DETAILED ACTION
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
Amendment acknowledged
Acknowledgement is made of the amendment and remarks filed November 7, 2025. The amendment overcomes the objections to the specification, and the objections are hereby withdrawn. Cancellation of FIG. 2 is noted. The merits of the claim have been carefully considered in light of Applicant's remarks. The amendments overcome the rejection under 35 USC 112, and that rejection is hereby withdrawn. The arguments fail to overcome the rejection under 35 USC 102, and the rejection is repeated and made final.
Accordingly, THIS ACTION IS MADE FINAL. See MPEP 706.07(a).
FINAL REJECTION - 35 USC 102
The claim is AGAIN AND FINALLY rejected under 35 USC 102(a)(1) as being anticipated by Non-Patent Literature grebeshkovmaxim, Chemical element Nitrogen1, April 02, 2018, (hereinafter “Nitrogen”) 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.
Conditions for Patentability under 35 USC 102
The following is a quotation of 35 USC 102:
A person shall be entitled to a patent unless—
(1) 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; or
(2) the claimed invention was described in a patent issued under section 151, or in an application for patent published or deemed published under section 122(b), in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention.
Explanation of Rejection
The appearance of Nitrogen is substantially the same as the claimed design. See e.g., International Seaway Trading Corp. v. Walgreens Corp., 589 F 3d 1233, 1237-38, 1240, 93 USPQ 2d 1001 (Fed. Cir. 2009) and MPEP 1504.02.
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Nitrogen Claimed Design
Ordinary observer test (MPEP 1504.02)
For anticipation to be found, the claimed design and the prior art design must be substantially the same. Door-Master Corp. v. Yorktowne, Inc., 256 F.3d 1308, 1313, 59 USPQ2d 1472, 1475 (Fed. Cir. 2001) (citing Gorham Mfg. Co. v. White, 81 U.S. 511, 528 (1871)).
In International Seaway Trading Corp. v. Walgreens Corp., 589 F.3d 1233, 1239-40, 93 USPQ2d 1001, 1005 (Fed. Cir. 2009), the Federal Circuit held that the ordinary observer test, the test used for infringement, is "the sole test for anticipation." Under the ordinary observer test, "‘if, in the eye of an ordinary observer, giving such attention as a purchaser usually gives, two designs are substantially the same, if the resemblance is such as to deceive such an observer, inducing him to purchase one supposing it to be the other, the first one patented is infringed by the other.’" Gorham, 81 U.S. at 528.
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,” so too minor differences cannot prevent a finding of anticipation. Litton, 728 F 2d at 1444, Int'l Seaway, supra.
Remarks
Claim Rejection under 35 USC 102
Applicant's arguments have been fully considered but they are not persuasive. It remains the position of the Examiner that the claim is anticipated by Non-Patent Literature grebeshkovmaxim (hereinafter “Nitrogen”). Applicant makes the following argument(s):
Applicant argues that the design by Nitrogen is not a suitable primary reference because the overall visual impression of the Nitrogen design is not substantially the same as the claimed design, because not all portions of Nitrogen were compared to the claimed design.
This argument is not persuasive, because in determining whether two designs are substantially the same, not all portions of the prior art design need be considered. Examination of a design patent for novelty is not a claim-to-claim comparison, but rather an evaluation of whether applicant’s claimed design is anticipated in the prior art. Because the law applicable to design patent claims permits a claimed design to embody less than an entire article of manufacture, it likewise does not limit the examiner from using a portion of an article separated from the whole as prior art. “A design may be embodied in less than the entire article.” In re Zahn, 616 F2d 261, 204 USPQ 988 (CCPA 1980). In the present case, the claimed design is a portion showing discrete linear elements, without claim to a continuous image, background or surroundings. It is therefore appropriately compared to a design portion shown in Nitrogen which shares the same overall similar visual appearance.
The design comparison suggested by the applicant assumes that areas beyond the scope of the claim should be evaluated. In determining the novelty of a claim, portions of the application disclosure that form no part of the claim are not being evaluated for patentability. The present design makes no claim to any ornament surrounding the claimed letter “N” above a horizontal line, so there is no basis for comparison of these areas to any other design. Only the claimed design is being examined. The “overall visual appearance” requirement for evaluating patentable distinction does not apply to unclaimed environment.
Moreover, it is noted that a capital letter “N”, shown above a small fragment of horizontal line, is widely anticipated by prior art. In addition to the design of “Nitrogen”, similar design portions appear for example in US Design Patents US D872119 S, US D717825, US D684588, US D924267, US D791783, US D625733, US D951286, US D690722, US D640275, US D690313, US D771082, US D1099962, US D700197, and US D785037.
Applicant further argues that the symbolic meaning of the “N” shown in Nitrogen differs from that shown in the claimed design, as symbolizing the atomic element nitrogen.
This argument is not persuasive because in a design patent application, appearance alone is being considered and not the functionality of the article of manufacture. The symbolic meaning of the letter “N” is not being evaluated.
Because both designs show a capital letter “N” above a small portion of horizontal line, the two designs are considered to share an overall visual appearance that is substantially the same. No patentable differences are seen thereover from an ornamental standpoint. In view thereof, the rejection is deemed proper.
The rejection under 35 USC 102 is repeated and made FINAL.
CONCLUSIONS
The claim stands AGAIN and FINALLY rejected for the reasons set forth above. The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. The prior art is considered pertinent based on similarities to the ornamental appearance of the claim.
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
THIS ACTION IS MADE FINAL. 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.
EXAMINER CONTACT INFORMATION
Any inquiry concerning this communication or earlier communications from the examiner should be directed to KATHERINE A HOLBROW whose telephone number is (571)270-1935. The examiner can normally be reached on M-Th 10-7 or by appointment.
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, Christian P. McLean can be reached on 5712701990. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/KATHERINE A HOLBROW/
Primary Examiner, Art Unit 2923
1 grebeshkovmaxim, Chemical element Nitrogen, April 02, 2018, istockphoto.com, retrieved 8/7/2025, https://www.istockphoto.com/vector/chemical-element-nitrogen-gm940382752-257073875