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
Examiner's comment regarding the Foreign Priority claim
The applicant has made a claim to the benefit of the filing date of application WIPO178944 as filed with the International Bureau (IB) on 04/03/2026. While WIPO178944 carries a different application number, and a different registration number, the instant application is considered by the USPTO to be the SAME APPLICATION. Consequently, no priority or continuity between the two is necessary or even legally proper as they are one-and-the-same. The filing date afforded to an international design application in the United States is considered to be the same as the effective registration date of the international design application (see MPEP 2908, and 35 USC 384(a)). The effective registration date for WIPO178944, and therefore the filing date of the instant application, is 04/03/2026.
Specification Objection
The descriptions of the figures are objected to because they are inconsistently described. Descriptions of the figures are not required to be written in any particular format; however, they must describe the views of the drawing clearly and accurately (MPEP 2920.04(a)(II)).
Specifically, in view of the description of 1.2, Front, the descriptions of 1.3-1.5 are inconsistent. The applicant must amend the figure descriptions for accuracy.
The examiner suggests the following amendment to the descriptions of the reproductions:
-- 1.2 Left
1.3 Front
1.4 Back
1.5 Right --
Claim Refusal – 35 USC 112(a) and (b)
The claim is refused under 35 USC 112(a) and (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 applicant regards as the invention.
The claim is indefinite and nonenabling because the drawings disclose features that have not been definitively described by the views provided. These views would not allow one skilled in the art to determine the exact configuration of the design, including shape, contours, features, and depths of elements, without resorting to conjecture.
Specifically, the visual disclosure of the claimed design fails to disclose the design details with clarity. Where lines overlap, they produce heavy solid black lines making features of the claim indefinite and non-enabling because the exact shapes, contours, and configurations of the claimed design are not clearly expressed with crisp, clear lines.
Annotated figures below show examples of the indefinite and nonenabling features.
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Indefinite and non-enabling features at (A) showing where heavy black lines obscure the exact shape and contours. Features at (B), shown shaded, cannot be determined if these surfaces are coplanar, contoured, or if certain areas are recessed.
Because of the inadequate visual disclosure and heavy line weight, the claimed design is in fact subject to multiple interpretations, and one of ordinary skill in the art would not be able to make and use the design without the use of conjecture. This renders the claim indefinite and nonenabling.
The necessity for good drawings in a design patent application cannot be overemphasized. As the drawing constitutes the whole disclosure of the design, it is of utmost importance that it be so well executed both as to clarity of showing and completeness, that nothing regarding the design sought to be patented is left to conjecture.
The applicant may attempt to overcome this rejection by submitting amended drawings of the claimed design that disclose the design with clear, crisp lines across all views.
If areas cannot be enabled without the addition of new matter, applicant may indicate that protection is not sought for those portions of the reproductions which are considered indefinite and nonenabling in the rejection under 35 U.S.C. 112 above by amending the reproductions to color those portions or convert those portions to broken lines and by amending the specification to include a statement that the portions of the article shown in broken lines form no part of the claimed design or a statement that the portions of the article shown by coloring form no part of the claimed design provided such amendments do not introduce new matter (see 35 U.S.C. 132, 37 CFR 1.121 ).
Any amended replacement sheet should include all of the reproductions appearing on the immediate prior version of the sheet, even if only one reproduction is being amended. The reproduction or number of an amended sheet should not be labeled as amended. If a reproduction is to be canceled, the appropriate reproduction must be removed from the replacement sheet, and where necessary, the remaining reproductions 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 reproductions. If all the reproductions on a 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 reproductions on that drawing sheet have been canceled must be presented in the amendment or in the remarks section that explains the change. 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 reproductions, 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 USC 102(a)(1)
While a rejection under 112(a) and (b) has been presented, for the purpose of this examination, the examiner understands the claimed design as a solar-powered lamp with a standard pole connected to a base plate, a Y-shaped connection at the top of the pole supporting a square solar panel atop a thin, long rectangular LED lamp underneath one side. Based on this understanding, the claim is rejected under 35 USC 102(a)(1) as being anticipated by the examiner’s cited non-patent document ‘U’ (hereinafter FONROCHE LIGHTING design), because the claimed invention was patented, described in a printed publication, in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention.
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Claimed design
FONROCHE LIGHTING design
The appearance of the FONROCHE LIGHTING design 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.
“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 comparison takes 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,” (Litton, 728 F.2d at 1444), so too minor differences cannot prevent a finding of anticipation. Int'l Seaway, supra.
The applicant may attempt to overcome the rejection under 35 USC 102(a)(1) 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 USC 119 or 35 USC 120, or
Filing an affidavit or declaration under 37 CFR 1.130.
The applicant is reminded of the one-year grace period afforded under 35 USC 102(b)(1) for disclosures with a prior public availability date.
Notes on Correspondence
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 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.
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
Conclusion
In conclusion, this application stands refused as set forth above.
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).
The references are cited as pertinent to the claimed design, but no determination as to patentability has been made pending a response to this restriction requirement.
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). For assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
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.
/JULIE MARIE BAILEY/Examiner, Art Unit 2934
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