DETAILED ACTION
Acknowledgement of Applicant’s Response
The merits of this case have been carefully examined again in light of applicant's response filed June 25, 2026. Applicant's amendments to the reproductions and the specification are sufficient to overcome the objections raised in the previous Office action and the objections are hereby withdrawn. Applicant's response to the rejection under 35 U.S.C. § 102(a)(1) has been fully considered but is not considered sufficient to overcome the rejection of record. 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. Therefore, the rejections are 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).
The examiner has addressed applicant’s remarks concerning the rejections below.
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 U.S. Patent Publication No. 2008/0223889 A1 to Rossell 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 Rossell 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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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)).
Applicant may refer to MPEP 2152.06, which specifies the options of overcoming this rejection.
General Information
Applicant has claimed the design embodied in less than an entire article. 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 relying upon the features of a reference embodied in less than the entire article. The examiner has done so in the following rejection.
Claim Rejection – 35 USC § 103
The claim is again and finally rejected under 35 U.S.C. 103 as being unpatentable over U.S. Design Patent No. D857,543 to Sirichai in view of U.S. Design Patent No. 1,021,665 to Ou.
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.
Sirichai teaches a watch strap with design characteristics that are visually similar to those of the claimed design, in showing a watch strap comprising two rectangular strap components: a long strap component and a short strap component, with the two strap components being thin relative to the width of the strap, uniform in width, and the front and back surfaces being flat and planar. See the images below for reference.
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The claimed design differs from Sirichai in that the short strap component is shown with one end in a folded position, whereas the short strap of Sirichai is not shown folded, and that the ends of the straps of the claimed design are slightly rounded at three ends, whereas all ends of Sirichai are straight,
Ou teaches a watch strap with one end of a strap component shown in a folded position. Ou also teaches the ends of the straps being slightly rounded at three ends. See the image 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 Sirichai by applying the folded end of Ou, and applying the strap ends being slightly rounded at three ends of Ou because Ou demonstrates that a watch strap having a folded end and slightly rounded ends is commonplace in the field of designing watch straps and would therefore have been an obvious design choice.
Further, the arrangement of the folded watch strap ends in both designs appears to be dictated by functional and/or mechanical considerations of attachment or fastening to a watch device or other strap features, and therefore any aesthetic appeal in the design of the folded strap ends is the result of their function as attachment or fastening locations.
Moreover, while Ou teaches the difference of the slightly rounded ends, the design feature of a watch strap having rounded ends is considered to be an obvious expedient in design, a simple change in shape that is well within the capacity of an ordinary design of skill in the art of watch bands. In re Villesvick, 97 USPQ 149 (1953), In re Peet, 101 USPQ 203 (1954). It is not believed that invention was involved in the production of the design over the prior art.
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 – Claim Rejection 102
U.S. Patent Publication No. 2008/0223889 A1 to Rossell
In remarks filed 6/25/2026, applicant contests the rejection under 35 USC 102(a)(1), arguing that there are distinctive differences between the claim and the prior art, and that the claim is not anticipated by the prior art on the basis of two main points: 1) the watch strap of Rossell is shown in an assembled state, while the design of the instant application is shown in a separated state; and 2) the Rossell watch strap cannot be separated in use.
In both arguments, applicant relies on the positioning and/or functional aspects of Rossell rather than on its visual characteristics. However, in a rejection of a claim under 35 U.S.C. 102, mere differences in functional considerations do not negate a finding of anticipation when determining design patentability. See Black & Decker, Inc. v. Pittway Corp., 636 F.2d 1193, 231 USPQ 252 (N.D. Ill. 1986). See also In re Zonenstein, 172 F.2d 599, 80 USPQ 522, 523 (CCPA 1949) ("Patentability of a design cannot be predicated on size or utility.").
Applicant claims that the assembled state of Rossell creates a different shape and configuration that is substantially different from that of the claimed design. Applicant points to the short strap and long strap of Rossell being joined by a buckle, and also notes that the long strap is “folded at the buckle but also provided with a curled strap terminal” that applicant asserts prevents the strap from being disengaged from the buckle. However, these differences are modifications in arrangement only, and as such do not substantially affect the overall appearance of Rossell and would not prevent an ordinary observer from recognizing the substantial similarity of the designs at the level of overall resemblance. Further, a reference may be relied upon for all that it would have reasonably suggested to one having ordinary skill in the art, including nonpreferred embodiments. Merck & Co. v. Biocraft Labs., Inc. 874 F.2d 804, 10 USPQ2d 1843 (Fed. Cir. 1989), cert. denied, 493 U.S. 975 (1989). See also Upsher-Smith Labs. v. Pamlab, LLC, 412 F.3d 1319, 1323, 75 USPQ2d 1213, 1215 (Fed. Cir. 2005) (reference disclosing optional inclusion of a particular component teaches compositions that both do and do not contain that component); Celeritas Technologies Ltd. v. Rockwell International Corp., 150 F.3d 1354, 1361, 47 USPQ2d 1516, 1522-23 (Fed. Cir. 1998) (The court held that the prior art anticipated the claims even though it taught away from the claimed invention. "The fact that a modem with a single carrier data signal is shown to be less than optimal does not vitiate the fact that it is disclosed.”). MPEP 2123.I.
