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 reviewed in light of Applicant’s election, received on June 30, 2025. The election of Group 2 (Figs. 2.1-2.5), without traverse, has been noted. Groups 1 and 3 have been withdrawn from consideration by the examiner, 37 CFR 1.142(b), as being drawn to a non-elected design.
Based on the title of the claimed design, and a search of the art, it is understood that the claimed design is directed to a partial canopy extending over the open deck of a tugboat.
Determination of Patentability
The bottom and rear surfaces of the design are not shown in the reproductions or described in the specification. It is understood that the appearance of any part of the article not shown in the drawing or described in the specification forms no part of the claimed design. In re Zahn, 617 F.2d 261, 204 USPQ 988 (CCPA 1980). Therefore, the determination of patentability is based on the design for the article as shown and described.
Reproductions
The reproductions are objected to.
A small square tab is shown extending from each of the rear corners of the part of tugboat in Figs. 2.1, 2.2, and 2.4. These tabs are not shown in the perspective view of Fig. 2.5. As the drawings constitute the entire visual disclosure of the claimed design, it is of utmost important that the drawings be clear and complete. MPEP 1503.02. The applicant must amend the reproductions so that protruding tabs are clearly and completely illustrated.
PNG
media_image1.png
680
782
media_image1.png
Greyscale
Any amended replacement drawing sheet should include all of the claimed figures, even if only one figure is being amended. Replacement sheets cancel all previous disclosures. Each drawing sheet submitted after the filing date of an application must be labeled in the top margin as “Replacement Sheet” pursuant to 37 CFR 1.121(d). If the examiner does not accept the changes, the applicant will be notified and informed of any required corrective action in the next Office action.
The corrected drawings must meet the written description requirement of 35 U.S.C. 112(a) and not contain new matter (35 U.S.C. 132; 37 CFR 1.121).
Specification Objection
The specification is objected to for the following reason:
The specification is objected to under 35 USC 1.1067 for failing to provide figure descriptions. See MPEP 2920.04(a)(II). The descriptions should indicate the type of view shown in the corresponding figure, such as “front view,” “perspective view,” “top view,” “etc. The descriptions of the figures are not required to be written in any particular format; however, they must describe the views of the reproductions clearly and accurately. See Hague Rule 7(5)(a) and 37 CFR 1.1024. The specification must be amended to include independent figure descriptions following the indication of Design No./Product(s). For example:
--Descriptions of the Reproduction(s):
2.1 is a right side elevation view of the part of tugboat, showing our new design;
2.2 is a left side elevation view thereof;
2.3 is a front elevation view thereof;
2.4 is a top plan view thereof; and
2.5 is a top, front, left side perspective view thereof.—
Since there are multiple inventors, for clarity, the formal claim statement should be prefaced with the phrase “We claim”. For example:
--We Claim:
The ornamental design for a part of tugboat as shown and described.--
Claim Rejection – 35 USC 102(a)
The claim is rejected under 35 U.S.C. 102(a)(1) as being anticipated by “Svitzer orders TRAnsverse tugs for Australian port” (hereafter Svitzer), available to the public on May 16, 2023, 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 Svitzer is substantially the same as that of the claimed design. 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).
PNG
media_image2.png
1024
1090
media_image2.png
Greyscale
The scope of the claimed design is directed to a portion of a canopy extending over the deck of a tugboat. The remainder of the tugboat is not claimed is therefore not included in this comparison.
“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 F.3d 1308, 1313 (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. It is known in the art that the main body of submersible watercrafts may be a variety of lengths.
Under the 35 USC 102(a)(1) standard, the appearance of Svitzer is substantially the same as that of the claimed design. Furthermore, the effective filing date of the claimed invention is May 13, 2024; the publication date of the Svitzer reference is May 16, 2023, thus establishing that the Svitzer reference was published on or before May 13, 2024 and that Svitzer was 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. Accordingly, the rejection under 35 U.S.C. 102(a)(1) is proper.
Conclusion
The claimed design is rejected under 35 USC 102(a), with reproduction and specification objections as discussed.
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.
Email Communication
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.
Responding to Official USPTO Correspondence
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:
[Symbol font/0xB7] Online via the USPTO's Electronic Filing System‐Web (EFS‐Web) (Registered eFilers only) https://www.uspto.gov/patents/apply
[Symbol font/0xB7] Mail: Commissioner for Patents, P.O. Box 1450, Alexandria, VA, 22313‐1450
[Symbol font/0xB7] Facsimile to the USPTO's Official Fax Number (571‐273‐8300)
[Symbol font/0xB7] Hand‐carry to USPTO's Alexandria, Virginia Customer Service Window https://www.uspto.gov/patents/maintain/responding-office-actions
Contact Information
Any inquiry concerning this communication or earlier communications from the examiner should be directed to JERRY HSU whose telephone number is (571)272-5363. The examiner can normally be reached on MON-FRI 830AM-5PM EST.
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, Susan Krakower can be reached at 571-272-4496. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
The references cited are art of record. Applicant may view and obtain copies of U.S. Patent references by visiting the following site and doing an online search. http://www.uspto.gov/patft/index.html.
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 http://www.uspto.gov/patents/process/status/private_pair/index.jsp.
If 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.
/JERRY SHIUAN-HUA HSU/Examiner, Art Unit 2917
Prosecution Insights