DETAILED OFFICE 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 .
Specification
The specification is objected to for the following substantive reason(s):
The descriptions of 1.8-1.10 are objected to because it refers to reference views not forming part of the claim rather than perspective views in a state of use. Applicants are cautioned against using "reference view" as a figure description in international design applications designating the United States. While "reference view" is commonly used in some foreign countries as a figure description, this term does not have any special meaning in U.S practice. Accordingly, the reference view will be treated as another view of the design, and any inconsistencies between the reference view and the other figures of the claimed design may cause uncertainty as to the scope of the claim, resulting in a rejection under 35 U.S.C. 112(a) and (b), as nonenabling and indefinite. A reference view described in the description as not included in the claimed design may result in uncertainty as the scope of the design claimed where the reference view includes features of the claimed design shown in the other views. See MPEP 2920.04(a)(II). Therefore, 1.8-1.10 should be amended to describe the views as perspective views in a state of use. The following descriptions may be used:
-- 1.8 : Perspective view in a state of use
1.9 : Perspective view in a state of use
1.10 : Perspective view in a state of use --
Claim Rejection – 35 U.S.C. § 112(a) and (b)
The claim is rejected under 35 U.S.C. 112 (a) and (b) 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 regards as the invention.
The claim is indefinite and nonenabling because the exact appearance and scope of the claimed article has not been definitively described due to a lack of consistency of the drawing disclosure and clarity of the specification. See below.
The claim lacks clarity as 1.8-10 shows claimed subject matter that is not shown in any other view. 1.8 shows credit cards and photos cards shown as claimed. 1.9 and 1.10 show a phone case as claimed. 1.9-1.10 also contains impermissible shadows in the background and glare that alters the appearance of the surface of the claimed design. One definite appearance of the claim has not been shown. See graphics below pointing to the subject matter in question.
PNG
media_image1.png
874
439
media_image1.png
Greyscale
PNG
media_image2.png
947
1008
media_image2.png
Greyscale
Applicant may attempt to overcome this rejection by amending 1.8-1.10 to show subject matter that is not the card holder as unclaimed by placing a light-gray filter over the credit cards, photos cards, and the phone case. A descriptive statement must also be added describing the subject matter with the light-gray filter in 1.8-1.10 as forming no part of the claim.
Alternatively, Applicant may attempt to overcome this rejection by deleting 1.8-1.10 from the reproductions and specification as 1.1-1.7 discloses a complete and clear understanding of the claimed design. The inclusion of 1.8-1.10 is not necessary to understand the claimed design.
The corrected drawings must not contain new matter (37 CFR 1.121, 35 USC 112(a)).
New matter is anything (structure, features, elements) which was not shown in the drawings as originally filed. It is possible for new matter to consist of the removal as well as the addition of structure, features or elements. Further, the clarification of drawings with poor line quality can introduce new matter.
Failure to submit replacement correction sheets overcoming all of the deficiencies in the drawing disclosure set forth above, or an explanation why the drawing corrections or additional drawing views are not necessary will result in the rejection of the claim under 35 U.S.C. 112(a) and (b) or pre-AIA 35 U.S.C. 112, first and second paragraphs, being made FINAL in the next Office action.
The claim as rejected above is indefinite or not enabled. However, the ornamental appearance of the claim is sufficient for comparison with the prior art. Accordingly, the claim is also rejected under 35 USC 102, as follows. See MPEP 2143.03(I).
Claim Rejection - 35 U.S.C. § 102
The claim is rejected under 35 U.S.C. 102(a)(1) as being anticipated by Face MagSynq Card Wallet Compatible with MagSafe Card Case [Hamee] (Amazon.com [online], Product Review 02/19/2024) 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 effective filing date of the claimed invention.
The appearance of Hamee 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.
For anticipation to be found, the two designs must be substantially the same. Gorham Co. v. White, 81 U.S. 511, 528 (1871). 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).
“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.)
Under this standard, the appearance of Hamee is substantially the same as that of the claimed design. That is, the appearance of the claimed CARD HOLDER is deceptive to the extent that it would induce an ordinary observer to purchase it supposing it to be the Hamee.
If any attempt to overcome the rejection with the filing of an affidavit under 37 CFR 1.130(a), the affidavit should include an unequivocal statement that the inventor herein is the inventor of the design shown in the reference, and provide an explanation of how the design was obtained from the inventor by the publisher of the reference.
See comparison graphic below.
PNG
media_image3.png
828
626
media_image3.png
Greyscale
Conclusion
The claim stands rejected under 35 U.S.C. § 112(a) and (b) and 35 U.S.C. § 102.
The references cited but not applied are considered cumulative art related to the claimed design.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to JOHN PATRICK G RIBAY whose telephone number is 571-272-8050. The examiner can normally be reached M-F, 10AM-6PM CST.
Applicant is reminded that any reply to this communication must be signed either by a patent practitioner (i.e., a patent attorney or agent registered to practice before the United States Patent and Trademark Office) or by the applicant. If the applicant is a juristic entity, the reply must be signed by a patent practitioner. See 37 CFR 1.33(b).
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 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.
Examiner interviews are available via telephone, in-person, and 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, GEORGE BUGG can be reached on 571-272-2998. 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). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/J.G.R./
Examiner, Art Unit 2911
/GEORGE A BUGG/Supervisory Patent Examiner, Art Unit 2911