DETALED 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 .
Examiner’s Comment
The merits of this case have been carefully reviewed in light of the applicant’s amendment received on 08/13/2025.
Restriction/Election
In the applicant response filed on 08/13/2026, an election was made without traverse to prosecute the design of Group I, reproductions 1.1-1.4. Group II, reproductions 2.1-2.5, is withdrawn from further consideration by the examiner, 37 CFR 1.142(b), as being for nonelected designs. The applicant’s amendment has canceled the nonelected embodiments from the drawings and specification.
Refusals
Claim Refusal: 35 U.S.C. § 112(a) and (b)
The claim is refused under 35 U.S.C. 112(a) and (b), 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 regards as the invention.
The appearance of the screw features shown in reproductions 1.2-1.4, show screw features that have a different and inconsistent appearance. Reproduction 1.2 shows the screw feature with black shading and without details, however, reproductions 1.2 and 1.4 show details, however the details are also unclear in appearance. The exact appearance of these features cannot be understood. Applicant may wish to convert these features to broken line to overcome this part of the refusal. See annotated reproductions below:
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Reproduction 1.2
Reproduction 1.3
Reproduction 1.3 shows circular features that are shaded in black. The depth of these areas is unclear as they could be raised, recessed or flat. The exact appearance and three-dimensional configuration of these features cannot be fully understood and the features noted below are subject to speculation. Applicant should consider converting the features to broken line and removing them from the claim. Clarity is required. See annotated figure below:
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Reproduction 1.3
Reproduction 1.3 shows circular features on the top of the cupboard that that are unclear in their appearance. The depth of these areas are unclear as they could be raised, recessed or flat. The exact appearance and three-dimensional configuration of these features cannot be fully understood and the features noted below are subject to speculation. Applicant should consider converting the features to broken line and removing them from the claim. Clarity is required. See annotated figure below:
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Reproduction 1.3
For the reasons outlined, the claimed design is in fact subject to multiple interpretations, and one of ordinary skill in the art would not be able to reproduce the design without the use of conjecture and is therefore indefinite. This renders the claim non-enabled.
To overcome this refusal, it is suggested that the reproductions be amended to show the design clearly and consistently in all views, and to show crisp, clean, clear lines. Any amendment to the claim must meet the written description requirement of 35 USC 112(a). That is, it must be apparent that applicant was in possession of the amended design at the time of filing. This pertains to the addition or removal of parts of the design, as well as the conversion of solid lines to broken lines and vice versa. See 35 USC 132 and 37 CFR 1.121(f) for new matter.
Replacement Reproductions
A response is required in reply to the Office action to avoid abandonment of the application. If corrected reproductions are submitted in response to this Office action, they must be in compliance with 37 CFR 1.121(d). 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 reproduction 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 reproduction s 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 reproduction 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 reproduction s. 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.
Claim Refusal: 5 U.S.C. 102(a)(1)
The claim as refused above is indefinite because of features that are not fully described. However, the ornamental appearance of the claim is sufficient for comparison with the prior art. Accordingly, the claim is also refused under 35 USC 102, as follows. See MPEP 2143.03(I).
The claim is refused under 35 U.S.C. 102(a)(1) as being anticipated by “Watoren WSCS1462 on de Vries elektro” (hereinafter NPL Reference U) 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.
Shown disclosed within NPL reference U is the appearance 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 hereinafter NPL Reference U is substantially the same as that of the claimed design. Furthermore, the effective filing date of the claimed invention is 07/18/2025; the first available date of hereinafter NPL Reference U is 02/25/2021. Accordingly, the refused under this statute is proper.
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Claimed Design
NPL Reference U
The claimed design differs from NPL Reference U in that it shows a different shape pull handle on the drawers, the thickness of the separating piece between the top drawer and the top compartment is thinner, the end of separating piece between the top drawer and the top compartment extends and ends on the exterior of the structure instead of ending before the exterior structure walls, and the shape of the functional vent feature on the top back of the cupboard is different.
The different shape pull handle is considered by the examiner to be a de minimis difference and does not differentiate NPL Reference U from the claimed design. See MPEP 1504.03, B. See Metallizing Engineering co. Inc. v. General Screw Machine Products Inc. 87 USPQ 312 (1950).
The difference in thickness of the separating piece between the top drawer and the top compartment is considered by the examiner to be a de minimis difference and does not differentiate NPL Reference U from the claimed design. See King Ventilating Co. V. St. James 26 F(2d) 357; CA 8 (1928).
