1504.03 Nonobviousness [R-07.2022]

Created On
byChhabra Law Firm

It should be noted that for ease of discussion purposes, any reference to 35 U.S.C. 103 in this section refers to both AIA 35 U.S.C. 103 and pre-AIA 35 U.S.C. 103(a).

A claimed design that meets the test of novelty must additionally be evaluated for nonobviousness under 35 U.S.C. 103.

I. GATHERING THE FACTS

The basic factual inquiries guiding the evaluation of obviousness, as outlined by the Supreme Court in Graham v. John Deere Co., 383 U.S. 1, 148 USPQ 459 (1966), are applicable to the evaluation of design patentability:

  • (A) Determining the scope and content of the prior art;
  • (B) Ascertaining the differences between the claimed invention and the prior art;
  • (C) Resolving the level of ordinary skill in the art; and
  • (D) Evaluating any objective evidence of nonobviousness (i.e., so-called “secondary considerations”).

A.Scope of the Prior Art

The scope of the relevant prior art for purposes of evaluating obviousness under 35 U.S.C. 103 extends to all “analogous arts.”

While the determination of whether arts are analogous is basically the same for both design and utility inventions (see MPEP § 904.01(c) and § 2141.01(a)), In re Glavas, 230 F.2d 447, 450 109 USPQ 50, 52 (CCPA 1956) provides specific guidance for evaluating analogous arts in the design context, which should be used to supplement the general requirements for analogous art as follows:

The question in design cases is not whether the references sought to be combined are in analogous arts in the mechanical sense, but whether they are so related that the appearance of certain ornamental features in one would suggest the application of those features to the other.

Thus, if the problem is merely one of giving an attractive appearance to a surface, it is immaterial whether the surface in question is that of wall paper, an oven door, or a piece of crockery. . . .

On the other hand, when the proposed combination of references involves material modifications of the basic form of one article in view of another, the nature of the article involved is a definite factor in determining whether the proposed change involves [patentable] invention.

Therefore, where the differences between the claimed design and the prior art are limited to the application of ornamentation to the surface of an article, any prior art reference which discloses substantially the same surface ornamentation would be considered analogous art. Where the differences are in the shape or form of the article, the nature of the articles involved must also be considered.

B.Differences Between the Prior Art and the Claimed Design

In determining patentability under 35 U.S.C. 103, it is the overall appearance of the design that must be considered. See In re Leslie, 547 F.2d 116, 192 USPQ 427 (CCPA 1977). The mere fact that there are differences between a design and the prior art is not alone sufficient to justify patentability. See In re Lamb, 286 F.2d 610, 128 USPQ 539 (CCPA 1961).

All differences between the claimed design and the closest prior art reference should be identified in any rejection of the design claim under 35 U.S.C. 103. If any differences are considered de minimis or inconsequential from a design viewpoint, the rejection should so state.

C.Level of Ordinary Skill in the Art

In order to be unpatentable, 35 U.S.C. 103 requires that an invention must have been obvious to a designer having “ordinary skill in the art” to which the subject matter sought to be patented pertains. The “level of ordinary skill in the art” from which obviousness of a design claim must be evaluated under 35 U.S.C. 103 has been held by the courts to be the perspective of the “designer of . . . articles of the types presented.” See In re Nalbandian, 661 F.2d 1214, 1216, 211 USPQ 782, 784 (CCPA 1981); In re Carter, 673 F.2d 1378, 213 USPQ 625 (CCPA 1982).

D.Objective Evidence of Nonobviousness (Secondary Considerations)

Secondary considerations, such as commercial success and copying of the design by others, are relevant to the evaluation of obviousness of a design claim. Evidence of nonobviousness may be present at the time a prima facie case of obviousness is evaluated or it may be presented in rebuttal of a prior obviousness rejection. See MRC Innovations, Inc. v. Hunter Mfg., LLP, 747 F.3d 1326, 1335-36, 110 USPQ2d 1235, 1242-43 (Fed. Cir. 2014); Crocs Inc. v. International Trade Commission, 598 F.3d 1294, 1310, 93 USPQ2d 1777, 1788-89 (Fed. Cir. 2010).

II. PRIMA FACIE OBVIOUSNESS

Once factual inquiries mandated under Graham v. John DeereCo., 383 U. S. 1, 148 USPQ 459 (1966) have been made, the examiner must determine whether they establish a prima facie case of obviousness. To establish prima facie obviousness, all the claim limitations must be taught or suggested by the prior art.

In determining prima facie obviousness, the proper standard is whether the design would have been obvious to a designer of ordinary skill with the claimed type of article. See In re Nalbandian, 661 F.2d 1214, 211 USPQ 782 (CCPA 1981).

