DETAILED ACTION
First Rejection Under 35 U.S.C. § 102(a)(1)
The claim is rejected under 35 U.S.C. 102(a)(1) as being anticipated by prior art found at hellomolly.com and cited on form 892 as Hello Molly Ruffled Out Dress Blue, (“Ruffled Out Dress”) 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 Ruffled Out Dress is substantially the same as that of the claimed design. See e.g., International Seaway Trading Corp. v. Walgreens Corp., 589 F.3d 1233, 1237-38, 1240, 93 USPQ2d 1001 (Fed. Cir. 2009) and MPEP § 1504.02.
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Claimed Design
Ruffled Out Dress
The images above are included to demonstrate the 102 rejection based on prior art.
The following is a quotation of the appropriate paragraphs of 35 U.S.C. 102(a)(1) that form the basis for the rejections under this section made in this Office action:
A person shall be entitled to a patent unless –
(a)(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.
The claim is rejected under 35 U.S.C. 102(a)(1) as being anticipated by Ruffled Out Dress 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.
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 supra (citing Litton Sys., Inc. v. Whirlpool Corp., 728 F.2d at 1444).
Second Rejection Under 35 U.S.C. § 102(a)(1)
The claim is rejected under 35 U.S.C. 102(a)(1) as being anticipated by prior art found at hellomolly.com and cited on form 892 as Hello Molly Vibrant Rendezvous One Shoulder Midi Dress Red, (“Vibrant Rendezvous”) 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 Vibrant Rendezvous is substantially the same as that of the claimed design. See e.g., International Seaway Trading Corp. v. Walgreens Corp., 589 F.3d 1233, 1237-38, 1240, 93 USPQ2d 1001 (Fed. Cir. 2009) and MPEP § 1504.02.
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Claimed Design
Vibrant Rendezvous
The images above are included to demonstrate the 102 rejection based on prior art.
The following is a quotation of the appropriate paragraphs of 35 U.S.C. 102(a)(1) that form the basis for the rejections under this section made in this Office action:
A person shall be entitled to a patent unless –
(a)(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.
The claim is rejected under 35 U.S.C. 102(a)(1) as being anticipated by Vibrant Rendezvous 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.
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 supra (citing Litton Sys., Inc. v. Whirlpool Corp., 728 F.2d at 1444).
Third Rejection Under 35 U.S.C. § 102(a)(1)
The claim is rejected under 35 U.S.C. 102(a)(1) as being anticipated by prior art found at amazon.com and cited on form 892 as ROVOGUER One Shoulder Satin Homecoming Dresses, (“ROVOGUER”) 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 ROVOGUER is substantially the same as that of the claimed design. See e.g., International Seaway Trading Corp. v. Walgreens Corp., 589 F.3d 1233, 1237-38, 1240, 93 USPQ2d 1001 (Fed. Cir. 2009) and MPEP § 1504.02.
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Claimed Design
ROVOGUER
The images above are included to demonstrate the 102 rejection based on prior art.
The following is a quotation of the appropriate paragraphs of 35 U.S.C. 102(a)(1) that form the basis for the rejections under this section made in this Office action:
A person shall be entitled to a patent unless –
(a)(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.
The claim is rejected under 35 U.S.C. 102(a)(1) as being anticipated by ROVOGUER 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.
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 supra (citing Litton Sys., Inc. v. Whirlpool Corp., 728 F.2d at 1444).
Rejection Under 35 U.S.C. § 103
The following is a quotation of 35 U.S.C. 103 which forms the basis for all obviousness rejections set forth in this Office action:
A patent for a claimed invention may not be obtained, notwithstanding that the claimed invention is not identically disclosed as set forth in section 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 person having ordinary skill in the art to which the claimed invention pertains. Patentability shall not be negated by the manner in which the invention was made.
The claim is rejected under 35 U.S.C. 103 as being unpatentable over prior art found at amazon.com and cited on form 892 as Eyhuoaa One Shoulder Tiered Homecoming Dresses (“Eyhuoaa”) in view of prior art found at amazon.com and cited on form 892 as ROVOGUER One Shoulder Satin Homecoming Dresses (“ROVOGUE”).
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Eyhuoaa
ROVOGUER
The images above have been included to demonstrate the Rejection Under 35 U.S.C. § 103.
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.
