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
Restriction
This application contains the following embodiments:
Embodiment 1 – Reproductions 1.1-1.4
Embodiment 2 – Reproductions 2.1-2.4
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 visually similar. 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.
Because of the reasons set forth above, a restriction is not required.
Trademark Material
A design patent and a trademark may be obtained on the same subject matter. The Court of Customs and Patent Appeals, in In re Mogen David Wine Corp. , 328 F.2d 925, 140 USPQ 575 (CCPA 1964), later reaffirmed by the same court at 372 F.2d 539, 152 USPQ 593 (CCPA 1967), has held that the underlying purpose and essence of patent rights are separate and distinct from those pertaining to trademarks, and that no right accruing from the one is dependent upon or conditioned by any right concomitant to the other.
The logo shown below and phrase “Lalique” forming part of the claimed design may be registered trademarks of Lalique SA. If this is the case, the specification must be amended to include a statement preceding the claim identifying the trademark material and the name of the owner(s) of the trademark. See MPEP 1512.
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Specification Objection
The specification is objected to. Reproductions 1.3, 1.4, 2.3, and 2.4 have all been described as “diagonally from the top left.” For the purpose of clearly describing these views (see MPEP 1503.01, subsection II), it is recommended that the descriptions be amended as follows:
--1.3: Top Left Perspective –
--1.4: Top Left Perspective –
--2.3: Top Left Perspective –
--2.4: Top Left Perspective –
Claim Rejection ‐ 35 USC § 102
The claim is rejected under 35 U.S.C. 102(a)(1) as being anticipated by the examiner’s non-patent reference Luigi Bormioli Chardonnay White Wine Stems, by Bruno Evrard, on Amazon.com 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 on December 17th, 2024.
The appearance of the Chardonnay White Wine Stems 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 ordinary observer test is the sole test for anticipation.
See the claimed design and the Chardonnay Stems below for reference.
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For anticipation to be found, the two designs must be substantially the same, Gorham Co. v.
White, 81 U.S. 511, 528 (1871). 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)). “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.”
“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)).
Under this standard, the appearance of the Luigi Bormioli Chardonnay White Wine Stems is substantially the same as that of the claimed design. Furthermore, the effective filing date of the claimed invention is December 17th, 2024, the oldest verified purchase review date of the Luigi Bormioli Chardonnay White Wine Stems reference is June 15th, 2021. Accordingly, the rejection under this statute is proper.
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Conclusion
This claim stands rejected under 35 U.S.C. 102 (a)(1) as set forth above.
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 Yen.Southwood@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.
Responses to Official USPTO Correspondence
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• 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
For additional info: https://www.uspto.gov/patents/maintain/responding-office-actions
Any inquiry concerning this communication or earlier communications from the examiner should be directed to YEN L SOUTHWOOD whose telephone number is (571)272-1509. The examiner can normally be reached Monday-Friday 8:30am-5pm EST.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner's supervisor George Ulsh can be reached on (571) 270-1433. The fax phone number for the organization where this application or proceeding is assigned is (571) 273-8300.
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/YEN LE SOUTHWOOD/Examiner, Art Unit 2922 /GEORGE J ULSH/Supervisory Patent Examiner, Art Unit 2922