The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
Final Action
General Information
The merits of this case have been carefully reconsidered and examined again in light of applicant’s response on 05/15/2026. The objection to the specification has been overcome by applicant’s amendments and is here by withdrawn. The rejection under 35 USC 102(a)(1) has not been overcome by applicant’s declaration, and is rejected made FINAL, as set forth below.
In view of further consideration, examiner notes that the date of the prior art relied upon in the rejection in the Office action and as listed on the PTO-892 Notice of References Cited on 02/12/2026, was incorrectly identified as 10/06/2023, when the correct date of the prior art reference is 09/06/2023. However, this error does not affect the applicability of the rejection under 35 USC 102(a)(1), nor does it affect the determination that the applicant’s declaration is insufficient.
The examiner finds that the substance of the rejection and examination remains unchanged. The date has been corrected to 09/06/2023 in the Final rejection below and in the PTO-892 Notice of References Cited. The statutory basis and "thrust of the rejection" remains unimpacted in this case. Therefore, the final rejection under 35 USC 102(a)(1) is proper. See MPEP 706.07(a). In re Kronig, 539 F[CM(1] .2d 1300, 1303, 190 USPQ 425, 427 (CCPA 1976; In re Leithem, 661 F.3d 1316, 100 USPQ2d 1155 (Fed. Cir. 2011); Rambus v. Rea, 731 F.3d 1248, 108 USPQ2d 1400 (Fed. Cir. 2013); In re Jung, 637 F.3d 1356, 1364–65, 98 USPQ2d 1174, 1180 (Fed. Cir. 2001); In re Noznick, 391 F.2d 946, 949, 157 USPQ 266, 269 (CCPA 1968); In re Krammes, 314 F.2d 813, 817, 137 USPQ 60, 63 (CCPA 1963); In re Cowles, 156 F.2d 551, 555, 70 USPQ 419, 422 (CCPA 1946).
Declaration under Rule 130
The declaration of 37 CFR 1.130 submitted with papers received on 05/11/2026 is not sufficient to overcome the rejection under 35 US.C. 102(a)(1) for the following reason(s):
The declaration does not include a statement indicating that the subject matter disclosed had been publicly disclosed by the inventor or a joint inventor before the disclosure or effective filing date of the subject matter on which the rejection was based. Specifically, the affidavit or declaration must identify the subject matter publicly disclosed and establish the date and content of the inventor’s earlier public disclosure. MPEP 717.01(b)(1)
For example: the statements in the applicant’s declaration: “I invented the subject matter disclosed in Severon Rosange Diamond Necklace” is insufficient because “Severon Rosange Diamond Necklace” is not a name associated or identified with the prior art in the rejection. Accordingly, the declaration does not unequivocally state or clearly connect that Katie Hillier is the inventor of the subject matter disclosed in prior art reference, AHKAH CERF-VOLANT published on 09/06/2023.
Claim Rejection - 35 USC 102(a)(1)
The claim is FINALLY rejected under 35 USC 102(a)(1) as being anticipated by AHKAH CERF-VOLANT (AHKAH) because the claimed invention was patented, described in a printed publication, in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention.
The appearance of AHKAH 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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Claimed Design
Date: 03/12/2024
AHKAH
Date: 09/06/2023
“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, supra).
“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, supra (citing Litton Sys., Inc. v. Whirlpool Corp., 728 F.2d 1423, 1444 (Fed. Cir. 1984)).
Under this standard, the appearance of the AHKAH is substantially the same as that of the claimed design. Furthermore, the effective filing date of the claimed invention is 03/12/2024; the publish date of the AHKAH reference is 09/06/2023. Accordingly, the rejection under this statute is proper.
Overcoming Rejections under 35 USC 102(a)(1)
The applicant may attempt to overcome the rejections under 35 USC 102(a)(1) by:
Persuasively arguing that the claim is patentably distinct over the prior art, or
Amending the claim to patentably distinguish over the prior art, or
Perfecting a benefit claim under 35 USC 119 or 35 USC 120, or
Filing an affidavit or declaration under 37 CFR 1.130.
The applicant is reminded of the one-year grace period afforded under 35 USC 102(b)(1) for disclosures with a prior public availability date.
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 joseph.kukella@uspto.gov to arrange a time and date for the telephone interview. Please include suggested days and times for the proposed call. When proposing a day and 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
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)
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
https://www.uspto.gov/patents/maintain/responding-office-actions
Conclusion
In conclusion this application is FINALLY rejected under 35 USC 102(a)(1).
THIS ACTION IS MADE FINAL. 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.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Heather Wencl whose telephone number is 571-272-4326. The examiner can normally be reached on Monday-Thursday, 8:00AM-5:00PM and Friday 8:00AM-12PM (EST). Interviews are available via telephone, in person, and via video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice. If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Sandra Snapp, can be reached at 571-272-8364. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). For assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/H.A.W./Examiner, Art Unit 2914 /SANDRA SNAPP/Supervisory Patent Examiner, Art Unit 2914
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