PROSECUTION LAW
PATENTABILITY
The Statute
35 U.S.C. § 171 entitled “Patents for Designs” states in relevant part:
(a) In General. –
Whoever invents any new, original and ornamental design for an article of manufacture may obtain a patent therefor, subject to the conditions and requirements of this title.
(b) Applicability of This Title.–
The provisions of this title relating to patents for inventions shall apply to patents for designs, except as otherwise provided.
Who May Obtain a Patent
The “Whoever” in 35 U.S.C. § 171 includes any person and is not limited to U.S. citizens. Prior to 1870, the design patent statute was limited to “any citizen,” but after that date the design patent statutes were extended to “any person.” See Bolte & Weyer Co. v. Knight Light Co., 180 F. 412, 415, 1910 U.S. App. LEXIS 4777 (7th Cir. 1910).
An inventor may apply for a patent. Additionally, a person to whom the inventor has assigned or is under an obligation to assign the invention may apply for a patent, with some exceptions. If the inventor is deceased, legal representatives such as the administrator or executor of the estate may apply for a patent. If the inventor is legally incapacitated, a legal representative such as a guardian may apply. If an inventor refuses to apply for a patent or cannot be found, a joint inventor may apply on behalf of the missing inventor.
Two or more people who jointly invent a design may apply for a design patent jointly.
Inventorship
35 U.S.C. 171(a) affords design patent protection only to a person who “invents a new, original and ornamental design for an article of manufacture.” 35 U.S.C. § 171. The inventor is the person or persons who conceived the patented invention. Collar Co. v. Van Dusen, 90 U.S. (23 Wall.) 530, 563-64, 23 L. Ed. 128 (1874); Burroughs Wellcome Co. v. Barr Labs., Inc., 40 F.3d 1223, 1227-28 (Fed. Cir. 1994) (“Conception is the touchstone of inventorship.”)
The same standard of inventorship applies to both design patents and utility patents. See In re Rousso, 42 C.C.P.A. 910, 222 F.2d 729, 731, 106 U.S.P.Q. (BNA) 99, 101 (CCPA 1955); Hoop v. Hoop, 279 F.3d 1004, 1007 (Fed. Cir. 2002)
“An inventor under the patent laws is the ‘person or persons who conceived the patented invention.’ C.R. Bard, Inc. v. M3 Sys., 157 F.3d 1340, 1352, 48 U.S.P.Q.2D (BNA) 1225, 1232 (Fed. Cir. 1998). An inventor may then ‘use the services, ideas, and aid of others in the process of perfecting his invention without losing his right to a patent.’ Ethicon, Inc. v. United States Surgical Corp., 135 F.3d 1456, 1460, 45 U.S.P.Q.2D (BNA) 1545, 1548 (Fed. Cir. 1998) (citing Shatterproof Glass Corp. v. Libbey-Owens Ford Co., 758 F.2d 613, 624, 225 U.S.P.Q. (BNA) 634, 641 (Fed. Cir. 1985)). Hoop v. Hoop, 279 F.3d 1004, 1007 (Fed. Cir. 2002).
“One may not qualify as a joint inventor, or as here, a new inventor, by “merely assisting the actual inventor after conception of the claimed invention.” Ethicon, 135 F.3d at 1460, 45 U.S.P.Q.2D (BNA) at 1548 (emphasis added). Minor differences between the prior art and the new claim will not suffice. In re Zemon, 40 C.C.P.A. 1051, 205 F.2d 317, 320, 98 U.S.P.Q. (BNA) 223, 224 (CCPA 1953). The differences here must be substantial and not just superficial; the new design must contain an inventive concept. Id.” Hoop v. Hoop, 279 F.3d 1004, 1007 (Fed. Cir. 2002).
“The ultimate test for design-patent inventorship, like the test for anticipation and infringement, is whether the second asserted invention is ‘substantially similar’ to the first. Gorham Mfg. Co. v. White, 81 U.S. (14 Wall.) 511, 528, 20 L. Ed. 731 (1872); Payless Shoesource, Inc. v. Reebok Int’l Ltd., 998 F.2d 985, 990, 27 U.S.P.Q.2D (BNA) 1516, 1520 (Fed. Cir. 1993). Substantial similarity is a question of fact. L.A. Gear, Inc. v. Thom McAn Shoe Co., 988 F.2d 1117, 1124, 25 U.S.P.Q.2D (BNA) 1913, 1918 (Fed. Cir. 1993). Hoop v. Hoop, 279 F.3d 1004, 1007 (Fed. Cir. 2002); see also Sunbeam Prods. v. Wing Shing Prods. (BVI) Ltd., 153 Fed. Appx. 703, 707-708, 2005 U.S. App. LEXIS 18241, *10-11.
“Section 116 of Title 35 is the statutory locus of joint inventorship doctrine. It provides that a person not listed on a patent need not demonstrate that he made a contribution equal in importance to the contribution made by the listed inventors to claim his right to joint inventor status. See 35 U.S.C. § 116 (2000) (‘Inventors may apply for a patent jointly even though (1) they did not physically work together or at the same time, (2) each did not make the same type or amount of contribution, or (3) each did not make a contribution to the subject matter of every claim of the patent.’). In fact, section 116 ‘sets no explicit lower limit on the quantum or quality of inventive contribution required for a person to qualify as a joint inventor.’ Fina Oil & Chem. Co. v. Ewen, 123 F.3d 1466, 1473 (Fed. Cir. 1997). Eli Lilly & Co. v. Aradigm Corp., 376 F.3d 1352, 1358 (Fed. Cir. 2004).
“The line between actual contributions to conception and the remaining, more prosaic contributions to the inventive process that do not render the contributor a co-inventor is sometimes a difficult one to draw. Contributions to realizing an invention may not amount to a contribution to conception if they merely explain what was ‘then state of the art,’ Hess, 106 F.3d at 981, if they are too far removed from the real-world realization of an invention, see, e.g., Garrett Corp., 422 F.2d at 881 (‘One who merely suggests an idea of a result to be accomplished, rather than means of accomplishing it, is not a joint inventor.’), or if they are focused solely on such realization, see, e.g., Ethicon, 135 F.3d at 1460 (‘One does not qualify as a joint inventor by merely assisting the actual inventor after conception of the claimed invention.’).
“It is however uncontroversial that the alleged joint inventor seeking to be listed on a patent must demonstrate that his labors were conjoined with the efforts of the named inventors. Joint inventorship under section 116 can only arise when collaboration or concerted effort occurs–that is, when the inventors have some open line of communication during or in temporal proximity to their inventive efforts….” Eli Lilly & Co. v. Aradigm Corp., 376 F.3d 1352, 1359 (Fed. Cir. 2004)
“Under 35 U.S.C. § 256, a district court may order correction of inventorship when it determines that an inventor has been erroneously omitted from a patent. ‘All inventors, even those who contribute to only one claim or one aspect of one claim of a patent, must be listed on that patent.’ Vapor Point LLC v. Moorhead, 832 F.3d 1343, 1348-49 (Fed. Cir. 2016). The named inventors are presumed correct, and the party seeking correction of inventorship must show by clear and convincing evidence that a joint inventor should have been listed. Eli Lilly & Co. v. Aradigm Corp., 376 F.3d 1352, 1358 (Fed. Cir. 2004).
