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 .
DETAILED ACTION
Acknowledgement of Applicant’s Response
The merits of this case have been carefully examined again in light of Applicant’s response filed 06/10/2026.
Applicant’s response to the rejections under 35 USC § 112 (a) and (b) and 35 USC § 102 have been fully considered. The 112 (a) and (b) rejection has been withdrawn. However, arguments includes information that forms the basis for new rejections to the claim, as set forth below. This action is made FINAL.
THIS ACTION IS MADE FINAL. Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
Examiner’s Response to Applicant’s Remarks
With respect to the 35 USC § 102 rejection, Applicant asserts the following:
Stepped tiered profile with concave curved transitions of the front lateral frames
Different spatial proportions and block divisions
Cap-Like integrated top and bottom end caps
These arguments are not persuasive.
Regarding the first argument, the change or omission or addition of a few minor details would not justify the multiplication of design patents even though the designs may readily be distinguished from each other by one or more features. Substantial differences are required to render one device patentable over another as a design. The novelty of a design must be judged by the test of ornament, and while the final merit of ornamentation may depend upon the harmonious blending of small details mechanical differences which may make a vast difference in the operativeness of the devices may make no appreciable difference between the devices as designs.
Regarding the second argument, the difference between spatial proportions and block divisions is not considered by the examiner to be a patentable distinction, as it is directed only to proportion.
Regarding the third argument, again, the caps are directed to proportions. There is no other distinct feature that would differentiate between the top and bottom ends of the claimed design and the Clearhalo reference. They both appear visually flat. Additionally the “installation structure” spears flat with no distinct characteristics form the Cearhalo reference.
Claim Refusal – 35 U.S.C. § 102
The rejection of the claim under 35 U.S.C 102, for the reasons set forth in the previous office action has NOT been overcome. Therefore, the claim is again and FINALLY REJECTED under 35 U.S.C. 102.
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 NPL “Clearhalo, Half Cylinder Wall Sconce Lamp”, here after Clearhalo, 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.
The appearance and configuration of the Clearhalo reference is substantially the same as that of the claimed design. For anticipation to be found, the two designs must be substantially the same. Gorham Co. v. White, 81 U.S. 511, 528 (1871). The ordinary test is the sole test for anticipation. Int’l Seaway Trading Corp. V. Walgreen Corp., 589 F.3d 1233, 1237 – 38, 1240 (Fed. Cir. 2009). There are not significant differences between the claimed design and the reference that would create patentably distinct designs.
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Prior Art Claimed Design
“Two designs are substantially the same if their resemblance is deceptive to the extent it would induce an ordinary observer, giving such attention as a purchaser usually gives, to purchase as 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 design that are not exact copies of one another. Just as ‘minor difference between a patented design and an accused article’s design cannot, and shall not, prevent a finding of infringement,’ so too minor difference 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, 144 (Fed. Cir. 1984)).
Under this standard, the appearance of the Clearhalo, reference is substantially the same as that of the claimed design. Furthermore, the effective filing date of the claimed invention is December 19, 2025; the public availability of the Clearhalo reference is March 22, 2021. Accordingly, the rejection under this statute is proper.
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 1) 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 2) 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.
Claim Refusal: 35 U.S.C. § 103
The claim is rejected under 35 U.S.C. 103 as being unpatentable over NPL “Clearhalo, Half Cylinder Wall Sconce Lamp”, here after Clearhalo, dated March 22, 2021. 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.
It is well settled that it is unobviousness is 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 the design patentability. See In re Frick, 275 F2d 741, 125 USPQ 191 (CCPA 1960) and In re Lamb, 286 F2d 610, 128 USPQ 539 (CCPA 1961).
The Clearhalo reference has an overall appearance with design characteristics that are basically the same as those of the claimed design, in that both designs:
Wall Sconce Lamps
Half-cylinder in shape
Lamps embedded in a frame and surrounded by the frame
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Clearhalo Claimed Design
The claim differs from the design of Clearhalo in the following ways:
The frame around the claimed design has smoother angles
The appearance of the clamed design would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention in the view of Clearhalo.
It would have been obvious to a designer of ordinary skill in the art before the effective filing date of the claimed invention to modify the frame of the Clearhalo design because such modification is no more than simple substitution of a known design element. Moreover, such substitution of one known design element from another known design element in the same field would have been within the skill of an ordinary designer. Additionally, where the only substantial difference between a design and the prior art is one of obvious changes in arrangement and proportioning, the design is not patentable. See In re Stevens, 81 USPQ 362 (CCPA 1949). Accordingly, this results in an appearance over which the claimed design has no patentable distinction.
Conclusion
The claim is finally rejected as set forth above. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). Applicant is reminded of the extension of time policy as set in 37 CFR 1.136(a).
The references cited but not applied are considered cumulative art related to the claimed design.
A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any extension fee pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the mailing date of this final action.
Applicant is reminded that any reply to this Refusal 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).
Contact
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Kathryn Chambers whose telephone number is (571)272-9216. The examiner can normally be reached Monday - Friday, 8:30 AM - 5 PM.
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, Lakiya Rogers, can be reached at telephone number (571)270-7145. 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.
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 “Responding to Official USPTO Correspondence” below.
If a pro se applicant or registered practitioner located outside of the United States wishes to communicate by telephone, it is suggested that such person email the examiner at [Kathryn.Chambers@uspto.gov] to arrange a time and date for the telephone interview. Please include proposed days and times for the proposed call. When proposing a day/time for the interview, please take into account the examiner’s work schedule indicated in the last paragraph of this communication. The email should also be used to determine who will initiate the telephone call.
Email Communications
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. For acceptable ways to submit the authorization form to the USPTO, see “When Responding to Official USPTO Correspondence” below. See MPEP 502.03 II for further information.
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:
Online via the USPTO's Electronic Filing System‐Web (EFS‐Web) (Registered eFilers only) https://www.uspto.gov/patents/apply
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-actions
/K.E.C./
Examiner, Art Unit 2934
/MICHAEL A. PRATT/Primary Design Examiner, Art Unit 2951
