DETAILED 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 .
Foreign Priority
Acknowledgment is made of applicant’s claim for foreign priority based on the Great Britain application 6379227 filed on 18 July 2024. It is noted, however, that applicant has not filed a certified copy of the Great Britain application as required by 37 CFR 1.55. In the case of a design application, the certified copy must be filed during the pendency of the application, unless filed with a petition under 37 CFR 1.55(g) together with the fee set forth in 37 CFR 1.17(g), that includes a showing of good and sufficient cause for the delay in filing the certified copy of the foreign application. If the certified copy of the foreign application is filed after the date the issue fee is paid, the patent will not include the priority claim unless corrected by a certificate of correction under 35 U.S.C. 255 and 37 CFR 1.323.
Applicant is reminded of the meaning of “certified copy” from MPEP 215, II. “A copy of the certified copy filed by applicant, including a copy filed via the USPTO patent electronic filing system, will not satisfy the requirement in 37 CFR 1.55(g) for a certified copy.”
Note that the applicant bears the ultimate responsibility for ensuring that the priority document is filed during the pendency of the application and before the patent is issued. For more information, please contact: USPTO Patents Ombuds Office at (local) 571-272-5555 (toll free) 888-786-0101 or PatentsOmbudsOffice@uspto.gov.
The following formal matters are noted:
Although not required by the Applicant, due to the presence of at least one color drawing or color photograph within the present application, the Examiner suggests that the following statement be added to the Specification directly after the Description of the Reproduction.
- - The file of this patent contains at least one drawing/photograph executed in color. Copies of this patent with color drawing(s)/photograph(s) will be provided by the Office upon request and payment of the necessary fee.- -
If not amended by the Applicant, this statement may be added by the USPTO upon publication.
Specification
The disclosure is objected to because of the following informalities:
Trademark: A logo, “Taylors of Harrogate Yorkshire Tea”, forming part of the claimed design is possibly a registered trademark. In order to overcome this objection, the specification should be amended to include a statement preceding the claim identifying the trademark forming part of the claimed design and the name of the owner of the trademark. If the logo is not a registered trademark, a statement to that effect should be included in applicant’s response remarks in order to clarify the record. Please see MPEP 1512, subsection IV, for reference.
Descriptions of the Reproductions: The specification is objected to because it does not include brief descriptions of the drawing figures. An international design application designating the United States must include a specification as prescribed by 35 U.S.C. 112 and preferably include a brief description of the reproduction pursuant to Rule 7(5)(a) describing the view or views of the reproductions. (37 CFR 1.1024). See MPEP 2920.04(a)(II) for more information on descriptions in the specification. For proper form and further clarity, applicant should add figure descriptions to the specification. The following descriptions are suggested:
- - 1.1 Front - -
- - 1.2 Bottom - -
- - 1.3 Rear - -
- - 1.4 Left Side - -
- - 1.5 Perspective View - -
- - 1.6 Right Side - -
Extraneous Description: The statement following the figure description that states [[The design for tea packaging box as shown and described.]] is extraneous information describing what is shown in the reproductions, which adds no new information to the understanding of the claimed design. 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. See In re Freeman, 23 App. D.C. 226 (App. D.C. 1904). In order to overcome this objection, The above phrase should be deleted in its entirety. See Hague Rule 7(5)(a), 37 CFR 1.1024, MPEP 2920.04(a) ll.
Appropriate correction is required.
Claim Rejections - 35 U.S.C. § 102(a)(1)
The claim is rejected under 35 U.S.C. 102(a)(1) as being anticipated by Great Britain Patent 6380910 (Citation “N”, page 1, on the attached PTO-892, further referred to as GB6379227) 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. GB6379227 was published on 24 July 2024 which is before the effective filing date of the claim on 17 January 2025.
The appearance of GB6379227 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.
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Claimed Design GB6379227
“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, 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 overcome this rejection by:
Perfecting the foreign priority by filing a certified priority document in the application (and an English language translation, if the document is not in English) (see 37 CFR 1.55(g)
OR
The applicant may provide convincing evidence (or filing an affidavit or declaration under 37 CFR 1.130(a) or 1.130(b)) that the disclosure was made one year or less before the effective filing date of the claimed invention, and 1) the disclosure was made by the inventor, a joint inventor, or by another who obtained the subject matter directly or indirectly from the inventor or joint inventor; or 2) before such disclosure, the subject matter disclosed had been publicly disclosed by the inventor or a joint inventor or another who obtained the subject matter disclosed directly or indirectly from the inventor or joint inventor. For guidance, please see MPEP § 717.01.
Claim Rejections - 35 U.S.C. § 102(a)(1)
The claim is rejected under 35 U.S.C. 102(a)(1) as being anticipated by Great Britain Patent 6379228 (Citation “R”, page 2, on the attached PTO-892, further referred to as GB6379228) 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. GB6379228 was published on 24 July 2024 which is before the effective filing date of the claim on 17 January 2025.