Eyhuoaa teaches a dress having an overall appearance with design characteristics that are visually similar to those of the claimed design, in showing a top portion of a dress having a single ruffled sleeve with two layers, a bust portion with a draped fabric wrapping to the front and meeting in a twisted knot in the center forming a “bow-tie” shape, and a triangular peep hole section over the ribcage above the flat fabric band over the stomach section, and a bow located centrally on the back.
The claimed design differs from Eyhuoaa in that it has a zipper back.
ROVOGUER teaches a zipper back.
It would have been obvious to a designer of ordinary skill in the art before the effective filing date of the claimed invention to modify Eyhuoaa by adding a zipper back as taught by ROVOGUER since ROVOGUER demonstrates that the ornamental feature of a zipper back is commonplace in the field of apparel and would therefore have been an obvious design choice.
The claim is rejected under 35 U.S.C. 103.
Provisional Nonstatutory Double Patenting Rejection
The claim is provisionally rejected under 35 U.S.C. 171 on the ground of double patenting since it is claiming the same design as that claimed in copending Application No. 35/523,433. This is a provisional double patenting rejection since the conflicting claims have not in fact been patented.
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Claimed Design
Copending Application No. 35/523,433
The images above are included to demonstrate the 102 rejection based on prior art.
Applicant is advised that a terminal disclaimer may not be used to overcome a "same invention" type double patenting rejection. In re Thorington, 418 F.2d 528, 163 USPQ 644 (CCPA 1969); MPEP § 804.02.
Rejection Under 35 U.S.C. § 112(a) and (b)
The claim is rejected under 35 U.S.C. 112(a) and (b) or pre-AIA 35 U.S.C. 112, first and second paragraphs, as the claimed invention is not described in such full, clear, concise and exact terms as to enable any person skilled in the art to make and use the same, and fails to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor (or, for applications subject to pre-AIA 35 U.S.C. 112, the applicant) regards as the invention.
The claim is indefinite and nonenabling because the drawings disclose features that have not been definitively described by the views provided. These views would not allow one skilled in the art to determine the exact configuration of the design, including shape, contours, features, and depths of elements, without resorting to conjecture.
Specifically, the broken lines on the sides of the waist contradict the solid lines used to illustrate the tie belt.
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The image above is included to demonstrate the 112(a) and (b) rejection.
Additionally, the interior of the dress would be visible from the back view in reproduction 1.2, both at the top and bottom, and likewise, the hem of the front would be visible from the front in reproduction 1.1. The features of the dress must appear consistently in views to ensure the scope of the claim is understood clearly.
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The image above is included to demonstrate the 112(a) and (b) rejection.
There are regions which could be interpreted either as empty space (“peep holes”) or as fabric. Without shading or contour lines the exact configuration cannot be understood.
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The image above is included to demonstrate the 112(a) and (b) rejection.
The necessity for good drawings in a design patent application cannot be overemphasized. As the drawing constitutes the whole disclosure of the design, it is of utmost importance that it be so well executed both as to clarity of showing and completeness, that nothing regarding the design sought to be patented is left to conjecture. An insufficient drawing may be fatal to validity (35 U.S.C. 112(a) or pre-AIA 35 U.S.C. 112, first paragraph). Moreover, an insufficient drawing may have a negative effect with respect to the effective filing date of a continuing application.
If new drawings are submitted in an attempt to overcome this rejection, care must be exercised to avoid the introduction of anything which could be construed to be new matter prohibited by 35 U.S.C. 132 and 37 CFR 1.121. The original drawing disclosure represents the claimed design. All features, elements, and lines as presented are the basis from which examination of the claim is conducted. It is critical that the original disclosure filed with the office be of the highest quality, and be the most accurate rendering of the claimed design as possible. The overall design as well as that of individual features must be rendered in such a way that no amount of conjecture is necessary in understanding the claim. New matter is anything (structure, features, elements) which was not apparent in the drawings as originally filed. It is possible for new matter to consist of the removal as well as the addition of structure, features or elements.
Conclusion
The claim stands provisionally rejected three times under 35 U.S.C. § 102(a)(1), under 35 U.S.C. § 103, for Nonstatutory Double Patenting, and under U.S.C. § 112(a) and (b) as set forth above.
Contact Information
Any inquiry concerning this communication or earlier communications from the examiner should be directed to AMBER J RABIE whose telephone number is (571)272-9623. The examiner can normally be reached Monday - Friday, 8:30 a.m. - 5 p.m.
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, GEORGE A BUGG can be reached at (571)272-2998. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/KEVIN K RUDZINSKI/Primary Examiner, Art Unit 2911
/AJR/
Examiner, Art Unit 2911