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 .
OFFICE ACTION
Action on the Merits
112 (a) and (b) Paragraphs
The claim is rejected under 35 U.S.C. 112(a) and (b) or pre-AIA 35 U.S.C. 112, first and second paragraphs, as the claimed invention is not described in such full, clear, concise and exact terms as to enable any person skilled in the art to make and use the same, and fails to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor (or, for applications subject to pre-AIA 35 U.S.C. 112, the applicant) regards as the invention.
The claim is indefinite and nonenabling because of the following reasons:
The rectangle including the inner panels and words and numbers, “STARAY 38,”
appear non-enabled as the exact depth and dimensions of these shapes cannot be clearly understood. It is unclear if these shapes are recessed or raised on the bottom surface of the shoe. As the exact depth and dimensions cannot be clearly understood, applicant should place these shapes (A) in broken lines in view 1.5. Please see annotated print alphabet letter A for view 1.5. Correction is needed.
Annotated Print A:
View 1.5:
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The necessity for good reproductions in a design patent application cannot be overemphasized. As the reproductions 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 reproduction may be fatal to validity (35 U.S.C. 112,(a)). Moreover, an insufficient reproductions may have a negative effect with respect to the effective filing date of a continuing application.
Replacement Reproductions
Any amended replacement reproduction sheets should include all of the views appearing
on the immediate prior version of the sheet, even if only one view is being amended. The view
or view number of an amended reproduction should not be labeled as “amended.” If a
reproduction is to be canceled, the appropriate view must be removed from the replacement
sheet, and where necessary, the remaining views must be renumbered and appropriate changes
made to the brief description of the several views of the reproductions for consistency.
Additional replacement sheets may be necessary to show the renumbering of the remaining
views. 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.
When preparing new reproductions in compliance with the requirement therefor, care
must be exercised to avoid introduction of anything which could be construed to be new matter prohibited by 35 U.S.C. 132 and 37 CFR 1.121.
It is suggested that applicant may submit large, clear formal reproductions which show the details of the design clearly, accurately, and consistently in order that the examiner may be in a position to determine if the claim may be clarified without the addition of new matter (35 U.S.C. 132, 37 CFR 1.121). In the alternative, applicant may disclaim the areas or portions of the design which are considered indefinite and nonenabling by converting them to broken lines.
Failure to submit replacement correction sheets overcoming all of the deficiencies in the reproduction disclosure set forth above, or an explanation why the reproduction corrections or additional reproduction views are not necessary will result in the rejection of the claim under 35 U.S.C. 112(a) and (b) or pre-AIA 35 U.S.C. 112, first and second paragraphs, being made FINAL in the next Office action.
Clarity, consistency and correction of the claim are required in order to obviate this rejection.
The claim stands rejected under 35 U.S.C. 112, (a) and (b) paragraphs.
Claim Rejection - 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 titled “Shoe,” is rejected under 35 U.S.C. 102(a)(1) based upon a public use or sale or other public availability of the invention. The NPL document called, “Star World Line STARAY debuts in Milan: Reconstructing 3D fashion with next-generation technology,” by Mass Life Consumption shows a shoe of an identical design as that of the claimed design and was published in an online website prior to the filing date of the claim. The Sohu.com – publication has a public review date of May 28, 2024, which is prior to the filing date of the claim which was October 23, 2024.
The claim is rejected under 35 U.S.C. 102(a)(1) as being anticipated by the NPL document, “Star World Line STARAY debuts in Milan: Reconstructing 3D fashion with next-generation technology,” by Mass Life Consumption 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. The appearance of the shoe disclosed on Sohu.com is substantially the same as that of the claimed design. The ordinary observer test is the sole test for anticipation. 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 Novelty.
“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)).
The NPL document, “Star World Line STARAY debuts in Milan: Reconstructing 3D fashion with next-generation technology,” by Mass Life Consumption references the following name, “STARAY Xingshi Xian,” as the domestic brand and not the inventors, Jie Luo, Fangxu Zhong, Bo Fan, Baozhong Wu as the publishers, therefore it would not be readily apparent from the publication that it is by the inventors. The publication was properly treated as prior art under AIA 35 U.S.C. 102(a)(1). See MPEP 2153.01(a)
The Office has provided a mechanism for filing an affidavit or declaration (under 37 CFR 1.130) to establish that a disclosure is not prior art under AIA 35 U.S.C. 102(a) due to an exception in AIA 35 U.S.C. 102(b). See MPEP § 717. In the situations in which it is not apparent from the prior disclosure or the patent application specification that the prior disclosure is by the inventor or a joint inventor, the applicant may establish by way of an affidavit or declaration that a grace period disclosure is not prior art under AIA 35 U.S.C. 102(a)(1) because the prior disclosure was by the inventor or a joint inventor. MPEP § 2155.01 discusses the use of affidavits or declarations to show that the prior disclosure was made by the inventor or a joint inventor under the exception of AIA 35 U.S.C. 102(b)(1)(A) for a grace period inventor disclosure.
