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 .
Detailed Office Action
Foreign Priority
Acknowledgment is made of applicant’s claim for foreign priority based on applications EM 015071757-0001 and EM 015071757-0002 filed in EUIPO on 9/9/2024. Certified copies of the foreign priority documents have been received with the application.
Embodiments
This application discloses the following embodiments:
Embodiment 1 - Figs. 1.1-1.7: a hinged clamshell style housing for wearable environmental sensor with a half circle opening at the top end, a series of protruding circles on the inside top and a series of 6 flat circles on the inside bottom. The 6 flat circles are comprised of 4 larger circles in the middle and 2 smaller circles to the sides.
Embodiment 2 - Figs. 2.1-2.7: a hinged clamshell style housing for wearable environmental sensor with a half circle opening at the top end, a series of protruding circles on the inside top and a series of 6 flat equal-sized circles on the inside bottom.
Multiple embodiments of a single inventive concept may be included in the same design application only if they are patentably indistinct. See In re Rubinfield, 270 F.2d 391, 123 USPQ 210 (CCPA 1959). Embodiments that are patentably distinct from one another do not constitute a single inventive concept and thus may not be included in the same design application. See In re Platner, 155 USPQ 222 (Comm’r Pat. 1967).
The above identified embodiments are considered by the examiner to present overall appearances that are basically the same. Furthermore, the differences between the appearances of the embodiments are considered minor and patentably indistinct, or are shown to be obvious in view of analogous prior art cited. Accordingly, they are deemed to be obvious variations and are being retained and examined in the same application. Any rejection of one embodiment over prior art will apply equally to all other embodiments. See Ex parte Appeal No. 315-40, 152 USPQ 71 (Bd. App. 1965). No argument asserting patentability based on the differences between the embodiments will be considered once the embodiments have been determined to comprise a single inventive concept. Failure of applicant to traverse this determination in reply to this action will be considered an admission of lack of patentable distinction between the above identified embodiments.
Drawings
The drawings are objected to because in figures 1.1 and 2.1 there is a full circle disclosed in the middle of the upper inside cover but that same area in figures 1.2, 1.5, and 2.2 there is only a semi-circle. See annotated drawings below:
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1666
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The drawings must be made to show all features consistently throughout the figures.
The necessity for good drawings in a design patent application cannot be overemphasized. As the drawing constitutes the whole disclosure of the design, it is of utmost importance that it be so well executed both as to clarity of showing and completeness, that nothing regarding the design sought to be patented is left to conjecture. An insufficient drawing may be fatal to validity (35 U.S.C. 112, first paragraph). Moreover, an insufficient drawing may have a negative effect with respect to the effective filing date of a continuing application.
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 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 drawing should not be labeled as “amended.” 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.
When preparing new drawings in compliance with the requirement therefor, care must be exercised to avoid introduction of anything which could be construed to be new matter prohibited by 35 U.S.C. 132 and 37 CFR 1.121.
Specification
The specification is objected to for the following reasons:
A. A design application is required to have some form of description for each reproduction of the article, in order to clearly identify each view in relation to one another. (Hague Rule 7(5)(a), 37 CFR 1.1024, MPEP 2920.04(a) subsection II) The specification must be amended to provide descriptions for the figures, preceding the feature statement. Suggested language follows:
-- 1.1 Top Front Perspective view in a partially open state of use.
1.2 Top Front Perspective view in an open state of use.
1.3 Top Rear Perspective view in a closed state of use.
1.4 Top Front Perspective view in a closed state of use.
1.5 Top view in an open state of use.
1.6 Bottom view in an open state of use.
1.7 Side view in an open state of use.
2.1 Top Front Perspective view in a partially open state of use.
2.2 Top Front Perspective view in an open state of use.
2.3 Rear view in a closed state of use.
2.4 Top Front Perspective view in a closed state of use.
2.5 Top view in a closed state of use.
2.6 Side view in a closed state of use.
2.7 Bottom view in an open state of use.--
B. The descriptive statements included in the specification are impermissible because the functional and/or structural features stressed by applicant are of no concern in design cases, and are neither permitted nor required. See (MPEP § 1503.01, subsection II). Therefore, the following description must be cancelled as any description of the design in the specification, other than a brief description of the drawing, is generally not necessary, since as a general rule, the illustration in the drawing views is its own best description.
[The design shows a housing for clip-shaped sensor consisting of an upper and a lower part, which are connected to each other by means of a folding edge and can thus be pivoted so that there is a closed and an open position of the housing; the inside of the upper part has pins that are guided into corresponding indentations in the lower part when the housing is closed; the basic shape of the housing seen from above is rectangular, with the side on which the housing parts are connected having rounded corners and the other side being semi-circularly rounded; the upper part of the housing has a semi-circular hole on the semi-circularly rounded side.]
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 Seni Smart Alea clip (Seni Smart) 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 Seni Smart 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. A design may be embodied in less than the entire article, In re Zahn, 204 USPQ 988 (CCPA 1980). Therefore, it is reasonable to compare such a design to prior art embodied in less than an entire article. The examiner has done so in the following rejection. See comparison of claimed design vs Seni Smart below:
Claimed Design Seni Smart
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625
682
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The overall shape and appearance of the claimed design is identical to Seni Smart.
The standard for determining novelty under 35 USC 102 is the “average observer”. In re Bartlett, 300 F. 2d 942, 133 USPQ 204 (CCPA 1962). This “average observer” has been described as having a less discerning eye. In re Nalbandian, 661 F. 2d 1214, 211 USPQ 782, footnote 2 at 784 (CCPA 1981).
For anticipation to be found, the two designs must be substantially the same. Gorham Co. v. White, 81 U.S. 511, 528 (1871). Although the claim in this case and the single reference do not duplicate each other under the “one skilled in the art” standard of 35 USC § 103, the level of novelty necessary to support design patentability under 35 USC § 102 occurs when an average observer would take the claimed design for different, and not a modified version of an already existing design. Likewise, 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., 59 USPQ2d 1472 (CA FC 2001). Therefore, the prior art need not be identical to the claimed design to support a rejection under 35 USC 102, but rather must be merely virtually identical to the claimed design.
Conclusion
In conclusion, the claim stands rejected under 35 U.S.C. §102(a)(1) as set forth above.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Lillian Embrey whose telephone number is 571-272-9396, and whose work schedule is Monday-Friday 9:30am-4:30pm ET. 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. 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.
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/LILLIAN EMBREY/Examiner, Art Unit 2914 2/12/2026