FINAL ACTION
General Information
The merits of this case have been carefully examined again in light of Applicant's response received 6/22/2026. The rejection of record under 35 USC § 112 (a) and (b) has been overcome by Applicant's amendment. However, the rejection of record under 35 USC § 102 has not been overcome by Applicant's amendment and is hereby repeated and made FINAL.
Drawings
The drawings are objected to for the following reason/s:
A. The broken lines in the replacement drawings are objected to for a lack of clarity because they are not consistently spaced and dashed. Some areas of the broken line disclosure in replacement figures 1.9 and 1.10 have overly long segments that must be more clearly spaced and dashed. Specifically, the chain portion of the strap has been amended in an attempt to convert it to broken lines, but the amendment is roughly done and the chain may still be confused as solid line disclosure. Based on Applicant’s remarks and the amendment to the specification, the entire chain carrying strap is understood as forming no part of the claim and should be clearly shown in broken line for clarity. Replacement figures 1.9 and 1.10 must be amended so that the broken lines depicting a the carrying strap are clearly dashed so that they are not confused as solid line disclosure on the printed patent. See below:
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415
542
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B. Replacement figures 1.9 and 1.10 are inconsistent in size with the original figures. It appears as though the replacement figures have been foreshortened, as all of the features are consistently “squeezed” in the same manner. This makes the bag appear wider in the original figures and taller in the replacements. For clarity, replacement figures 1.9 and 1.10 must be amended so that they show the width and height of the claimed design consistently with what is shown in the original figures. See below:
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Corrected drawing sheets in compliance with 37 CFR 1.121(d) 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.
When preparing new or replacement drawings, be careful to avoid introducing new matter. New matter is prohibited by 35 U.S.C. 132 and 37 CFR 1.121(f).
Claim FINAL Refusal - 35 USC § 102
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 AGAIN and FINALLY rejected under 35 U.S.C. 102(a)(1) as being anticipated by Anouk Hammered Leather Envelope Clutch Bag (Akris on neimanmarcus.com, reviewed on 11/8/2018), 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.
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The appearance of Akris 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.
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).
Under this standard, the appearance of Akris is substantially the same as that of the claimed design. That is, the appearance of the claimed design is deceptive to the extent that it would induce an ordinary observer to purchase it supposing it to be the Akris.
Examiner' s response to remarks filed
Applicant’s arguments in rebuttal of the rejection of record have been carefully considered but are found unconvincing.
In the remarks, Applicant argues that the applied reference (Akris) was a “prototype” that was “modified in many details”. This is unconvincing because the Akris reference shows the design for sale on the market. By definition a “prototype” generally refers to an early, working sample of a product; not a fully developed product taken to market. The remarks fail to point out the “many details” that have been allegedly modified from the Akris reference in the claimed design. Applicant states only two alleged differences:
1. The claimed design has a smooth, flat, unadorned surface while the Akris reference shows a hammered surface. The surface ornamentation of Akris does not obscure the design of the claimed article. The surface ornamentation is a mere indicium that does not override the underlying design. The subject matter of the claimed design is common to that of the Akris design. In re Daniels 46 USPQ2d 1788 (CAFC 1989). Further, any difference in materials of manufacture between the present application and the prior art are not differences of design. HYPERLINK "file:///\\w-pattr-001\HTML\design_case_law\ACE%20FASTENER%20CORPORATION%20v.%20UNITED%20STATES%20et%20al..rtf"Ace Fastener Corp. v. U.S. 125 USPQ 143 (1960).
2. The height of the claimed design is greater than that of the Akris reference. This is untrue. The proportions of the claimed design and the Akris reference are the same. Applicant has not demonstrated any evidence of this claim. Further, even if the proportions were slightly different, 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).
Conclusion
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 date of this final action.
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/S.L.B./
Examiner, Art Unit 2913
/JONATHAN J HAN/Primary Examiner, Art Unit 2912
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