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 .
Multiple Embodiments – No Restriction Required
This application discloses the following embodiments:
Embodiment 1 - Figs. 1.1-1.7
Embodiment 2 - Figs. 2.1-2.9
Multiple embodiments of a single inventive concept may be included in the same design application only if they are patentably indistinct. See In re Rubinfield, 270 F.2d 391, 123 USPQ 210 (CCPA 1959). Embodiments that are patentably distinct from one another do not constitute a single inventive concept and thus may not be included in the same design application. See In re Platner, 155 USPQ 222 (Comm'r Pat. 1967).
The above identified embodiments are considered by the examiner to present overall appearances that are basically the same. Furthermore, the differences between the appearances of the embodiments are considered minor and patentably indistinct, or are shown to be obvious in view of analogous prior art cited. The examiner notes the two designs (embodiments) appear to be identical, except for illustration style (photographs versus line drawings) and the inherent differences that occur when comparing a manufactured product and a stylized drawing, and the broken line logo portions of the article. Accordingly, they are deemed to be obvious variations and are being retained and examined in the same application. Any rejection of one embodiment over prior art will apply equally to all other embodiments. See Ex parte Appeal No. 315-40, 152 USPQ 71 (Bd. App. 1965). No argument asserting patentability based on the differences between the embodiments will be considered once the embodiments have been determined to comprise a single inventive concept. Failure of applicant to traverse this determination in reply to this action will be considered an admission of lack of patentable distinction between the above identified embodiments.
Objection to the Specification
The feature description of the specification is objected to because the broken line description is not fully descriptive of the broken lines in the drawing. The description is overly generic by stating the lines are illustrative; all elements of a drawing are inherently illustrative and therefore the statement does not clarify the intent of the broken lines.
In US Design Patent practice, broken lines typically are used to illustrate portions of the article or environment of the article forming no part of the claimed design, or boundaries of the claim forming no part thereof. In the instant application the broken lines appear to show portions of the article (logos) in the first embodiment. Therefore, to overcome the objection, and amendment to the broken line description is suggested:
--features shown in broken lines illustrate portions of the bag for cosmetics that do not form part of the claimed design. –
Claim Rejections - 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 rejected under 35 U.S.C. 102(a)(1) as being anticipated by Video on tiktok (tiktok) 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 tiktok is substantially the same as that of the claimed design. The ordinary observer test is the sole test for anticipation. Int’l Seaway Trading Corp. v. Walgreens Corp., 589 F.3d 1233, 1237-38, 1240 (Fed. Cir. 2009).
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Tiktok Fig. 2.2
“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 any attempt to overcome the rejection with the filing of an affidavit under 37 CFR 1.130(a), the affidavit should include an unequivocal statement that the inventor herein is the inventor of the design shown in the reference, and provide an explanation of how the design was obtained from the inventor by the publisher of the reference.
Conclusion
Accordingly, the claim stands rejected under 35 USC 102(a)(1), as set forth above.
Correspondence with the USPTO
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
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
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Responding to Official USPTO Correspondence
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Online via the USPTO's Electronic Filing System (Patent Center) (Registered eFilers only)
https://www.uspto.gov/patents/apply
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/maintain/responding-office-actions
Contact Information
Any inquiry concerning this communication or earlier communications from the examiner should be directed to CAITLIN A LAVERTY whose telephone number is (571)272-9387. The examiner can normally be reached Monday - Friday 7 a.m. - 3:30 p.m.
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, 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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/CAITLIN A LAVERTY/Examiner, Art Unit 2912
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