Detailed Action – Non-Final Rejection
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
Foreign Priority
Acknowledgment is made of applicant's claim for foreign priority based on applications filed in the European Union Intellectual Property Office on June 28, 2024. It is noted, however, that applicant has not filed certified copies of the 015065087-0003 and 015065087-0004 applications as required by 37 CFR 1.55.
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. Applicant is advised that certified documents as specified in 37 CFR 1.4(f) are not permitted to be filed via Patent Center. (See also 37 CFR 1.6(d)(2)).
Embodiments
This application contains the following embodiments:
Embodiment 1: 1.1 - 1.7
Embodiment 2: 2.1 - 2.7
Multiple embodiments of a single inventive concept may be included in the same design application only if they are patentably indistinct. See In re Rubinfield, 270 F.2d 391, 123 USPQ 210 (CCPA 1959). Embodiments that are patentably distinct from one another do not constitute a single inventive concept and thus may not be included in the same design application. See In re Platner, 155 USPQ 222 (Comm'r Pat. 1967).
The above-identified embodiments are considered by the examiner to present overall appearances that are basically the same. Furthermore, the differences between the appearances of the embodiments are considered minor and patentably indistinct, or are shown to be obvious in view of analogous prior art cited. Accordingly, they are deemed to be obvious variations and are being retained and examined in the same application.
Objections – Specification
Unnecessary Description
The paragraph [The design concerns a coffee pot, having a cylindrical shape, the body of it consists in two parts: the lower part has a smaller size than the upper part and has a base that extends outwards; the upper part has a spout and a handle curved downwards to which a lid is anchored; on the lid there is a knob configured to open the lid.] following the description of the reproductions is extraneous information describing what is shown in the reproductions, which adds no new information to the understanding of the claimed design. Any description of the design in the specification other than a brief description of the drawing is generally not necessary, since as a general rule, the illustration in the drawing views is its own best description. See In re Freeman, 23 App. D.C. 226 (App. D.C. 1904).
The above paragraph should be deleted in its entirety. See Hague Rule 7(5)(a), 37 CFR 1.1024, MPEP 2920.04(a) ll.
Claim Rejections - 35 USC § 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 there are inconsistencies between the views of the drawings that are so great that the overall appearance of the design is unclear (MPEP § 1504.04), specifically:
Reproductions 2.3 and 2.7 are shown inconsistently. 2.7 shows a curving line that is not shown in 2.3 or any other view. (See arrows in annotated drawings on the following page)
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The claim is nonenabling since the exact shape, appearance and spatial relationship (location) of the elements in the sketches below are not understood. Specifically, non-enabled elements whose exact shape, appearance and spatial relationship (location) cannot be determined without resorting to conjecture.
The precise three dimensional configuration of the portions inside the coffee pot and the two innermost center circles on the hexagon shaped portion on the front coffee pot cannot be clearly understood due to the lack views. The showing of the portions identified with arrows in the front views of Reproductions 1.4 and 2.4 are not sufficiently supported in the drawing disclosure to enable one of ordinary skill in the art to understand the shape, depth, contour and spatial relationship of these features. It is not clear whether these features are flat and even with the surface or if they are recessed, and if so at what depth. The exact shape of the portions cannot be determined. The three dimensional relationship between these surfaces has not been shown. (See arrows in annotated drawings on the following page)
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The precise three dimensional configuration of the portions inside the coffee pot cannot be clearly understood due to the lack views. The showing of the portions identified with arrows in the top views of Reproductions 1.6 and 2.6 are not sufficiently supported in the drawing disclosure to enable one of ordinary skill in the art to understand the shape, depth, contour and spatial relationship of these features. It is not clear whether these features are flat and even with the surface or if they are recessed, and if so at what depth. The exact shape of the portions cannot be determined. The three dimensional relationship between these surfaces has not been shown. (See arrows in annotated drawings)
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The precise three dimensional configuration of the portions on the underside of the handle cannot be clearly understood due to the lack views. The showing of the portions identified with arrows in the bottom view of Reproductions 2.7 is not sufficiently supported in the drawing disclosure to enable one of ordinary skill in the art to understand the shape, depth, contour and spatial relationship of these features. It is not clear whether these features are flat and even with the surface or if they are recessed, and if so at what depth. The exact shape of the portions cannot be determined. The three dimensional relationship between these surfaces has not been shown. (See arrows in annotated drawings)
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To overcome this rejection, it is suggested that applicant submit new reproductions of the claimed design that show the design clearly and consistently with crisp, clear, clean lines. Applicant may indicate that protection is not sought for those portions of the reproductions which are considered indefinite and nonenabling in the rejection under 35 U.S.C. 112 above by amending the reproductions to color those portions or convert those portions to broken lines and by amending the specification to include a statement that the portions of the coffee pot shown in broken lines form no part of the claimed design or a statement that the portions of the coffee pot shown by coloring form no part of the claimed design provided such amendments do not introduce new matter (see 35 U.S.C. 132, 37 CFR 1.121).