“An alleged joint inventor’s testimony standing alone is insufficient to establish inventorship by clear and convincing evidence. Ethicon, Inc. v. U.S. Surgical Corp., 135 F.3d 1456, 1461 (Fed. Cir. 1998). ‘Thus, an alleged co-inventor must supply evidence to corroborate his testimony.’ Id. ‘Corroborating evidence may take many forms,’ including ‘contemporaneous documents’ or physical evidence, ‘[c]ircumstantial evidence,’ and ‘oral testimony of someone other than the alleged inventor.’ Id.; see also Sandt Tech., Ltd. v. Resco Metal & Plastics Corp., 264 F.3d 1344, 1350-51 (Fed. Cir. 2001). To determine whether testimony has been sufficiently corroborated, a ‘rule of reason’ test is applied where ‘all pertinent evidence is examined in order to determine whether the inventor’s story is credible.’ Sandt Tech., 264 F.3d at 1350 (cleaned up). A court’s conclusion about corroboration under this ‘rule of reason’ analysis is a factfinding, which we review for clear error. Fleming v. Escort Inc., 774 F.3d 1371, 1377 (Fed. Cir. 2014).
“An alleged joint inventor must show that he contributed significantly to the conception—the definite and permanent idea of the invention—or reduction to practice of at least one claim. Dana-Farber Cancer Inst., Inc. v. Ono Pharm. Co., 964 F.3d 1365, 1371 (Fed. Cir. 2020). And that these contributions arose from ‘some element of joint behavior, such as collaboration or working under common direction’ with the other inventor(s). Kimberly-Clark Corp. v. Procter & Gamble Distrib. Co., Inc., 973 F.2d 911, 917 (Fed. Cir. 1992).
“Inventorship is a question of law based on underlying facts. In re VerHoef, 888 F.3d 1362, 1365 (Fed. Cir. 2018). As we have noted, ‘[t]he determination of whether a person is a joint inventor is fact specific, and no bright-line standard will suffice in every case.’ Fina Oil & Chem. Co. v. Ewen, 123 F.3d 1466, 1473 (Fed. Cir. 1997); see also In re Jolley, 308 F.3d 1317, 1323 (Fed. Cir. 2002) (‘[T]he conception inquiry is fact-intensive . . . .’). We review the district court’s overall inventorship determination de novo, and the court’s underlying factfindings for clear error. Dana-Farber, 964 F.3d at 1370. Blue Gentian, LLC v. Tristar Prods., Inc., 70 F.4th 1351, 1357-1358 (Fed. Cir. 2023).
“35 U.S.C. 115(a) reads as follows (in part): An application for patent that is filed under section 111 (a) or commences the national stage under section 371 shall include, or be amended to include, the name of the inventor(s) for any invention claimed in the application. Under U.S. national law, the creator must be the inventor(s). An inventor can only be a natural person; an inventor cannot be a juristic entity. See 35 U.S.C. 115 and 37 CFR 1.1021 (d)(2).
“Applicant must file a request to correct inventorship under 37 CFR 1.48(a) if there is indeed a co-inventor of the claimed design. Such request requires: (1) An application data sheet (ADS) in accordance with § 1.76 that identifies each inventor by his or her legal name; and (2) The processing fee set forth in § 1.170) The ADS form (Form PTO/AIA/14) is available on the USPTO website at: http://www.uspto.gov/patent/forms/forms-patent-applications-filed-on-or-after-september-16-2012. Applicant should note that information corrected by an ADS must be marked-up as required under 37 CFR 1.76(c)(2), that is, with ‘underlining for insertions, and strike-through or brackets for text removed.’ An inventor’s oath or declaration is also required for each added inventor. The inventor’s oath or declaration must be submitted on or before payment of the issue fee (the second part of the U.S. designation fee). Inventor declaration forms are available at the USPTO website referenced above. The request to correct inventorship may be filed electronically via EFS-Web (by a registered eFiler), by mail addressed to Commissioner for Patents, P.O. Box 1450, Alexandria, Virginia 22313-1450, or by facsimile to the USPTO Central Fax number at 571-273-8300.” App. No. 35/511,429, 2-7-23
Novelty
35 USC § 102(a)(1) entitled “Conditions for patentability; novelty” states
(a) Novelty; prior art. A person shall be entitled to a patent unless—
(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;
A patent lacks novelty and is invalid if the “the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public [more than one year] before the effective filing date of the claimed invention.” 35 U.S.C. § 102(a)-(b). To show anticipation (lack of novelty) under 35 U.S.C. § 102, “[a]s with a utility patent, design patent anticipation requires a showing that a single prior art reference is identical in all material respects to the claimed invention.” Door-Master Corp. v. Yorktowne, Inc., 256 F.3d 1308, 1312 (Fed. Cir. 2001) (internal quotation marks omitted). The Federal Circuit has explained that, “the ordinary observer test must logically be the sole test for [design patent] anticipation.” Int’l Seaway Trading Corp. v. Walgreens Corp., 589 F.3d 1233, 1240 (Fed. Cir. 2009). That test asks whether, “in the eye of an ordinary observer, giving such attention as a purchaser usually gives, two designs are substantially the same;” designs are substantially the same when “the resemblance is such as to deceive [the ordinary] observer, inducing him to purchase one supposing it to be the other.” Egyptian Goddess, Inc. v. Swisa, Inc., 543 F.3d 665, 670 (Fed. Cir. 2008).
Per In re Freeman 1904 C.D. 619; 109 O.G. 1339 (1904) -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. App. No. 29/897,775, 2-27-24
[M]odifications of color and/or material, in and of themselves, cannot serve as the primary basis for novelty. App. No. 29/818,994, 2-27-24
Originality
“The originality requirement in § 171 dates back to 1842 when Congress enacted the first design patent law. [footnote omitted] The purpose of incorporating an originality requirement is unclear; it likely was designed to incorporate the copyright concept of originality–requiring that the work be original with the author, although this concept did not find its way into the language of the Copyright Act until 1909. See 1-2 Melville B. Nimmer & David Nimmer, Nimmer On Copyright § 2.01 (2005) (subject matter of copyright). In any event, the courts have not construed the word ‘original’ as requiring that design patents be treated differently than utility patents.” Int’l Seaway Trading Corp. v. Walgreens Corp., 589 F.3d 1233, 1238 (Fed. Cir. 2009).
