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 to the claim are sufficient to overcome the previous objections and rejection under 35 U.S.C. 112(a) and (b) from the 24 October 2025 Non-Final Rejection. However, after further review of the Reproductions, there are new drawing objections that are addressed below.
Response to Arguments
Applicant’s arguments to the claim are found to be sufficient to overcome the rejections under 35 U.S.C. § 102(a)(1) from the 24 October 2025 Non-Final Rejection. However, the Examiner has determined that a new Non-Final Rejection is necessitated.
Reproductions
The reproductions are objected to for the following reason:
Reproduction Inaccuracies: The reproductions are inaccurate within the disclosure.
There are inconsistencies / inaccuracies, in each embodiment throughout the disclosure that illustrates the design in an assembled state, when compared to that same design in an unassembled state. The assembled state of each of the embodiment: 1.1-1.6, 3.1-3.6, 5.1-5.6, and 7.1-7.6, inaccurately omit the thickness of the material that would be seen in these assembled states. Please see the illustration below for an example, and note that this objection is applicable to all of the Reproductions throughout the disclosure that show a design in an assembled state, and is not limited to the examples below. Consistency and accuracy are required. Please see US Patents D471,464, D634,625, D635,018, or D835,977 for examples of similar packaging that accurately illustrates the thickness of the material when in an assembled state. In order to overcome this objection, amended Reproductions should be submitted that accurately and consistently illustrate the claimed designs. Please note that 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.
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partial views of 6.1 5.1 5.5
This objection is applicable to all of the Reproductions throughout the disclosure shown in an assembled state.
Rejection - 35 U.S.C. § 103
Applicant has claimed the design embodied in less than an 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). This practice also opens to the Examiner the liberty of relying upon the features of a reference embodied in less than the entire article. The Examiner has done so in the following rejection.
From what is understood of the claim, the claim is rejected under 35 U.S.C. 103 as being unpatentable over US Patent D932889 (Citation “E”, page 4, on the previous PTO-892, published on 12 October 2021) in view of US Patent D844,430 (Citation “F”, on the previous PTO-892, published on 02 April 2019). Both of these designs were patented before the effective filing date of the foreign priority for the claim on 15 November 2023.
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.
US Patent D932889 has an overall appearance with design characteristics that are visually similar to those of the claimed design.
These similarities include:
The overall design elements and characteristics. See “A” below.
Top and side panels with three segmented surfaces. See “B”, “C”, and ”D” below.
A rectangular top and bottom of the design. See “E” below.
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Claimed Design US Patent D932889
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Claimed Design US Patent D932,889 US Patent D844,430
The claimed design differs from US Patent D932889 in that the claimed design has a wider width in the middle design element in relationship to the front and back panels. See “F” above. Also, the proportions (width to depth) of the designs are slightly different. See “G” above.
US Patent D844,430 shows a wider width in the middle design element in relationship to the
front and back panels. See “F” above. Please note that this design feature, of having a wider width in the middle design element in relationship to the front and back panels, can also be taught by JP1471494 (Citation “N”, page 1, on the previous PTO-892, patented on 10 June 2013).
In regards to the slight change of proportions of the width to depth, see “G” above, case law states that the presence of invention is as essential to granting of design patent as to granting of mechanical patent; obvious changes in arrangement and proportioning are no more patentable in one case than in the other. In re Stevens 624 O.G. 366; 81 USPQ 362(1949). It would have been well within the skill of an ordinary designer to modify the width to depth proportions of the design as alterations in the proportions of packaging is commonplace in the field of packaging for foodstuffs. Please see the examples of this commonplace modifications in the proportions of design elements throughout the prior art references cited in the PTO-892. Further, these minute differences in the proportions of the design elements are considered de minimis in that the net effect of such nuanced differences does not affect the appearance of the claimed design as a whole and the impression that the design would make to the eye of a designer of ordinary skill.
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 US Patent D932889 with US Patent D844,430 by widening the design element in relationship to the front and back panel on the top of the designs.
Rejection - 35 U.S.C. § 103
Applicant has claimed the design embodied in less than an 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). This practice also opens to the Examiner the liberty of relying upon the features of a reference embodied in less than the entire article. The Examiner has done so in the following rejection.
After further analysis of the claimed design, the claim is rejected under 35 U.S.C. 103 as being unpatentable over JP1471494 (Citation “N”, page 1, on the previous PTO-892, patented on 10 June 2013) in view of US Patent D915,196 (Citation “A”, page 4, on the previous PTO-892, published on 06 April 2021). Both of these designs were patented before the effective filing date of the foreign priority for the claim on 15 November 2023.
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.
JP1471494 has an overall appearance with design characteristics that are visually similar to those of the claimed design.
These similarities include:
The overall design elements and characteristics. See “A” below.
