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 June 22, 2026. The specification objection has been overcome by applicant's amendment and is hereby withdrawn. Applicant's response to the rejection under 35 U.S.C. § 103 has been fully considered but is not considered sufficient to overcome the rejection of record. Additionally, upon further consideration of the claim and in view of new prior art, a new rejection of the claim under 35 U.S.C. § 103 is hereby stated and set forth below. Because the new grounds of rejection were not raised in the previous Office action, this action is not made final.
The examiner has addressed applicant’s remarks concerning the rejections below.
Claim Rejection – 35 USC § 103
The claim is again rejected under 35 U.S.C. 103 as being unpatentable over U.S. Design Patent No. D781,171 to Akana et al. in view of Taiwan Design Registration No. 226470-0001, or in the alternative, in view of U.S. Design Patent No. D879,644 to Deng.
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.
Akana teaches a watch strap with design characteristics that are visually similar to those of the claimed design, in showing a watch strap comprising two strap components, each strap having an attachment end and a fastening end, the straps being primarily rectangular and flat, with the fastening end of one strap being slightly rounded (the other end being attached to a buckle element). See the images below for reference.
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The claimed design differs from Akana in that:
The strap components of the claimed design have a uniform width, whereas the Akana strap components are slightly outwardly curved at the attachment end;
The fastening ends of both strap components are slightly rounded, whereas one fastening end of Akana terminates in a straight line and/or in a buckle element.
Lam teaches a watch strap with strap components having a uniform width, and the fastening ends of both strap components are slightly rounded. See the images below for reference.
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In the alternative, Deng also teaches a watch strap having a uniform width where the fastening ends of both strap components are slightly rounded. See the images below for reference.
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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 Akana by applying the uniform width and the slightly rounded fastening ends of both strap components of Lam because Lam demonstrates that a watch strap having uniform width and slightly rounded fastening ends is commonplace in the field of designing watch straps and would therefore have been an obvious design choice.
In the alternative, 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 Akana by applying the slightly rounded ends of both strap components of Deng, because such a modification is no more than a simple substitution of one known design element for another (a rounded fastening end replacing a straight end or an end terminating in a buckle element). Moreover, such a substitution of one known design element for another known design element in the same field would have been within the skill of an ordinarily skilled designer.
While the watch strap of Deng is disclosed as having a uniform width, the attachment end of the strap is not claimed subject matter, however, the difference of the uniform width of the claimed design, as opposed to the slightly outwardly curved attachment end of Akana, is considered to be an obvious expedient in design, a simple change in contour that is well within the capacity of an ordinary designer of skill. Further, the feature of a watch strap having a uniform width is well known in the art, for example a watch strap with uniform width is shown by cited US Patents D535,205, D802,467, D815,972, D986,087, and D1,023,815.
It is noted that case law has held that a designer skilled in the art is charged with knowledge of the related art; therefore, the combination of old elements, herein, would have been well within the level of ordinary skill. See In re Antle, 444 F.2d 1168,170 USPQ 285 (CCPA 1971) and In re Nalbandian, 661 F.2d 1214, 211 USPQ 782 (CCPA 1981).
The modifications outlined above would result in a design over which the claimed design would have no patentable distinction, any remaining differences being minor in their effect on the overall appearance of the design.
Claim Rejection – 35 USC § 103
The claim is rejected under 35 U.S.C. 103 as being unpatentable over U.S. Design Patent No. D902,579 to Hu in view of U.S. Design Patent No. D904,918 to Du.
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.
Hu teaches a strap with design characteristics that are visually similar to those of the claimed design, in showing a watch strap comprising two strap components, each strap having an attachment end and a fastening end, the straps being primarily rectangular and flat, with the fastening end of the straps being primarily straight with slightly rounded corners; the straps having an overall broad width relative to the thin depth of the straps. See the images below for reference.
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The claimed design differs from Hu in that:
The strap components of the claimed design have a uniform width, whereas the Hu strap components are slightly flared at the attachment end;
The attachment ends are straight whereas the attachment ends of Hu are curved; and
The strap components are smooth and flat and otherwise unadorned whereas the upper rear side of Hu has raised oval features.
Du teaches a watch strap with strap components having a uniform width, the attachment ends of both strap components being straight, and the strap components being all smooth and flat and otherwise unadorned. See the images below for reference.
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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 Hu by applying the uniform width, the straight attachment ends, and the smooth and flat and otherwise unadorned appearance of both strap components of Du because Du demonstrates that a watch strap having uniform width, straight ends, and a smooth and flat appearance is commonplace in the field of designing watch straps and would therefore have been an obvious design choice.