As a whole, a design must be compared with something in existence, and not something brought into existence by selecting and combining features from prior art references. See In re Jennings, 182 F.2d 207, 86 USPQ 68 (CCPA 1950). The “something in existence” referred to in Jennings has been defined as “…a reference… the design characteristics of which are basically the same as the claimed design….” See In re Rosen, 673 F.2d 388, 391, 213 USPQ 347, 350 (CCPA 1982) (the primary reference did “…not give the same visual impression…” as the design claimed but had a “…different overall appearance and aesthetic appeal…”.) Hence, it is clear that “design characteristics” means overall visual appearance. This definition of “design characteristics” is reinforced in the decision of In re Harvey, 12 F.3d 1061, 1063, 29 USPQ2d 1206, 1208 (Fed. Cir. 1993), and is supported by the earlier decisions of In re Yardley, 493 F.2d 1389, 181 USPQ 331, 334 (CCPA 1974) and In re Leslie, 547 F.2d 116, 192 USPQ 427, 431 (CCPA 1977). Specifically, in the Yardley decision, it was stated that “[t]he basic consideration in determining the patentability of designs over prior art is similarity of appearance.” 493 F.2d at 1392-93, 181 USPQ at 334. Therefore, in order to support a holding of obviousness, a primary reference must be more than a design concept; it must have an appearance substantially the same as the claimed design. See In re Harvey, 12 F.3d 1061, 29 USPQ2d 1206 (Fed. Cir. 1993). Absent such a reference, no holding of obviousness under 35 U.S.C. 103 can be made, whether based on a single reference alone or in view of modifications suggested by secondary prior art.

A rejection under 35 U.S.C. 103 based on a single non-analogous reference would not be proper. The reason is that under 35 U.S.C. 103, a designer of ordinary skill would not be charged with knowledge of prior art that is not analogous to the claimed design.

Examiners are advised that differences between the claimed design and a primary reference may be held to be minor in nature and unrelated to the overall aesthetic appearance of the design with or without the support of secondary references. See In re Nalbandian, 661 F.2d 1214, 211 USPQ 782 (CCPA 1981). If such differences are shown by secondary references, they should be applied so as to leave no doubt that those differences would have been obvious to a designer of ordinary skill in the art. In re Sapp, 324 F.2d 1021, 139 USPQ 522 (CCPA 1963).

When a claim is rejected under 35 U.S.C. 103 as being unpatentable over prior art, features of the design which are functional and/or hidden during end use may not be relied upon to support patentability. “[A] design claim to be patentable must also be ornamental; and functional features or forms cannot be relied upon to support its patentability.” See Jones v. Progress, Ind. Inc., 119 USPQ 92, 93 (D. R.I. 1958). “It is well settled that patentability of a design cannot be based on elements which are concealed in the normal use of the device to which the design is applied.” See In re Cornwall, 230 F.2d 457, 459, 109 USPQ 57, 58 (CCPA 1956); In re Garbo, 287 F.2d 192, 129 USPQ 72 (CCPA 1961). It is not necessary that prior art be relied upon in a rejection under 35 U.S.C. 103 to show similar features to be functional and/or hidden in the art. However, examiners must provide evidence to support the prima facie functionality of such features. Furthermore, 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 § 1504.01(c), subsection I.

A.Combining Prior Art References

A rejection under 35 U.S.C. 103 would be appropriate if a designer of ordinary skill would have been motivated to modify a primary reference by deleting features thereof or by interchanging with or adding features from pertinent secondary references. In order for secondary references to be considered, there must be some suggestion in the prior art to modify the basic design with features from the secondary references. See In re Borden, 90 F.3d 1570, 1572, 39 USPQ2d 1524, 1526 (Fed. Cir. 1996). The long-standing test for properly combining references has been “…whether they are so related that the appearance of certain ornamental features in one would suggest the application of those features to the other.” See In re Glavas, 230 F.2d 447, 450, 109 USPQ 50, 52 (CCPA 1956).

The prohibition against destroying the function of the design is inherent in the logic behind combining references to render a claimed invention obvious under 35 U.S.C. 103(a). If the proposed combination of the references so alters the primary reference that its broad function can no longer be carried out, the combination of the prior art would not have been obvious to a designer of ordinary skill in the art. It is permissible to modify the primary reference to the extent that the specific function of the article may be affected while the broad function is not affected. For example, a primary reference to a cabinet design claimed as airtight could be modified to no longer be airtight so long as its function as a cabinet would not be impaired.

1. Analogous Art

When a modification to a primary reference involves a change in configuration, both the primary and secondary references must be from analogous arts. See In re Glavas, 230 F.2d 447, 109 USPQ 50 (CCPA 1956).

Analogous art can be more broadly interpreted when applied to a claim that is directed to a design with a portion simulating a well known or naturally occurring object or person. The simulative nature of that portion of the design is prima facie evidence that art which simulates that portion would be within the level of ordinary skill under 35 U.S.C. 103.

2. Nonanalogous Art

When modifying the surface of a primary reference so as to provide it with an attractive appearance, it is immaterial whether the secondary reference is analogous art, since the modification does not involve a change in configuration or structure and would not have destroyed the characteristics (appearance and function) of the primary reference. See In re Glavas, 230 F.2d 447, 109 USPQ 50 (CCPA 1956).

