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 .
Reproduction Objection
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The reproductions are objected to for having insufficient margins. Specifically, the Figure numbers are too close to the edges, as indicated with an arrow below. Hague Administrative instructions Section 401{d} states “where that application is filed on paper, a margin of at least 5 millimeters should be left around the representation of each industrial design.” Therefore, the reproductions must be corrected to contain sufficient margins between the representations and the edge of the sheet.
When preparing new or replacement reproductions, be careful to avoid introducing new matter, 35 U.S.C. 132 and 37 CFR 1.121(f). This pertains to either: the addition to, or the removal of, any elements shown in the originally disclosed design.
Any amended replacement reproduction sheet should include all of the figures appearing on the immediate prior version of the sheet, even if only one figure is being amended. The figure or figure number of an amended reproduction should not be labeled as “amended.” Each drawing sheet 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). If the changes are not accepted by the examiner, the applicant will be notified and informed of any required corrective action in the next Office action.
Claim Rejection – 35 U.S.C. 102(a)(1)
The claim is rejected under 35 U.S.C. 102(a)(1) as being anticipated by examiner's cited Bub’s Maternity Pillow reference (Non-Patent Document U, dated 07/06/2023) 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 file date of the claimed invention, 01/21/2025.
The appearance of the Bub’s Maternity Pillow reference is substantially the same as that of the claimed design. The ordinary observer test is the sole test for anticipation. International Seaway Trading Corp. v. Walgreens Corp., 589 F.3d 1233, 1237-38, 1240, 93 USPQ2d 1001 (Fed. Cir. 2009). Door-Master Corp. v. Yorktowne, Inc., 256 F. 3d 1308 (Fed. Cir. 2001) citing Gorham Co. v. White, 81 U.S. 511, 528 (1871).
The comparison takes 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," (Litton, 728 F.2d at 1444), so too minor differences cannot prevent a finding of anticipation. Int'l Seaway, supra.
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Considering the comparison of Bub’s Maternity Pillow and the claimed design, the examiner determines that according to the standard of the ordinary observer, the design shown in Bub’s Maternity Pillow and the design shown in the application are substantially the same according to 35 U.S.C. § 102(a)(1). Furthermore, the file date of the claimed design is 01/21/2025. The date of the Bub’s Maternity Pillow reference is 07/06/2023. Accordingly, the rejection under this statute is proper.
Claim Rejection - 35 U.S.C. 102(a)(1)
The claim is rejected under 35 U.S.C. 102(a)(1) as being anticipated by examiner's cited babybub reference (Non-Patent Document V, dated 07/27/2024) 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 file date of the claimed invention, 01/21/2025.
The appearance of babybub is substantially the same as that of the claimed design. The ordinary observer test is the sole test for anticipation. International Seaway Trading Corp. v. Walgreens Corp., 589 F.3d 1233, 1237-38, 1240, 93 USPQ2d 1001 (Fed. Cir. 2009). Door-Master Corp. v. Yorktowne, Inc., 256 F. 3d 1308 (Fed. Cir. 2001) citing Gorham Co. v. White, 81 U.S. 511, 528 (1871).
The comparison takes 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," (Litton, 728 F.2d at 1444), so too minor differences cannot prevent a finding of anticipation. Int'l Seaway, supra.
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Considering the comparison of babybub and the claimed design, the examiner determines that according to the standard of the ordinary observer, the design shown in babybub and the design shown in the instant application are substantially the same according to 35 U.S.C. § 102(a)(1). Furthermore, the file date of the claimed invention is 01/21/2025. The date of the babybub reference is 07/27/2024. Accordingly, the rejection under this statute is proper.
Applicant may rely on the exception under 35 U.S.C. 102(b)(1)(A) to overcome this rejection under 35 U.S.C. 102(a)(1) by a showing under 37 CFR 1.130(a) that the subject matter disclosed in the reference was obtained directly or indirectly from the inventor or a joint inventor of this application, and is therefore not prior art under 35 U.S.C. 102(a)(1). Alternatively, applicant may rely on the exception under 35 U.S.C. 102(b)(1)(B) by providing evidence of a prior public disclosure via an affidavit or declaration under 37 CFR 1.130(b).
Conclusion
The claim stands rejected under 35 U.S.C. 102(a)(1), as set forth above. The prior art made of record and not relied upon is considered pertinent to applicant’s disclosure.
Contact Information
Any inquiry concerning this communication or earlier communications from the examiner should be directed to JULIA S FOLKART whose telephone number is (571) 272-9692. The examiner can normally be reached Monday - Friday from 10 AM to 4 PM Eastern Time.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Michelle E Wilson, can be reached at telephone number (571) 272-7639. The fax phone number for the organization where this application or proceeding is assigned is (571) 273-8300.
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 Interviews
A telephonic 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:/ywww.uspto.gov/'patent,'forms/forms-patent-applications-fiied-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 Julia.Folkart@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 an official correspondence issued by the USPTO, including refusals, Notice of Allowances, or Notice of Abandonments, 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:
International design applications can be filed electronically through the USPTO via Patent Center https://www.uspto.gov/patents/apply
See the Patent Center Quick Start Guide for international design application submissions available at: https://www.uspto.gov/sites/default/files/documents/Patent_Center_User_Guide_September_2023.pdf.
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
/J.S.F./
Examiner, Art Unit 2926
/MICHELLE E. WILSON/Supervisory Patent Examiner, Art Unit 2926