It is noted that case law has held that a designer skilled in the art is charged with knowledge of the related art; therefore, the combination of old elements, herein, would have been well within the level of ordinary skill. See In re Antle, 444 F.2d 1168,170 USPQ 285 (CCPA 1971) and In re Nalbandian, 661 F.2d 1214, 211 USPQ 782 (CCPA 1981).
The modifications outlined above would result in a design over which the claimed design would have no patentable distinction, any remaining differences being minor in their effect on the overall appearance of the design.
Remarks
In remarks filed 6/22/2026, applicant contests the rejection under 35 USC 103, asserting that the claimed design presents a distinctive design of a watch strap that is not anticipated or suggested by the combination of cited references. Applicant bases this assertion on four main points:
The claimed design is distinct from Akana and Deng because it is a magnetic watch strap and has no need for buckle elements, whereas Akana and Deng are conventional watch straps which generally have buckle elements that are essential and cannot be concealed in practical use.
The smooth and uninterrupted surface cannot be obtained by modifying Akana with Lam because Lam has stripes and block end parts.
A designer cannot modify the non-magnetic strap of Akana with Lam because the buckle elements of Akana are “intrinsic and indispensable to its mechanical fastening function” and doing so would destroy the fundamental utility of the watch strap.
Even if Akana is modified by either Lam or Deng, the resulting strap would not provide the “concise, slender, and minimalist appearance” because none of the prior designs “embody or feature such a design concept.”
Regarding the first point, applicant argues that the characteristic of the watch strap being magnetic is a distinguishing feature of the claimed design. Applicant details the manner in which the two strap components of the claimed design would attach to one another and how that is different from conventional watch straps, in particular from primary reference Akana and secondary reference Deng (while also noting that secondary reference Lam is also a magnetic strap that works in a similar manner as the claimed design). However, applicant’s assertion that the strap of the claimed design is magnetic is not a factor in the obvious analysis, because that distinction is solely a functional matter and not one of visual appearance. Design patent applications are concerned solely with the ornamental appearance of an article of manufacture. When a claim is rejected under 35 U.S.C. 103 as being unpatentable over prior art, features of the design which are functional may not be relied upon to support patentability. “[A] design claim to be patentable must also be ornamental; and functional features or forms cannot be relied upon to support its patentability.” See Jones v. Progress, Ind. Inc., 119 USPQ 92, 93 (D. R.I. 1958). MPEP 1504.03(II). Therefore, applicant’s assertion that the magnetic characteristic of the claimed design is a distinguishing feature is considered immaterial to the present argument.
Regarding the second point, applicant argues that the smooth and uninterrupted surface of the claimed design cannot be obtained by modifying Akana with Lam because Lam has stripes and block end parts (identified by applicant as “feature A” and “feature B”, respectively, at 6). The examiner disagrees with this assertion because Lam was selected to teach a watch strap with strap components having a uniform width and the fastening ends of both strap components being slightly rounded. Lam is not relied upon to teach a watch strap with a smooth and uninterrupted surface. Similarly, Lam was not relied upon to teach a watch strap without attachment elements such as block end parts, because Akana itself shows a watch strap that terminates at the attachment end in a straight, flat edge, just as the attachment end of the claimed design terminates.
Moreover, applicant has defined the scope of the claim to include less than the entire article, i.e., portions of the watch strap are not included in the claim. The practice of claiming a design embodied in less than the entire article was confirmed in the decision of In re Zahn, 204 USPQ 988 (CCPA 1980). This practice also opens to the examiner the liberty of applying a similar scope to cited prior art, regardless of any additional features disclosed in the reference. Therefore, applicant cannot rely on the existence in the prior art of features, such as the block end parts of Lam, to negate the reference as a proper basic or secondary reference. Absent the differences in the unclaimed portion of applicants’ design and the strap of the reference, Lam remains a proper secondary reference under 35 USC 103.
Further, while the examiner did not place much weight on the difference of the holes between Akana and the claimed design in the Office action, and therefore did not specifically address this difference, it is noted that Lam also teaches a strap that is uninterrupted by holes. It is further noted that the difference of a watch strap being without holes is considered a minor difference in the art of watch straps, a difference that is also commonplace in the art, for example a watch strap without holes is shown by cited US Patents D645,360, D753,008, D755,070, D786,240, D932,332, and D1,002,419. These known, minor variations in the prior art are therefore well within the skill of an ordinary designer.
Towards the third point, applicant argues that a designer cannot modify the non-magnetic strap of Akana with Lam because the buckle elements of Akana are “intrinsic and indispensable to its mechanical fastening function” and doing so would destroy the “fundamental utility of the watch strap.” The examiner respectfully disagrees.
