Detailed Action
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
The response and election received 18 May 2026 are acknowledged. Cancellation of Groups I and III through VI with corresponding Figures 1.1 - 1.2, 4.1 - 4.2, 7.1 - 7.2, 8.1 - 8.2, 11.1 - 11.4, 14.1 - 14.2, 17.1 - 17.2, 18.1 - 18.2, 19.1 - 19.2, 22.1 - 22.2, 25.1 - 25.4, 26.1 - 26.2, 29.1 - 29.2, 32.1 - 32.4, 35.1 - 35.2, and 38.1 - 38.2 is acknowledged.
Comment Regarding the Restriction and Election
Groups I and III through VI (Embodiments 1, 4, 7, 8, 11, 14, 17, 18, 19, 22, 25, 26, 29, 32, 35, and 38) have been withdrawn from further consideration by the examiner, 37 CFR 1.142(b), as being for the nonelected design. Applicant’s election of Group II (Embodiments 2, 3, 5, 6, 9, 10, 12, 13, 15, 16, 20, 21, 23, 24, 27, 28, 30, 31, 33, 34, 36, 37, 39, and 40) in response to restriction requirement is acknowledged. Because applicant did not distinctly and specifically point out the supposed errors in the restriction requirement, the election has been treated as an election without traverse (MPEP § 818.03(a)).
Foreign Priority
The claim to priority to European Union Design Application Nos. 015055571-0001 through 015055571-0040, filed with the European Union Intellectual Property Office on April 19, 2024 is acknowledged. Certified copies of the foreign priority documents have been received for European Union Design Applications 015055571-0001, 015055571-0002, 015055571-0004, 015055571-0005, 015055571-0007 through 015055571-0015, 015055571-0017 through 015055571-0038, and 015055571-0040. However, as noted in the Requirement for Restriction dated 16 March 2026, retrieval of the certified document via the WIPO DAS Exchange was unsuccessful for European Union Design Applications 015055571-0003, 015055571-0006, 015055571-0016, and 015055571-0039.
The USPTO will attempt retrieval of foreign national industrial design applications to which priority is claimed in a U.S. application where possible. Therefore, when the applicant claims foreign priority to a national industrial design application filed with a participating office and provides the WIPO DAS access code, the USPTO will attempt retrieval via the WIPO DAS Exchange.
The U.S. application filing receipt will indicate whether applicant has complied with a request to retrieve pursuant to 37 CFR 1.55(i). Applicants should inspect the application filing receipt and request a corrected filing receipt if a request to retrieve under 37 CFR 1.55(i) is incorrectly captured.
If the filing receipt accurately reflects the foreign priority claim and the electronically retrieved priority document is not yet in the application, the customer should contact the Patents Electronic Business Center and request that the matter be escalated to determine the cause of the Failure Status Report.
Note that the applicant continues to bear the ultimate responsibility for ensuring that the priority document is filed during the pendency of the application and before the patent is issued.
Comment Regarding Numbering of Drawings
In remarks dated 18 May 2026, applicant states that non-elected Figures 1.1 - 1.2, 4.1 - 4.2, 7.1 - 7.2, 8.1 - 8.2, 11.1 - 11.4, 14.1 - 14.2, 17.1 - 17.2, 18.1 - 18.2, 19.1 - 19.2, 22.1 - 22.2, 25.1 - 25.4, 26.1 - 26.2, 29.1 - 29.2, 32.1 - 32.4, 35.1 - 35.2, and 38.1 - 38.2 have been cancelled and Figures 2.1 - 2.3, 3.1 - 3.3, 5.1 - 5.2, 6.1 - 6.2, 9.1 - 9.2, 10.1 - 10.4, 12.1 - 12.2, 13.1 - 13.4, 15.1 - 15.2, 16.1 - 16.4, 20.1 - 20.2, 21.1 - 21.2, 23.1 - 23.2, 24.1 - 24.2, 27.1 - 27.2, 28.1 - 28.4, 30.1 - 30.2, 31.1 - 31.2, 33.1 - 33.4, 34.1 - 34.2, 36.1 - 36.4, 37.1 - 37.2, 39.1 - 39.2, and 40.1 - 40.4 have been renumbered as Figures 1 – 64 in the replacement drawing set. However, a new drawing set showing remaining renumbered views was not provided.
Renumbering of the drawing figures in any elected Group is not required. To ensure compliance with 37 CFR 1.1026 and Section 405 of the Administrative Instructions, and to maintain consistency with the published International Registration, the numbering of the drawing figures included in the elected Group should not be changed even if non-elected embodiments are cancelled.
As no new drawing set with renumbered views was actually provided, no drawing objection is given. Replacement drawing sheets are not required. Examiner notes that they are unable to attach an annotated print showing remaining and cancelled figure views due to the large file size.
Objection to the Title, Specification, and Claim
The title “Part of panty hose” is objectionable because, “part of” panty hose is not considered an identifiable object of manufacture, and, as such, is not an appropriate title in a design application. The title must be amended throughout the application, original oath/declaration excepted, to read as the following:
--Pantyhose---
Objections to the Specification
The specification is objected to because non-elected figure descriptions have not been canceled.
