DETAILED ACTION
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 .
Acknowledgement of Applicant’s Response
The merits of this case have been carefully examined again in light of applicant's response filed February 23, 2026. The rejection of record under 35 USC § 112(a) and (b) has been overcome by applicant's amendment and the rejection is hereby withdrawn. The specification objection has not been overcome by applicant’s amendment and is hereby stated again and set forth below. Additionally, applicant amendments form the basis for a new objection to the reproductions, as set forth below. Further, applicant's response to the rejection under 35 U.S.C. § 102 is not considered sufficient to overcome the rejection of record. Therefore, the rejection is given again herein and made final. THIS ACTION IS MADE FINAL. Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
Claimed Foreign Priority, Certified Copy Not Filed
Acknowledgment is made of applicant’s claim to foreign priority based on an application filed in Switzerland on March 19, 2024. However, applicant has not filed a proper certified copy of the Swiss Design Application No. CH2024-00145 as required by 37 CFR 1.55.
It is noted that certified documents specified in 37 CFR 1.4(f) (see also 37 CFR 1.6(d)(2)), including a certified copy of an international application, are not permitted to be filed via Patent Center. A copy of the certified copy filed by applicant, including a copy filed via Patent Center, will not satisfy the requirement in 37 CFR 1.55(g) for a certified copy. See MPEP § 502.02, subsection V.
In the case of a design application, the certified copy must be filed during the pendency of the application, unless filed with a petition under 37 CFR 1.55(g) together with the fee set forth in 37 CFR 1.17(g), that includes a showing of good and sufficient cause for the delay in filing the certified copy of the foreign application. If the certified copy of the foreign application is filed after the date the issue fee is paid, the patent will not include the priority claim unless corrected by a certificate of correction under 35 U.S.C. 255 and 37 CFR 1.323.
Objection to the Reproductions
The reproductions are objected to for the following reasons:
The reproductions are objected to due to impermissible numbering. Hague applications must comply with Hague requirements under Rule 9 and Part Four of the Administrative Instructions section 405, in particular that the numbering must consist of two separate figures separated by a dot (e.g., 1.1, 1.2 etc.). See 37 CFR 1.1026 and MPEP 2909.02. Accordingly, pursuant to the requirements outlined above, the drawings must be renumbered as 1.1-1.7 as originally filed to comply with Hague application requirements.
The inclusion of the words “Design 2” shown at the top of the reproductions is impermissible and must be removed from the drawing sheets. As per Hague Administrative Instructions Section 405, legends to indicate a specific view of the product (e.g., "front view", "top view", etc.) may be indicated in association with the numbering of the reproduction, however the words “Design 2” suggest other embodiments of the claim not shown in the reproductions or described in the specification.
Replacement Reproductions
Replacement reproduction sheets must include all of the reproductions appearing on the prior version of the sheet, even if only one reproduction is being amended. However, if the applicant cancels a reproduction, follow these steps:
Do not include the canceled reproduction on the replacement reproduction sheet.
Make appropriate changes to the reproduction descriptions for consistency.
Additional replacement sheets may be necessary to show renumbering of the remaining reproduction.
If all the reproductions on a drawing sheet are canceled, a replacement sheet is not required
A marked-up copy of the reproduction sheet (labeled as “Annotated Sheet”) including an annotation showing that all the reproductions on that reproduction sheet have been canceled must be presented in the amendment or remarks section that explains the change to the reproductions.
Label the replacement reproductions in the top margin as either "Replacement Sheet” or “New Sheet” pursuant to 37 CFR 1.121(d). If the examiner rejects the amended reproductions, the applicant will be notified and informed of any required corrective action in the next Office action.
When preparing new or replacement reproductions, be careful to avoid introducing new matter. New matter is prohibited by 35 U.S.C. 132 and 37 CFR 1.121 (f).
Specification Objection
The specification is objected to because the phrase “of the first design” in the description of the figures is impermissible because the phrase suggests other embodiments or attributes of the claimed design which are not illustrated in the drawing disclosure. See MPEP § 1503.01, subsection II. Statements which describe or suggest other embodiments of the claimed design which are not illustrated in the drawing disclosure, except one that is a mirror image of that shown or has a shape and appearance that would be evident from the one shown, are not permitted in the specification of an issued design patent. In addition, statements which attempt to broaden the scope of the claimed design beyond that which is shown in the drawings are not permitted. Suggested replacement descriptions are provided below:
--1.1 is a perspective view of a watch casing;
1.2 is a front view thereof;
1.3 is a back view thereof;
1.4 is a left view thereof;
1.5 is a right view thereof;
1.6 is a top view thereof; and
1.7 is a bottom view thereof.