Copying “a natural form, in a natural pose” and using it as your claimed design lacks originality. In re Smith, 77 F.2d 513, 22 C.C.P.A. 1201, 1935 Dec. Comm’r Pat. 565 (C.C.P.A. 1935) and In re Smith, 77 F.2d 514, 22 C.C.P.A. 1209, 1935 Dec. Comm’r Pat. 573 (C.C.P.A. 1935). However, when the design departs from the natural form and is applied to a different type article (like a portion of a female form applied to a motorcycle part), it is more than a mere imitation or simulation, and possesses originality. Durdin v. Kuryakyn Holdings, Inc., 440 F. Supp. 2d 921, 935 (W.D. Wis. 2006)
Copyright originality merely requires “at least some minimal degree of creativity.” Feist Publications, Inc., v. Rural Telephone Service Co., 499 U.S. 340 (1991). The Supreme Court wrote in Feist “[t]o be sure, the requisite level of creativity is extremely low; even a slight amount will suffice.” Feist, 499 U.S. at 345. “Originality does not signify novelty; a work may be original even though it closely resembles other works so long as the similarity is fortuitous, not the result of copying.” Id. (emphasis added). App. No. 29/689,170, 6-1-21
If the basis of the § 171 rejection is lack of originality, Applicant notes that the originality requirement bars issuance of a design patent for a design derived from any source or person other than the individuals named as inventors. Essentially, that means an applicant is barred from receiving a patent on an invention conceived by another person. This is usually referred to as the derivation requirement. Price v. Symsek, 988 F.2d 1187, 1190 (Fed. Cir. 1993) (“claim that a patentee derived an invention addresses originality — who invented the subject matter.”)
The Declaration filed in the parent application (serial no. 29/654,271) and applicable to the present divisional application states that the inventors “believe that I am the original inventor or an original joint inventor of a claimed invention in the above-identified application.” The rejection fails to present any evidence to the contrary to shift the burden to the Applicant. As such, Applicant respectfully asserts that the originality requirement of §171 is satisfied herein. App. No. 29/654,275, 8-3-21
The claim is rejected under 35 U.S.C. 171 as being directed to nonstatutory subject matter in that the design lacks originality. The design is merely simulating the appearance of wood grain which applicant himself did not invent. See In re Smith, 25 USPQ 359, 1935 CD. 565 (CCPA 1935); In re Smith, 25 USPQ 360, 1935 CD. 573 (CCPA 1935); and Bennage v. Phillippi, 1876 CD. 135, 9 O.G. 1159.
Applicant Response: [T]he claimed ornamental design is not a mere simulation. Rather, significant creative and artistic effort went into this design. The selection and adaptation of an existing form was more than the exercise of mere imitative faculty and the result is a new creation…. The design is not a mere simulation of the natural appearance of wood because significant artistic skill was used to invent a design that allows for continuous, seamless reproduction of the image in a continuous loop. App. No. 35/512,128, 9-19-23
A design that simulates an existing object or other illustration is not an act of originality. App. No. 29/659,854, 4-19-22
Ornamentality
“The ‘ornamental’ requirement of the design statute means that the design must not be governed solely by function, i.e., that this is not the only possible form of the article that could perform its function. See L.A. Gear, Inc. v. Thom McAn Shoe Co., 988 F.2d 1117, 1123, 25 U.S.P.Q.2D (BNA) 1913, 1917 (Fed. Cir. 1993). A design patent is for a useful article, but patentability is based on the design of the article, not the use. The design may contribute distinctiveness or consumer recognition to the design, but an absence of artistic merit does not mean that the design is purely functional.” “Nor need the design be aesthetically pleasing.” Seiko Epson Corp. v. Nu-Kote Int’l, Inc., 190 F.3d 1360, 1368 (Fed. Cir. 1999).
“It is true that valid design patents cannot be directed to designs that are primarily functional, as opposed to ornamental. See, e.g., Ethicon, 796 F.3d at 1328. But it is also true that ‘design patents are granted only for a design applied to an article of manufacture.’ Curver, 938 F.3d at 1340 (emphasis added); accord Surgisil, 14 F.4th at 1382; see also 35 U.S.C. § 171 (“Whoever invents any new, original and ornamental design for an article of manufacture may obtain a patent therefor . . . .”). And articles of manufacture have functions. Ethicon, 796 F.3d at 1328. An article’s function ‘must not be confused with ‘functionality’ of the design of the article.’ Hupp v. Siroflex of Am., 122 F.3d 1456, 1460 (Fed. Cir. 1997) (emphasis added). Concern with the latter is what has featured prominently in our case law. The idea is to preclude design-patent protection for something that, though purported to be an ‘ornamental’ design, is really dictated by function. See Ethicon, 796 F.3d at 1328-30.” Colum. Sportswear N. Am., Inc. v. Seirus Innovative Access., Inc., 80 F.4th 1363, 1380 (2023).
“Section 171 of Title 35 authorizes patents claiming ‘new, original and ornamental design[s] for an article of manufacture.’ 35 U.S.C. § 171(a) (emphasis added). Our precedent gives weight to this language, holding that a design patent must claim an ‘ornamental‘ design, not one ‘dictated by function.’ See, e.g., High Point Design LLC v. Buyers Direct, Inc., 730 F.3d 1301, 1315 (Fed. Cir. 2013). We have recognized, however, that a valid design may contain some functional elements. After all, ‘a design patent’s claim protects an article of manufacture, which ‘necessarily serves a utilitarian purpose.” See Sport Dimension, Inc. v. Coleman Co., 820 F.3d 1316, 1320 (Fed. Cir. 2016) (quoting L.A. Gear, Inc. v. Thom McAn Shoe Co., 988 F.2d 1117, 1123 (Fed. Cir. 1993)). But a design patent may not claim a ‘primarily functional’ design. Id. ‘If [a] particular design is essential to the use of the article, it can not be the subject of a design patent.’ L.A. Gear, 988 F.2d at 1123.
“While ‘[w]e have not mandated applying any particular test,’ certain considerations assist courts in assessing whether a design is dictated by function. Ethicon, 796 F.3d at 1329. These include:
[W]hether the protected design represents the best design; whether alternative designs would adversely affect the utility of the specified article; whether there are any concomitant utility patents; whether the advertising touts particular features of the design as having specific utility; and whether there are any elements in the design or an overall appearance clearly not dictated by function. Berry Sterling Corp. v. Prescor Plastics, Inc., 122 F.3d 1452, 1456 (Fed. Cir. 1997). We have often emphasized the presence or absence of alternative designs, noting that the existence of ‘several ways to achieve the function of an article of manufacture,’ though not dispositive, increases the likelihood that a design serves a primarily ornamental purpose. Id. (quoting L.A. Gear, 988 F.2d at 1123); see also Nordock, Inc. v. Sys. Inc., 803 F.3d 1344, 1361 (Fed. Cir. 2015) (affirming ornamentality where record showed ‘alternate designs available achieve the same utilitarian purpose’), vacated on other grounds, 137 S. Ct. 589, 196 L. Ed. 2d 471 (2016); Rosco, Inc. v. Mirror Lite Co., 304 F.3d 1373, 1378 (Fed. Cir. 2002) (‘[I]f other designs could produce the same or similar functional capabilities, the design of the article in question is likely ornamental, not functional.’).” Auto. Body Parts Ass’n v. Ford Global Techs., LLC, 930 F.3d 1314, 1318-1319 (Fed. Cir. 2019).
