DETAILED 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 .
Merits
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
Claim Rejections
35 U.S.C. § 102(a)(1)
The claim is rejected under 35 U.S.C. 102(a)(1) as being anticipated by the Calvin Klein hipster (listed as NPL U on Form PTO-892) 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.
PNG
media_image1.png
263
358
media_image1.png
Greyscale
The appearance of the costume 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., 589F.3d 1233,1237-38,1240, 93 USPQ2d 1001 (Fed. Cir. 2009) and MPEP 1504.02.
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, 589 F.3d at 1243 (citing Litton Sys., Inc. v. Whirlpool Corp.,728 F.2d 1423,1444 (Fed. Cir. 1984)).
35 U.S.C. § 102(a)(1)
The claim is rejected under 35 U.S.C. 102(a)(1) as being anticipated by the Calvin Klein hipster (listed as NPL V on Form PTO-892) 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.
PNG
media_image2.png
318
420
media_image2.png
Greyscale
The appearance of the underwear 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., 589F.3d 1233,1237-38,1240, 93 USPQ2d 1001 (Fed. Cir. 2009) and MPEP 1504.02.
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, 589 F.3d at 1243 (citing Litton Sys., Inc. v. Whirlpool Corp.,728 F.2d 1423,1444 (Fed. Cir. 1984)).
A 102(a) (1) rejection where the date of the reference is equal to or less than one year may be overcome by:
1) Applicant providing persuasive arguments that clearly show and describe the claimed design as patentably distinguishable from the prior art mentioned. In other words, the raised rejection can be overcome by evidence that the product in the prior art reference does not necessarily or inherently possess an integral characteristic of the applicant's claimed design;
and/or
2) Invoking either the 102(b)(1)(A) or 102(b)(1)(B) exceptions. See MPEP 2153.01 (a). See also MPEP § 717.01.
Conclusion
The claim stands rejected twice under and 35 U.S.C. 102(a)(1) for the reasons set forth above.
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
Contact
Any inquiry concerning this communication or earlier communications from the examiner should be directed to J. Thorn Sr. whose telephone number is (571)270-3594. The examiner can normally be reached Monday-Thursday 7:00 AM- 3:30 PM EST and Friday 7:00- 12:00 PM 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, Garth Rademaker can be reached at 303-297-4274. 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.
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.
/J. THORN SR./Primary Examiner, Art Unit 2922
Prosecution Insights