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 .
Examiner Understanding
Reproduction 1.5 shows two shades of red/pink. The specification states, “The portion shown in red does not form part of the claimed design;”. The examiner understands that both shades form no part of the claimed design. (See annotated drawing below.)
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The following formal matters are noted:
Description of the Reproductions
The description for reproduction 1.7 lacks clarity. The following is suggested:
-- 1.7 : Cross sectional view taken in the direction of A-A in 1.2 --
Applicant is not required to correct the above-noted formal matters but may wish to do so to place the application in better form.
Title
“Desk furniture”, the title seen on WIPO International Registration Publication Data, does not match “Desk [furniture]”, seen in the application specification and claim. For clarity and consistency, the title, and each occurrence of the language of the title, should be amended throughout the application, except for the Design No./Product(s) section and original oath or declaration, to read:
-- Desk --
Claim Rejection-35 U.S.C. § 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 claim is indefinite and nonenabling for the following:
The specification states, “the portion shown in blue is sectional portion;”, but does not clarify as to whether or not those parts form part of the claimed design or not.
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Applicant may attempt to overcome this rejection by clarifying if the blue portions are claimed or not.
Claim Rejection-35 U.S.C. § 102 (a)(1)
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). 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.
The claimed design is rejected under 35 U.S.C. § 102(a)(1) as being clearly anticipated by "Only Hangers: OEM Grid Panel” (NPL Reference V) 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 Only Hangers: OEM Grid Panel is substantially the same as that of the claimed design. (See annotated drawing below.) The ordinary observer test is the sole test for anticipation. 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.
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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 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)).
Applicant may refer to MPEP 2152.06, which specifies the options of overcoming this rejection.
Conclusion
The claim stands rejected under 35 U.S.C. § 112 (a) and (b) and 35 U.S.C. § 102(a)(1).
The prior art made of record and not relied upon is considered pertinent to applicant’s disclosure.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to BETHANY L MALLINO whose telephone number is (571)272-2628. The examiner can normally be reached Monday-Friday 8:30am-5pm EST.
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, Barbara Fox, can be reached at (571) 272-4456. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/B.L.M./
Examiner, Art Unit 2931
/BARBARA FOX/Supervisory Patent Examiner, Art Unit 2931