Two designs are not patentably distinct from each other when the only difference is a functional component of the design. “[R]emoving them from the claim is not sufficient to make the claim patentably distinct from the prior art. Hidden portions or functional features cannot be relied upon as a basis for patentability. If applicant wishes to rely on functional or hidden features as a basis for patentability, then the same standard for establishing ornamentality under 35 U.S.C. 171 must be applied before these features can be given any patentable weight. See MPEP § 1504.0l(c). App. No. 29/840,147, 2-27-24
[S]ectional views presented solely for the purpose of showing the internal construction or functional/ mechanical features are unnecessary and may lead to confusion as to the scope of the claimed design. Ex parte Tucker, 1901 C.D. 140, 97 O.G. 187 (Comm’r Pat. 1901); Ex parte Kohler, 1905 C.D. 192, 116 O.G. 1185 (Comm’r Pat. 1905). When a view provides no additional information pertaining to the claimed design, the figure view must be cancelled, as well as the corresponding description, and the segment of the special description that describes the figure. App. No. 35/515,129, 2-27-24
The term “Open” in the title is objected to since it is considered a functional effect. Attention is directed to the fact that design patent applications are concerned solely with the ornamental appearance of an article of manufacture. The functional and/or structural features stressed by applicant in the papers are of no concern in design cases, and are neither permitted nor required. Function and structure fall under the realm of utility patent applications. App. No. 29/772,455, 2-27-24
When a claim is rejected under 35 U.S.C. 102 as being unpatentable over prior art, those features of the design which are functional and/or hidden during end use may not be relied upon to support patentability. See In re Cornwall, 230 F.2d 447, 109 USPQ 57 (CCPA 1956); Jones v. Progress Ind. Inc., 119 USPQ 92 (D. R.I. 1958). Further, in a rejection of a claim under 35 U.S.C. 102, mere differences in functional considerations do not negate a finding of anticipation when determining design patentability. See Black & Decker, Inc. v. Pittway Corp., 636 F.2d 1193, 231 USPQ 252 (N.D. Ill. 1986). App. No. 29/810,272, 2-27-24
To be patentable, a design must be “primarily ornamental.” See L.A. Gear Inc. v. Thom McAn Shoe Co., 988 F.2d 1117, 1123, 25 USPQ2d 1913, 1917 (Fed. Cir. 1993). The court in Norco Products, Inc. v. Mecca Development, Inc., 617 F.Supp. 1079, 1080, 227 USPQ 724, 725 (D. Conn. 1985), held that a “primarily functional invention is not patentable” as a design. A design patent application should be directed to the new, original, and ornamental design for an article of manufacture; 35 USC 171. App. No. 29/835,141, 2-20-24
To be patentable, a design must be “created for the purpose of ornamenting” the article in which it is embodied. See Jones v. Progress Ind. Inc., 119 USPQ 92 (D. R.I. 1958); Blisscraft of Hollywood v. United Plastic Company et al., 127 USPQ 452 (S.D. N. Y. 1960); Hygienic Specialties Co. v H.G. Salzman, Inc., et al, 133 USPQ 96 (2nd Cir. 1962); In re Carletti et al., 328 F.2d 1020, 140 USPQ 653 (CCPA 1964); A & H Manufacturing Co., Inc. v Contempo Card Co., Inc et al., 574 F. Supp. 894, 221 USPQ 67 (D. R.I. 1983); Power Controls Corp. v Hybrinetics, Inc., 806 F.2d 234, 231 USPQ 774 (Fed. Cir. 1986); Avia Group International Inc. v L.A. Gear California Inc., 853 F.2d 1557, 7 USPQ2d 1548 (Fed. Cir. 1988); Ex parte Webb, 30 USPQ 2d 1064 (Bd. of Pat. App. & Int. 1993); Best Lock Corp. v. Ico Unican Corp., 40 USPQ2d 1048 (Fed. Cir. 1996); Seiko Epson Corp. v. Nu-Kate International Inc., 52 USPQ2d 1011 (Fed. Cir. 1999).
“In determining whether a design is primarily functional or primarily ornamental the claimed design is viewed in its entirety, for the ultimate question is not the functional or decorative aspect of each separate feature, but the overall appearance of the article, in determining whether the claimed design is dictated by the utilitarian purpose of the article.” See L.A. Gear Inc. v. Thom McAn Shoe Co., 988 F.2d 1117, 1123, 25 USPQ2d 1913, 1917 (Fed. Cir. 1993). The court in Norco Products, Inc. v. Mecca Development, Inc., 617 F. Supp. 1079, 1080, 227 USPQ 724, 725 (D. Conn. 1985), held that a “primarily functional invention is not patentable” as a design.
A rejection under 35 U.S.C. 171 based on lack of ornamentality may be overcome by the following (see MPEP 1504.01(c)IV):
(A) An affidavit or declaration under 37 CFR 1 .132 submitted from the applicant or a representative of the company, which commissioned the design, explaining specifically and in depth, which features or area of the claimed design were created with: (1) a concern for enhancing the saleable value or increasing the demand for the article. See Gorham Manufacturing Co. v. White, 81 U.S. (14 Wall) 511 (1871 ), or (2) A concern primarily for the esthetic appearance of the article;
(B) Advertisements which emphasize the ornamentality of the article embodying the claimed design may be submitted as evidence to rebut the rejection. See Berry Sterling Corp. v. Pescor Plastics Inc., 122 F.3d 1452, 43 USPQ2d 1953 (Fed. Cir. 1997);
(C) Evidence that the appearance of the design is ornamental may be shown by distinctness from the prior art as well as an attempt to develop or to maintain consumer recognition of the article embodying the design. See Seiko Epson Corp. v. Nu-Kate Int’/ Inc., 190 F.3d 1360, 52 USPQ2d 1011 (Fed. Cir. 1999);
(D) Evidence may be provided by a representative of the company, which commissioned the design, to establish the ornamentality of the design by stating the motivating factors behind the creation of the design;
(E) When the rejection asserts that the design is purely dictated by functional considerations, evidence may be presented showing possible alternative designs which could have served the same function indicating that the appearance of the claimed design was not purely dictated by function. See L.A. Gear Inc. v. Thom McAn Shoe Co., 988 F.2d 1117, 25 USPQ2d 1913 (Fed. Cir.1993);
(F) When the rejection asserts no period in the commercial life of the article when its ornamentality may be a matter of concern, the applicant must establish that the “article’s design is a ‘matter of concern’ because of the nature of its visibility at some point between its manufacture or assembly and its ultimate use.” See In re Webb, 916 F.2d 1553, 1558, 16 USPQ2d 1433, 1436 (Fed. Cir. 1990).
Attorney arguments are not a substitute for evidence to establish the ornamentality of the claim. See Ex parte Webb, 30 USPQ2d 1064, 1068 (Bd. Pat. App. & Inter. 1993). App. No. 29/65628
Article of Manufacture
To be considered statutory subject matter under 35 U.S.C. 171, a claimed design must be embodied in “an article of manufacture.” In re Zahn, 617 F.2d 261,268, 204 U.S.P.Q. 988, 995 (CCPA 1980). The phrase “an article of manufacture” has been interpreted to be a tangible object or physical substance. See Henry Hanger & Display Fixture Corp. of America v. Sel-O-Rak Corp., 270 F.2d 635,640, 123 U.S.P.Q. 3, 6 (5th Cir. 1959); Pelouze Scale & Mfg. Co. v. American Cutlery Co., 102 F. 916, 918 (7th Cir. 1900). Kim Craftsmen, Ltd. v. Astra Products, Inc., 212 U.S.P.Q. 268 (D.N.J. 1980); 1 E. Lipscomb, Walker on Patents, 2:11 (1984), 1 W. Robinson, The Law of Patents, 200 (1890).
