DETAILED ACTION
The response dated January 5, 2026 has been fully considered.
The amendments to the drawings have overcome the Refusal under 35 U.S.C. 112(a) and (b).
Applicant has not filed a declaration/affidavit to overcome the refusal under 35 U.S.C. 102(a)(1), therefore the rejections are presented again in the following Office Action.
Applicant amendment necessitated new grounds of objection and refusal presented in this Office action.
Accordingly, THIS ACTION IS MADE FINAL. See MPEP 706.07(a).
ADS Objection
The amended title “Personal Air Filter” is acknowledged; however, the title is inconsistent on the ADS. For consistency, applicant must file a corrected Application Data Sheet (ADS) in compliance with 37 CFR 1.76(c). The corrected application data sheet, must identify the information that is being changed, with underlining for insertions, and strike-through or brackets for text removed.
Specification Objection
The specification is objected to as follows:
The title is not used in the description of broken lines and may cause confusion as to the purpose of the broken lines in the drawings. If broken lines are included in a drawing, their use must be clearly defined in the specification. See MPEP 1503.02(III). Therefore, for clarity and consistency, the description of broken lines should be amended similar to:
-- The broken lines in the figures depict portions of the Personal Air Filter that form no part of the claimed design. --
A substitute specification to the claim is required pursuant to 37 C.F.R. 1.125 and must be submitted with markings showing all the changes relative to the immediate prior version of the specification of record. The text of any added subject matter must be shown by underlining the added text. The text of any deleted matter must be shown by strike-through except that double brackets placed before and after the deleted characters may be used to show deletion of five or fewer consecutive characters. The text of any deleted subject matter must be shown by being placed within double brackets if strike-through cannot be easily perceived. An accompanying clean version (without markings) and a statement that the substitute specification contains no new matter must also be supplied. Numbering the paragraphs of the specification of record is not considered a change that must be shown.
Claim Refusal - 35 U.S.C. 112(a)
The claim is FINALLY refused under 35 U.S.C. 112(a) as failing to comply with the written description requirement. The original disclosure does not reasonably convey to a designer of ordinary skill in the art that applicant was in possession of the design now claimed at the time the application was filed. See In re Daniels, 144 F.3d 1452, 46 USPQ2d 1788 (Fed. Cir. 1998); In re Rasmussen, 650 F.2d 1212, 211 USPQ 323 (CCPA 1981). Specifically:
There is no support in the original disclosure on 11/08/2024 for the increase in overall height of the article. The current showing of the claimed design has no antecedent basis in the original disclosure and therefore constitutes impermissible new matter. See the following example of Fig. 1.4;
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To overcome this refusal, applicant may either convincingly demonstrate that the original disclosure establishes that he or she was in possession of the amended claim or amend the drawings to remove the new matter as described.
Corrected drawing sheets of the reproductions are required in reply to the Office action to avoid abandonment of the application. Any amended replacement drawing sheet of the reproductions should include all of the views appearing on the immediate prior version of the sheet, even if only one view is being amended. The view of an amended drawing should not be labeled as “amended”. If a drawing view is to be canceled, the appropriate view must be removed from the replacement sheet, and where necessary, the remaining views 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 renumbered of the remaining views. Each drawing sheet of reproductions 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). Applicant is reminded that the numbering of the reproductions and legends must follow the Hague Administrative Instructions Section 405(a) consisting of two separate figures separated by a dot (e.g., 1.1, 1.2, 1.3, etc. for the first design, 2.1, 2.2, 2.3, etc. for the second design, and so on) (see 37 CFR 1.1026 and MPEP 2909.02). 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.
Care must be exercised to avoid introduction of anything which could be construed as new matter prohibited by 35 USC 132 and 37 CFR 1.121 when preparing amended reproductions.
Claim Refusal – 35 U.S.C. 102(a)(1)
The claim is FINALLY refused under 35 U.S.C. 102(a)(1) as being anticipated by the "vonSploof personal Air Filter Review" by vonSploof on youtube (Dated 03/05/2024), 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.
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The appearance of the "vonSploof personal Air Filter Review" reference 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 mandated overall comparison is a comparison considering 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 supra (citing Litton Sys., Inc. v. Whirlpool Corp., 728 F.2d at 1444).
Claim Refusal – 35 U.S.C. 102(a)(1)
The claim is further FINALLY refused under 35 U.S.C. 102(a)(1) as being anticipated by the “VonSploof Smoke & Smell Eliminator Review” by Coffee & Cannabis on youtube (Dated 02/20/2024), 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.
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The appearance of the “VonSploof Smoke & Smell Eliminator Review” reference 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 mandated overall comparison is a comparison considering 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 supra (citing Litton Sys., Inc. v. Whirlpool Corp., 728 F.2d at 1444).
Conclusion
The claim stands FINALLY refused under 35 U.S.C. 102(a)(1) and 35 U.S.C. 112(a) for failing to comply with the written description requirement.
Applicant's amendment necessitated the ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). Applicant is reminded of the extension of time policy as set forth in 37 CFR 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 CFR 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 mailing date of this final action.
Discussion of the Merits of the Case
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”, may be used for this purpose:
https://www.uspto.gov/patent/forms/forms-patent-applications-filed-or-after-september-16-2012
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 nick.buffa@uspto.gov to arrange a time and date for the telephone interview. Please include proposed days and times for the proposed call. 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 an official correspondence issued by the USPTO, including refusals, ex parte Quayle, Notice of Allowances, or Notice of Abandonments, please note the following:
The USPTO transacts business in writing. 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)
Hand-carry to USPTO's Alexandria, Virginia Customer Service Window
https://www.uspto.gov/patents-maintaining-patent/responding-office-actions
/NJB/
Examiner, Art Unit 2932
/BAO-YEN T NGUYEN/Primary Examiner, Art Unit 2954
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