Initially, in a patent disclosure showing the design in a greater environment, the solid line, which is identical to the claim, delimits and defines the design. It is noted that the Akana design comprises the two strap components only, and that the buckle and attachment elements are shown in broken line and are therefore not part of the Akana design. As a result, applicant’s argument that the fundamental utility of the design would be destroyed by combination with Lam is not supported by the disclosure of Akana because the buckle and attachment elements are not included in the claim, and as such cannot be considered part of its fundamental utility.
Regarding the kind of modifications that could “destroy” the integrity of a primary reference, MPEP I504.03(II)(A) states:
The prohibition against destroying the function of the design is inherent in the logic behind combining references to render a claimed invention obvious under 35 U.S.C. 103(a). If the proposed combination of the references so alters the primary reference that its broad function can no longer be carried out, the combination of the prior art would not have been obvious to a designer of ordinary skill in the art. It is permissible to modify the primary reference to the extent that the specific function of the article may be affected while the broad function is not affected. For example, a primary reference to a cabinet design claimed as airtight could be modified to no longer be airtight so long as its function as a cabinet would not be impaired.
Per MPEP § 1504.04(I)(A), "patented ornamental design has no use other than its visual appearance...." See In re Harvey, 12 F.3d 1061, 1064, 29 USPQ2d 1206, 1208 (Fed. Cir. 1993). In essence, the function of a design is "that its appearance adds attractiveness, and hence commercial value, to the article embodying it." See Ex parte Cady, 1916 C.D. 57, 61,232 O.G. 619, 621 (Comm’r Pat. 1916). From the design standpoint, the function of a design is to be giving an attractive appearance to an article of manufacture. As per MPEP § I504.03(II)(A), “it is permissible to modify the primary reference to the extent that the specific function of the article may be affected while the broad function is not affected.” Such is the case here, where the function of Akana is not altered by the slight modifications outlined above. Thus, there can be no question about whether the “broad” or “specific” function of the watch strap design shown in the design of Akana could be destroyed by modifying the width or end shape with other, equivalent forms, because the design would still “give an attractive appearance” to the article that it ornaments.
Addressing the fourth point, applicant argues that even if Akana is modified by either Lam or Deng, the resulting strap would not provide the “concise, slender, and minimalist appearance” because none of the prior designs “embody or feature such a design concept.” The examiner disagrees that the differences between the primary reference and the secondary reference would preclude a person having ordinary skill in the art from combining features to arrive at the claimed design.
In a proper rejection of a design claim under 35 USC 103, there must be a reference (the basic design), a something in existence, the design characteristics of which are basically the same as the claimed design in order to support a holding of obviousness. In other words, the basic reference design must look something like the claimed design. In re Harvey, 12 F.3d 1061, 1063, 29 USPQ 1206, 1208 (Fed. Cir. 1993) and In re Rosen, 673 F.2d 388, 391, 213 USPQ 347, 350 (CCPA 1982). Once such a design has been established, features thereof may reasonably be interchanged with or added from those in other pertinent references to achieve the claimed design. Such modifications, however, cannot destroy the fundamental characteristics of the basic design reference.
In the instant application, the Akana design clearly meets the standard for a basic reference as set forth above. That is, the design characteristics of Akana are basically the same as those of the claimed design. Both the claimed design and Akana include: a watch strap comprising two strap components; each strap having an attachment end and a fastening end; the straps having essentially the same width and thickness; the straps being primarily rectangular and flat; and the fastening ends being primarily straight with slightly rounded corners. Compare the images below.
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This having been established, the mere modification of the width at the attachment end and rounding of one of the ends of Akana were the only modifications necessary to achieve the claimed design.
Further, the features of Lam not relied on in the rejection of record but highlighted in applicant’s rebuttal are of no import; only two elements of Lam were relied upon to teach modification of the Akana design to render the claimed design obvious. Applicant should also note that the mere fact that there are differences between the claimed design and a prior art design is not alone sufficient to justify the patentability of the claimed design. In re Lamb, 286 F.2d 610, 611, 128 USPQ 539 (CCPA 1961).
For the above reasons, the rejection of the claim under 35 USC 103(a) is proper.
CONCLUSION
The claim is rejected under 35 U.S.C. §103.
The references cited but not applied are considered cumulative art related to the claimed design.
Notes on Correspondence 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/patents/apply/forms, 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.
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
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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), at:
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Mail: Commissioner For Patents, P.O. Box 1450, Alexandria, VA, 22313-1450
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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.
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/Katherine Glennon/
Primary Examiner, Art Unit 2914
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