`
`UNITED STATES DEPARTMENT OF COMMERCE
`United States Patent and Trademark Office
`Address: COMMISSIONER FOR PATENTS
`P.O. Box 1450
`Alexandria, Virginia 22313-1450
`www .uspto.gov
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`APPLICATION NO.
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`
`
`
` FILING DATE
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`FIRST NAMED INVENTOR
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`ATTORNEY DOCKETNO.
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`CONFIRMATIONNO.
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`29/544,310
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`11/02/2015
`
`Jody AKANA
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`2607.4870002(P16718USC2)
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`8689
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`STERNE, KESSLER, GOLDSTEIN & FOX PLLC. Le
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`1100 NEW YORK AVENUE,N.W.
`WASHINGTON,DC 20005
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`BUL, DANIEL
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`PAPER NUMBER
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`DELIVERY MODE
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`PAPER
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`ART UNIT
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`2912
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`MAIL DATE
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`09/22/2016
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`Please find below and/or attached an Office communication concerning this application or proceeding.
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`The time period for reply, if any, is set in the attached communication.
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`PTOL-90A (Rev. 04/07)
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`

`

`
`Application No.
`Applicant(s)
`29/544,310
`AKANA ET AL.
`
`Office Action Summary
`Examiner
`Art Unit
`AIA (First Inventor to File)
`
`
`2912DANIEL BUI No
`-- The MAILING DATEof this communication appears on the cover sheet with the correspondence address--
`Period for Reply
`
`A SHORTENED STATUTORY PERIOD FOR REPLYIS SET TO EXPIRE 3 MONTHS FROM THE MAILING DATE OF
`THIS COMMUNICATION.
`Extensions of time may be available under the provisions of 37 CFR 1.136(a).
`after SIX (6) MONTHS from the mailing date of this communication.
`If NO period for reply is specified above, the maximum statutory period will apply and will expire SIX (6) MONTHS from the mailing date of this communication.
`Failure to reply within the set or extended period for reply will, by statute, cause the application to become ABANDONED (35 U.S.C. § 133).
`Any reply received by the Office later than three months after the mailing date of this communication, evenif timely filed, may reduce any
`earned patent term adjustment. See 37 CFR 1.704(b).
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`In no event, however, may a reply be timely filed
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`-
`-
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`Status
`1) Responsive to communication(s)filed on
`L] A declaration(s)/affidavit(s) under 37 CFR 1.130(b) was/werefiled on
`2a)L] This action is FINAL.
`2b)X] This action is non-final.
`3)L] An election was made bythe applicant in responseto a restriction requirementset forth during the interview on
`; the restriction requirement and election have been incorporated into this action.
`4)L] Sincethis application is in condition for allowance except for formal matters, prosecution as to the merits is
`closed in accordancewith the practice under Ex parte Quayle, 1935 C.D. 11, 453 O.G. 213.
`
`Disposition of Claims*
`5) Claim(s) 7 is/are pending in the application.
`5a) Of the above claim(s)
`is/are withdrawn from consideration.
`6)L] Claim(s)___is/are allowed.
`7) Claim(s) 3 is/are rejected.
`8)L] Claim(s) 4 is/are objected to.
`
`9)L] Claim(s)
`are subjectto restriction and/or election requirement.
`* If any claims have been determined allowable, you may be eligible to benefit from the Patent Prosecution Highway program at a
`participating intellectual property office for the corresponding application. For more information, please see
`nito:/www. uspte.dovi
`atenis/init_ eventss/
`
`
` nvindex.isp or send an inquiry to PPHfeecback@uspto.aoy.
`
`Application Papers
`10)X] The specification is objected to by the Examiner.
`
`11) The drawing(s) filed on
`is/are: a)[_] accepted or b)[_] objected to by the Examiner.
`Applicant may not request that any objection to the drawing(s) be held in abeyance. See 37 CFR 1.85(a).
`Replacement drawing sheet(s) including the correction is required if the drawing(s) is objected to. See 37 CFR 1.121(d).
`
` Attachment(s)
`
`Priority under 35 U.S.C. § 119
`12)L] Acknowledgment is made of a claim for foreign priority under 35 U.S.C. § 119(a)-(d) or (f).
`Certified copies:
`a)LJ All
`b)[] Some** c)L] None ofthe:
`1.) Certified copies of the priority documents have been received.
`2.L] Certified copies of the priority documents have been received in Application No.
`3.L] Copies of the certified copies of the priority documents have been receivedin this National Stage
`application from the International Bureau (PCT Rule 17.2(a)).
`““ See the attached detailed Office action for a list of the certified copies not received.
`
`3) TC Interview Summary (PTO-413)
`1) X Notice of References Cited (PTO-892)
`Paper No(s)/Mail Date.
`;
`,
`4 O Oth
`2) X Information Disclosure Statement(s) (PTO/SB/08a and/or PTO/SB/08b)
`
`Paper No(s)/Mail Date 11/04/2015. ther )
`
`U.S. Patent and Trademark Office
`PTOL-326 (Rev. 11-13)
`
`Office Action Summary
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`Part of Paper No./Mail Date 20160916
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`

