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 European Union Intellectual Property Office Application No. EM 015092961-0002, filed on 2/18/2025. Applicant has filed a certified copy of the European application as required by 35 USC § 119(b).
Title Objection
The title of a design must designate the name of the article in which the design is embodied or applied to. The title of the design identifies the article in which the design is embodied by the name generally known and used by the public and may contribute to defining the scope of the claim. See MPEP § 2920.04(a).
The title is objected to because it does not reference the claimed design by the name generally known and used by the public. For clarity, the examiner recommends amending the title throughout the application, original oath or declaration excepted. The examiner recommends the following:
-Part of Non-Electric Coffee or Kitchen Grinder—
Claim Rejection - 35 USC § 112
The claim is rejected under 35 USC 112(a) & (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 claim is indefinite and non-enabling for the following reasons:
The reproductions do not provide a clear understanding of the exact appearance and three-dimensional configuration of the claimed design. The following portions are unclear:
The dark circular rim located in the middle of the outer edge and center opening on the bottom view of the claimed design depicted in Reproduction 1.3 is considered not fully disclosed. Additionally, there are circular features shown in Reproduction 1.3 located by the outer edge, that cannot be clearly reconciled with any other views. The view provided is inadequate to cover the scope asserted and is not sufficient for a complete disclosure. The view does not provide a clear understanding of the exact depth of the circular rim, or the circular features. See visual below for reference:
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To overcome the rejection above, applicant must distinctly claim the subject matter applicant regards as the invention. Applicant may disclaim the areas or portions of the design which are considered indefinite and nonenabling in the rejection under 35 U.S.C. 112 above by lightening the area and including a broken line boundary line. New reproductions are suggested so that claim is clearly and consistently shown among the reproductions.
If lightening reproductions and utilizing boundary lines, a statement similar to the following should be included in the specification immediately preceding the claim, provided such statement does not introduce new matter (see 35 U.S.C. 132):
--The broken lines and lightened areas within the broken lines illustrate portions of the article that form no part of the claimed design.--
Replacement Drawings
Any amended replacement drawing 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 drawing should not be labeled as amended.
If a drawing 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 drawings for consistency.
Additional replacement sheets may be necessary to show the renumbering of the remaining figures. If all the figures on a drawing sheet are canceled, a replacement sheet is not required. A marked‐up copy of the drawing sheet (labeled as "Annotated Sheet") including an annotation showing that all the figures on that drawing sheet have been canceled must be presented in the amendment or remarks section that explains the change to the drawings.
Each drawing 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 drawings, be careful to avoid introducing new matter. New matter is prohibited by 35 U.S.C. 132 and 37 CFR 1.121(f).
Claim Rejection - 35 U.S.C. 103
The following is a quotation of 35 USC § 103 which forms the basis for all obviousness rejections
set forth in this Office action:
A patent for a claimed invention may not be obtained, notwithstanding that the claimed
invention is not identically disclosed as set forth in section 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 person having ordinary skill in the art to which the claimed invention
pertains. Patentability shall not be negated by the manner in which the invention was
made.
The claim is rejected under 35 U.S.C. 103 as being unpatentable over US Patent No. D1040610 to Braune et al. effectively filed on 6/10/2022 (hereinafter Braune et al.), in view of the US Patent No. D1140978 to Basaric effectively filed on 5/18/2022 (hereinafter Basaric).
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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.
Braune et al. has an overall appearance with design characteristics that are visually similar to
those of the claimed design, because:
Both the claimed design and Braune et al. show a hollow circular ring part for a grinder with the same overall shape and proportions.
Both the claimed design and Braune et al. feature the same flush top surface, with vertically flush side walls.
Both the claimed design and Braune et al., feature annularly spaced apart curved petal shaped teeth, placed visually the same distance from the outer edge, on both the claimed design and Braune et al.
The interior walls of the petal shaped teeth angle downward, and transition to smaller evenly spaced angled internal teeth towards the bottom edge, on both the claimed design and Braune et al.
Both the claimed design and Braune et al., show a similarly shaped bottom with an inset circular concentric base.
The claimed design differs from Braune et al., in that:
The petal shaped teeth on the claimed design are wider in proportion, with a small flat surface in between the petals, while Braune et al. has narrower-shaped petal-shaped teeth with a pointed surface in between the petals.
