OFFICE ACTION
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA . The merits of the application have been reviewed in light of Applicant’s remarks and amendments filed on August 13, 2025. Applicant's amendments overcome the objections to the claim, the specification and the drawings and those objections are withdrawn. However, Applicant's amendments are not persuasive regarding the rejection based on 35 USC 112(a) and (b) and that rejection is given forth again below and made final. THIS ACTION IS MADE FINAL. Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
Claim Rejection
35 USC 102(a)(1)
The claim is finally rejected under 35 USC 102(a)(1) as anticipated by the Painted Turkey Sugar Cookies, 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 practice of claiming a design embodied in less than the entire article was confirmed in the decision of In re Zahn, 204 USPQ 988 (CCPA 1980). This practice also opens to the examiner the liberty of relying upon the features of a reference embodied in less than the entire article. The examiner has done so in this rejection.
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The appearance of Examiner’s non-patent literature, Painted Turkey Sugar Cookies, is substantially the same as that of the claimed design. The ordinary observer test is the sole test for anticipation. International Seaway Trading Corp. v. Walgreens Corp., 589 F.3d 1233, 1237-38, 1240, 93 USPQ2d 1001 (Fed. Cir. 2009).
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 comparison takes 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," (Litton, 728 F.2d at 1444), so too minor differences cannot prevent a finding of anticipation. Int'l Seaway supra.
Applicant argues that the claimed design is a “single, unified drop shape” and that the Sugar Cookies reference shows more than that single shape. Applicant argues that it is impermissible to isolate one element of the reference.
The argument is not found persuasive for the following reasons:
It is well within the Examiner’s rights to rely upon the features of a reference embodied in less than the entire article. Once the reference embodied in less than the entire article has been found, it is compared with the claimed design and put through an analysis to decide whether the hypothetical ordinary or average observer would confuse the two designs. In this case, the curvature and overall appearance of the single, unified drop-shaped cookie and the curvature and overall appearance of the unified drop-shaped cookie claimed design are so de minimis, that an ordinary observer would confuse one design for the other design. When comparing the overall appearances of the claimed design and the Sugar Cookie reference through the eyes of the ordinary observer, the minor differences in the appearances of the two designs become insignificant. Rather, it is the overall designs that would be compared by an ordinary observer. In this case, the overall design of the claimed design and the overall design of the Sugar Cookie reference are substantially the same.
Since de minimis differences may not be relied upon to argue a 102(a)(1) rejection and since the Examiner can rely upon the features of a reference embodied in less than the entire article, the claimed design stands rejected under 35 USC 102(a)(1).
Conclusion
In summary, the claim stands FINALLY REJECTED under 35 USC 102(a)(1).
THIS ACTION IS MADE FINAL. Applicant is reminded of the extension of time policy as set forth in 37 C.F.R. § 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 C.F.R. § 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 date of this final action.
Any inquiry concerning this communication should be directed to Katie Stofko whose telephone number is 571-272-7956. The Examiner can normally be reached on Monday-Thursday from 9:00 a.m. to 6:30 p.m. The Examiner can also be reached on alternate Fridays. 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 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.
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/KATIE JANE STOFKO/Examiner, Art Unit 2911 Date: December 13, 2025