`

`Application/Control Number: 29/544,310
`Art Unit: 2912
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`Page 2
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`The present application is being examined underthe pre-AJAfirst to invent provisions.
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`OFFICE ACTION
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`Applicants’ Preliminary Amendments to the Specification and to the Drawings received November
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`04, 2015 are acknowledged.
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`Claim to Priority
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`The claim to priority as being -“a continuation of and claimspriority to U.S. Design Application
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`No. 29/481,729, filed February 10, 2014, which is a continuation of and claimspriority to U.S.
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`Design Application No. 29/431,841”- is objected to because applicants’ have not fully complied
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`with one or more conditions set forth in 35 U.S.C. 120 to receive the benefit of the earlier filing
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`date. The later-filed application must contain only subject matter disclosed in the prior application
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`according to the description requirement of 35 U.S.C. 112, first paragraph. Applicants have
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`graphically described a design that they were not in possession ofat the time the parent case was
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`filed. Specifically applicants have introduced an end portion (A) that has no antecedent basis,
`and was not described in applications 29/481,729 and 29/431,841. Since the end portion (A
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`would have been new in applications 29/481,729 and 29/431,841, the claim to priority as a
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`continuation is improper.
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`
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`

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`Application/Control Number: 29/544,310
`Art Unit: 2912
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`Page 3
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`To overcomethis objection, this application is required:
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`A. Submission of a new oath or declaration along with the surcharge set forth in 37 CFR 1.16(f);
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`B. The application be redesignated as a continuation-in-part application rather than a continuation
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`application, along with a continuation-in-part caution (such as “Referenceto this design application
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`as a continuation-in-part under 35 U.S.C. 120 is acknowledged. However, unless the filing date of
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`the earlier application is actually needed, such as to avoid intervening prior art, the entitlement to
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`priority in this CIP application will not be considered. See In re Corba, 212 USPQ 825 (Comm’r
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`Pat. 1981)”), and
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`C. Amending the specification as noted by the Examiner, above.
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`Nonstatutory double patenting rejection
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`The nonstatutory double patenting rejection is based on a judicially created doctrine grounded in
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`public policy (a policy reflected in the statute) so as to prevent the unjustified or improper timewise
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`extension of the "right to exclude" granted by a patent and to prevent possible harassment by
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`multiple assignees. See In re Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993); In re
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`Longi, 759 F.2d 887, 225 USPQ 645 (Fed. Cir. 1985); In re Van Ornum, 686 F.2d 937, 214 USPQ
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`761 (CCPA 1982); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); and, In re Thorington,
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`418 F.2d 528, 163 USPQ 644 (CCPA 1969).
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`A timely filed terminal disclaimer in compliance with 37 CFR 1.321(c) may be used to overcome
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`an actual or provisional rejection based on a non-statutory double patenting ground provided the
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`conflicting application or patent is shown to be commonly ownedwith this application. See 37
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`CFR 1.130(b).
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`Effective January 1, 1994, a registered attorney or agent of record maysign a terminal disclaimer.
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`A terminal disclaimer signed by the assignee must fully comply with 37 CFR 3.73(b).
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`

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`Application/Control Number: 29/544,310
`Art Unit: 2912
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`Page 4
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`The claim is rejected under the judicially created doctrine of the obviousness-type double patenting
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`of the claim in applicant's prior US Patent No.D707681. Although the conflicting claims are not
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`identical, they are not patentably distinct from each other because modifying a rectangular end
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`portion to a square end portion; and modifying a rectangularslot to an oval slot at one end, are
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`considered minors and do not render the overall appearance of one unobvious overthe other. This
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`is a provisional obviousness-type double patenting rejection because the conflicting claims have not
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`in fact been patented.
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`It is well settled that it is unobviousness in the overall appearance of the claimed design, when
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`comparedwith the prior art, rather than minute details or small variations in design as appears to be
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`the case here, that constitutes the test of design patentability. See In re Frick, 275 F2d 741, 125
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`USPQ 191 (CCPA 1960) and In re Lamb, 286 F2d 610, 128 USPQ 539 (CCPA 1961).
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` RECTANISULARBLY errr
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`SSIS
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`THE PRESENT APPLICATION
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` x
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`LUXGER EXD POSTERS meee
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`OACAD SECRE:
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`

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`Application/Control Number: 29/544,310
`Art Unit: 2912
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`Page 5
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`The claim stands rejected for the reasonsset forth above.
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`Conclusion
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`Anyinquiry concerning this communication or earlier communications from the examiner should
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`be directed to Daniel D. Bui whosetelephone numberis 571-272-2618. The examiner can
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`normally be reached on Mondayto Friday from 10:00 AM to 6:30 PM.
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`If attempts to reach the examiner by telephone are unsuccessful, the examiner's supervisor, Ian
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`Simmons, can be reached on 571-272-2658. The fax phone numberfor the organization wherethis
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`application or proceeding is assigned is 571-273-8300.
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`Information regarding the status of an application may be obtained from the Patent Application
`
`Information Retrieval (PAIR) system. Status information for published applications may be
`
`obtained from either Private PAIR or Public PAIR. Status information for unpublished applications
`
`is available through Private PAIR only. For more information about the PAIR system, see
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`http://pair-direct.uspto.gov. Should you have questions on access to the Private PAIR system,
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`contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free).
`
`/Daniel Bui/
`
`Primary Examiner
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`Art Unit 2912
`
`