A design may be embodied in an article of manufacture (1) as a configuration for an article of manufacture, (2) as a surface ornamentation for an article of manufacture, or (3) a combination of both. Gorham v. White, 81 U.S. 511,525 (1871); In re Schnell, 46 F.2d 203,209 (CCPA 1931); MPEP § 1502. App. No. 35,515/179, 2-27-24
“A design claim is limited to the article of manufacture identified in the claim; it does not broadly cover a design in the abstract. The Patent Act permits the grant of a design patent only to ‘[w]hoever invents any new, original and ornamental design for an article of manufacture.’ 35 U.S.C. § 171(a) (emphasis added). In Gorham Co. v. White, 81 U.S. 511, 20 L. Ed. 731 (1871), the Supreme Court explained that ‘[t]he acts of Congress which authorize the grant of patents for designs’ contemplate ‘not an abstract impression, or picture, but an aspect given to those objects mentioned in the acts.’ Id. at 524-25 (emphasis added). Accordingly, in Curver Luxembourg, SARL v. Home Expressions Inc., 938 F.3d 1334, 1336 (Fed. Cir. 2019), we held that the claim at issue was limited to the particular article of manufacture identified in the claim, i.e., a chair. Consistent with this authority, the Patent Office’s examination guidelines state that a ‘[d]esign is inseparable from the article to which it is applied and cannot exist alone . . . .’ Manual of Patent Examining Procedure § 1502.” In re SurgiSil, L.L.P., 14 F.4th 1380, 1382 (Fed. Cir. 2021).
Conditions and Requirements
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OTHER PATENTABILITY ISSUES
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Obviousness
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Color
Patentability of design may not rest on color alone; claim distinguishing over reference only on basis of coloring is rejected since selection of different color would not produce any basic alteration or unexpected appearance. In re Iknayan 124 USPQ 507 (1960). Fact that design here presented shows transparent portion rather than stripe of different color creates no patentable novelty in design. In re Cohn 464 O.G. 481, 27 USPQ412 (1935).
It is not denied that colors may form a component feature in certain combinations of colors or surface appearance but we are convinced that in the particular case presented here the single feature of making the hooks of red color does not constitute such matter amounting to patentable merits. It is possible that a red hook might be regarded by some individuals as more attractive than a black hook but are of opinion that this does not necessarily prove that the red hook constitutes such contrasting difference over black hooks as to constitute patentable ornamentality. It is regarded as something within the skill of those manufacturing these articles to vary the color as desired. In re Mains 461 O.G. 254, 77 F(2d) 533, 25 USPQ407 (1935).
A new blending or arrangement of colors is not patentable in a design unless a new esthetical effect is produced-an original idea indicated. In re Hall 1934 C.D. 238; 21 USPQ 19 (1934). App. No. 29/814,769, 2-27-24
The changing of a color component is not a patentable distinction. In re Mains, 461 O.G. 254; 77 F(2d) 533; 25 USPQ 407 (1935). APP No. 29/811,608, 2-27-24
Multiple Articles of Multiple Parts
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Simulations
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Offensive Subject Matter
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Computer Generated Icons
Pursuant to the guidelines for examination of design patent applications for computer generated icons, 1185 O.G. 60, 61 F.R. 11380 (1996), a design for a computer-generated icon may be considered statutory subject matter if the following conditions are present: 1) The computer screen, monitor, other display panel, or portion thereof is shown in broken or solid lines with the icon displayed on it, and 2) The claim is directed to the subject matter as embodied in an article of manufacture. App. No. 35/515,179, 2-27-24
In a Computer-Generated Icon-type design (see MPEP § 1504.0l(a)), the broken line subject matter illustrates any or all of three distinct features: the environment of the design (e.g. a mobile/electronic device); the article of manufacture (e.g. the display screen/panel), which is embodied in the environment if present; and the graphical user interface, which is the design itself and serves as ornamentation of the article of manufacture. These three portions should all be appropriately identified. This particularly ensures that the design complies with the article of manufacture requirement of 35 U.S.C. 171 in identifying that such an article exists in the drawing(s) and is clearly understood as such. App. No. 35/515,179, 2-27-24
PRIOR ART SEARCH
The Patent Act does not require a design patent applicant to perform a prior art search before filing for a design patent. Some applicants believe that conducting a search is duplicative and an unnecessary expense since conducting a prior art search is a responsibility of the patent examiner. However, a prior art search can be helpful to determine if the claimed design is patentable over the prior art before expenses and fees are incurred filing for a design patent. A prior art search also can be helpful to determine how a design may be modified to avoid prior art.
If a design patent applicant requests expedited examination of a design application under 37 CFR 1.155, then the applicant must conduct and file a preexamination search as required by section (a)(2). 37 CFR 1.155 (a)(3)(ii) requires that the applicant file a statement that a preexamination search was conducted. The statement must indicate the field of search and include an information disclosure statement in compliance with 37 CFR 1.98.
Since it is the responsibility of a design patent examiner and the USPTO to conduct an effective prior art search, the patent applicant is required to submit an application that provides the examiner with a clear understanding of the scope of the claim. If claim scope cannot be determined clearly, the applicant is required to provide additional information on the nature and intended use of the article in which the claimed design is embodied or applied,
“It is the responsibility of the examiner and therefor the USPTO, to insure that every patent is issued with the most prevalent prior art search based on a clearly defined title of a particular article of manufacture.
“It is the responsibility of the applicant to insure that the application is filed with the necessary information to insure that the examiner and therefor the USPTO has the ability to insure that this potential patent is issued with the most prevalent prior art search.
“Novelty and nonobviousness of a design claim must generally be determined by a search in the pertinent design classes. It is a!so mandatory that the search be extended to the mechanical classes encompassing inventions of the same general type. See § MPEP 1504.
“Furthermore, as per the Examiner Handbook on the U.S. Patent Classification System, ‘the classification of design patents is based on the concept of function or intended use of the industrial designs disclosed and claimed in the Design patent.’ Each Design class is organized into subclasses to permit efficient searching for specific types of industrial designs. A subclass is a collection of design patents found in a Design Class, which pertains to a particular function, a specific functional feature and or distinctive ornamental appearance of form.
“Applicant is therefore required to provide a sufficient explanation of the scope (nature and intended use) of the article in which the claimed design is embodied or applied, so that a definitive classification and search of the prior arts can be made. See 37 CFR 1.154(b)(1); MPEP 1503.01. This additional information should be in the form of an explanation of any relevant filed design/utility applications and patents particularly pointing out their relevance to this claim. This additional information could also include the following: information analogous to an abstract, background of the invention or a summary of the invention and/or a combination of the aforementioned, analogous fields of search; other pertinent prior art and advertising brochures and websites would also prove helpful. App. No. 35/514,222, 1-2-24
“An enabling and definitive disclosure ensures the public that the claim’s scope has been ascertained by Hie PTO. This ensures that the correct prior art search has been conducted.