A 102(a)(1) rejection where the date of the reference is equal to or less than one year may be overcome by:
1) Applicant providing persuasive arguments that clearly show and describe the claimed design as patentably distinguishable from the prior art mentioned. In other words, the raised rejection can be overcome by evidence that the product in the prior art reference does not necessarily or inherently possess an integral characteristic of the applicant's claimed design;
and/or
2) Invoking either the 102(b)(1)(A) or 102(b)(1)(B) exceptions. See MPEP 2153.01 (a). See also MPEP § 717.01 (Affidavit or Declaration Under 37 CFR 1.130).
“Star World Line STARAY debuts in Milan: Reconstructing 3D fashion with next-generation technology,” by Mass Life Consumption-Sohu.com
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Application No. 35/525693
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Conclusion
This claim stands rejected under 35 U.S.C. 102(a)(1) as being anticipated by “Star World Line STARAY debuts in Milan: Reconstructing 3D fashion with next-generation technology,” by Mass Life Consumption, Sohu.com publication with a public review date published on May 28, 2024.
Objection to the Specification
Descriptions of the Reproductions
For clarity and accuracy, the descriptions of views 1.1 and 1.8 should be amended to read:
1.1: Front, Left and Top Perspective
1.8: Front, Right and Top Perspective
The descriptions in the specification filed on July 4, 2025 that reads, “Fig. 1.1 is a front, left and top perspective view of a shoe; . . .Fig. 1.8 is a front, right and top perspective view.” should be deleted since it duplicates the descriptions of the views already listed above as 1.1-1.8.
Reply Reminder
Applicant is reminded that any reply to this communication must be signed either by a patent practitioner (i.e., a patent attorney or agent registered to practice before the United States Patent and Trademark Office) or by the applicant. If the applicant is a juristic entity, the reply must be signed by a patent practitioner. See 37 CFR 1.33(b).
Discussion of the Merits of the Application
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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”, available at https://www.uspto.gov/patent/forms/forms-patent-applications-filed-or-after-september-16-2012, may be used for this purpose. 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 Elizabeth.Oswecki@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 (M-F 9-5 EST) indicated in the last paragraph of this communication.
Email Communication
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 official correspondence issued by the USPTO, including a notification of refusal, please note the following:
The USPTO transacts business in writing. All replies must be signed in accordance with 37 CFR 1.33(b). Pursuant to 37 CFR 1.33(b)(3), a reply submitted on behalf of a juristic applicant must be signed by an attorney or agent registered to practice before the USPTO. Applicants may submit replies to Office actions only by:
[Symbol font/0xB7] Online via the USPTO's Electronic Filing System‐Web (EFS‐Web) (Registered eFilers only) https://www.uspto.gov/patents/apply
[Symbol font/0xB7] Mail: Commissioner for Patents, P.O. Box 1450, Alexandria, VA, 22313‐1450
[Symbol font/0xB7] Facsimile to the USPTO's Official Fax Number (571‐273‐8300)
[Symbol font/0xB7] Hand‐carry to USPTO's Alexandria, Virginia Customer Service Window https://www.uspto.gov/patents/maintain/responding-office-actions
Conclusion
The claim stands rejected under 35 U.S.C. 112, (a) and (b) paragraphs.
The claimed design is patentable over the references cited. The art of record not relied upon is cited as cumulative art.
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Inquiries concerning PATENTABILITY/EXAMINATION of this application should be directed to Elizabeth Oswecki whose telephone number is 571-272-4335. The examiner can normally be reached on M-F 9-5 pm EST. Please note that, at this time, the examiner is prohibited from initiating or returning international telephone calls. If applicant wishes to communicate by telephone, the examiner may be reached by email, elizabeth.oswecki@uspto.gov to arrange a time for applicant to initiate a telephone interview.
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/ELIZABETH J OSWECKI/Primary Examiner, Art Unit 2912
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