III. REBUTTAL OF THE PRIMA FACIE CASE

Once a prima facie case of obviousness has been established, the burden shifts to the applicant to rebut it, if possible, with objective evidence of nonobviousness. Examples of secondary considerations are commercial success, expert testimony and copying of the design by others. Any objective evidence of nonobviousness or rebuttal evidence submitted by applicant, including affidavits or declarations under 37 CFR 1.132, must be considered by examiners in determining patentability under 35 U.S.C. 103.

When evidence of commercial success is submitted, examiners must evaluate it to determine whether there is objective evidence of success, and whether the success can be attributed to the ornamental design. See Litton System, Inc. v. Whirlpool Corp., 728 F.2d 1423, 221 USPQ 97 (Fed. Cir. 1984); In re Nalbandian, 661 F.2d 1214, 211 USPQ 782 (CCPA 1981). An affidavit or declaration under 37 CFR 1.132 has minimal evidentiary value on the issue of commercial success if there is no nexus or connection between the sales of the article in which the design is embodied and the ornamental features of the design. See Avia Group Int’l Inc. v. L.A. Gear, 853 F.2d 1557, 7 USPQ2d 1548 (Fed. Cir. 1988).

Submission of expert testimony must establish the professional credentials of the person signing the affidavit or declaration, and should not express an opinion on the ultimate legal issue of obviousness since this conclusion is one of law. See Avia Group Int’l Inc. v. L.A. Gear, 853 F.2d 1557, 7 USPQ2d 1548 (Fed. Cir. 1988); Panduit Corp. v. Dennison Mfg. Co., 774 F.2d 1082, 227 USPQ 337 (Fed. Cir. 1985).

With regard to evidence submitted showing that competitors in the marketplace are copying the design, more than the mere fact of copying is necessary to make that action significant because copying may be attributable to other factors such as lack of concern for patent property or indifference with regard to the patentee’s ability to enforce the patent. See Cable Electric Products, Inc. v. Genmark, Inc., 770 F.2d 1015, 226 USPQ 881 (Fed. Cir. 1985).

“A prima facie case of obviousness can be rebutted if the applicant…can show that the art in any material respect ‘taught away’ from the claimed invention…A reference may be said to teach away when a person of ordinary skill, upon reading the reference…would be led in a direction divergent from the path that was taken by the applicant.” See In re Haruna, 249 F.3d 1327, 58USPQ2d 1517 (Fed. Cir. 2001).

For additional information regarding the issue of objective evidence of nonobviousness, attention is directed to MPEP § 716 through § 716.06.

The following form paragraph may be used in an obviousness rejection under 35 U.S.C. 103, where appropriate.

¶ 15.18.aia 35 U.S.C. 103 Rejection (Single Reference)

The claim is rejected under 35 U.S.C. 103 as being unpatentable over [1]. Although the invention is not identically disclosed or described as set forth in 35 U.S.C. 102, if the differences between the claimed invention and the prior art are such that the claimed invention as a whole would have been obvious before the effective filing date of the claimed invention to a designer having ordinary skill in the art to which the claimed invention pertains, the invention is not patentable.

Examiner Note:

For applications claiming priority to, or the benefit of, an application filed before March 16, 2013, this form paragraph must be preceded by form paragraphs 15.10.aia and 15.10.15.

¶ 15.18.fti Pre-AIA 35 U.S.C. 103(a) Rejection (Single Reference)

The claim is rejected under pre-AIA 35 U.S.C. 103(a) as being unpatentable over [1]. Although the invention is not identically disclosed or described as set forth in pre-AIA 35 U.S.C. 102, if the differences between the subject matter sought to be patented and the prior art are such that the subject matter as a whole would have been obvious at the time the invention was made to a designer having ordinary skill in the art to which said subject matter pertains, the invention is not patentable.

Examiner Note:

  • 1. In bracket 1, insert the reference citation.
  • 2. For applications with an actual filing date on or after March 16, 2013, that claim priority to, or the benefit of, an application filed before March 16, 2013, this form paragraph must be preceded by form paragraph 15.10.15.

¶ 15.70.aia Preface, 35 U.S.C. 103 Rejection

It would have been obvious to a designer of ordinary skill before the effective filing date of the present claimed invention to [1].

Examiner Note:

Insert explanation of the use of the reference applied in bracket 1.

¶ 15.70.fti Preface, Pre-AIA 35 U.S.C. 103(a) Rejection

It would have been obvious to a designer of ordinary skill in the art at the time the invention was made to [1].

Examiner Note:

Insert explanation of the use of the reference applied in bracket 1.

¶ 15.67 Rationale for 35 U.S.C. 103 Rejection (Single Reference)

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 F.2d 741, 125 USPQ 191 (CCPA 1960) and In re Lamb, 286 F.2d 610, 128 USPQ 539 (CCPA 1961).

¶ 15.19.aia 35 U.S.C. 103 Rejection (Multiple Reference)

The claim is rejected under 35 U.S.C. 103 as being unpatentable over [1] in view of [2].

Although the invention is not identically disclosed or described as set forth in 35 U.S.C. 102, if the differences between the claimed invention and the prior art are such that the claimed invention as a whole would have been obvious before the effective filing date of the claimed invention to a designer having ordinary skill in the art to which the claimed invention pertains, the invention is not patentable.

