The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
Claim Rejection - 35 USC §102(a)(1)
The claim is rejected under 35 U.S.C. §102(a)(1) as being anticipated by the Chinese Design Registration No. CN 308527440, published on March 22, 2024, 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 (Chinese Design Registration No. CN 308527440 was cited by applicant on the Information Disclosure Statement of 05/06/2026).
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The appearance of the Chinese Design Registration No. CN 308527440 is substantially the same as that of the claimed design. The ordinary observer test is the sole test for anticipation. International Seaway Trading Corp. v. Walgreens Corp., 589 F.3d 1233, 1237-38, 1240, 93 USPQ2d 1001 (Fed. Cir. 2009) and MPEP §1504.02. The shape and appearance of the Chinese Design Registration No. CN 308527440 is identical in all material respects to that of the claimed design. Hupp v. Siroflex of America Inc., 122 F.3d 1456, 43 USPQ2d 1887 (Fed. Cir. 1997). See callout "A" in sample below.
The standard for determining novelty under 35 U.S.C. 102 was set forth by the court in In re Bartlett, 300 F.2d 942, 133 USPQ 204 (CCPA 1962) to be that of the "average observer". The degree of difference from the Chinese Design Registration No. CN 308527440 observer takes the new design for a different, and not a modified, already-existing design.
In deciding anticipation for design patents, determining what respects are material is done through the eyes of the "average observer" in the same way infringement is determined in Gorham Co. v. White.
“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, supra.
“The mandated overall comparison is a comparison considering 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 1423, 1444 (Fed. Cir. 1984)).
The Chinese Design Registration No. CN 308527440 names different inventors (Fang Lei, Yan Chaorong & Yang Enkai) and a different applicant (Zhuoli Electric Group Co., Ltd.) than the current application. Therefore, the publication was properly treated as prior art under AIA 35 U.S.C. 102(a)(1). See MPEP 2153.01(a).
Applicants may overcome this rejection by providing convincing evidence that the disclosure was made one year or less before the effective filing date of the claimed invention, and:
The disclosure was made by the inventor, a joint inventor, or by another who obtained the subject matter directly or indirectly from the inventor or joint inventor; or
Before such disclosure, the subject matter disclosed had been publicly disclosed by the inventor or a joint inventor or another who obtained the subject matter disclosed directly or indirectly from the inventor or joint inventor.
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.
In conclusion, the claim is rejected 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.
Any inquiry concerning this communication or earlier communications from the Examiner should be directed to Ricky Pham, whose telephone number is (571)272-2321. The examiner can normally be reached on Monday through Thursday 7:00 am to 5:30 pm EST. 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, Jae Liang can be reached on (571) 270-0229. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/RICKY PHAM/ Primary Examiner, Art Unit 2913
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