“The examiner’s understanding [of claim scope] cannot by subject to conjecture to any degree because a prior art search must be rendered. Absent a clear statement of this claim’s scope (nature and intended use), applicant seeks a determination of patentability based on a hypothetical and conjectural understanding of same by the Patent & Trademark Office. The examiner must base any prior art search of a design and utility search on a clear understanding of the scope (nature and intended use) of a particular article of manufacture. App. No. 29/786,471, 11-7-23
U.S. CLASSIFICATION SYSTEM
U.S. Design Patents are classified into 33 categories (D1-D30, D32, D34, D99) as follows:
D1 Edible Products
D2 Apparel and Haberdashery
D3 Travel Goods, Personal Belongings, and Storage or Carrying Articles
D4 Brushware
D5 Textile or Paper Yard Goods; Sheet Material
D6 Furnishings
D7 Equipment for Preparing or Serving Food or Drink Not Elsewhere Specified
D8 Tools and Hardware
D9 Packages and Containers for Goods
D10 Measuring, Testing or Signaling Instruments
D11 Jewelry, Symbolic Insignia, and Ornaments
D12 Transportation
D13 Equipment for Production, Distribution, or Transformation of Energy
D14 Recording, Communication, or Information Retrieval Equipment
D15 Machines Not Elsewhere Specified
D16 Photography and Optical Equipment
D17 Musical Instruments
D18 Printing and Office Machinery
D19 Office Supplies; Artists’ and Teachers’ Materials
D20 Sales and Advertising Equipment
D21 Games, Toys and Sports Goods
D22 Arms, Pyrotechnics, Hunting and Fishing Equipment
D23 Environmental Heating and Cooling, Fluid Handling and Sanitary Equipment
D24 Medical and Laboratory Equipment
D25 Building Units and Construction Elements
D26 Lighting
D27 Tobacco and Smokers’ Supplies
D28 Cosmetic Products and Toilet Articles
D29 Equipment for Safety, Protection and Rescue
D30 Animal Husbandry
D32 Washing, Cleaning or Drying Machines
D34 Material or Article Handling Equipment
D99 Miscellaneous
DESIGN PATENT APPLICATION
ELEMENTS
The elements in a design patent application are set forth in 37 CFR § 1.154 entitled “Arrangement of application elements in a design application,” as follows:
(a) The elements of the design application, if applicable, should appear in the following order:
(1) Design application transmittal form.
(2) Fee transmittal form.
(3) Application data sheet (see § 1.76).
(4) Specification.
(5) Drawings or photographs.
(6) The inventor’s oath or declaration (see § 1.153(b)).
(b) The specification should include the following sections in order:
(1) Preamble, stating the name of the applicant, title of the design, and a brief description of the nature and intended use of the article in which the design is embodied.
(2) Cross-reference to related applications (unless included in the application data sheet).
(3) Statement regarding federally sponsored research or development.
(4) Description of the figure or figures of the drawing.
(5) Feature description.
(6) A single claim.
(c) The text of the specification sections defined in paragraph (b) of this section, if applicable, should be preceded by a section heading in uppercase letters without underlining or bold type.
In addition, the filing fee, search fee, and examination fee are also required. If applicant is a small entity, (an independent inventor, a small business concern, or a non-profit organization), these fees are reduced by half.”
SPECIFICATION
The term “specification,” in general, refers to the written description portion of a design patent application. It includes a preamble stating the name of the applicant, title of the design, and may contain a brief description of the nature and intended use of the article that embodies the design. It also may contain cross-references to related applications, a statement regarding federally sponsored research or development, a description of the figure or figures of the drawings, a feature description, and a single claim. The most common use of a feature statement is to describe the broken lines shown in the drawings.
The specification of a design patent must meet certain statutory requirements regarding enablement and definiteness. See 35 U.S.C. § 171; In re Maatita, 900 F.3d 1369, 1375 (Fed. Cir. 2018).
35 U.S.C. § 112(a) requires that “a specification shall contain a written description of the invention.” 35 U.S.C. §112(b) requires that the “specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter.”
Preamble
In accordance with 37 CFR 1.154, the specification should include a preamble stating the name of the applicant, title of the design, and a brief description of the nature of the intended use of the article in which the design is embodied. No description of the design in the specification beyond a brief description of the drawing is generally necessary, since as a rule the illustration in the drawing views is its own best description. In re Freeman, 23 App. D.C. 226 (App. D.C. 1904).
Furthermore, the examiner objects to the portion of the description that reads, “with a water bottle closure having a support for a cell phone or similarly flat object”, because it pertains to the function/utility of the Water Bottle with Closure. App. No. 29/835,141, 2-20-24
Title
The title of the design must designate the particular article so that the formal claim will be directed to the ornamental design for the article. 37 CFR 1.153 and 35 U.S.C. 171. See MPEP 1504.01 (a) I.B.(2) for a list of appropriate and suggested titles. App. No. 29/769,116, 2-27-24
The title must be stated consistently throughout the specification. See MPEP § 1503.01 (I). App. No. 29/799,374, 2-27-24
A title must be stated in the form that is is commonly known. For example, “led” must be shown in all capitals (LED) as it is commonly known in that form. App. No. 29/818,545, 2-27-24
Drawing Descriptions
Although no specific formatting for figure descriptions in a design patent application is set forth in the MPEP, Section 1503.01(11) does that “if they [the descriptions] do not describe the views of the drawing clearly and accurately, the examiner should object to the unclear and/or inaccurate descriptions and suggest language which is more clearly descriptive of the views”. App. No. 29/814,769, 2-27-24
A figure description stating “my new design” is objectionable when there are multiple inventors. It must state “our new design.” App. No. 29/800,314, 2-27-24
Claim
According to MPEP § 608.0l(m), “While there is no set statutory form for claims, the present Office practice is to insist that each claim must be the object of a sentence starting with ‘I (or we) claim’ … “. App. No. 29/801,711, 2-27-24
The claim statement cannot have a numeral [1.] on the left side of the line. Since design patent applications include only a single claim directed to a single, unitary design concept (MPEP § 1502.01 (C)), this numbering is extraneous and must be deleted. App. No. 29/799,374, 2-27-24
Statement Descriptions
The description of the broken lines as being for “Illustration purposes only” is objectionable. See In re Blum 153 USPQ 177 (1967). “Illustration purposes only” does not clearly describe the meaning of the broken lines because in a design patent application, the drawings are the illustration of the claim (MPEP § 1503.01(11)). App. No. 29/814,769, 2-27-24
When utilizing broken lines in a drawing, a broken line description which clearly describes the use of the broken lines must be included in the specification. See 37 CFR 1.152 and MPEP § 1503.02(111). Because broken lines can be used in design patent drawings for a number of reasons, the broken-line description should expressly identify the purpose of the broken lines in addition to defining their relationship to the claimed design. See MPEP 1503.01(111). App. No. 29/766,085, 2-27-24
Since broken lines may mean different things in different circumstances, it must be made clear in each design case what they mean, or else the claim is indefinite under 35 U.S.C. 112. In re Blum, 153 USPQ 177 (C.C.P.A. 1967). Whether each kind of broken line is used to show boundaries, portions of the article, environmental structure, which form no part of the claim, or a design element such as stitching which does form a part of the claim, the use of different broken lines must be fully understood. App. No. 35/515,179, 2-27-24
A claim is indefinite and nonenabling [when] the drawing disclosure contains broken lines without any descriptions thereto. The ornamental design which is being claimed must be shown in solid lines in the drawing. Broken lines for the purpose of indicating unimportant or immaterial features of the design are not permitted. There are no portions of a claimed design which are immaterial or unimportant. See In re Blum, 374 F.2d 904, 153 USPQ 177 (CCPA 1967) and In re Zahn, 617 F.2d 261, 204 USPQ 988 (CCPA 1980). Environmental structure may be illustrated by broken lines in the drawing if clearly designated as environment in the specification. See 37 CFR 1.152 and MPEP § 1503.02, subsection Ill. App. No. 29/867,641, 2-27-24
DRAWINGS
When preparing new drawings in compliance with the requirement therefor, care must be exercised to avoid introduction of anything which could be construed to be new matter, the same being prohibited by 35 U.S.C. 132 and 37 CPR 1.121. 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 new drawing should not be labeled as “amended.” 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 l.12l(d). App. No. 29/709,136, 2-27-24
The lines depicting a symbolic break in the length of the claim must be shown in broken lines. App. No. 29/800,314, 2-27-24
Drawings must not contain descriptions of the views. Drawings must not include anything other than figure labels. Specifically, words such as “Front view” and “Back view” in the drawings are improper and must be removed. App. No. 29/818,545, 2-27-24
Details of the design in a drawing must be shown at an adequate scale to allow for satisfactory reproduction characteristics. The scale to which a drawing is made must be large enough to show the mechanism without crowding when the drawing is reduced in size to two-thirds in reproduction (see 37 CFR § 1.84 (k)).
