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 .
Comment
The response and election received 01 June 2026 is acknowledged. Applicant requested the cancellation of Groups I, III, and IV with corresponding figure 1.1, 1.2, 4.1 - 4.3, 7.1, 7.2, 10.1, 10.2, 13.1 - 16.2, 19.1, 19.2, 22.1, 22.2, 25.1, 25.2, 28.1, 28.2, 31.1, 31.2, 34.1 - 34.3, 37.1, 37.2, 40.1 - 40.3, 43.1, 43.2. However, applicant has not provided new drawings and a new specification reflecting the cancellation of Groups I, III, and IV with corresponding figure 1.1, 1.2, 4.1 - 4.3, 7.1, 7.2, 10.1, 10.2, 13.1 - 16.2, 19.1, 19.2, 22.1, 22.2, 25.1, 25.2, 28.1, 28.2, 31.1, 31.2, 34.1 - 34.3, 37.1, 37.2, 40.1 - 40.3, 43.1, 43.2.
Comment Regarding the Restriction and Election
Applicant's 01 June 2026 election of Group II (Embodiments 2, 3, 5, 6, 8, 9, 11, 12, 17, 18, 20, 21, 23, 24, 26, 27, 29, 30, 32, 33, 35, 36, 38, 39, 41, 42, 44, 45 (pantyhose with text on mid-thigh)) which encompasses FIGS. 2.1-3.2, 5.1-6.3, 8.1-9.2, 11.1-12.2, 17.1-18.2, 20.1-21.3, 23.1-24.2, 26.1-27.2, 29.1-30.2, 32.1-33.2, 35.1-36.3, 38.1-39.2, 41.1-42.3, and 44.1-45.2 is acknowledged. The examiner erroneously included the images for embodiments 14 and 15 in the Group II images, not the list, and is clarifying embodiments 14 and 15 (FIGS. 14.1-15.3) are not included in the Group II election. Applicant's election does not indicate whether the election was made with or without traverse, but as no arguments to the restriction requirement were advanced, it is considered a response without traverse. See MPEP 818.01. Groups I, III, and IV are withdrawn from further consideration by the examiner, 37CFR 1.142(b), as being for the nonelected design.
Foreign Priority
The claim to priority to European Union Design Application Nos. EM015077835-0001 through EM015077835-0032 and EM015077835-0034 through EM015077835-0045, filed with the European Union Intellectual Property Office on 30 October 2024 is acknowledged. Certified copies of the foreign priority documents have been received and is accepted.
Objections to the Drawings
As set forth in MPEP 1503.02, Ex parte Asano, 201 USPQ 315, 317 (Bd. Pat. App. & Inter. 1978); Hadco Products, Inc. v. Lighting Corp. of America Inc., 312 F. Supp. 1173, 1182, 165 USPQ 496, 503 (E.D. Pa. 1970), vacated on other grounds, 462 F.2d 1265, 174 USPQ 358 (3d Cir. 1972) the drawings are objected due to the non-elected figures not being canceled by the applicant. Since an election was made, the non-elected Figures 1.1, 1.2, 4.1 - 4.3, 7.1, 7.2, 10.1, 10.2, 13.1 - 16.2, 19.1, 19.2, 22.1, 22.2, 25.1, 25.2, 28.1, 28.2, 31.1, 31.2, 34.1 - 34.3, 37.1, 37.2, 40.1 - 40.3, 43.1, 43.2 have been cancelled by the applicant but a new drawing set was not provided with the remaining views. A new drawing set is required.
Correction of the drawings is required.
Corrected drawing sheets are required in reply to the Office action to avoid abandonment of the application. 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. The figure or figure number of an amended drawing should not be labeled as “amended.” If a drawing 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 drawing 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 drawing sheet have been canceled must be presented in the amendment or remarks section that explains the change to the drawings. Each drawing 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.
The necessity for good drawings in a design patent application cannot be overemphasized. As the drawing constitutes the whole disclosure of the design, it is of utmost importance that it be so well executed both as to clarity of showing and completeness, that nothing regarding the design sought to be patented is left to conjecture. An insufficient drawing may be fatal to validity (35 U.S.C. 112(a) or pre-AIA 35 U.S.C. 112, first paragraph). Moreover, an insufficient drawing may have a negative effect with respect to the effective filing date of a continuing application.
Objections to the Title, Specification, and Claim
The title “Part of panty hose” is objectionable because, “part of” panty hose is not considered an identifiable object of manufacture, and, as such, is not an appropriate title in a design application. The title must be amended throughout the application, original oath/declaration excepted, to read as the following:
--- Panty Hose ---
Objections to the Specification
The examiner objects to the Design No./Product(s) and the Description of the Reproduction(s) because they do not correctly reflect the canceled figure views of Groups I, III, and IV with corresponding figures 1.1, 1.2, 4.1 - 4.3, 7.1, 7.2, 10.1, 10.2, 13.1 - 16.2, 19.1, 19.2, 22.1, 22.2, 25.1, 25.2, 28.1, 28.2, 31.1, 31.2, 34.1 - 34.3, 37.1, 37.2, 40.1 - 40.3, 43.1, 43.2. Since a new specification was not included upon election, the previous specification has to be relied upon for understanding of what is being shown in the figure views. Not crossing out the Design No./Product(s) and the Description of the Reproduction(s) of the unelected figures 1.1, 1.2, 4.1 - 4.3, 7.1, 7.2, 10.1, 10.2, 13.1 - 16.2, 19.1, 19.2, 22.1, 22.2, 25.1, 25.2, 28.1, 28.2, 31.1, 31.2, 34.1 - 34.3, 37.1, 37.2, 40.1 - 40.3, 43.1, 43.2 creates uncertainty as to exactly what is being described. A new specification clearly showing the unelected views as crossed-out or not included is required.
