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 .
Acknowledgment of Applicant’s Response
Acknowledgement is made of the applicant’s 5/22/2026 response consisting of arguments related to the rejection under 35 USC 102(a)(1) and an amended specification. Applicant’s amendment overcomes the 35 U.S.C. § 112 (a) and (b) Non-Final Rejection. However, arguments in response to the 35 U.S.C. § 102 rejection were not found persuasive. THIS ACTION IS MADE FINAL. Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
Examiner’s Response to Applicant’s Arguments:
The applicant argues the following:
That the applicant’s design relates to a desk having a “modesty panel” that “serves to conceal the legs and knees of a user seating at the desk from the view of another person positioned in front of the desk.” Also, that the “Only Hangers: OEM Grid Panel” discloses a panel specifically intended “for retail display”.
Attention is directed to the fact that design patent applications are concerned solely with the ornamental appearance of an article of manufacture. The functional and/or structural features stressed by applicant in the papers are of no concern in design cases, and are neither permitted nor required. Function and structure fall under the realm of utility patent applications. See MPEP 1504.01 and 35 USC 171.
That “Only Hangers: OEM Grid Panel does not apply to the same article of manufacture as claimed in the present case.”
Both the grid panel and desks are under the same category: furniture. Having a grid panel on a desk is common as seen in “GUODDM: Desktop Bookshelf with Grid Panels” (NPL Reference N).
That “the claim is a design for a desk having a specific ornamental (grid) portion, not a free-floating geometric grid.”
The applicant’s claim is directed to a grid. The examiner uses a grid to reject the claim.
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 FINALLY 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.
PNG
media_image1.png
734
900
media_image1.png
Greyscale
PNG
media_image2.png
492
468
media_image2.png
Greyscale
“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 FINALLY rejected under 35 U.S.C. § 102.
The references cited but not applied are considered cumulative art related to the subject matter of the claimed design.
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 nonprovisional extension fee (37 CFR 1.17(a)) 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 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.
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.
/B.L.M./
Examiner, Art Unit 2931
/BARBARA FOX/Supervisory Patent Examiner, Art Unit 2931
Prosecution Insights