Claim Rejection – 35 U.S.C. § 102(a)(1)
The claim is again and finally rejected under 35 U.S.C. § 102(a)(1) as being anticipated by Non-Patent Document Hands-On Debut HYT T1 Watches (“Hyt” hereinafter; ablogtowatch.com, publ. 4/16/2024) 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.
The appearance of Hyt 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. The reference encompasses the entirety of the claimed design, and thereby it anticipates the claim in the instant application.
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The ordinary observer test is the sole test for anticipation. Int’l Seaway Trading Corp. v. Walgreens Corp., 589 F.3d 1233, 1237-38, 1240 (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 F.3d 1308, 1313 (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 Titton Sys., Inc. v. Whirlpool Cop., 728 F.2d 1423,1444 (Fed. Cir. 1984)).
To overcome the above rejection, the applicant or patent owner may submit an appropriate affidavit or declaration to disqualify a disclosure as prior art by establishing that the disclosure was made by the inventor or a joint inventor, or the subject matter disclosed was obtained directly or indirectly from the inventor or a joint inventor. See MPEP C.F.R. 1.130. Applicant may also refer to MPEP 2152.06, which specifies the options of overcoming this rejection.
Alternatively, applicant's submission of a certified copy of Swiss Design Application No. CH2024-00145 may overcome the rejection of record. As noted in this Office action, applicant's claim for foreign priority has not met the requirements of 35 U.S.C. 119(a) through (d) because a certified copy has not been made of record in the application. Without the benefit of the filing date in Swiss Design Application No. CH2024-00145, the Hands-On Debut HYT T1 Watches reference qualifies as prior art under 35 U.S.C. 102(a)(1). See MPEP 1504.02.
CONCLUSION
The claimed design is again and finally rejected as set forth above.
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.
Notes on Correspondence for Discussion of the Merits of the Case
A Power of Attorney (POA), filed with the USPTO in the specific case, is required of all counsel, regardless of their authorized status in front of the Hague or other Contracting Party. Applicant should complete and place in the case file (via the EFS-web system or postal mailing) form PTO-SB0080 which may be downloaded at https://www.uspto.gov/web/forms/sb0080/pdf. A Pro Se applicant may communicate directly with examiner by telephone or email communication. However, for attorneys representing applicants please note the following:
Attorneys must be registered to practice in front of the USPTO, and have a current registration number before any merits of the case may be discussed.
The case file must contain a Power of Attorney that designates the attorney or registered law firm that authorizes communication on behalf of the applicant in this application (use form SB0080).
Without the above, examiner may only provide case status information (time frame for examination, procedural questions, and general USPTO practice questions).
For expediency, if applicant/attorney wishes to communicate by telephone, the examiner should be reached by email to arrange a time for a telephone interview: katherine.glennon@uspto.gov. Please include proposed days and times (Eastern Daylight Time) for the proposed call. The telephone communication will be initiated by applicant or applicant’s representative as appropriate.
The merits of the application may not be discussed via email (or other electronic medium) unless an appropriate authorization tor email communication is placed in the U.S. application tile at the USPTO. When attorney for applicant wishes to communicate with the examiner in such away, authorization for Internet communications should be completed (form PTO-SB439 via the EFS-web system or postal mailing). The form is available at: https://www.uspto.gov/sites/default/files/documents/sb0439.pdf. Please see MPEP 502.03 II (Article 5) for more details.
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 USPTO transacts business in writing. Applicants may submit replies to Office actions only by the following means:
Online via the USPTO's Electronic Filing System-Web (EFS-Web) (Registered eFilers only): https://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
For further information visit: https://www.uspto.gov/patents-maintaining-patent/responding-office-actions.
Contact Information
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Katherine Glennon whose telephone number is 571-270-1559. The examiner can normally be reached Monday-Friday between 9AM-5PM ET.
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, Sandra Snapp can be reached at 571-272-8364. 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. For more information about Patent Center, visit https://www.uspto.gov/patents/apply/patent-center. For information about filing in DOCX format, visit https://www.uspto.gov/patents/docx. 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.
/KATHERINE GLENNON/
Primary Examiner, Art Unit 2923
Prosecution Insights