Examiner Note:

For applications claiming priority to, or the benefit of, an application filed before March 16, 2013, this form paragraph must be preceded by form paragraph 15.10.aia and 15.10.15.

¶ 15.19.fti Pre-AIA 35 U.S.C. 103(a) Rejection (Multiple References)

The claim is rejected under pre-AIA 35 U.S.C. 103(a) as being unpatentable over [1] in view of [2].

Although the invention is not identically disclosed or described as set forth in 35 U.S.C. 102, if the differences between the subject matter sought to be patented and the prior art are such that the subject matter as a whole would have been obvious at the time the invention was made to a designer of ordinary skill in the art to which said subject matter pertains, the invention is not patentable.

Examiner Note:

For applications with an actual filing date on or after March 16, 2013, that claim priority to, or the benefit of, an application filed before March 16, 2013, this form paragraph must be preceded by form paragraph 15.10.15.

¶ 15.68 Rationale for 35 U.S.C. 103 Rejection (Multiple References)

This modification of the primary reference in light of the secondary reference is proper because 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). 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).

The following form paragraphs may be used when making a rejection under pre-AIA 35 U.S.C. 103(a), where the reference application or patent is prior art under pre-AIA 35 U.S.C. 102(e).

¶ 15.19.02.aia Preface 35 U.S.C. 102(a)(2)/103 rejection – Different inventors, common assignee, obvious designs, no evidence of common ownership not later than effective filing date of claimed design

The claim is directed to a design not patentably distinct from the design of commonly assigned [1]. Specifically, the claimed design is different from the one in [2] in that [3]. These differences are considered obvious and do not patentably distinguish the overall appearance of the claimed design over the design in [4].

The commonly assigned [5], discussed above, names another inventor and has an earlier effectively filed date. Therefore, it qualifies as prior art under 35 U.S.C. 102(a)(2) and would form the basis for a rejection of the claimed design in the present application under 35 U.S.C. 103 if the claimed design and the designed disclosed were not commonly owned not later than the effective filing date of the claimed design under examination.

This rejection under 35 U.S.C. 102(a)(2)/103 might be overcome by: (1) a showing under 37 CFR 1.130(a) that the design in the reference was obtained directly or indirectly from the inventor or a joint inventor of this application and is thus not prior art under 35 U.S.C. 102(b)(2)(A); (2) perfecting a claim to priority under 35 U.S.C. 119 that antedates the reference by filing a certified priority document in the application that satisfies the enablement and description requirements of 35 U.S.C. 112(a); (3) perfecting the benefit claim under 35 U.S.C. 120 by filing an application data sheet under 37 CFR 1.76 which contains a specific reference to a prior application in accordance with 37 CFR 1.78 and establishing that the prior application satisfies the enablement and description requirements of 35 U.S.C. 112(a); (4) a showing under 37 CFR 1.130(b) of a prior public disclosure under 35 U.S.C. 102(b)(2)(B); or (5) providing a statement pursuant to 35 U.S.C. 102(b)(2)(C) that the design disclosed and the claimed design, not later than the effective filing date of the claimed design, were owned by the same person or subject to an obligation of assignment to the same person or subject to a joint research agreement.

Examiner Note:

  • 1. A nonstatutory double patenting rejection may also be included in the action.
  • 2. In brackets 1, 2, 4 and 5, insert “patent” and number, or “copending application” and serial number.
  • 3. In bracket 3, identify differences between design claimed in present application and that claimed in earlier-filed patent or copending application.
  • 4. This form paragraph should only be used ONCE in an Office action.
  • 5. For applications claiming priority to, or the benefit of, an application filed before March 16, 2013, this form paragraph must be preceded by form paragraphs 15.10.aia and 15.10.15.

¶ 15.19.02.fti Preface pre-AIA 35 U.S.C. 102(e)/103(a) rejection – Different inventors, common assignee, obvious designs, no evidence of common ownership at time later design was made

The claim is directed to a design not patentably distinct from the design of commonly assigned [1]. Specifically, the claimed design is different from the one in [2] in that [3]. These differences are considered obvious and do not patentably distinguish the overall appearance of the claimed design over the design in [4].

The commonly assigned [5], discussed above, has a different inventive entity from the present application. Therefore, it qualifies as prior art under pre-AIA 35 U.S.C. 102(e), (f) or (g) and forms the basis for a rejection of the claim in the present application under pre-AIA 35 U.S.C. 103(a) if the conflicting design claims were not commonly owned at the time the design in this application was made. In order to resolve this issue, the applicant, assignee or attorney of record can state that the conflicting designs were commonly owned at the time the design in this application was made, or the assignee can name the prior inventor of the conflicting subject matter.

A showing that the designs were commonly owned at the time the design in this application was made will overcome a rejection under pre-AIA 35 U.S.C. 103(a) based upon the commonly assigned case as a reference under pre-AIA 35 U.S.C. 102(f) or 35 U.S.C. 102(g), or pre-AIA 35 U.S.C. 102(e) for applications filed on or after November 29, 1999.

