NON-FINAL REJECTION
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 .
General Information
The merits of this case have been carefully reexamined in light of the applicant’s response received 05/07/2026. It is the examiner’s position that the rejection of record under 35 U.S.C. 112 (a) and (b) and 35 U.S.C. 102(a)(1) have NOT been overcome by the applicant’s amendment. Additionally, upon further review and in view of newly cited prior art, a new ground for rejection under 35 USC 102 (a)(2) is set forth below. Because this is a new ground for rejection, this action is not made final.
Reproduction Objection
The reproductions are objected to because the different views are not labeled correctly. Each view must be labeled independently starting with 1.1 just like the originally filed reproductions, and the word “Figure” removed. (37 CFR 1.84(u))
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Corrected Reproductions Required
Corrected drawing sheets are required in reply to the Office action to avoid abandonment of the application. Any amended replacement drawing sheet should include all 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 drawing should not be labeled as “amended.” If a drawing figure is to be canceled, the appropriate figure must be removed from the replacement sheet, and where necessary, the remaining figures must be renumbered, and appropriate changes made to the brief description of the several views of the drawings for consistency. Additional replacement sheets may be necessary to show the renumbering of the remaining figures. If all the figures on a drawing sheet are canceled, a replacement sheet is not required. A marked-up copy of the drawing sheet (labeled as “Annotated Sheet”) including an annotation showing that all the figures on that drawing sheet have been canceled must be presented in the amendment or remarks section that explains the change to the drawings. 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.
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 claimed invention is indefinite and nonenabling for the following reasons:
The scope of the claim is still unclear. Specifically, the indicated surfaces on the C-shaped clip of the article (indicated below) are not clearly shown as forming part of the claim. The surfaces are bounded by solid lines on one side and broken lines on another; absent clear surface shading or indication of any broken lines as claim boundaries, a question arises whether those surfaces form part of the claim. The small solid lines extending from the claimed portion to the unclaimed portion at the top and bottom of the C-shaped clip make it unclear if those indicated surfaces are being claimed. As currently disclosed it would be impossible for one skilled in the art to make and use the design without resort to conjecture.
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Applicant may overcome this refusal by amending the reproductions to add surface shading to all claimed surfaces, so it is clear what surfaces are being claimed. Clarification is required.
Reproduction 1.3 is inconsistent with reproduction 1.1. Reproduction 1.3 shows solid lines extending past the boundary line on the article (indicated below) while reproduction 1.1 shows the solid lines to stop at the boundary lines. Consistency is required.
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35 U.S.C. 102 (a)(1)
The claim is rejected under 35 U.S.C. 102 (a)(1) as being clearly anticipated by the Hold-It Umbrella Holder found on the website https://www.amazon.in/Umbrella-Holders-Accessories-Supports-Diameters/dp/B0BCXKS2TR, 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 the Hold-It Umbrella Holder found on the website 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).
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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 F3d.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.
Applicant’s Arguments/Remarks:
In the response filed 05/07/2026, the applicant swears by evidence provided and claims benefit of International Design Patent No. DM/244676 (Israel Design App. No. 68435) filed 03/26/2022, to overcome the rejection of record under 35 U.S.C. 102 (a)(1). Therefore, overcoming the rejection by establishing an earlier date of disclosure with foreign priority filed.
Examiner’s Response:
The applicant’s response and arguments are acknowledged. However, Applicant has not met the requirements of 35 USC 119(a) and (b)(3), which requires the priority claim to be based on a prior filing of the same design, along with submission of a certified copy of each foreign application upon which the priority claim is based. While applicants can make any statements concerning any benefit claims, unless it has been made of record on either an application data sheet and/or included on the WIPO BIB data sheet, and/or international registration, but there is no perfected benefit granted to the early Israel design application. Additionally, since the benefit claim was not made no later than 6 months to the Israel Grant, applicant cannot claim direct benefit. Therefore, making statements without proof and only providing an image of the Israel Grant [Exhibit A] is not sufficient to establish a claim and get benefit of the early grant, and the effective date is 10/17/2024.
Additionally, the instant application would again be rejected under 35 U.S.C. 102 (a)(1) because the declaration filed was not included in an appropriate affidavit. Although the applicant swears behind the proof of being the creators of the reference cited, but to disqualify a disclosure as prior art by establishing that the disclosure was made by the inventor or a joint inventor, or the subject matter disclosed was obtained directly or indirectly from the inventor or a joint inventor must be filed with a formal declaration or affidavit under 37 C.F.R. §1.130(a).
Therefore, the 35 U.S.C. 102(a)(1) rejection stands because the claimed invention was described in a printed publication, in public use, on sale, and available to the public before the effective filing date of the claimed invention.
35 U.S.C. 102 (a)(2)
Applicant has claimed the design embodied in less than the 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.
The claim is rejected under pre-AIA 35 U.S.C. 102(a) as being clearly anticipated by Israel Patent Application No. 68435 because the invention was known or used by others in this country, or patented or described in a printed publication in this or a foreign country before the invention thereof by the applicant for patent.
The claimed design is embodied within the referenced patent and is substantially the same as the Israel Patent Application No. 68435. 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).
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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)).
The applicant may overcome this rejection by perfecting the benefit grant to the Israel design application as stated before. MPEP 2920.05(d), 37 CFR 1.55(m), and 37 CFR 1.76(b)(6).
Conclusion
The claim stands rejected under 35 U.S.C. 112 (a) and (b), 35 U.S.C. 102 (a)(1), and 35 U.S.C. 102 (a)(2).
The references are cited as pertinent prior art. Applicant may view and obtain copies of the cited references by visiting http://www.uspto.gov/patft/index.html and pressing the “Patent Number Search” button.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to STEVEN CZYZ whose telephone number is (571)270-0204. The examiner can normally be reached on Monday to Friday.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Ian Simmons can be reached on 571-272-2658. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/STEVEN J CZYZ/Primary Examiner, Art Unit 2913
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