FINAL REJECTION
Examiner Comment
The response received 06/09/2025 has been acknowledged and fully considered. Due to the corrections made to the present application, the rejection under 35 U.S.C. 102(a)(1) in view of UHINOOS has been withdrawn. The applicant has not made convincing arguments to overcome the rejection under 35 U.S.C. 102(a)(1) in view of TISU in the response received. Therefore, the rejection has been made final.
Additionally, after further examination, additional issues and prior art have been found which have been raised in rejections below.
Rejection Under 35 U.S.C. § 102(a)(1)
The claim is rejected under 35 U.S.C. 102(a)(1) as being anticipated by prior art found at amazon.com and cited on form 892 as TISU Nursing Cover for Breastfeeding with Wire (“TISU“) 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 TISU 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.
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Claimed Design
TISU
The images above are included to demonstrate the 102 rejection based on prior art.
The following is a quotation of the appropriate paragraphs of 35 U.S.C. 102(a)(1) that form the basis for the rejections 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 TISU 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.
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 F3d.1308 (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 supra (citing Litton Sys., Inc. v. Whirlpool Corp., 728 F.2d at 1444).
Response to Arguments
The applicant claims that an ordinary observer would not be deceived into believing that TISU and the claimed design are the same. The applicant states that the TISU reference does not create the same overall impression as the claimed design. However, the examiner deems that the claimed design and TISU appear to be almost identical, and TISU discloses a nursing cover with substantially the same appearance as that of the claimed design.
The applicant states that the TISU reference does not appear to have the same shape and proportions. However, additional published images pulled from the listing and reviews clearly show that the design of TISU includes square corners. It would be obvious to a designer in the art of Nursing covers to create a design that is substantially rectangular, but especially so when the images visibly convey square corners.
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The applicant argues that views 1 and 9 show a “protective fabric screen”. However, this design feature is not understood from the claimed drawing disclosure. Both the claim and TISU depict a curved portion at the top center where the nursing cover is intended to be worn around the neck, and the interior can be seen in some views through this curved opening. However, if this is a “protective fabric screen”, the appearance is inconsistent between views and therefore cannot be relied upon to differentiate the claim from prior art. Furthermore, the interior can be seen in other photos from customer reviews, showing that the claimed appearance can be anticipated by TISU.
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The applicant claims that the label sewn onto the front of the nursing cover in the TISU reference is a distinctive element; however, the examiner concludes that tags on fabric apparel and textiles are a common practice and therefore the difference is considered de minimis.
The applicant claims that the claim has a long and wide band that is not disclosed in TISU. However, additional review of the published images from the TISU reference show a long, wide band resembling the claimed design.
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With the additional images provided in this action which are cited on form 892 as TISU Nursing Cover for Breastfeeding with Wire, the examiner concludes that the overall appearance of TISU is substantially the same as the claimed design, and therefore, the rejection has been made final.
Rejection Under 35 U.S.C. § 102(a)(1)
The claim is rejected under 35 U.S.C. 102(a)(1) as being anticipated by prior art found at etsy.com and cited on form 892 as Tisubabyshop Nursing Cover for Baby Breastfeeding & Pumping (“Tisubabyshop”) 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 Tisubabyshop 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.
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Claimed Design
Tisubabyshop
The images above are included to demonstrate the 102 rejection based on prior art.
The following is a quotation of the appropriate paragraphs of 35 U.S.C. 102(a)(1) that form the basis for the rejections 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 Tisubabyshop 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.
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 F3d.1308 (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 supra (citing Litton Sys., Inc. v. Whirlpool Corp., 728 F.2d at 1444).
Rejection Under 35 U.S.C. § 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 prior art found at amazon.com and cited on form 892 as Tisubabyshop Nursing Cover for Baby Breastfeeding & Pumping (“Tisubabyshop”) in view of prior art found at amazon.com and cited on form 892 as UHINOOS Nursing Cover for Mom Breastfeeding (“UHINOOS”).
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Claimed Design
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UHINOOS
The images above have been included to demonstrate the Rejection Under 35 U.S.C. § 103.
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.
Tisubabyshop teaches a nursing cover having an overall appearance with design characteristics that are visually similar to those of the claimed design, in showing an overall rectangle-shaped nursing cover; wherein the top edge has a centrally located crescent shaped protruding tent-like raised surface below the neck-hole, and a strap extending from the left of the neck-hole to the right of the neck-hole, where it ties to a ring feature, forming the neck strap.
The claimed design differs from Tisubabyshop in that it has a shorter length.
UHINOOS teaches a shorter length.
It would have been obvious to a designer of ordinary skill in the art before the effective filing date of the claimed invention to modify Tisubabyshop by shorter length as taught by UHINOOS since UHINOOS demonstrates that the ornamental feature of a shorter length is commonplace in the field of (name area of art) and would therefore have been an obvious design choice.
Rejection Under 35 U.S.C. § 112(a) and (b)
The claim is rejected under 35 U.S.C. 112(a) and (b) or pre-AIA 35 U.S.C. 112, first and second paragraphs, as the claimed invention is not described in such full, clear, concise and exact terms as to enable any person skilled in the art to make and use the same, and fails to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor (or, for applications subject to pre-AIA 35 U.S.C. 112, the applicant) regards as the invention.
The claim is indefinite and nonenabling because the drawings disclose features that have not been definitively described by the views provided. These views would not allow one skilled in the art to determine the exact configuration of the design, including shape, contours, features, and depths of elements, without resorting to conjecture.
Specifically, the strap is illustrated differently in multiple views. The examiner cannot be certain of the exact configuration without resorting to conjecture.
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The image above is included to demonstrate the 112(a) and (b) rejection.
Additionally, the applicant stated in their remarks that the claimed design includes a “protective fabric screen”. The examiner cannot be certain what is meant by this statement, as a screen is generally considered a type of mesh material. There is nothing in the drawings to suggest a different material or screen like appearance.
If new drawings are submitted in an attempt to overcome this rejection, care must be exercised to avoid the introduction of anything which could be construed to be new matter prohibited by 35 U.S.C. 132 and 37 CFR 1.121. The original drawing disclosure represents the claimed design. All features, elements, and lines as presented are the basis from which examination of the claim is conducted. It is critical that the original disclosure filed with the office be of the highest quality, and be the most accurate rendering of the claimed design as possible. The overall design as well as that of individual features must be rendered in such a way that no amount of conjecture is necessary in understanding the claim. New matter is anything (structure, features, elements) which was not apparent in the drawings as originally filed. It is possible for new matter to consist of the removal as well as the addition of structure, features or elements.
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.
Conclusion
The claim is FINALLY REJECTED under 35 U.S.C. § 102(a)(1), 35 U.S.C. § 103 and 35 U.S.C. § 112(a) and (b) as set forth above.
Contact Information
Any inquiry concerning this communication or earlier communications from the examiner should be directed to AMBER J RABIE whose telephone number is (571)272-9623. The examiner can normally be reached on Monday - Friday, 8:30 a.m. - 5 p.m.
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, GEORGE A 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.
Information regarding the status of an application may be obtained from the Patent Application Information Retrieval (PAIR) system. Status information for published applications may be obtained from either Private PAIR or Public PAIR. Status information for unpublished applications is available through Private PAIR only. For more information about the PAIR system, see https://ppair-my.uspto.gov/pair/PrivatePair. Should you have questions on access to the Private PAIR system, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative or access to the automated information system, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/KEVIN K RUDZINSKI/Primary Examiner, Art Unit 2911
/AJR/
Examiner, Art Unit 2911