Examiner Note:

  • 1. This form paragraph should be used when the application being examined is commonly assigned with a conflicting application or patent, but there is no indication that they were commonly assigned at the time the invention was actually made.
  • 2. If the conflicting claim is in a patent with an earlier U.S. filing date, a rejection under pre-AIA 35 U.S.C. 102(e)/35 U.S.C. 103(a) should be made.
  • 3. If the conflicting claim is in a commonly assigned, copending application with an earlier filing date, a provisional rejection under pre-AIA 35 U.S.C. 102(e)/35 U.S.C. 103(a) should be made.
  • 4. A nonstatutory double patenting rejection may also be included in the action.
  • 5. In brackets 1, 2, 4 and 5, insert patent and number, or copending application and serial number.
  • 6. In bracket 3, identify differences between design claimed in present application and that claimed in earlier filed patent or copending application.
  • 7. This form paragraph should only be used ONCE in an Office action.
  • 8. If the rejection relies upon prior art under pre-AIA 35 U.S.C. 102(e), use 35 U.S.C. 102(e) as amended by the American Inventor’s Protection Act (AIPA) to determine the reference’s prior art date, unless the reference is a U.S. patent issued directly, or indirectly, from an international application which has an international filing date prior to November 29, 2000. Use pre-AIPA 35 U.S.C. 102(e) only if the reference is a U.S. patent issued directly or indirectly from either a national stage of an international application (application under 35 U.S.C. 371) which has international filing date prior to November 29, 2000 or a continuing application claiming benefit under 35 U.S.C. 120, 121, 365(c), or 386(c) to an international application having an international filing date prior to November 29, 2000. See the Examiner Notes for form paragraphs 7.12.fti and 7.12.01.fti to assist in the determination of the pre-AIA and pre-AIPA 35 U.S.C. 102(e) dates, respectively.
  • 9. For applications with an actual filing date on or after March 16, 2013, that claim priority to, or the benefit of, an application filed before March 16, 2013, this form paragraph must be preceded by form paragraph 15.10.15.

¶ 15.19.03.aia 35 U.S.C. 102(a)(2)/103 Provisional Rejection – design disclosed in another application with common inventor and/or assignee

The claim is provisionally rejected under 35 U.S.C. 103 as being obvious over copending Application No. [1] which has a common [2] with the instant application. Because the copending application names another inventor and has an earlier effectively filed date, it would constitute prior art under 35 U.S.C. 102(a)(2) if published under 35 U.S.C. 122(b) or patented. This provisional rejection under 35 U.S.C. 103 is based upon a presumption of future publication or patenting of the conflicting application.

Although the invention is not identically disclosed or described as set forth in 35 U.S.C. 102, if the differences between the claimed invention and the prior art are such that the claimed invention as a whole would have been obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art to which the claimed invention pertains, the invention is not patentable.

[3]

This provisional rejection under 35 U.S.C. 102(a)(2) might be overcome by: (1) a showing under 37 CFR 1.130(a) that the design in the reference was obtained directly or indirectly from the inventor or a joint inventor of this application and is thus not prior art under 35 U.S.C. 102(b)(2)(A); (2) perfecting a claim to priority under 35 U.S.C. 119 that antedates the reference by filing a certified priority document in the application that satisfies the enablement and description requirements of 35 U.S.C. 112(a); (3) perfecting the benefit claim under 35 U.S.C. 120 by filing an application data sheet under 37 CFR 1.76 which contains a specific reference to a prior application in accordance with 37 CFR 1.78 and establishing that the prior application satisfies the enablement and description requirements of 35 U.S.C. 112(a); (4) a showing under 37 CFR 1.130(b) of a prior public disclosure under 35 U.S.C. 102(b)(2)(B); or (5) providing a statement pursuant to 35 U.S.C. 102(b)(2)(C) that the subject matter disclosed and the claimed invention, not later than the effective filing date of the claimed invention, were owned by the same person or subject to an obligation of assignment to the same person or subject to a joint research agreement.

Examiner Note:

  • 1. This form paragraph should be used when the claimed design in the application being examined is obvious over subject matter disclosed in the drawings of an earlier-filed design or utility application. The design claimed in the application being examined can be an obvious version of subject matter disclosed in the drawings of an earlier-filed design application. This subject matter may be depicted in broken lines, or may be in the form of a subcombination (part or portion of an article) that is patentably distinct from the claim for the design embodied by the combination or whole article.
  • 2. In brackets 1 and 4 insert serial number of copending application.
  • 3. In bracket 2, insert inventor or assignee.
  • 4. In bracket 3, provide explanation of obviousness including differences.
  • 5. For applications claiming priority to, or the benefit of, an application filed before March 16, 2013, this form paragraph must be preceded by form paragraph 15.10.15.

¶ 15.19.03.fti Provisional Pre-AIA 35 U.S.C. 102(e)/103(a) rejection – design disclosed but not claimed in another application with common inventor and/or assignee

The claim is provisionally rejected under pre-AIA 35 U.S.C. 103(a) as being obvious over copending Application No. [1] which has a common [2] with the instant application. Based upon the different inventive entity and the pre-AIA 35 U.S.C. 102(e) date of the copending application, it would constitute prior art if published under 35 U.S.C. 122(b) or patented. This provisional rejection under pre-AIA 35 U.S.C. 103(a) is based upon a presumption of future publication or patenting of the conflicting application.