The descriptive statement is objected to for unclear language. The descriptive statement should expressly identify what is represented in addition to defining the relationship to the claimed design (MPEP 1503.01(II)). Specifically, the phrase "illustrative purposes only" does not explicitly state what the body represents. The human body shown in the drawings is consistent with environment. The examiner therefore recommends amending the descriptive statement to read as follows:
--- The human bodies shown in the reproductions depict environment and form no
part of the claimed design. ---
Comment Regarding Use of Trademarked Phrases
As noted in the Requirement for Restriction dated 16 March 2026, examiner believes phrases such as “Life is Good”, “Lucky You”, “God is a Woman”, “Future is Female”, et cetera forming part of the claimed design may be registered trademarks. If the phrases forming a part of the claimed design are, in fact, registered trademarks, the specification must be amended to include a statement preceding the claim identifying the trademark material forming part of the claimed design and the name of the owner of the trademark.
The usage of trademarks belonging to other entities would be governed by the requirements associated with trademark protection. To avoid trademark infringement, applicant may wish to review potentially trademarked phrases.
Rejection Under 35 U.S.C. 102(a)(1)
A design may be embodied in less than the entire article, 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 35 U.S.C. 102 (a) (1) as being clearly anticipated by earlier invention “See You in Hell Statement Tights”, sold on www.amazon.pl (available as early as 30 January 2024, approximately two months and three days prior to the effective filing date of the instant application), 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 shape and appearance of the See You Tights is identical in all material respects to that of the claimed design, Hupp v. Siroflex of America Inc., 122 F.3d 1456, 43 USPQ2d 1887 (Fed. Cir. 1997).
A comparison of the claimed design and the See You Tights is below:
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791
782
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Greyscale
The appearance of the See You Tights 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).
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.
The Office has provided a mechanism for filing an affidavit or declaration (under 37 CFR 1.130) to establish that a disclosure is not prior art under AIA 35 U.S.C. 102(a) due to an exception in AIA 35 U.S.C. 102(b). See MPEP § 717. In the situations in which it is not apparent from the prior disclosure or the patent application specification that the prior disclosure is by the inventor or a joint inventor, the applicant may establish by way of an affidavit or declaration that a grace period disclosure is not prior art under AIA 35 U.S.C. 102(a)(1) because the prior disclosure was by the inventor or a joint inventor.
MPEP § 2155.01 discusses the use of affidavits or declarations to show that the prior disclosure was made by the inventor or a joint inventor under the exception of AIA 35 U.S.C. 102(b)(1)(A) for a grace period inventor disclosure.
A 102(a)(1) rejection where the date of the reference is equal to or less than one year may be overcome by:
1) Applicant providing persuasive arguments that clearly show and describe the claimed design as patentably distinguishable from the prior art mentioned. In other words, the raised rejection can be overcome by evidence that the product in the prior art reference does not necessarily or inherently possess an integral characteristic of the applicant's claimed design;
and/or
2) Invoking either the 102(b)(1)(A) or 102(b)(1)(B) exceptions. See MPEP 2153.01 (a). See also MPEP §717.01 (Affidavit or Declaration Under 37 CFR 1.130).
Rejection Under 35 U.S.C. 102(a)(1)
A design may be embodied in less than the entire article, 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 35 U.S.C. 102 (a) (1) as being clearly anticipated by earlier invention “Not Your Babe Statement Tights”, sold on www.amazon.co.uk (available as early as 7 February 2024, approximately one month and twenty-six days prior to the effective filing date of the instant application), 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 shape and appearance of the Not Your Babe Tights is identical in all material respects to that of the claimed design, Hupp v. Siroflex of America Inc., 122 F.3d 1456, 43 USPQ2d 1887 (Fed. Cir. 1997).
A comparison of the claimed design and the Not Your Babe Tights is below:
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643
682
media_image2.png
Greyscale
The appearance of the Not Your Babe Tights 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).
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.
The Office has provided a mechanism for filing an affidavit or declaration (under 37 CFR 1.130) to establish that a disclosure is not prior art under AIA 35 U.S.C. 102(a) due to an exception in AIA 35 U.S.C. 102(b). See MPEP § 717. In the situations in which it is not apparent from the prior disclosure or the patent application specification that the prior disclosure is by the inventor or a joint inventor, the applicant may establish by way of an affidavit or declaration that a grace period disclosure is not prior art under AIA 35 U.S.C. 102(a)(1) because the prior disclosure was by the inventor or a joint inventor.
MPEP § 2155.01 discusses the use of affidavits or declarations to show that the prior disclosure was made by the inventor or a joint inventor under the exception of AIA 35 U.S.C. 102(b)(1)(A) for a grace period inventor disclosure.
A 102(a)(1) rejection where the date of the reference is equal to or less than one year may be overcome by:
1) Applicant providing persuasive arguments that clearly show and describe the claimed design as patentably distinguishable from the prior art mentioned. In other words, the raised rejection can be overcome by evidence that the product in the prior art reference does not necessarily or inherently possess an integral characteristic of the applicant's claimed design;
and/or
2) Invoking either the 102(b)(1)(A) or 102(b)(1)(B) exceptions. See MPEP 2153.01 (a). See also MPEP §717.01 (Affidavit or Declaration Under 37 CFR 1.130).
Summation
The references are cited as cumulative art, but are not applied other than as noted above.
The claim stands rejected under 35 U.S.C. 102(a) (1).
Hague - Reply Reminder
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).
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.
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.
Email Communications
The merits of the application will not be discussed via email (or other electronic medium) unless appropriate authorization for internet communications 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.
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
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Caitlin M Williams whose telephone number is (571)272-2410. The examiner can normally be reached Monday through Friday 9:00am to 5:00pm.
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, Michelle Wilson can be reached at (571)272-7639. 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.
/CAITLIN MACKENZIE WILLIAMS/Examiner, Art Unit 2912
Prosecution Insights