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 Office Action
Foreign Priority
Acknowledgment is made of Applicant's claim for foreign priority based on WIPO Design Application No. EM015030590-0003, filed 08/07/2023 and EM015030590-0005 filed 08/07/2023. Applicant has filed certified copies of the WIPO designs application as required by 35 USC § 119(b).
General Information
The merits of this case were carefully examined again in light of Applicant's 11/26/2025 response. Accordingly, the objections to the drawing disclosure are overcome and are withdrawn. The objections to the specification are overcome and are withdrawn.
Applicant’s remarks in response to the rejection under 35 USC § 103 have been considered and were persuasive. Upon further review, a new rejection under 35 U.S.C. § 102(1)(a) and 35 U.S.C. § 103 has been identified and is set forth below.
Claim Rejection - 35 USC § 102 (a)(1)
The claim is rejected under 35 USC § 102(a)(1) as being clearly anticipated by the US 10588463 B2
reference (US Patent Reference No. A) to Florian Enghard, 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.
Claimed Design
Priority Date: 08/07/2023
PNG
media_image1.png
609
555
media_image1.png
Greyscale
US 10588463 B2 Reference
Filed: 03/17/2020
PNG
media_image2.png
526
533
media_image2.png
Greyscale
US 10588463 B2 shows a mixer for a shaker comprised of spiraling wire, with the same contours, shape and configuration as the claim.
The shape and appearance of US 10588463 B2 is identical in all material respects of the claimed design.’ Hupp v. Siroflex of America Inc., 122 F.3d 1456, 43 USPQ2d 1887 (Fed. Cir. 1997).
The ordinary observer test is the sole test for anticipation. Int'l Seaway Trading Corp. v. Walgreens Corp., 589 F.3d 1233, 1237-38, 1240 (Fed. Cir. 2009).
Under this standard, the appearance of the US 10588463 B2 reference is substantially the same as that of the claimed design. That is, the appearance of the claimed Mixer for a Shaker is deceptive to the extent that it would induce an ordinary observer to purchase it supposing it to be the US 10588463 B2 reference. Furthermore, the effective filing date of the claimed design is 02/06/2024, with a claimed priority date of 08/07/2023; the published date of the US 10588463 B2 reference is 03/17/2020. Accordingly, the rejection under this statute is proper.
Overcoming the rejection under 35 USC 102(a)(1)
The applicant may attempt to overcome the rejection(s) under 35 USC 102(a)(1) by:
A. Persuasively arguing that the claim is patentably distinct over the prior art, or
B. Amending the claim to patentably distinguish over the prior art, or
C. Perfecting a benefit claim under 35 USC 119 or 35 USC 120, or
D. Filing an affidavit or declaration under 37 CFR 1.130.
Applicant is reminded of that the US 10588463 B2 reference is outside of the one-year grace period afforded under 35 USC 102(b)(1) for disclosures with a prior public availability date.
Claim Rejection - 35 USC § 103
The following is a quotation of 35 USC § 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 USC § 103 as being unpatentable over US Design Patent US2014/0119154 A1 to Kershaw et al. (hereinafter PRIMARY reference US2014/0119154 A1) in view of the prior art as demonstrated by US D736559 S to Florian Enghard (hereinafter SECONDARY reference US D736559 S).
PNG
media_image3.png
451
572
media_image3.png
Greyscale
PNG
media_image4.png
334
268
media_image4.png
Greyscale
PNG
media_image5.png
209
269
media_image5.png
Greyscale
Claimed Design
PRIMARY reference
US 2014/0119154 A1
SECONDARY reference
US D736559 S
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 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.
PRIMARY reference US 2014/0119154 A1 has an overall appearance with design characteristics that are visually similar to those of the claimed design, in showing a mixer for a shaker with two opposed cone shaped concentric spirals on the top and bottom with a uniform spiral of coils in the center.
PNG
media_image6.png
391
827
media_image6.png
Greyscale
The claimed design differs from PRIMARY reference US 2014/0119154 A1, differs from SECONDARY reference US D736559 S in that it shows a gradually tapered hourglass silhouette at the center, with tightly spiraled coils instead of a column-like silhouette in the center, with loosely spaced uniform coils.
PNG
media_image7.png
312
993
media_image7.png
Greyscale
SECONDARY reference US D736559 S shows a column-like silhouette in the center, with loosely spaced uniform coils.
PNG
media_image8.png
284
887
media_image8.png
Greyscale
It would have been obvious to a designer of ordinary skill in the art before the effective filing date of the present claimed invention to modify PRIMARY reference US 2014/0119154 A1 with SECONDARY reference US D736559 S by substituting the gradually tapered hour glass silhouette at the center of PRIMARY reference US 2014/0119154 A1, with tightly spiraled column-like silhouette of SECONDARY reference US D736559 S because such a modification is no more than a simple substitution of one known design element for another (a column-like silhouette for a hourglass silhouette at the center). Moreover, such substitution of one known design element for another known design element in the same field would have been within the skill of an ordinarily-skilled designer.
For the above reasons, this portion of the rejection of the claim under 35 USC § 103 is proper.
Conclusion
The claimed design stands rejected under 35 USC § 102 (a)(1) and 35 USC § 103.
The references cited but not applied are considered cumulative art related to the claimed design.
Contact
Any inquiry concerning this communication or earlier communications from the examiner should be directed to KENDRA L HEBEL whose telephone number is (571)272-1840. The examiner can normally be reached M-F 9am - 5pm ET.
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, Jae Liang can be reached at (571) 270-0229. 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.
/K.L.H./Examiner, Art Unit 2921
/JAE LIANG/Supervisory Patent Examiner, Art Unit 2921