DETAILED 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 .
Foreign Priority
The claim to priority to EM Application No. 015060607-0001 filed with the European Union Intellectual Property Office on 16 May 2024 is acknowledged. However, conditions for foreign priority have not been met due to the lack of certified copies of the required documents.
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 clearly anticipated by earlier EM Design Registration No. 015060607-0001, dated 16 May 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, dated 12 November 2024.
The appearance of the shoe of EM Design Registration No. 015060607-0001, dated 16 May 2024 is substantially the same as that of the claimed design, dated 12 November 2024. 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).
Without the properly attached foreign priority documents with a shared inventor name, the following reference stands as conflicting prior art.
A comparison of the claimed design and the previous registration is below:
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556
1113
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744
1341
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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, 589 F.3d at 1243 (citing Litton Sys., Inc. v. Whirlpool Corp., 728 F.2d 1423, 1444 (Fed. Cir. 1984)).
Conclusion
The references are cited as cumulative art but are not applied other than as noted above.
Accordingly, the claim stands rejected under 35 U.S.C. 102(a)(1), as set forth above.
Contact Information
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Christen P. Brown-Lorrig whose telephone number is (571)272-2986. The examiner can normally be reached on Monday through Friday from 9am to 5pm.
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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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/CHRISTEN PILAR BROWN-LORRIG/
Examiner, Art Unit 2912
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