The appearance of GB6379228 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.
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Claimed Design GB6379228
“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, 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)).
In this instance, the differences in the color of the two dimensional graphic element is insufficient to patentably distinguish the designs. Please note that the patentability of design may not rest on color alone; claim distinguishing over reference only on basis of coloring is rejected since selection of different color would not produce any basic alteration or unexpected appearance. See In re Iknayan et. Al. 124 USPQ 507 (1960). It is regarded as something within the skill of those manufacturing these articles to vary the color as desired. See In re Mains 461 O.G. 254; 77 F(2d) 533; 25 USPQ 407 (1935).
Applicant may overcome this rejection by:
Perfecting the foreign priority by filing a certified priority document in the application (and an English language translation, if the document is not in English) (see 37 CFR 1.55(g)
OR
The applicant may provide convincing evidence (or filing an affidavit or declaration under 37 CFR 1.130(a) or 1.130(b)) that the disclosure was made one year or less before the effective filing date of the claimed invention, and 1) the disclosure was made by the inventor, a joint inventor, or by another who obtained the subject matter directly or indirectly from the inventor or joint inventor; or 2) before such disclosure, the subject matter disclosed had been publicly disclosed by the inventor or a joint inventor or another who obtained the subject matter disclosed directly or indirectly from the inventor or joint inventor. For guidance, please see MPEP § 717.01.
Rejection - 35 U.S.C. § 103
The claim is rejected under 35 U.S.C. 103 as being unpatentable over Great Britain Patent 6379228 (Citation “R”, page 2, on the attached PTO-892, further referred to as GB6379228, which was patented on 24 July 2024) in view of Great Britain Patent 6379239 (Citation “N”, page 2 on the attached PTO-892, further referred to as GB6379239, which was patented on 24 July 2024). Both prior art references were patented before the effective filing date of the claim on 01 January 2025.
Although the invention is not identically disclosed or described as set forth in 35 U.S.C. 102, if the differences between the claimed invention and the prior art are such that the claimed invention as a whole would have been obvious before the effective filing date of the claimed invention to a designer having ordinary skill in the art to which the claimed invention pertains, the invention is not patentable.
GB6379228 has an overall appearance with design characteristics that are visually similar to those of the claimed design.
These similarities include:
The overall size, proportions, and design characteristics of the design.
The overall size, proportions, and design characteristics of the graphics on all sides of the design.
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Claimed Design GB6379228 GB6379239
The claimed design differs from GB6379228 in that the claimed design has a brown color applied to the main graphics on the box and a red color applied to the rectangular graphic element connecting the logo on the top of the design to the front and back of the design .
GB6379239 shows a brown color applied to the main graphics on the box and a red color applied to the rectangular graphic element connecting the logo on the top of the design to the front and back of the design .
It would have been obvious to a designer of ordinary skill in the art before the effective filing date of the claimed design to modify GB6379228 with GB6379239 by applying a brown color to the main graphics on the box and a red color applied to the rectangular graphic element connecting the logo on the top of the design to the front and back of the design, as it is a common trend in food packaging to have a variety of colors to demark different flavors within a line of products in a brand.
Applicant may overcome this rejection by:
Perfecting the foreign priority by filing a certified priority document in the application (and an English language translation, if the document is not in English) (see 37 CFR 1.55(g)
OR
The applicant may provide convincing evidence (or filing an affidavit or declaration under 37 CFR 1.130(a) or 1.130(b)) that the disclosure was made one year or less before the effective filing date of the claimed invention, and 1) the disclosure was made by the inventor, a joint inventor, or by another who obtained the subject matter directly or indirectly from the inventor or joint inventor; or 2) before such disclosure, the subject matter disclosed had been publicly disclosed by the inventor or a joint inventor or another who obtained the subject matter disclosed directly or indirectly from the inventor or joint inventor. For guidance, please see MPEP § 717.01.
Rejection - 35 U.S.C. § 103
The claim is rejected under 35 U.S.C. 103 as being unpatentable over Great Britain Patent 6379239 (Citation “N”, page 2 on the attached PTO-892, further referred to as GB6379239, which was patented on 24 July 2024) in view of Great Britain Patent 6379227 (Citation “S”, page 1 on the attached PTO-892, further referred to as GB6379249, which was patented on 24 July 2024). Both prior art references were patented before the effective filing date of the claim on 17 January 2025.
Although the invention is not identically disclosed or described as set forth in 35 U.S.C. 102, if the differences between the claimed invention and the prior art are such that the claimed invention as a whole would have been obvious before the effective filing date of the claimed invention to a designer having ordinary skill in the art to which the claimed invention pertains, the invention is not patentable.
GB6379239 has an overall appearance with design characteristics that are visually similar to those of the claimed design.
These similarities include:
The overall size, proportions, and design characteristics of the design.