Top and side panels with three segments. See “B”, “C”, and ”D” below.
A rectangular bottom of the design. See “E” below.
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Claimed Design JP1471494
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Claimed Design US Patent D915,196
The claimed design differs from JP1471494 in that the claimed design has a narrower width than depth in the design. See “F” above. Also, the proportions (width to depth) of the designs are slightly different. See “G” above.
US Patent D915,196 shows a narrower width than depth in the design.
In regards to the slight change of proportions of the width to depth, see “G” above, case law states that the presence of invention is as essential to granting of design patent as to granting of mechanical patent; obvious changes in arrangement and proportioning are no more patentable in one case than in the other. In re Stevens 624 O.G. 366; 81 USPQ 362(1949). It would have been well within the skill of an ordinary designer to modify the width to depth proportions of the design as alterations in the proportions of packaging is commonplace in the field of packaging for foodstuffs. Please see the examples of this commonplace modifications in the proportions of design elements throughout the prior art references cited in the PTO-892. Further, these minute differences in the proportions of the design elements are considered de minimis in that the net effect of such nuanced differences does not affect the appearance of the claimed design as a whole and the impression that the design would make to the eye of a designer of ordinary skill.
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 JP1471494 with US Patent D915,196 by modifying the width to be narrower than depth.
Rejection - 35 U.S.C. § 103
Applicant has claimed the design embodied in less than an 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). This practice also opens to the Examiner the liberty of relying upon the features of a reference embodied in less than the entire article. The Examiner has done so in the following rejection.
From what is understood of the claim, the claim is rejected under 35 U.S.C. 103 as being unpatentable over US Patent D926,030 (Citation “A”, page 1, on the attached PTO-892, which was patented on 27 July 2021) in view of US Patent 11745903-B2 (Citation “B”, page 1, on the attached PTO-892, published on 05 September 2023) and JP1471494 (Citation “N”, page 1, on the previous PTO-892, patented on 10 June 2013). All of these designs were patented before the effective filing date of the foreign priority for the claim on 15 November 2023.
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.
US Patent D926,030 has an overall appearance with design characteristics that are visually similar to those of the claimed design.
These similarities include:
The overall design elements and characteristics. See “A-L”
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Claimed Design US Patent D926,030
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Claimed Design US Patent 11,745,903 B2
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Claimed Design JP1471494
The claimed design differs from US Patent D926,030 in the proportions in the overall length and width of the design. See “M” above. Also, the inclined edge in the claimed design is at a different angle resulting in a larger front panel. See “N” above.
US Patent 11745903-B2 shows the same proportions in the overall length and width of the
design. See “M” above.
JP1471494 shows the same angle of the inclined edge in the claimed design and the same size of the front panel. See “N” above
Any other slight modification in the proportions of the design elements in relationship to each other are seen as obvious modifications and well within the skill of an ordinary designer. Case law states that the presence of invention is as essential to granting of design patent as to granting of mechanical patent; obvious changes in arrangement and proportioning are no more patentable in one case than in the other. In re Stevens 624 O.G. 366; 81 USPQ 362(1949). Further, it would have been well within the skill of an ordinary designer to modify the proportions of the design elements as it is commonplace in the field of packaging to modify the height, width, and depth of the packaging. Further, these minute differences in the proportions of the design elements are considered de minimis in that the net effect of such nuanced differences does not affect the appearance of the claimed design as a whole and the impression that the design would make to the eye of a designer of ordinary skill.
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 US Patent D926,030 with US Patent 11,745,903 B2 and JP1471494 by modifying the proportions in the overall length and width of the design and by modifying the angle of the inclined therefore resulting in a larger front panel.
Replacement Reproductions
Corrected reproductions are required in reply to the Office action to avoid abandonment of the
application. Any amended replacement reproduction 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 a reproduction figure is to be canceled, the appropriate figure must be removed
from the replacement sheet, and where necessary, the remaining figures must be renumbered
and appropriate changes made to the brief description of the several views of the drawings for
consistency. Additional replacement sheets may be necessary to show the renumbering of the
remaining figures. If all the figures on a reproduction 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 reproduction sheet have been
canceled must be presented in the amendment or remarks section that explains the change to
the drawings. Each reproduction 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.
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. § 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:
US-D902,709 S
US-D832,099 S
US-D717,647 S
US-D932,892 S
US-D932,885 S
US-2021/0323718 A1
US-2021/0237925 A1
US-D926,570 S
US-D915,196 S
US-D835,987 S
US-D968,954 S
JP1471494
TNL201796788
GB90056351580019
CN306222156
EMV005635158-0019
WOD200852
CN304326238
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.
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, 9-5 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 2934
/ANDREW KERR/ Primary Examiner, Art Unit 2921
Prosecution Insights