The claimed design shows beveled edges at the top and bottom surface, while Braune et al shows flush edges. This difference is de minimis and not a patentable distinction in view of the overall ornamental appearances of the grinder parts.
Braune et al shows more petal shaped teeth, in comparison to the claimed design. However, it is noted that case law has held that omission or addition of details and duplication of parts is not a patentable distinction. In re Freeman 1904 C.D. 619; 109 O.G. 1339 (1904); Gold Seal Importers, Inc. v. Morris White Fashions, Inc., 49 USPQ 607 (1941).
Basaric shows less quantity of the petal shaped teeth, and the same wider petal shaped teeth with a small flat surface in between the petals, was well known in the art before the effective filing date of the claim.
It would have been obvious to a designer of ordinary skill in the art of parts for a grinder, before the effective filing date of the claimed design to modify Braune et al with Basaric by modifying the omitting some of the petal shaped teeth, and modify the shape of the petal shaped teeth to be wider with a small flat surface in between the petals like the claimed design, because the reference is analogous to the claimed design in that they both parts for a grinder. These modifications are found to be similar substitutions or obvious modifications as they have been applied in analogous art. The combined references would result in a design having an appearance strikingly similar the claimed design, and over which the claimed design would have no patentable distinction.
It is well settled that it is unobviousness in the overall appearance of the claimed design, when
compared with the prior art, rather than minute details or small variations in design as appears
to be the case here, that constitutes the test of design patentability. In re Frick, 125 USPQ 191
(CCPA 1960) and In re Lamb, 286 F.2d 610, 128 USPQ 539 (CCPA 1961).
Overcoming the rejection under 35 U.S.C. 103
The applicant may attempt to overcome the rejections by:
Persuasively arguing that the claim is patentably distinct over the prior art, or
Amending the claim to patentably distinguish over the prior art, or
Perfecting a benefit claim under 35 U.S.C. 119 or 35 U.S.C. 120, or
Filing an affidavit or declaration under 37 CFR 1.130 disqualifying the primary reference as prior art.
The applicant is reminded that the primary reference Braune et al. is outside of the one-year grace period afforded under 35 U.S.C. 102(b)(1) for disclosures with a prior public availability date.
REPLY GUIDELINES
Signature required
Applicant is reminded that any reply to this action 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).
Responding to official USPTO Correspondence
The USPTO transacts business in writing. Applicants may submit replies to Office actions only by:
Online via the USPTO Electronic Filing System-Web (EFS-Web) (Registered eFilers only). See https://www.uspto.gov/patents-application-process/applying-online/efs-web-guidance-and-resources
By mail: Commissioner for Patents, P.O. Box 1450, Alexandria, VA, 22313-1450;
By facsimile via the USPTO official fax number (571-273-8300); or
By hand-carry to the USPTO Alexandria, Virginia, Customer Service Window.
For more information, see https://www.uspto.gov/patents/maintain/responding-office-actions.
Email communications
Replies to Office actions may not be submitted via email. 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. See MPEP 502.03.II for further information.
Discussions regarding the merits of an 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.
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. A registered practitioner "not of record" must 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 further information.
If a pro se applicant or registered practitioner located outside of the United States wishes to communicate by telephone, the examiner may be contacted directly via email to arrange a time and date for the telephone interview. When proposing an interview appointment, include proposed days and times for the proposed call, and confirm who will initiate the call. For the examiner’s work schedule, see Examiner Contact Information.
Conclusion
The claim is rejected under 35 U.S.C. 112, and 35 U.S.C. 103 as set forth above.
The references are cited as pertinent prior art. Applicant may view and obtain copies of the cited references by visiting http://www.uspto.gov/patft/index.html and pressing the “Patent Number Search” button.
Contact
Any inquiry concerning this communication or earlier communications from the examiner should be directed to CHRISTINE M ACHEN ZIMMERMAN whose telephone number is (703)756-1995. The examiner can normally be reached M-F 9 TO 5.
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, George Ulsh can be reached at 571-270-1433. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/C.M.Z./Examiner, Art Unit 2922 /CATHERINE S POSTHAUER/Primary Examiner of Art Unit 2922
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