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 .
Response to Amendments
Applicant's amendments filed 18 June 2026 to the Specification have been considered and are found to be sufficient to overcome the previous objections to the claim.
Examiner's Comment
After further analysis, discussions with Supervisory Patent Examiners, and guidance received from the Office of Patent Legal Administration (OPLA), it has been determined that the previous Statement Under 37 CFR 3.73(c) alone is insufficient to overcome the previous rejections under 35 U.S.C. § 102(a)(1) and 35 U.S.C. § 103 to the claim. Additionally, it has been determined that the claim for foreign priority has not been perfected. Please see the additional comments and guidance below.
Foreign Priority
There was a filing of the certified copy of the Foreign Application on 05 May 2026, the claim for priority under 35 USC 119(b) and 37 CFR 1.55. However, priority has not been perfected, and the claim is currently not entitled to the benefit of the earlier filing date of GB patent.
MPEP § 216 states that,
“If the nonprovisional application and the certified copy of the foreign application do not name the same inventor or do not have at least one joint inventor in common, the priority date should be refused until the inconsistency is resolved. See also MPEP § 213.02.” MPEP § 216.
Response to Arguments
Applicant's arguments filed 18 June 2026 in regards to the rejections under 35 U.S.C. 102(a)(1) and 35 U.S.C. 103 are found to be insufficient to overcome these rejections. Therefore, the claim is again rejected, and is made final.
Although the originally filed claim has the same assignee as listed in the reference, that does not prevent a rejection under 35 U.S.C. 102(a)(1) and 35 U.S.C. 103. For references to be disqualified, they must share a same inventor with the claim. Please note that if there are other inventors within the prior art reference, then there should be a sufficient explanation as to the reasons why other inventors are omitted in this application. Please also note that an assignee or company is never an inventor, no matter if the inventor transfers rights to that assignee, it’s still not an inventor for disqualification under 102(b)(1) purposes.
In order to overcome these rejections to the claim, please reference MPEP 2152.06, which explains that a Declaration / Affidavit, or perfection of priority may overcome these rejections.
MPEP 2153.01(a) explains that a statement regarding a grace period inventor-originated public disclosure in the specification can serve to disqualify the reference.
“If the patent application specification as filed contains a specific reference to a grace period inventor-originated public disclosure, and an oath or declaration under 37 CFR 1.63 from the inventor or the appropriate joint inventor(s) has been made of record, the Office will consider it apparent from the specification that the grace period public disclosure is attributable to the inventor or a joint inventor, provided there is a sufficient explanation of why the exception applies to a particular disclosure and there is no other evidence to the contrary.”
If a statement is not included in the specification upon filing, the Applicant should use 37 CFR 1.130(a) to submit such information after filing.
In conclusion, the assignee statement is incomplete in establishing that the GB prior art references are inventor-originated. Therefore, in order to overcome these rejections, the Examiner suggest that 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. Please note that that MPEP § 2155.01 and MPEP § 2155.02 does not require that the inventor sign the declaration, but as per MPEP § 717.01(c), I, “[a]nyone who has knowledge of the facts discussed in the declaration may sign”. What evidence is necessary to show that the disclosure is an inventor-originated disclosure requires case-by-case treatment.
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 GB6380910) 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. GB6380910 was published on 06 August 2024 which is before the effective filing date of the claim on 17 January 2025.
The appearance of GB6380910 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 GB6380910
“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 6380911 (Citation “P”, page 1, on the attached PTO-892, further referred to as GB6380911) 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. GB6380911 was published on 06 August 2024 which is before the effective filing date of the claim on 17 January 2025.
The appearance of GB6380911 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 GB6380911
“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 6380911 (Citation “P”, page 1, on the attached PTO-892, further referred to as GB6380911, which was patented on 06 August 2024) in view of Great Britain Patent 6380922 (Citation “O”, page 1 on the attached PTO-892, further referred to as GB6380922, which was patented on 06 August 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.
GB6380922 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 GB6380911 GB6380922
The claimed design differs from GB6380911 in that the claimed design has a purple 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 .
GB6380922 shows a purple 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 GB6380911 with GB6380922 by applying a purple 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 6380922 (Citation “O”, page 1 on the attached PTO-892, further referred to as GB6380922, which was patented on 06 August 2024) in view of Great Britain Patent 6379227 (Citation “R”, page 1 on the attached PTO-892, further referred to as GB6379227, 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.
GB6380922 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 GB6380922 GB6379227
The claimed design differs from GB6380922 in that the claimed design has a pen and ink style graphic along the bottom, front, rear, and both sides of the packaging box.
GB6379227 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 GB6380922 with GB6379227 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.
Conclusion
The claim stands rejected under 35 U.S.C. 103. 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 extension fee 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.
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
/GEORGE J ULSH/Supervisory Patent Examiner, Art Unit 2922
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