www.uspto.gov
`
`UNITED STATES DEPARTMENT OF COMMERCE
`United States Patent and TrademarkOffice
`Address: COMMISSIONER FOR PATENTS
`P.O. Box 1450
`Alexandria, Virginia 22313-1450
`
`29/808,887
`
`09/23/2021
`
`Yohei Ishigami
`
`D210033US00
`
`9892
`
`WHDA, LLP
`8500 LEESBURG PIKE
`SUITE 7500
`TYSONS, VA 22182
`
`BAKER, CALEB MORGAN
`
`2932
`
`PAPER NUMBER
`
`NOTIFICATION DATE
`
`DELIVERY MODE
`
`06/01/2023
`
`ELECTRONIC
`
`Please find below and/or attached an Office communication concerning this application or proceeding.
`
`Thetime period for reply, if any, is set in the attached communication.
`
`Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the
`following e-mail address(es):
`
`patentmail @ whda.com
`
`PTOL-90A (Rev. 04/07)
`
`

`

`
`
`Disposition of Claims*
`11 is/are pending in the application.
`)
`Claim(s)
`5a) Of the above claim(s) ___ is/are withdrawn from consideration.
`C] Claim(s)
`is/are allowed.
`Claim(s) 1 is/are rejected.
`S)
`) © Claim(s)____is/are objected to.
`C} Claim(s
`are subjectto restriction and/or election requirement
`)
`S)
`“If any claims have been determined allowable, you maybeeligible to benefit from the Patent Prosecution Highway program at a
`participating intellectual property office for the corresponding application. For more information, please see
`http:/Awww.uspto.gov/patents/init_events/pph/index.jsp or send an inquiry to PPHfeedback@uspto.gov.
`
`) )
`
`Application Papers
`10)C2 The specification is objected to by the Examiner.
`11)C) 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).
`
`Priority under 35 U.S.C. § 119
`12) Acknowledgment is made of a claim for foreign priority under 35 U.S.C. § 119(a)-(d) or (f).
`Certified copies:
`—_c)) None ofthe:
`b)1 Some**
`a)D All
`1.4 Certified copies of the priority documents have been received.
`2.1.) Certified copies of the priority documents have beenreceived in Application No.
`3.2.) 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.
`
`Attachment(s)
`
`1)
`
`Notice of References Cited (PTO-892)
`
`Information Disclosure Statement(s) (PTO/SB/08a and/or PTO/SB/08b)
`2)
`Paper No(s)/Mail Date 09/23/21,
`U.S. Patent and Trademark Office
`
`3)
`
`(LJ Interview Summary (PTO-413)
`Paper No(s)/Mail Date
`4) (J Other:
`
`PTOL-326 (Rev. 11-13)
`
`Office Action Summary
`
`Part of Paper No./Mail Date 20230502
`
`Application No.
`Applicant(s)
`29/808 887
`Ishigami etal.
`
`Office Action Summary Art Unit|AIA (FITF) StatusExaminer
`CALEB M BAKER
`2932
`Yes
`
`
`
`-- 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 underthe provisions of 37 CFR 1.136(a). In no event, however, may a reply betimely filed after SIX (6) MONTHSfrom 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) MONTHSfrom 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).
`
`Status
`
`1)C Responsive to communication(s) filed on
`C) A declaration(s)/affidavit(s) under 37 CFR 1.130(b) was/werefiled on
`
`2a)C) This action is FINAL. 2b)¥)This action is non-final.
`3) An election was madeby the applicant in responseto a restriction requirement set forth during the interview
`on
`; the restriction requirement and election have been incorporated into this action.
`4\() Since this application is in condition for allowance except for formal matters, prosecution as to the merits is
`closed in accordance with the practice under Exparte Quayle, 1935 C.D. 11, 453 O.G. 213.
`
`