Although the invention is not identically disclosed or described as set forth in pre-AIA 35 U.S.C. 102, if the differences between the subject matter sought to be patented and the prior art are such that the subject matter as a whole would have been obvious at the time the invention was made to a designer having ordinary skill in the art to which said subject matter pertains, the invention is not patentable.

[3]

Since the design claimed in the present application is not the same invention claimed in the [4] application, this provisional rejection may be overcome by a showing under 37 CFR 1.132 that the design in the reference was derived from the designer of this application and is thus not the invention “by another,” or by a showing of a date of invention for the instant application prior to the pre-AIA 35 U.S.C. 102(e) date of the reference under 37 CFR 1.131(a). For applications filed on or after November 29, 1999, this rejection might also be overcome by showing that the subject matter of the reference and the claimed invention were, at the time the invention was made, owned by the same person or subject to an obligation of assignment to the same person. See MPEP § 2146 et seq.

Examiner Note:

  • 1. This form paragraph should be used when the claimed design in the application being examined is obvious over subject matter disclosed in the drawings of an earlier-filed design or utility application but is not claimed therein. The design claimed in the application being examined can be an obvious version of subject matter disclosed in the drawings of an earlier-filed design application. This subject matter may be depicted in broken lines, or may be in the form of a subcombination (part or portion of an article) that is patentably distinct from the claim for the design embodied by the combination or whole article.
  • 2. In brackets 1 and 4 insert serial number of copending application.
  • 3. In bracket 2, insert inventor or assignee.
  • 4. In bracket 3, provide explanation of obviousness including differences and follow the explanation with form paragraphs 15.70.fti and 15.67 or 15.68.
  • 5. Use pre-AIA 35 U.S.C. 102(e) as amended by the American Inventor’s Protection Act (AIPA) to determine the reference’s prior art date, unless the reference is a U.S. patent issued directly, or indirectly, from an international application which has an international filing date prior to November 29, 2000. Use pre-AIPA 35 U.S.C. 102 only if the reference is a U.S. patent issued directly or indirectly from either a national stage of an international application (application under 35 U.S.C. 371) which has an international filing date prior to November 29, 2000 or a continuing application claiming benefit under 35 U.S.C. 120 , 121, 365(c), or 386(c) to an international application having an international filing date prior to November 29, 2000. See the Examiner Notes for form paragraphs 7.12.fti and 7.12.01.fti to assist in the determination of the reference’s pre-AIA and pre-AIPA 35 U.S.C. 102(e) dates, respectively.
  • 6. For applications with an actual filing date on or after March 16, 2013, that claim priority to, or the benefit of, an application filed before March 16, 2013, this form paragraph must be preceded by form paragraph 15.10.15.

¶ 15.19.04.fti Pre-AIA 35 U.S.C. 102(e)/103(a) Provisional Rejection – design claimed in an earlier-filed design patent application with common inventor and/or assignee

The claim is provisionally rejected under pre-AIA 35 U.S.C. 103(a) as being obvious over the claim in copending Design Patent Application No. [1] which has a common [2] with the instant application. Based upon the different inventive entity and the pre-AIA 35 U.S.C. 102(e) date of the copending application, it would constitute prior art if patented. This provisional rejection under pre-AIA 35 U.S.C. 103(a) is based upon a presumption of future patenting of the conflicting application.

Although the invention is not identically disclosed or described as set forth in pre-AIA 35 U.S.C. 102, if the differences between the subject matter sought to be patented and the prior art are such that the subject matter as a whole would have been obvious at the time the invention was made to a person having ordinary skill in the art to which said subject matter pertains, the invention is not patentable.

[3]

Since the design claimed in the present application is not patentably distinct from the design claimed in the [4] application, this provisional rejection may be overcome by merging the two applications into a single continuation-in-part and abandoning the separate parent applications. For applications filed on or after November 29, 1999, this rejection might also be overcome by showing that the subject matter of the reference and the claimed invention were, at the time the invention was made, owned by the same person or subject to an obligation of assignment to the same person. See MPEP § 2146 et seq.

Examiner Note:

  • 1. This form paragraph should be used when the claimed design in the application being examined is obvious over the design claimed in a copending application that would constitute prior art under pre-AIA 35 U.S.C. 102(e) if published under 35 U.S.C. 122 or patented.
  • 2. A provisional nonstatutory double patenting rejection must also be included in the action.
  • 3. In brackets 1 and 4, insert serial number of copending application.
  • 4. In bracket 2, insert inventor or assignee.
  • 5. In bracket 3, provide explanation of obviousness including differences and follow the explanation with form paragraphs 15.70.fti and 15.67 or 15.68.
  • 6. This form paragraph must be preceded by form paragraph 15.19.02.fti.
  • 7. For applications with an actual filing date on or after March 16, 2013, that claim priority to, or the benefit of, an application filed before March 16, 2013, this form paragraph must be preceded by form paragraph 15.10.15.

