DETAILED CORRESPONDENCE
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 .
Foreign Priority
Acknowledgment is made of applicant’s claim for foreign priority based on an application filed in Norway on February 24, 2025. It is noted, however, that applicant has not filed a certified copy of the 20250486 application as required by 37 CFR 1.55. In the case of a design application, the certified copy must be filed during the pendency of the application, unless filed with a petition under 37 CFR 1.55(g) together with the fee set forth in 37 CFR 1.17(g)(1), that includes a showing of good and sufficient cause for the delay in filing the certified copy of the foreign application. If the certified copy of the foreign application is filed after the date the issue fee is paid, the patent will not include the priority claim unless corrected by a certificate of correction under 35 U.S.C. 255 and 37 CFR 1.323.
Statement of Claim Interpretation
Examiner understands the three triangular corner brackets inside the planter box for outdoor use with seating that are only shown in reproduction 1.7 to have the same height and configuration as the triangular corner brackets in reproduction 1.1, 1.2, and 1.7. Examiner also understands the triangular feature on the inside wall in reproduction 1.1 to be surface indicia because there is no sidewall showing it is a hole.
Rejection Under 35 U.S.C. 112(a) and (b)
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 non-enabling for the following reasons:
The appearance of the claimed design cannot be understood because the exact configuration and position of the thin rectangular vertical feature on the right side of reproduction 1.7 cannot be determined from the view in which it appears. It is unclear if it is flat, angled or other and where it occurs.
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Reproduction 1.7 showing the feature that cannot be understood shaded in grey.
The appearance of the claimed design cannot be understood because the exact configuration of the center feature on the rectangular corner bracket shown in reproduction 1.3 cannot be determined from the view in which it appears. The claim lines are crowded and bleed together. It is unclear what is being shown and whether it is surface indicia or other.
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Reproduction 1.3 showing the feature that cannot be understood.
In order to overcome this rejection, the scope and appearance of the claim should be clarified. It is recommended to convert the above mentioned features in reproductions 1.7 and 1.3 to broken lines. The broken lines should be clearly visible at 100% scale. If portions are converted to broken lines, the following broken line statement should be added to the specification after the figure descriptions and before the claim: -- The portions of the planter box for outdoor use with seating shown in broken lines forms no part of the claimed design. --.
Any amendment must not introduce new matter and must meet the written description requirement of 35 U.S.C. 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 U.S.C. 132 and 37 CFR 1.121(f) for new matter.
Failure to submit replacement correction sheets overcoming all of the deficiencies in the reproductions 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) being made FINAL in the next Office action.
Replacement Reproduction Instructions
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 reproductions for consistency. Additional replacement sheets may be necessary to show the renumbering of the remaining figures. If all the figures on the 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 reproductions. 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 or replacement reproductions, be careful to avoid introducing new matter into the disclosure, prohibited by 35 U.S.C. 132 and 37 C.F.R. 1.121(f). Additionally, any amendment must meet the written description requirement of 35 U.S.C. 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 either the addition to, or the removal of, any elements shown in the original disclosure of the design.
General Information
The claim as rejected 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 rejected under 35 U.S.C. 102(a)(1), as follows. See MPEP 2143.03(I). Based on the understanding of the portions of the claimed design shown in solid line which are understood, the following rejection is applied:
Rejection under 35 U.S.C. 102(a)(1)
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 Design application no. 20250486 (Citation P on the attached PTO-892) 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. Design application no. 20250486 was published on July 7, 2025 in Norway, which predates the effective filing date of the instant application, August 22, 2025. (It is noted that Design application no. 20250486 does not identify an inventor, so the one year grace period exception cannot be determined by Examiner. See MPEP 1504.02 and 35 U.S.C. 102(b)(1)(A).)
The appearance of Design application no. 20250486 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.
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Claimed design (left) and Design application no. 20250486 (right).
“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)).
Conclusion
Accordingly, the claim stands rejected under 35 U.S.C. 112(a) and (b) and under 35 U.S.C. 102(a)(1), as set forth above. The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
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
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.
Responding to Official USPTO Correspondence
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:
To file and manage patent submissions online in Patent Center (available to registered users), visit: https://patentcenter.uspto.gov.
See the Patent Center Quick Start Guide for international design application submissions available at: https://www.uspto.gov/sites/default/files/documents/Patent_Center_User_Guide_September_2023.pdf.
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-actionsConclusion
Contact Information
Any inquiry concerning this communication or earlier communications from the examiner should be directed to GRACE DOYLE whose telephone number is (571)272-9605. The examiner can normally be reached Monday - Friday, 8 a.m. - 5 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, Sandra Snapp can be reached at (571)272-8364. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/GRACE DOYLE/Examiner, Art Unit 2914
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