The difference the end of separating piece between the top drawer and the top compartment extending and ending on the exterior of the structure instead of ending before the exterior structure walls is considered by the examiner to be a de minimis difference and does not differentiate NPL Reference U from the claimed design. See In re Stevens 624 O.G. 366; 81 USPQ 362 (1949).
The difference in the shape of the functional vent feature on the top back of the cupboard is considered by the examiner to be a de minimis difference and does not differentiate NPL Reference U from the claimed design. The functional features do not patentably distinguish a design. It has been settled in the courts that a design may contain both functional and ornamental elements, even though the scope of a design patent claim “must be limited to the ornamental aspects of the design.” See Ethicon Endo-Surgery, 796 F.3d at 1333
See MPEP 2152.06 for ways in which the refusal can be overcome.
Claim refusal: 35 U.S.C. 103
The claim as refused above is indefinite because of features that are not fully described. However, the ornamental appearance of the claim is sufficient for comparison with the prior art. Accordingly, the claim is also refused under 35 USC 103, as follows. See MPEP 2143.03(I).
The claim is refused under 35 U.S.C. 103 as being unpatentable over Watoren WSCS1462 on de Vries elektro” (hereinafter NPL Reference U).
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.
Disclosed within NPL U reference are design characteristics that are visually similar to those of the claimed design, in showing:
A rectangular shaped cupboard with two drawers and an open top compartment
Two inset drawers with long, horizontal pull handles, with the top drawer being shorter in height and the bottom drawer being taller in height
Four small feet on each corner of the cupboard
Having a functional vent on the top back of the cupboard
The claimed design differs from NPL Reference U in that it shows a different shape pull handle on the drawers, the thickness of the separating piece between the top drawer and the top compartment is thinner, the end of separating piece between the top drawer and the top compartment extends and ends on the exterior of the structure instead of ending before the exterior structure walls, and the shape of the functional vent feature on the top back of the cupboard.
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Claimed Design
NPL Reference U
It would have been obvious to a designer of ordinary skill before the effective filing date of the present claimed invention to modify NPL Reference U with a different shape pull handle on the drawers, a thinner separating piece between the top drawer and the top compartment, a separating piece between the top drawer and the top compartment extending and ending on the exterior of the structure instead of ending before the exterior structure walls, and a functional vent feature with circles on the top back of the cupboard because the simple substitution of one known design element for another is obvious.
It has been settled in the courts, that a change in trend does not override the underlying design because the claimed design is fully disclosed within the NPL reference U. See MPEP 1504.03, B. See Metallizing Engineering co. Inc. v. General Screw Machine Products Inc. 87 USPQ 312 (1950).
It has been settled in the courts, that a change in dimension does not override the underlying design because the claimed design is fully disclosed within the NPL reference U. See King Ventilating Co. V. St. James 26 F(2d) 357; CA 8 (1928).
It has been settled in the courts, that a change in arrangement and proportion does not override the underlying design because the claimed design is fully disclosed within the NPL reference U. See In re Stevens 624 O.G. 366; 81 USPQ 362 (1949).
It has been settled in the courts, that functional features do not patentably distinguish a design and does not override the underlying design because the claimed design is fully disclosed within the NPL reference U. See Ethicon Endo-Surgery, 796 F.3d at 1333
The claimed design would have no patentable distinction over the examiner’s combination of references.
Applicant is reminded that once the references are combined, the test of invalidity due to obviousness is left to the ordinary observer. “For design patents, the role of one skilled in the art in the obviousness context lies only in determining whether to combine earlier references to arrive at a single piece of art for comparison with the potential design or to modify a single prior art reference. Once that piece of prior art has been constructed, obviousness, like anticipation, requires application of the ordinary observer rest, not the view of one skilled in the art." International Seaway Trading Corp. v. Walgreens Corp., 589 F3d 1233, 93 USPQ2d 1001 (Fed. Cir. 2009
Conclusion
The claim stands refused under 35 U.S.C. 112(a) and (b), 35 U.S.C. 102(a)(1) and 35 U.S.C. 103 as set forth above.
Contact Information
Any inquiry concerning this communication or earlier communications from the examiner should be directed to ELISABETH M LANGE whose telephone number is (571)272-7424. The examiner can normally be reached M-F, 8 a.m. - 5 p.m. 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, Barbara Fox can be reached at (571) 272-4456. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/E.M.L./Examiner, Art Unit 2931
/MARY ANN CALABRESE/Primary Examiner, Art Unit 2931
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