The phrase “Santa’s Favorite” forming part of the claimed design is a registered trademark (Registration #6540538) owned by Xiulu Long, a China based entity. The trademark was filed on 06 March 2020 with serial number (#88824391) and registered on 26 October 2021. The specification must be amended to include a statement preceding the claim identifying the trademark material forming part of the claimed design and the name of the owner of the trademark.
The description of the human body in the photographs as being for "illustrative purposes only" is objectionable. The body should expressly identify what is represented in addition to defining their relationship to the claimed design (MPEP 1503.01(II)). Specifically, the phrase "illustrative purposes only" does not explicitly state what the body represents. In the present application, it appears that the body is environment. Accordingly, the description should be amended to read as follows:
--- The human bodies shown in the reproductions depict environment and form no part of the claimed design. ---
35 U.S.C. 102(a)(1) Rejection
A design may be embodied in less than the entire article, 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.
The following is a quotation of the appropriate paragraphs of 35 U.S.C. 102 that form the basis for the rejections under this section made in this Office action:
A person shall be entitled to a patent unless –
(a)(1) 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 claim is rejected under 35 U.S.C. 102(a)(1) as clearly anticipated by the Amazon Statement Tights, dated 07 February 2024, 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, dated 30 October 2024.
The appearance of the Amazon Statement Tights, dated 07 February 2024, is substantially the same as that of the claimed design, dated 30 October 2024. The ordinary observer test is the sole test for anticipation. International Seaway Trading Corp. v. Walgreens Corp., 589 F.3d 1233, 1237-38, 1240, 93 USPQ2d 1001 (Fed. Cir. 2009).
A comparison of the claimed design and the Amazon Statement Tights is below:
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1104
558
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974
467
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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 supra (citing Litton Sys., Inc. v. Whirlpool Corp., 728 F.2d at 1444).
35 U.S.C. 102(a)(1) Rejection
A design may be embodied in less than the entire article, 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.
The following is a quotation of the appropriate paragraphs of 35 U.S.C. 102 that form the basis for the rejections under this section made in this Office action:
A person shall be entitled to a patent unless –
(a)(1) 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 claim is rejected under 35 U.S.C. 102(a)(1) as clearly anticipated by the Amazon Statement Tights dated 30 January 2024, 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, dated 30 October 2024.
The appearance of the Amazon Statement Tights, dated 30 January 2024, is substantially the same as that of the claimed design, dated 30 October 2024. The ordinary observer test is the sole test for anticipation. International Seaway Trading Corp. v. Walgreens Corp., 589 F.3d 1233, 1237-38, 1240, 93 USPQ2d 1001 (Fed. Cir. 2009).
A comparison of the claimed design and the Amazon Statement Tights is below:
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798
406
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991
475
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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 supra (citing Litton Sys., Inc. v. Whirlpool Corp., 728 F.2d at 1444).
35 U.S.C. 102(a)(1) Rejection
A design may be embodied in less than the entire article, 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.
The following is a quotation of the appropriate paragraphs of 35 U.S.C. 102 that form the basis for the rejections under this section made in this Office action:
A person shall be entitled to a patent unless –
(a)(1) 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 claim is rejected under 35 U.S.C. 102(a)(1) as clearly anticipated by the YouTube Statement Tights, dated 18 June 2024, 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, dated 30 October 2024.
The appearance of the YouTube Statement Tights, dated 18 June 2024, is substantially the same as that of the claimed design, dated 30 October 2024. The ordinary observer test is the sole test for anticipation. International Seaway Trading Corp. v. Walgreens Corp., 589 F.3d 1233, 1237-38, 1240, 93 USPQ2d 1001 (Fed. Cir. 2009).
A comparison of the claimed design and the YouTube Statement Tights is below:
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671
406
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890
466
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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 supra (citing Litton Sys., Inc. v. Whirlpool Corp., 728 F.2d at 1444).
---
Conclusion
The claim stands rejected under 35 U.S.C. 102(a)(1), as set forth above.
Contact Information
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Christen P. Brown-Lorrig whose telephone number is (571)272-2986. The examiner can normally be reached on Monday through Friday from 9am to 5pm.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Michelle Wilson can be reached at (571) 272-7639. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/CHRISTEN PILAR BROWN-LORRIG/
Examiner, Art Unit 2912
Prosecution Insights