Drawings must not be improperly illustrated with grey shading. “All drawings must be made by a process which will give them satisfactory reproduction characteristics. Every line, number, and letter must be durable, clean, black (except for color drawings}, sufficiently dense and dark, and uniformly thick and well-defined.” (37 CFR 1.84 (I)). Further, solid surface shading is improper because it might be misunderstood as showing a contrast in appearance of material. Shading should only be used if it aids in the understanding the character and contours of the claim (see 37 CFR 1.152.) The solid surface shading does not demonstrate character or contours but rather is evenly applied to the entirety of the interior surfaces, and therefore is improper. App. No. 29/820,155, 2-27-24
PHOTOGRAPHS
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APPENDIX
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OATH OR DECLARATION
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POWER OF ATTORNEY
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APPLICATION DATA SHEET
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CLAIM FOR PRIORITY
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Section 120
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CLAIM FOR FOREIGN PRIORITY
When making a claim for foreign priority based on an application filed with the International Bureau (IB) of the World Intellectual Property Organization (WIPO) the applicant must file a certified copy of the WIPO82656 application as required by 37 CPR 1.55. If the electronic copy of the priority document is not contained in the application at the time of the first Office action the applicant should verify that the priority claim (country, application number and filing date) indicated on the filing receipt is accurate and that the filing receipt includes the “Request to Retrieve” text. If the filing receipt reflects the accurate foreign priority claim and WIPO DAS access code, if applicable, the applicant should contact the Patent Electronic Business Center and request that the matter be escalated to determine why the priority document is not yet in the file. Note that the applicant continues to bear the ultimate responsibility for ensuring that the priority document is filed during the pendency of the application and before the patent is issued. For more information visit: https://www.uspto.gov/patents/basics/international-protection/electronic-priority-documentexchange-pdx
In the case of a design application, the certified copy must be filed during the pendency of the application, unless filed with a petition under 37 CPR 1.55(g) together with the fee set forth in 37 CPR 1.17 (g), that includes a showing of good and sufficient cause for the delay in filing the certified copy of the foreign application. If the certified copy of the foreign application is filed after the date the issue fee is paid, the patent will not include the priority claim unless corrected by a certificate of correction under 35 U.S.C. 255 and 37 CPR 1.323. App. No. 29/709,136, 2-27-24
FEES
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PETITION TO MAKE SPECIAL
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EXPEDITED EXAMINATION
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PRELIMINARY AMENDMENTS
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OFFICE ACTIONS
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Objections and Rejections
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Restriction Requirement
Multiple embodiments of a single inventive concept may be included in the same design application only if they are patentably indistinct. See In re Rubinfield, 270 F.2d 391, 123 USPQ 210 (CCPA 1959). Embodiments that are patentably distinct from one another do not constitute a single inventive concept and thus may not be included in the same design application. See In re Platner, 155 USPQ 222 (Comm’r Pat. 1967). App. No. 29/800,314, 2-27-24
Embodiments considered by the examiner to present overall appearances that are basically the same do not require restriction. Furthermore, the differences between the appearances of the embodiments are considered minor and patentably indistinct, or are shown to be obvious in view of analogous prior art cited. Accordingly, they are deemed to be obvious variations and are being retained and examined in the same application. A claim made up of various patentably indistinct designs may be rejected by applying prior art to any one of the embodiments. See Ex parte Appeal No. 315-40, 152 USPQ 71 (Bd. App. 1965). No argument asserting patentability based on the differences between the embodiments will be considered once the embodiments have been determined to comprise a single inventive concept. Failure of applicant to traverse this determination in reply to this action will be considered an admission of lack of patentable distinction between the above identified embodiments. App. No. 29/800,314, 2-27-24
“[T]he general policy of the Office is that applicants are not permitted to shift to claim another invention after an election is made and an Office action on the merits is made on the elected invention. Specifically, the applicant may not disaffirm or change their election, as a matter of right, after making an oral election and receiving an Office action based upon that oral election in a pending application. See MPEP 819 and 37 CFR 1.142(b).” App. No. 29/741,435, 1-2-24
Ex Parte Quayle Action
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Section 102 Novelty Rejection
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Section 103 Obviousness Rejection
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. See In re Frick, 275 F2d 741, 125 USPQ 191 (CCPA 1960) and In re Lamb, 286 F2d 610, 128 USPQ 539 (CCPA 1961). App. No. 29/789,757, 2-27-24
A designer may point out and claim a design within the environment of a larger design. In this scenario, determining novelty and non-obviousness calls for considering whether a design that looks like the claim was already in existence, whether in isolation or within environment. Without the liberty to make that consideration, the peculiarity of the selection, per se, becomes the novelty of the design. With a design that exists around or within other designed environment, there may be no reason for that particular design to exist independently in the prior art. This does not imply that it is not in itself, a design. Therefore, requiring the prior art to show a design in existence in isolation cannot be the standard for evaluating designs understood to exist within other designed environment, as with the instant claim. App. No. 35/515,179, 2-27-24
Modification of a primary reference in light of secondary references is proper when the applied references are so related that the appearance of features shown in one would suggest the application of those features to the other. See In re Rosen, 673 F.2d 388,213 USPQ 347 (CCPA 1982); In re Carter, 673 F.2d 1378, 213 USPQ 625 (CCPA 1982), and In re Glavas, 230 F.2d 447, 109 USPQ 50 (CCPA 1956). Li and Du are so related in that both show vertical rectangles that contain circles and are arranged in a column.
