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
General Information
The merits of this case have been carefully examined again in light of applicant's response received 1 October 2025
It is the Examiner's position that the rejections of record under 35 USC 102(a)(2) and 35 USC 103 have not been overcome by applicant's arguments and are hereby repeated and made FINAL.
FINAL REFUSAL
CLAIM REJECTION - 35 USC § 102(a)(2)
The claim is AGAIN AND FINALLY REJECTED under 35 U.S.C. § 102(a)(2) as being unpatentable over Zhou Ping et al’s “Integral molded plastic type manhole cover and manhole seat ( heavy )” and “Integral molded plastic type manhole cover and manhole seat ( light )” Chinese Patent Registration No.’s CN 303629504 and CN 303629505, because the invention was patented or described in a printed publication in this or a foreign country, or in public use or on sale in this country more than one year prior to the application for patent in the United States (3/30/2016).
Applicant' s arguments in rebuttal of the rejection of record have been carefully considered but are found unconvincing. The Applicant has argued that the threaded inner surface structure has a high thread-pitch when compared to Ping et al’s design. The threading on the interior surface is considered a structural/functional element whose purpose is not primarily ornamental.
Hidden portions or functional features cannot be relied upon as a basis for patentability. If applicant wishes to rely on functional or hidden features as a basis for patentability, then the same standard for establishing ornamentality under 35 U.S.C. 171 must be applied before these features can be given any patentable weight. See MPEP § 1504.01(c).
Applicant may submit evidence that demonstrates the design is ornamental in the form of an affidavit or declaration under 37 CFR 1.132:
(a) Stating the ornamental considerations which entered into the design of the article; and
(b) Identifying what aspects of the design meet those considerations.
An affidavit or declaration under 37 CFR 1.132 may also be submitted from a representative of the company, which commissioned the design, to establish the ornamentality of the design by stating the motivating factors behind the creation of the design.
Evidence to demonstrate there is some period in the commercial life of the article embodying the claimed design when its ornamentality is a matter of concern. Such evidence may include a showing of a period in the life of the design when the ornamentality of the article may be a matter of concern to a purchaser during the process of sale. An example of this type of evidence is a sample of sales literature such as an advertisement or a catalog sheet which presents the appearance of the article as ornamental and not merely as a means of identification or instruction.
Attorney arguments are not a substitute for evidence to establish the ornamentality of the claim. Ex parte Webb, 30 USPQ2d 1064, 1067-68 (Bd. Pat. App. & Inter. 1993).
For the above reasons, the refusal of the claim under 35 USC 102(a)(2) is proper.
Claim Rejection· 35 USC § 103
The claim is AGAIN AND FINALLY REJECTED under 35 U.S.C. § 103 as being unpatentable over Sorrell’s “Cover Assembly” U.S. Patent 3,331,295 (7/18/1967) in view of Trudel’s “Adjustable Manhole Top” U.S. Patent 5,211,504 (5/18/1993)
Although the invention is not identically disclosed or described as set forth 35 U.S.C. 102, the invention is not patentable if the differences between the subject matter sought to be patented and the prior art are such that the subject matter as a whole would have been obvious at the time the invention was made to a designer having ordinary skill in the art to which said subject matter pertains.
Applicant's arguments in rebuttal of the rejection of record have been carefully considered but are found unconvincing. The Applicant has argued that the threaded inner surface structure has a high thread-pitch when compared to the cited references.
The threading on the interior surface is considered a structural/functional element whose purpose is not primarily ornamental.
Hidden portions or functional features cannot be relied upon as a basis for patentability. If applicant wishes to rely on functional or hidden features as a basis for patentability, then the same standard for establishing ornamentality under 35 U.S.C. 171 must be applied before these features can be given any patentable weight. See MPEP § 1504.01(c).
Following the Federal Circuit’s decision on 103 practice in LKQ Corp v. GM Global Technology Operations LLC No. 2021- 2348 (Fed. Cir. May 2024), the current examination is based on designs that are visually similar with modifications that would have been obvious to a designer having ordinary skill in the art. While the threading on the inside is considered functional, it would also be well within the skill of an ordinary designer to modify the threading to achieve the threading in the instant application.
For the above reasons, the refusal of the claim under 35 USC 103(a) is proper.
Conclusion
THIS ACTION IS MADE FINAL. Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
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 extension fee 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.
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 Applicant. If Applicant is a juristic entity, the reply must be signed by a patent practitioner. See 37 CFR 1.33(b).
Any inquiry concerning this communication or earlier communications from the examiner should be directed to LEANNE WAS-ENGLEHART whose telephone number is (571)272-7721. The examiner can normally be reached on Monday-Friday 8-5. If attempts to reach the examiner by telephone are unsuccessful, the examiner' s supervisor, Lilyana Bekic can be reached on 571-272-7425. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/LEANNE WAS-ENGLEHART/
Primary Examiner, Art Unit 2918