Reply to Office Action of October 23, 2020
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`-2-
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`Remarks
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`BRUNNERet al.
`Application No. 29/706,360
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`Based on the following remarks, Applicant respectfully requests that the Office reconsider
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`and withdraw the outstanding rejection.
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`Rejection under 35 USC § 103
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`The claim is rejected under 35 USC § 103 as unpatentable over US Patent No. D643,833 to
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`Lee et al. The Office contends that Lee’s overall appearanceis basically the same as that of the
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`claimed design because:
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`e
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`“Lee 833 is a circular exterior headset with downward sloping rim, inward sloping
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`surface, and central flat surface.”
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`The Office acknowledgesthe following difference of the claimed design with respect to Lee, but
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`considers this difference to be “a mere manifestation of the same basic design”:
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`e
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`“slight difference in the central circular flat surface with rim of Lee 833....”
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`The Office concludes that, “The claimed design and the reference to Lee 833 would be considered
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`by one of ordinary capability who designsarticles of this type to be a mere manifestation of the
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`same basic design rather than characteristically different designs.” (See Office Action at 3.)
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`Applicant respectfully disagrees. Lee does not qualify as a primary reference usable in an
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`obviousnessrejection, because it does not have “basically the same” design characteristics as the
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`claimed design. See In re Rosen, 673 F.2d 388, 391 (CCPA 1982). The Office’s contrary conclusion
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`overlooks significant differences, which are pointed out below with reference to side-by-side partial
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`reproductionsof the drawings.
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`These visual differences must be accounted for in assessing whether Lee has “basically the
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`same” design characteristics as the claimed design. When they are accountedfor, the claimed
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`design is shown to haveasignificantly different overall appearance from Lee, such that Leeis not
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`“basically the same”as the claimed design and cannotbe applied in a § 103 rejection of the claimed
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`design.
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`Specifically:
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`e Lee’s deep outer section extends outward much more than the claimed design’s
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`shallow outer section, such that the proportions of the designsin profile are
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`Atty. Dkt. No. 3581.0150006(P25245USC4)
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`Reply to Office Action of October 23, 2020
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`-3-
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`BRUNNERet al.
`Application No. 29/706,360
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`significantly different. Lee appears much more wide and gradual, while the claimed
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`design appears much moreslim and angular.
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`pecieeieteeryy Loswad’
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`x
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`From Lee,
`Fig. 5
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`From pending
`Fig. 4
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`e Lee’s middle section forms a distinct, steep concave curve, while the claimed
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`design’s middle section is straight-walled. In other words, Lee’s middle section has
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`the shape ofa partial torus, while the middle section of the claimed design has a
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`frustoconical shape.
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`fPSELEEDELfap
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`Loe
`“er
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`
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`Me,
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`fieARSoeAO,
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`From Lee,
`Fig. 1
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`From pending
`Fig. 3
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`Atty. Dkt. No. 3581.0150006(P25245USC4)
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`Reply to Office Action of October 23, 2020
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`-4-
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`BRUNNERet al.
`Application No. 29/706,360
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`e The claimed design hassignificantly different proportionsrelative to Lee’s design.
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`This is readily apparent with reference to the below side-by-side juxtaposition of
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`Figure 6 of the claimed design with Lee’s Figure 2. For example, the outer and
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`middle sections of the claimed design are much moreproportionally balanced than
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`those of Lee, in which the middle section is much thinner than and visually
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`subordinate to its outer and central sections.
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`From Lee,
`Fig. 2
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`From pending
`Fig. 6
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`Atty. Dkt. No. 3581.0150006(P25245USC4)
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`Reply to Office Action of October 23, 2020
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`-5-
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`BRUNNERet al.
`Application No. 29/706,360
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`e Lee’s transition betweenits central and middle section has a complex shape: as
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`shownin Lee’s Figure 1, Lee’s central section protrudes outward from edgeofits
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`curved middle section. The many contourlines clustered around this area in Lee
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`demonstrate the complexity of this shapeasit transitions from the base of the curved
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`middle section outward to the central section. The claimed design has no similar
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`complexity between its central and middle sections.
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`ootarnntpshs
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`aSg
`Sf:
`S
`Mts
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`From Lee,
`Fig. 4
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`From pending
`Fig. 1
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`Together these differences result in two designs with significantly different overall visual
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`appearances, such that Lee does not have “basically the same” design characteristics as the claimed
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`design. Applicant asks that the rejection under § 103 be withdrawnat least because (a) the above-
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`noted differences were not recognized or accounted for in the rejection, and (b) when accountedfor,
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`the above-noted differences result in overall appearancesthat are not “basically the same,” such that
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`Lee cannot qualify as a primary reference in a § 103 rejection of the pending claim.
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`Conclusion
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`The stated ground of rejection has been properly traversed, accommodated, or rendered
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`moot. Applicant therefore respectfully requests that the Office reconsider the outstanding rejection
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`Atty. Dkt. No. 3581.0150006(P25245USC4)
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`Reply to Office Action of October 23, 2020
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`-6-
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`BRUNNERet al.
`Application No. 29/706,360
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`and that it be withdrawn. Applicant believes that a full and complete reply has been madeto the
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`outstanding Office Action and, as such, the present application is in condition for allowance. If the
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`Office believes, for any reason, that personal communication will expedite prosecution of this
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`application, the Office is invited to telephone the undersigned at the numberprovided.
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`Promptand favorable consideration of this Reply is respectfully requested.
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`Respectfully submitted,
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`STERNE, KESSLER, GOLDSTEIN & FOX P.L.L.C.
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`/Daniel A. Gajewski #64,515/
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`Daniel A. Gajewski
`Attorney for Applicant
`Registration No. 64,515
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`15834585.1
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`Date: 2021-02-19
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`1100 New York Avenue, N.W.
`Washington, D.C. 20005-3934
`(202) 371-2600
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`Atty. Dkt. No. 3581.0150006(P25245USC4)
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