¶ 15.19.05.aia 35 U.S.C. 102(a)(2)/103 rejection – design disclosed, no common inventors or common assignees

The claim is rejected under 35 U.S.C. 103 as being obvious over [1].

Because the reference names another inventor and has an earlier effectively filed date, it constitutes prior art under 35 U.S.C. 102(a)(2).

Although the invention is not identically disclosed or described as set forth in 35 U.S.C. 102, if the differences between the claimed invention and the prior art are such that the claimed invention as a whole would have been obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art to which the claimed invention pertains, the invention is not patentable.

[2]

This rejection under 35 U.S.C. 102(a)(2)/103 might be overcome by: (1) a showing under 37 CFR 1.130(a) that the subject matter disclosed in the copending application was obtained directly or indirectly from the inventor or a joint inventor of this application and is thus not prior art in accordance with 35 U.S.C. 102(b)(2)(A); (2) perfecting a claim to priority under 35 U.S.C. 119 that antedates the reference by filing a certified priority document in the application that satisfies the enablement and description requirements of 35 U.S.C. 112(a); (3) perfecting the benefit claim under 35 U.S.C. 120 by filing an application data sheet under 37 CFR 1.76 which contains a specific reference to a prior application in accordance with 37 CFR 1.78 and establishing that the prior application satisfies the enablement and description requirements of 35 U.S.C. 112(a) or (4) a showing under 37 CFR 1.130(b) of a prior public disclosure under 35 U.S.C. 102(b)(2)(B).

Examiner Note:

  • 1. In bracket 1, insert document number that qualifies as prior art under 35 U.S.C. 102(a)(2).
  • 2. In bracket 2, provide explanation of obviousness including differences.
  • 3. For applications claiming priority to, or the benefit of, an application filed before March 16, 2013, this form paragraph must be preceded by form paragraphs 15.10.aia and 15.10.15.

¶ 15.19.05.fti Pre-AIA 35 U.S.C. 102(e)/103(a) rejection – design disclosed but not claimed

The claim is rejected under pre-AIA 35 U.S.C. 103(a) as being obvious over [1].

Based upon the different inventive entity and the pre-AIA 35 U.S.C. 102(e) date of the reference, it constitutes prior art.

Although the invention is not identically disclosed or described as set forth in 35 U.S.C. 102, if the differences between the subject matter sought to be patented and the prior art are such that the subject matter as a whole would have been obvious at the time the invention was made to a designer having ordinary skill in the art to which said subject matter pertains, the invention is not patentable.

[2]

Since the design claimed in the present application is not the same invention claimed in the [3] patent, this rejection may be overcome by a showing under 37 CFR 1.132 that the design in the reference was derived from the designer of this application and is thus not the invention “ by another,” or by a showing of a date of invention for the instant application prior to the pre-AIA 35 U.S.C. 102(e) date of the reference under 37 CFR 1.131(a). For applications filed on or after November 29, 1999, this rejection might also be overcome by showing that the subject matter of the reference and the claimed invention were, at the time the invention was made, owned by the same person or subject to an obligation of assignment to the same person. See MPEP § 2146 et seq.

Examiner Note:

  • 1. This form paragraph should be used when the claimed design in the application being examined is obvious over subject matter disclosed in the drawings of an earlier filed design or utility patent, or application publication, but is not claimed therein. The design claimed in the application being examined can be an obvious version of subject matter disclosed in the drawings of an earlier filed design application. This subject matter may be depicted in broken lines, or may be in the form of a subcombination (part or portion of an article) that is patentably distinct from the claim for the design embodied by the combination or whole article.
  • 2. In brackets 1 and 3, insert number of the U.S. patent, U.S. patent application publication, or the WIPO publication of an international application that qualifies as prior art under pre-AIA 35 U.S.C. 102(e). See note 4 below.
  • 3. In bracket 2, provide explanation of obviousness including differences and follow the explanation with form paragraphs 15.70.fti and 15.67 or 15.68.
  • 4. Use pre-AIA 35 U.S.C. 102(e) as amended by the American Inventor’s Protection Act (AIPA) to determine the reference’s prior art date, unless the reference is a U.S. patent issued directly, or indirectly, from an international application which has an international filing date prior to November 29, 2000. Use pre-AIPA 35 U.S.C. 102(e) only if the reference is a U.S. patent issued directly or indirectly from either a national stage of an international application (application under 35 U.S.C. 371) which has an international filing date prior to November 29, 2000 or a continuing application claiming benefit under 35 U.S.C. 120, 121, 365(c), or 386(c) to an international application having an international filing date prior to November 29, 2000. See the Examiner Notes for form paragraphs 7.12.fti and 7.12.01.fti to assist in the determination of the reference’s 35 U.S.C. 102(e) date.
  • 5. For applications with an actual filing date on or after March 16, 2013 that claim priority to, or the benefit of, an application filed before March 16, 2013, this form paragraph must be preceded by form paragraph 15.10.15.