The overall size, proportions, and design characteristics of the graphics on all sides of the design.
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Claimed Design GB6379239 GB6379249
The claimed design differs from GB6379239 in that the claimed design has a pen and ink style graphic along the bottom, front, rear, and both sides of the packaging box.
GB6379249 shows the same pen and ink style graphic along the bottom, front, rear, and both sides of the packaging box.
It would have been obvious to a designer of ordinary skill in the art before the effective filing date of the claimed design to modify GB6379239 with GB6379249 by adding that same pen and ink style graphic along the bottom, front, rear, and both sides of the packaging box, as it is a common trend in food packaging with a variety of flavors within a line of a product, to have certain graphics that carry over to the whole line of flavors within the brand, in this particular case - the pen and ink style graphic.
Applicant may overcome this rejection by:
Perfecting the foreign priority by filling a certified priority document in the application (and an English language translation, if the document is not in English) (see 37 CFR 1.55(g)
OR
The applicant may provide convincing evidence (or filing an affidavit or declaration under 37 CFR 1.130(a) or 1.130(b)) that the disclosure was made one year or less before the effective filing date of the claimed invention, and 1) the disclosure was made by the inventor, a joint inventor, or by another who obtained the subject matter directly or indirectly from the inventor or joint inventor; or 2) before such disclosure, the subject matter disclosed had been publicly disclosed by the inventor or a joint inventor or another who obtained the subject matter disclosed directly or indirectly from the inventor or joint inventor. For guidance, please see MPEP § 717.01.
Discussion of the Merits of the Case:
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”, may be used for this purpose:
https://www.uspto.gov/patent/forms/forms-patent-applications-filed-or-after-september-16-2012
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.
If a pro se applicant or registered practitioner located outside of the United States wishes to communicate by telephone, it is suggested that such person email the examiner at darcey.gottschalk@uspto.gov to arrange a time and date for the telephone interview. Please include proposed days and times for the proposed call. When proposing a day/time for the interview, please take into account the examiner’s work schedule indicated in the last paragraph of this communication. The email should also be used to determine who will initiate the telephone call.
Email Communications
The merits of the application will not be discussed via email (or other electronic medium) unless appropriate authorization for internet communication 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.
When Responding to Official USPTO Correspondence
When responding to an official correspondence issued by the USPTO, including refusals, Ex Parte Quayle, Notice of Allowances, or Notice of Abandonments, please note the following:
The USPTO transacts business in writing. 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-application-process/applying-online/efs-web-guidance-and-resources
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-maintaining-patent/responding-office-actions
Conclusion
The claim stands rejected under 35 U.S.C. § 102, as set forth above.
The claim stands rejected under 35 U.S.C. § 103, as set forth above.
Cited Art
The prior art made of record and not relied upon is considered pertinent to applicant’s disclosure.
Examiner Note
Other cited references listed on the attached PTO-892:
GB6380910
GB6380926
GB6380915
GB6380922
GB6380916
GB6380913
GB6380911
GB6380930
GB6380917
GB6380923
GB6380928
GB6380921
GB6380919
GB6380918
GB6380929
GB6380927
GB6380912
GB6380931
GB6380920
GB6380914
The above cited references are cited but not applied under 35 USC §102(a)(1) or 35 USC §103 in order to reduce Applicant’s burden for reply to each and every rejection made in the Office action. In the event each of the references used in a rejection above are overcome, the references listed here are deemed to be potential 35 USC §102(a)(1) or 35 USC §103 references.
Applicant may PREEMPTIVELY overcome these potential rejections by:
If the date of publication of the prior art is AFTER the date of the claimed, but not perfected foreign priority, the Applicant may overcome the potential rejections, by: perfecting the foreign priority by filing a certified priority document in the application (and an English language translation, if the document is not in English) (see 37 CFR 1.55(g)
OR
If the date of publication of the prior art is BEFORE the date of the effective filing date / perfected foreign priority, then the Applicant may overcome the potential rejections, by: providing convincing evidence (or filing an affidavit or declaration under 37 CFR 1.130(a) or 1.130(b)) that the disclosure was made one year or less before the effective filing date of the claimed invention, and 1) the disclosure was made by the inventor, a joint inventor, or by another who obtained the subject matter directly or indirectly from the inventor or joint inventor; or 2) before such disclosure, the subject matter disclosed had been publicly disclosed by the inventor or a joint inventor or another who obtained the subject matter disclosed directly or indirectly from the inventor or joint inventor. For guidance, please see MPEP § 717.01.
Contact Information
Any inquiry concerning this communication or earlier communications from the Examiner should be directed to KATHERINE E. MORRIS whose telephone number is (571)272-9621. The Examiner can normally be reached M-F, 8-4 ET.
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, Wendy Arminio, can be reached on (571)270-0221. 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.
/K.E.M/
Examiner, Art Unit 2923
/JONATHAN J HAN/Primary Examiner, Art Unit 2912
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