Notice of Pre-AIA or AIA Status
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 - REFUSAL
General Information
The arguments presented 24 September 2025 have been carefully considered, but are not persuasive that the rejection of the claim under 35 U.S.C. 103 should be withdrawn. Accordingly, the rejection(s) under 35 U.S.C. 103 is set forth again and MADE FINAL
Claim Rejection - 35 USC § 103
The claim is rejected under 35 U.S.C. § 103 as being unpatentable over Jin Liu et. al’s “MODULE FOR A PROGRAMMABLE LOGIC CONTROLLER”, U.S. Design Patent D692,840 (5 November 2013) in view of Peilin Li et. al’s “BUILDING CONTROLLER”, U.S. Design Patent D936,052 (16 November 2021). The ‘840 patent was misidentified in the original Office action, and the examiner thanks the applicant for catching the error. Although the invention is not identically disclosed or described as set forth in 35 U.S.C. 102, if the differences between the claimed invention and the prior art are such that the claimed invention as a whole would have been obvious before the effective filing date of the claimed invention to a designer having ordinary skill in the art to which the claimed invention pertains, the invention is not patentable.
Applicant’s arguments, which reference several figures not shown in the original Office action, have been carefully considered but found unconvincing. The perspective views shown in the original Office action pulled from the Liu patent show features which are visually similar to the claimed design. Applicant also claims that the figure used from the Li patent is not shown in the patent itself; this is incorrect, as the teaching reference figure is merely FIG. 7 from the Li patent rotated to a landscape orientation. Further, applicant takes issue with the Li patent showing a substantially different appearance than the claimed design. This argument is flawed in that the teaching reference does not need to meet the same standard as the primary reference in a rejection under §103, but merely be analogous to the claimed design; as both the claimed design and the Li patent are in the same field of endeavor, the Li patent is indeed a valid teaching reference.
The examiner notes that applicants cannot show non-obviousness by attacking references individually where rejection is based on combination of references. See In re Young et al 159 USPQ 725.
The examiner’s description of the references used in the original Office action may have been unclearly worded; below the examiner has used the original illustrations with clarified language. The examiner notes that regardless of possible flaws in the verbal description of the figures, the visual comparison below clearly shows the significant similarities between the claimed design and the examiner’s combination of references.
The Liu patent has design characteristics that are visually similar to the claimed design. The Liu patent features a rectangular box-shaped housing where the top face consists of two hinged plates of even height and a central portion featuring three narrow strips with an arrangement of small squares, a rear face with a large recess running the full length of the housing, and sides containing an arrangement of recesses and narrow rectangular vents, all of which is the same as the claimed design.
The only differences between the claimed design and the Liu patent are the lack of a recess on the bottom corner of the front face and lines crossing the middle section of the same face. The Li patent teaches the lack of a recess on the bottom corner of the front face and lines crossing the middle section.
PNG
media_image1.png
280
296
media_image1.png
Greyscale
Liu patent, showing an overall visually similar appearance to the claimed design, differences circled in the smaller figure to the left
PNG
media_image2.png
483
583
media_image2.png
Greyscale
FIG. 7
Li patent, showing the no recess on the bottom corner of the same face or lines crossing the middle section
Examiner’s illustration of combined Liu and Li patents
PNG
media_image3.png
706
593
media_image3.png
Greyscale
Claimed design
It would have been obvious to a designer of ordinary skill not later than the effective filing date of the present claimed invention to combine the overall appearance of the Liu patent and the lack of a recess on the bottom corner of the front face and uninterrupted narrow strips from the Li patent. The claimed design would have no patentable distinction over the examiner’s combination of references. The only differences are a single extra square on the top left strip and the evenly shaped panel with the three rectangular vents, but the difference is not significant enough to warrant a patent for the overall appearance of the claimed design over the prior art. See In re Lapworth, 172 USPQ 129 (CCPA 1971) and In re Lamb, 286 F.2d 610, 128 USPQ 539 (1961).
Accordingly, the aesthetic features of the claimed design are found to be obvious over the Liu patent in view of the Li patent.
Conclusion
The claim is again and FINALLY rejected under 35 U.S.C. § 103.
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 nonprovisional extension fee (37 CFR 1.17(a)) 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.
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:
Online via the USPTO's Electronic Filing System‐Web (EFS‐Web) (Registered eFilers only)
https://www.uspto.gov/patents/apply
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/maintain/responding-office-actions
Contact Information
Any inquiry concerning this communication or earlier communications from the examiner should be directed to ALISON DAVIS whose telephone number is 571-272-2259. The examiner can normally be reached M - F 8:30am-5:00pm.
Examiner interviews are available via telephone 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, JUSTIN JONAITIS can be reached on 571-270-5150. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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.
/A.D./Examiner, Art Unit 2921
/LEANNE WAS-ENGLEHART/Primary Examiner, Art Unit 2918
Prosecution Insights