Further, it is noted that case law has held that a designer skilled in the art is charged with knowledge of the related art; therefore, the combination of old elements, herein, would have been well within the level of ordinary skill. See In re Antle, 444 F.2d 1168,170 USPQ 285 (CCPA 1971) and In re Nalbandian, 661 F.2d 1214, 211 USPQ 782 (CCPA 1981). App. No. 35/515,179, 2-27-24
A designer skilled in the art is charged with knowledge of the related art. See In re Antle, 444 F.2d 1168,170 USPQ 285 (CCPA 1971) and In re Nalbandian, 661 F.2d 1214, 211 USPQ 782 (CCPA 1981). App. No. 35/515,179, 2-27-24
Section 112 Rejection - Written Description
In evaluating written description, “the test for sufficiency is whether the disclosure of the application relied upon reasonably conveys to those skilled in the art that the inventor had possession of the claimed subject matter as of the filing date.” Ariad Pharms., Inc. v. Eli Lilly & Co., 598 F.3d 1336, 1351, 94 USPQ2d 1161, 1172 (Fed. Cir. 2010) (citations omitted). See also Daniels, 144 F.3d at 1456, 46 USPQ2d at 1789. With respect to showing possession, the Federal Circuit has emphasized that “the hallmark of written description is disclosure” and “[t]hus, ‘possession as shown in the disclosure’ is a more complete formulation.” Ariad, 598 F.3d at 1351, 94 USPQ2d at 1172. Accordingly, “the test requires an objective inquiry into the four corners of the specification from the perspective of a person of ordinary skill in the art” and “[b]ased on that inquiry, the specification must describe an invention understandable to that skilled artisan and show that the inventor actually invented the invention claimed.” Id. See MPEP 1504.04, I.C, Part 1.
In Racing Strollers, the Federal Circuit stated, “[a]s a practical matter, meeting the [written description] requirement of§ 112 is, in the case of an ornamental design, simply a question of whether the earlier application contains illustrations, whatever form they may take, depicting the ornamental design illustrated in the later application and claimed therein …. ” Racing Strollers Inc. v. TRI Industries Inc., 878 F.2d 1418, 1420, 11 USPQ2d 1300, 1301 (Fed. Cir. 1989) ( en bane). Subsequent cases explain that the written description analysis must be conducted from the perspective of an ordinary designer. See, e.g., Daniels, 144 F.3d at 1456-57, 46 USPQ2d at 1790 (stating “The leecher as an article of manufacture is clearly visible in the earlier design application, demonstrating to the artisan viewing that application that [the inventor] had possession at that time of the later claimed design of that article …. “) (citations omitted) (emphasis added); In re Owens, 710 F.3d at 1368, 106 USPQ2d at 1252 (stating “the question for written description purposes is whether a skilled artisan would recognize upon reading the parent’s disclosure that the trapezoidal top portion of the front panel might be claimed separately from the remainder of that area.” (citing Ariad, 598 F .3d at 1351, 94 USPQ2d at 1172) ( emphasis added)). See MPEP 1504. 04, I. C, Part 1.
Section 112 Rejection - Enablement
Under 35 U.S.C. 112(a) or pre-AIA 35 U.S.C. 112, first paragraph, the claimed invention must be described in such full, clear, concise and exact terms as to enable any person skilled in the art to make and use the same. App. No. 29709,136, 2-27-24
Section 112 Rejection - Definiteness
Under 35 U.S.C. 112(b) or pre-AIA 35 U.S.C. 112, second paragraph, the written description of the claimed invention must particularly point out and distinctly claim the subject matter which the inventor or a joint inventor ( or, for applications subject to pre-AIA 35 U.S.C. 112, the applicant) regards as the invention. App. No. 29/709,136, 2-27-24
Section 112 Rejection - New Matter
“The test for new matter is not whether the desired correction was ever specifically illustrated in a particular figure as filed, but whether there is support anywhere in the drawings for the necessary or desirable figure corrections.” David’s Bridal, Inc., v. Jenny Yoo Collection, Inc., decision of the Patent Trial and Appeal Board No. PGR2016-00041, Patent No. D744723, Paper No. 11, page 17, Entered February 22, 2017 (citing Ex parte Asano, 201 U.S.P.Q. 315 (BPAI 1978)).
In various cases, the Board has strongly rejected specific micro-analyses of individual design features, and instead looks at the big picture in the same way that one of skill in the art would when evaluating the design. David’s Bridal; see also Skechers US.A., Inc., v. Nike, Inc., decisions of the Patent Trial and Appeal Board Nos. PGR2016-00870, PGR2016-00871, PGR2016-00872, PGR2016-00874, PGR2016-00875, Patent Nos. D725356, D725359, D723772, D723781S, D723783S,
Section 171 Rejection - Statutory Double Patenting
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Section 171 Rejection - Non Statutory Double Patenting
The nonstatutory double patenting rejection is based on a judicially created doctrine grounded in public policy (a policy reflected in the statute) so as to prevent the unjustified or improper timewise extension of the “right to exclude” granted by a patent and to prevent possible harassment by multiple assignees. See In re Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993); In re Langi, 759 F.2d 887, 225 USPQ 645 (Fed. Cir. 1985); In re Van Ornum, 686 F.2d 937, 214 USPQ 761 (CCPA 1982); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); and, In re Thorington, 418 F.2d 528, 163 USPQ 644 (CCPA 1969).
A timely filed terminal disclaimer in compliance with 37 CFR l.32l(c) may be used to overcome an actual or provisional rejection based on a non-statutory double patenting ground provided the conflicting application or patent is shown to be commonly owned with this application. See 37 CFR l.13l(c).
The minor differences in length, width, proportions, and arrangement does not make a design patentably distinct; “obvious changes in arrangement and proportioning are no more patentable in one case than in the other.” In re Stevens 624 O.G. 366; 81 USPQ 362 (1949).
Per In re Freeman 1904 C.D. 619; 109 O.G. 1339 (1904) -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. App. No. 29/897,775, 2-27-24
APPLICANT'S RESPONSE
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Response to Objections and Rejections
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Preliminary Amendments
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Amendments
Any amendment must not introduce new matter and must meet the written description requirement of 35 USC 112(a). That is, it must be apparent that applicant was in possession of the amended design at the time of filing. This pertains to the addition or removal of parts of the design, as well as the conversion of solid lines to broken lines and vice versa. See 35 USC 132 and 37 CPR 1.121(f) for new matter. App. No. 29/709136, 2-27-24
Examiner Interviews
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. App. No. 29/789,757, 2-27-24.
A complete written statement as to the substance of the interview must be made of record in the application file. It is the applicants responsibility to provide the written statement, unless the interview was initiated by the Examiner and the Examiner has indicated that a written summary will be provided. See MPEP 713.04. App. No. 29/818,545, 2-27-24
OTHER APPLICATIONS
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Continuation
Coming Soon
Divisional
Coming Soon
Continuation in Part
Coming Soon
Continued Prosecution Application
Coming Soon
Reissue Application
Coming Soon
Correction
Coming Soon
REISSUE PATENTS
Coming Soon
Reissue Patent List
Coming Soon
Claimed Basis for Resissue
Coming Soon
MPEP (Chapter 1500 Design Patents)
Coming Soon
APPEALS
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Table of Contents
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