¶ 15.19.06.fti Pre-AIA 35 U.S.C. 102(e)/103(a) rejection – design claimed in a design patent with an earlier prior art date and common assignee

The claim is rejected under pre-AIA 35 U.S.C. 103(a) as being obvious over the claim in design patent [1].

Based upon the different inventive entity and the pre-AIA 35 U.S.C. 102(e) date of the reference, it constitutes prior art.

Although the invention is not identically disclosed or described as set forth in 35 U.S.C. 102, if the differences between the subject matter sought to be patented and the prior art are such that the subject matter as a whole would have been obvious at the time the invention was made to a designer having ordinary skill in the art to which said subject matter pertains, the invention is not patentable.

[2]

Since the design claimed in the present application is not patentably distinct from the design claimed in the [3] patent, this rejection may be overcome by submitting an oath or declaration under 37 CFR 1.131(c) stating that this application and the reference are currently owned by the same party and that the inventor named in this application is the prior inventor of the subject matter in the reference under 35 U.S.C. 104 as in effect on March 15, 2013. In addition, a terminal disclaimer in accordance with 37 CFR 1.321(c) is also required. For applications filed on or after November 29, 1999, this rejection might also be overcome by showing that the subject matter of the reference and the claimed invention were, at the time the invention was made, owned by the same person or subject to an obligation of assignment to the same person. See MPEP § 2146 et seq.

Examiner Note:

  • 1. This form paragraph should be used when the claimed design in the application being examined is obvious over the design claimed in a design patent having an earlier prior art date under pre-AIA 35 U.S.C. 102(e) and a common assignee.
  • 2. A nonstatutory double patenting rejection must also be included in the action.
  • 3. In brackets 1 and 3, insert number of patent.
  • 4. In bracket 2, provide explanation of obviousness including differences and follow the explanation by form paragraphs 15.70.fti and 15.67 or 15.68.
  • 5. This form paragraph must be preceded by form paragraph 15.19.02.fti.
  • 6. For applications with an actual filing date on or after March 16, 2013, that claim priority to, or the benefit of, an application filed before March 16, 2013, this form paragraph must be preceded by form paragraph 15.10.15.

¶ 15.19.07.fti Pre-AIA 35 U.S.C. 102(e)/103(a) rejection – design claimed in a design patent having an earlier prior art date and no common assignee

The claim is rejected under pre-AIA 35 U.S.C. 103(a) as being obvious over the claim in design patent [1].

Based upon the different inventive entity and the pre-AIA 35 U.S.C. 102(e) date of the reference, it constitutes prior art.

Although the invention is not identically disclosed or described as set forth in pre-AIA 35 U.S.C. 102, if the differences between the subject matter sought to be patented and the prior art are such that the subject matter as a whole would have been obvious at the time the invention was made to a designer having ordinary skill in the art to which said subject matter pertains, the invention is not patentable.

[2]

Examiner Note:

  • 1. This form paragraph should be used when the claimed design in the application being examined is obvious over the design claimed in a design patent having an earlier prior art date under pre-AIA 35 U.S.C. 102(e).
  • 2. In bracket 2, provide explanation of obviousness including differences and follow explanation with form paragraphs 15.70.fti and 15.67 or 15.68.
  • 3. For applications with an actual filing date on or after March 16, 2013, that claim priority to, or the benefit of, an application filed before March 16, 2013, this form paragraph must be preceded by form paragraph 15.10.15.

The following form paragraphs may be used in a second or subsequent action where appropriate.

¶ 15.38 Rejection Maintained

The arguments presented have been carefully considered, but are not persuasive that the rejection of the claim under [1] should be withdrawn.

Examiner Note:

In bracket 1, insert basis of rejection.

¶ 15.39.02.aia Final Rejection Under 35 U.S.C. 103 (Single Reference)

The claim is FINALLY REJECTED under 35 U.S.C. 103 over [1].

Examiner Note:

  • 1. In bracket 1, insert reference citation.
  • 2. See form paragraphs in MPEP Chapter 700, for “Action is Final” and “Advisory after Final” paragraphs.

¶ 15.39.02.fti Final Rejection Under pre-AIA 35 U.S.C. 103(a) (Single Reference)

The claim is FINALLY REJECTED under pre-AIA 35 U.S.C. 103(a) over [1].

Examiner Note:

See form paragraphs in MPEP Chapter 700, for “Action is Final” and “Advisory after Final” paragraphs.

¶ 15.40.aia Final Rejection Under 35 U.S.C. 103 (Multiple References)

The claim is FINALLY REJECTED under 35 U.S.C. 103 as being unpatentable over [1] in view of [2].

Examiner Note:

See form paragraphs in MPEP Chapter 700 for “Action is Final” and “Advisory after Final” paragraphs.

¶ 15.40.fti Final Rejection Under pre-AIA 35 U.S.C. 103(a) (Multiple References)

The claim is FINALLY REJECTED under pre-AIA 35 U.S.C. 103(a) as being unpatentable over [1] in view of [2].

Examiner Note:

See form paragraphs in MPEP Chapter 700 for “Action is Final” and “Advisory after Final” paragraphs.