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 .
Examiner’s Comment
Examiner notes for the record that the apparent difference between reproductions 1.4 and 1.6 (noted below) is understood to be part of the change in configuration.
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Additionally, the back of the handle, shown in 1.5 and noted by arrows below, is understood to be ribbed, based on the wireframe lines.
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Foreign Priority
The claim to priority based on European Patent Application Nos. 015033914-0001 and 015033914-0002, both filed 13 September 2023, is acknowledged.
Election
Group II, reproductions 2.1-2.6, is withdrawn from further consideration by the examiner, 37 CFR 1.142(b), as being for the nonelected design. Election of Group I was made without traverse in the reply received 01 July 2025.
Claim Rejection – 35 USC § 112
The claim is rejected under 35 USC § 112(a) and (b), 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 regards as the invention.
The claim is indefinite and nonenabling due to the following:
Lack of Description in Reproductions
The exact shape and appearance of portions of the claim cannot be ascertained in the absence of corroborating views to fully describe the three-dimensional appearance of said surface (e.g., one or more attributes such as depth, curvature, angle, placement, etc. are unknown). This makes it impossible to understand the claimed design without resorting to conjecture. The portions are noted below.
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The area within the highlighted area noted by an arrow is considered indefinite and nonenabling. While this is understood to be some sort of opening for a key, the precise three-dimensional appearance of the internal mechanisms is unknown.
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The highlighted portions noted by arrows are considered indefinite and nonenabling.
It is therefore suggested that the portions considered indefinite and nonenabling be converted to broken line in every reproduction in which they appear, and the specification amended to include a statement that the portions of the article depicted in broken line form no part of the claimed design.
Corrected drawing sheets are required in reply to this office action to avoid abandonment of the application. Any amended replacement drawing sheet should include all of the reproductions appearing on the immediate prior version of the sheet, even if only one reproduction is being amended. The reproduction or reproduction number of an amended drawing should not be labeled as “amended.” If a reproduction is to be canceled, the appropriate reproduction must be removed from the replacement sheet, and where necessary, the remaining reproductions must be renumbered and appropriate changes made to the brief description of the several views of the drawings for consistency. Additional replacement sheets may be necessary to show the renumbering of the remaining reproductions. If all the reproductions on a drawing sheet are canceled, a replacement sheet is not required. A marked-up copy of the drawing sheet (labeled as “Annotated Sheet”) including an annotation showing that all the reproductions on that drawing sheet have been canceled must be presented in the amendment or remarks section that explains the change to the drawings. Each drawing sheet submitted after the filing date of an application must be labeled in the top margin as either “Replacement Sheet” or “New Sheet” pursuant to 37 CFR 1.121(d). If the changes are not accepted by the examiner, the applicant will be notified and informed of any required corrective action in the next Office action.
It is strongly suggested that applicant submit a complete set of drawings with all reproductions present so that correct reproductions are included in the printed patent.
When preparing new or replacement drawings, 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 (seen) 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. It is possible that the removal of lines showing changes in elevation in CAD drawings, which cannot be clearly understood to be such without resorting to conjecture, may also introduce new matter.
Claim Rejection – 35 USC § 103
The claim is rejected under 35 USC § 103 as being unpatentable over the design of Daken NexT Handle in Polished Stainless Steel (“Daken”; PTO-892 Reference V). Although the invention is not identically disclosed or described as set forth in 35 USC § 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 to a designer having ordinary skill in the art to which the claimed invention pertains before the effective filing date of the claimed invention, the invention is not patentable.
The claimed design and Daken are visually similar in appearance, with only di minimis differences such as the imprinted logo, and the lack of a ridge at the center of the upper rim, as well as no apparent ridge over the lock in Daken.
Claimed Design
Daken
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It would have been obvious to a designer of ordinary skill in the art before the effective filing date of the claimed design to remove the logo and add the ridge above the lock, as it has been established that the change or omission or addition of a few minor details are considered obvious modifications (see In re Freeman, 1904 C.D. 619; 109 O.G. 1339 (1904)). The ridge at the center of the upper rim is considered di minimis, as features of the design which are functional and/or hidden during end use may not be relied upon to support patentability (see MPEP 1504.03(II)).
It is also 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).
For the purposes of design patent examination, the cited prior art designs are analogous to the claimed design. This holding of analogousness is based upon the fact that both the prior art and the claimed design are articles which are handles for vehicle accessories. It should be further noted that case law has held that one skilled in the art is charged with knowledge of all related art. In re Antle, 170 USPQ 285 (CCPA 1961) and In re Nalbandian, 211 USPQ 782 (CCPA 1982).
The effective filing date of the claimed invention is 11 March 2024 with a priority date of 13 September 2023; the publication date of the Daken reference is 14 August 2022. Accordingly, the rejection under this statute is proper.
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 benjamin.Gray@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 that 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-application-process/applying-online/efs-web-guidance-and-resources
Mail: Commissioner for Patents, P.O. Box 1450, Alexandria, VA, 22313-1450
Facsimile to the USPTO's Official Fax Number (571-273-8300)
Conclusion and Contact Information:
The application stands rejected under 35 USC § 112(a) and (b) and 35 USC § 103.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Benjamin Gray whose telephone number is 571-272-1167. The examiner can normally be reached M-F 8-4:00 EST.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Chris McLean can be reached on 571-270-1996. 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.
/BENJAMIN L. GRAY/Examiner, Art Unit 2923