Applicant asserts that the Rossell strap cannot be separated in use. This argument again relies on functional considerations that are of no concern in design patent applications but rather fall under the realm of utility patent applications. That portions of the prior art design are functional while applicant suggests the claimed design is merely ornamental is immaterial so far as patentability of the design is concerned, since appearance only can be considered in that connection. In re Cornwall, 109 USPQ 57 (Fed. Cir. 1956).
For the above reasons, the rejection of the claim under 35 USC 102(a)(1) is proper.
Remarks – Claim Rejection 103
U.S. Design Patent No. D857,543 to Sirichai in view of U.S. Design Patent No. 1,021,665 to Ou
In remarks, 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 six main points:
The strap of the claimed design has a short component with one folded end and one straight end, and a long component with two straight ends, whereas the Sirichai patent shows a strap with no folded ends.
The ends of Sirichai are completely integrated into end features (Features B-E), resulting in significantly different configurations and appearances than that of the claimed design.
While the Ou patent shows a strap with two folded ends, both strap components are the same length and the folded ends are “symmetrically provided at each strap component” whereas the claimed design has only one folded end on the short component.
Ou has three “end buckets” or loops while the claimed design has only one end bucket.
Ou has significant differences from the claimed design, and Ou “cannot remedy those distinctions between D1 [Sirichai] and the claimed design.”
The claimed design has a minimalist appearance and minimalist aesthetic feeling that are distinct from the cited references or any combination thereof.
Regarding the first point, the difference of the one folded end between the claimed design and Sirichai has already been identified and addressed in the rejection by the application of teaching reference Ou—namely, Ou teaches a watch strap with one end of a strap component shown in a folded position. Further, it was noted in the rejection that the folded end of the watch strap ends in both designs appears to be dictated by functional and/or mechanical considerations of attachment or fastening to a watch device or other strap features, and therefore any aesthetic appeal in the design of the folded strap ends is the result of their function as attachment or fastening locations. Design may embody functional features and still be patentable, but it must have an unobvious appearance distinct from that dictated solely by functional considerations. See In re Garbo, 129 USPQ 1972 (1961). Moreover, modifying one end of a strap component to have a folded end would be a simple matter of folding an end of the strap, and would be a minor modification that does not qualify as a visual distinction too significant to be taught, or to be outside the capacity of a designer of ordinary skill. See In re Nalbandian 21 I USPQ 782 (1981); In re Faustmann 69 USPQ 541 (1946).
Regarding the second point, applicant highlights the end features of Sirichai, stating that the integration of the strap ends into the end features results in significantly different configurations and appearances than shown in the claimed design. The examiner disagrees with this assertion. 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, it is reasonable to compare such a design to prior art embodied in less than an entire article. The examiner considers that a designer of ordinary skill would recognize the short and long strap components of Sirichai as discrete and distinct elements within the overall strap, just as short and long strap components that constitute the claimed design are a discrete and distinct element among the broken line subject matter of the overall watch strap disclosed in the present application. Therefore, applicant cannot rely on the existence in the prior art of features, such as the end features of Sirichai, to negate the reference as a proper basic or secondary reference. Absent the differences in the unclaimed portion of applicant’s design and the strap of Sirichai, Sirichai remains a proper primary reference under 35 USC 103.
Towards points three, four and five, applicant appears to misconstrue the role of the secondary reference in a design obviousness analysis by suggesting that its combination with the primary reference requires the secondary reference be modified. Applicant focuses analysis on features in the secondary reference that were not applied as teachings, in order to suggest that they they are too dissimilar to be combinable. The Ou watch strap was cited only to teach a folded end and slightly rounded strap ends. While differences may or may not exist between the two applied designs, a lack of difference from the primary reference is not required of a secondary reference. Only the primary reference in an obviousness combination rejection is obliged to have a similar overall visual impression and basically the same design characteristics as the claimed design. The secondary references need only be so related in appearance that certain ornamental features in one would suggest the application of those features to the other. MRC Innovations, Inc. v. Hunter Mfg., LLP, I 10 USPQ2d 1235 (Fed. Cir. 2014): In re Borden (CAFC) 39 USPQ2d at 1526.
Regarding applicant’s sixth point, that the claimed design has a minimalist appearance and minimalist aesthetic feeling that are distinct from the cited references or any combination thereof, the examiner respectfully disagrees. As noted in the rejection above, the strap of Sirichai shows a watch strap having two components, both components being thin relative to the width of the strap, being uniform in width, the surfaces being smooth and planar and otherwise without ornamentation, just as is shown in the claimed design. Ou provides rounded ends to the straps and a single folded edge, just as is shown in the claimed design. This simple modification to Sirichai by Ou thus exemplifies a minimalist appearance and minimal aesthetic feeling as is shown in the claimed design.
For the above reasons, the rejection of the claim under 35 USC 103(a) is proper.
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.
Hauge Reply Reminder Regarding Patent Practitioner of Record
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Discussion of the Merits of the Application
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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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