`

`Application/Control Number: 29/808,887
`Art Unit: 2932
`
`Page 2
`
`Notice of Pre-AIA or AIA Status
`
`The present application, filed on or after March 16, 2013, is being examined under the first
`
`inventor to file provisions of the AIA.
`
`Acknowledgmentof Applicant’s Claim for Foreign Priority
`
`Acknowledgmentis made of applicant’s claim for foreign priority based on an application
`
`filed in Japan on 07/30/2021. It is noted however, that there is a Failed Status Report from
`
`the Priority Document Exchange in the file, which means that there is no corresponding
`
`certified copy of the JP2021-016641 D application as required by 37 CFR 1.55. 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 CFR 1.55(g) together with the fee set forth
`
`in 37 CFR 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 CFR 1.323.
`
`An attempt by the Office to electronically retrieve, under the priority document exchange
`
`program, JP2021-016641 D to which priority is claimed FAILED on 09/23/2021. Additional
`
`information may be found on the Electronic Priority Document Exchange (PDX) Program
`
`Website. httos://www usote aov/patents/basics/international-orotection/electronic-oriority-
`
`
`docurment-exchange-pey
`
`The applicant may also contact the Patent Electronic Business Center (EBC) Customer
`
`Support Center at 1- 866-217-9197 (toll free) M-F 6AM — Midnight (Eastern Time) or email
`
`PDX @uspto.gov.
`
`Because the claim for priority under 35 USC 119(b) and 37 CFR 1.55 has not been
`
`perfected, this application is not entitled to the benefit of the earlier filing date of
`
`Application No. JP2021-016641 D. As a result, Non-Patent Document “U”is available as
`
`prior art. See rejection below.
`
`Claim Rejection - 35 U.S.C. 102(a)(1)
`
`Applicant has claimed the design embodied in less than an entire article. The practice of
`
`claiming a design embodied in less than the entire article was confirmed in the decision of
`
`In re Zahn, 204 USPQ 988 (CCPA 1980). This practice also opens to the Examiner the
`
`

`

`Application/Control Number: 29/808,887
`Art Unit: 2932
`
`Page 3
`
`liberty of relying upon the features of a reference embodied in less than the entire article.
`
`The Examiner has done so in the following rejection.
`
`The claim is rejected under 35 U.S.C. 102(a)(1) as clearly anticipated by Examiner's cited
`
`Non-Patent Document “U”, Nanoe X Device (Hereinafter "Nanoe"), because the invention
`
`was patented or 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. The Nanoe
`
`design was available on 09/01/2021. The effective filing date of the claimed invention is
`
`09/23/2021.
`
`The appearance of the Nanoe design is substantially the same as that of the claimed design.
`
`The ordinary observer test is the sole test for anticipation. Int'l Seaway Trading Corp. v.
`
`Walgreens Corp., 589 F.3d 1233, 1237-38, 1240 (Fed. Cir. 2009).
`
`
`
`Claimed Design
`
`Nance X Device
`
`“Two designs are substantially the same if their resemblance is deceptive to the extent that
`
`it would induce an ordinary observer, giving such attention as a purchaser usually gives, to
`
`purchase an article having one design supposing it to be the other.” Door-Master Corp. v.
`
`Yorktowne Inc., 256 F.3d 1308, 1313 (Fed. Cir. 2001) (citing Gorham Co. v. White, 81 U.S.
`
`511, 528 (1871)).
`
`“The mandated overall comparison is a comparison taking into account significant
`
`differences between the two designs, not minor or trivial differences that necessarily exist
`
`between any two designs that are not exact copies of one another. Just as ‘minor
`
`

`

`Application/Control Number: 29/808,887
`Art Unit: 2932
`
`Page 4
`
`differences between a patented design and an accused article's design cannot, and shall
`
`not, prevent a finding of infringement,’ so too minor differences cannot prevent a finding of
`
`anticipation.” Int'l Seaway, 589 F.3d at 1243 (citing Litton Sys., Inc. v. Whirlpool Corp., 728
`
`F.2d 1423, 1444 (Fed. Cir. 1984)).
`
`The claimed design is rejected for the reasons set forth above.
`
`Conclusion
`
`Contact
`
`Any inquiry concerning this communication or earlier communications from the examiner
`
`should be directed to CALEB M BAKER whose telephone number is (571)272-9865. The
`
`examiner can normally be reached Mon-Fri 08:30-17:00 EST.
`
`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.
`
`If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor,
`
`Jae Liang can be reached on (571) 270-0229. The fax phone number for the organization
`
`wherethis application or proceeding is assigned is 571-273-8300.
`
`Information regarding the status of published or unpublished applications may be obtained
`
`from Patent Center. Unpublished application information in Patent Center is available to
`
`registered users. To file and manage patent submissions in Patent Center, visit:
`
`https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center
`
`for more information about Patent Center and https://www.uspto.gov/patents/docx for
`
`information aboutfiling in DOCX format. For additional questions, contact the Electronic
`
`Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a
`
`USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA)or 571-
`
`272-1000.
`
`/C.M.B./
`
`Examiner, Art Unit 2932
`
`/W. A. Teddy Falloway/
`Primary Examiner, Art Unit 2921
`
`