Care must be exercised to avoid introduction of anything which could be construed to be new matter prohibited by 35 U.S.C. 132 and 37 CFR 1.121 when preparing new reproductions. Each 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).
Applicant is reminded that reproductions shall be of a quality permitting all the details of the industrial design to be clearly distinguished and permitting publication. See Hague Rule 9 of the Common Regulations Under the 1999 Act and the 1960 Act of the Hague Agreement.
Claim Rejections - 35 USC § 102(a)(1)
The claim is rejected under 35 U.S.C. 102(a)(1) as being anticipated by “Angelina”, posted on Instagram on November 19, 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 Angelina 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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“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 Litton Sys., Inc. v. Whirlpool Corp., 728 F.2d 1423, 1444 (Fed. Cir. 1984)).
Applicants may overcome this rejection by providing convincing evidence that the disclosure was made one year or less before the effective filing date of the claimed invention, and 1) the disclosure was made by the inventor, a joint inventor, or by another who obtained the subject matter directly or indirectly from the inventor or joint inventor; or 2) before such disclosure, the subject matter disclosed had been publicly disclosed by the inventor or a joint inventor or another who obtained the subject matter disclosed directly or indirectly from the inventor or joint inventor.
The Angelina NPL reference does not name the inventor, therefore it would not be readily apparent that it is by the inventor. The publication was properly treated as prior art under AIA 35 U.S.C. 102(a)(1). See MPEP 2153.01(a).
The Office has provided a mechanism for filing an affidavit or declaration (under 37 CFR 1.130) to establish that a disclosure is not prior art under AIA 35 U.S.C. 102(a) due to an exception in AIA 35 U.S.C. 102(b). See MPEP § 717. In the situations in which it is not apparent from the prior disclosure or the patent application specification that the prior disclosure is by the inventor or a joint inventor, the applicant may establish by way of an affidavit or declaration that a grace period disclosure is not prior art under AIA 35 U.S.C. 102(a)(1) because the prior disclosure was by the inventor or a joint inventor. MPEP § 2155.01 discusses the use of affidavits or declarations to show that the prior disclosure was made by the inventor or a joint inventor under the exception of AIA 35 U.S.C. 102(b)(1)(A) for a grace period inventor disclosure.
Conclusion
The claim stands rejected under 35 U.S.C. § 112(a) and (b) and 35 U.S.C. § 102(a)(1) as set forth above.
The references cited but not applied are considered cumulative art related to the claimed design.
Applicant is reminded that any reply to this Refusal must be signed either by a patent practitioner (i.e., a patent attorney or agent registered to practice before the United States Patent and Trademark Office) or by the applicant. If the applicant is a juristic entity, the reply must be signed by a patent practitioner. See 37 CFR 1.33(b).
Contact Information
Any inquiry concerning this communication or earlier communications from the examiner should be directed to NATALYA M RAPUNDALO whose telephone number is (571) 272-5154. The examiner can normally be reached on Monday - Friday from 9:00 a.m. to 5:30 p.m. EST. If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, JUSTIN JONAITIS, can be reached at (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.
Reply Reminder
Applicant is reminded that any reply to this communication must be signed either by a patent practitioner (i.e., a patent attorney or agent registered to practice before the United States Patent and Trademark Office) or by the applicant. If the applicant is a juristic entity, the reply must be signed by a patent practitioner. See 37 CFR 1.33(b).
Discussion of the Merits of the Application
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”, available at https://www.uspto.gov/patent/forms/forms-patent-applications-filed-or-after-september-16-2012, may be used for this purpose. 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 natalya.rapundalo@uspto.gov to arrange a time and date for the telephone interview. Please include proposed days and times for the proposed call. When proposing a day/time for the interview, please take into account the examiner's work schedule indicated in the last paragraph of this communication. 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 official correspondence issued by the USPTO, including a notification of refusal, please note the following:
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 Patent Center: 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
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
See https://www.uspto.gov/patents-maintaining-patent/responding-office-actions
/NATALYA M RAPUNDALO/
Examiner, Art Unit 2921