAS Design teaches a bottle with a dropper-style dispenser, having an overall appearance with design characteristics that are visually similar to those of the claimed design, in showing a substantially cylindrical bottle with an organic undulating surface, angular shoulders, and a dropper-style attachment. See comparison below.
The claimed design differs from the FAS design in that is shown in a different color.
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The difference in the change of color from the claimed design to FAS is not a patentable distinction. “Patentability of design may not rest on color alone. The differences in color are not sufficient to patentably distinguish the claimed design over the prior art, as selection of different color would not produce any basic alteration or unexpected appearance.” In re Iknayan et. Al. 124 USPQ 507 (1960).
Additionally, the variation in descriptive copy is considered to be de minimis. A difference is de minimis in nature when its visual effect is unrelated to the overall aesthetic appearance of the design – so minimal or so minor that it has insignificant impact on the overall visual impression. Differences may be considered patentably insufficient when they are de minimis to a designer of ordinary skill in the art. These differences are considered to be differences that are too insignificant within the scope of the entire design to warrant a patent, (see In re Lapworth, 172 USPQ 129 (C.C.P.A. 1971 and In re Lamb, 48 CCPA 817, 286 F.2d 610, 128 USPQ 539 (1961)).
Therefore, it would have been obvious to a designer of ordinary skill before the effective filing date of the present claimed invention to modify the black color of the FAS Design to be white, and modify the descriptive copy to read “THE BLACK BRIGHT SERUM”. Because such changes are not representative of innovation, each difference alone or together, fails to be anything other than an obvious design choice.
It is well settled that it is unobviousness in the overall appearance of the claimed design, when compared with the prior art, rather than minute details or small variations in design as appears to be the case here, that constitutes the test of design patentability. See In re Frick, 275 F.2d 741, 125 USPQ 191 (CCPA 1960) and In re Lamb, 286 F.2d 610, 128 USPQ 539 (CCPA 1961).
Reply Reminder
Applicant is reminded that any reply to this communication 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).
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.
Responding to Official USPTO Correspondence
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 USPTO's Electronic Filing System‐Web (EFS‐Web) (Registered eFilers only) https://www.uspto.gov/patents/apply
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/maintain/responding-office-actions
Conclusion
The claim stands rejected under 35 U.S.C. 102(a)1.
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
Contact Information
Any inquiry concerning this communication or earlier communications from the examiner should be directed to AMANDA KAY BIRDWELL whose telephone number is (571)272-9125. The examiner can normally be reached Mon-Fri 8:30-5.
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, Primary Examiner Barbara Fox can be reached at (571)272-4456, or, the examiner’s supervisor, Rich Edgar, can be reached at (571)272-4816. 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.
/A.K.B./
Examiner, Art Unit 2931
/BARBARA FOX/Supervisory Patent Examiner, Art Unit 2936