U.S. Design Patent D912,801

And, please see, “Etsy” at Natalie Mills – Rhinestone Crystal Destiny Face Mask in Gorgeous Colors, as depicted below:

 

The ornamental design for a MASK, as shown and described, below, was issued as a Design Patent on March 9, 2021. The inventor is Natalie – Dale Mills who filed her Design Patent Application on August 4, 2020 represented by her Patent Attorney, Michael D. Eisenberg. The ornamental design is a stylish fashionable design and striking accessory to wear as a masking barrier, perhaps, to the spike proteins carried on Covid Virus – 19.

What is interesting about this Design Patent is that the Applicant prevailed in a patent prosecution battle at the U.S. Patent Office where the Patent Examiner initially rejected the claim to the ornamental design in a first action on the merits. The Patent Examiner asserted a rejection under 35 U.S.C. § 102(a)(1) which recites anticipation of the ornamental design based on found prior art referencing BDTTBZ Reusable Bling Crystal Face Mask with a prior public availability date of May 23, 2020 as depicted on the “Amazon” e-commerce marketplace which was disclosed before the effective filing date, i.e., August 4, 2020, of the claimed ornamental design of the Applicant’s MASK.  The Patent Examiner, further, asserted a second rejection under 35 U.S.C. §102(a)(1) as being anticipated by BLING FACE MASK being sold on the e-commerce marketplace “Etsy” by Luxe Masks with a “review date” of August 3, 2020 which was prior to the filing date of the Applicant’s Design Patent Application. The Patent Examiner concluded that the Reusable Bling Crystal Face Mask and the Luxe Masks being sold on “Amazon” and “Etsy”, respectively, rendered the Applicant’s claimed invention as described in a printed publication, or in public use, and on sale or otherwise available to the public before the effective filing dated of the Applicant’s claimed invention.

In a remarkable concatenation (Dictionary.com – word of the day, March 25, 2021) delivered in the Applicant’s response to the Patent Examiner’s Non Final Office Action, the Applicant relied on the statutory framework of the 35 U.S.C. §102(a)(1) rejection which sports an exception dressed in a 1 year Grace Period under 35 U.S.C. §102(b)(1)(A) stating, generally, a disclosure made 1 year or less before the effective filing date of a claimed invention shall not be prior art to the claimed invention under §102(a)(1) if the disclosure was made by the inventor, here, Natalie – Dale Mills, or a joint inventor, or by another person who obtained the subject matter of the MASK disclosed directly or indirectly from the inventor, or a joint inventor, or under 35 U.S.C. §102(b)(1)(B) stating, generally, the subject matter of the MASK disclosed had, before such disclosure, been publicly disclosed by the inventor, or a joint inventor, who obtained the subject matter disclosed directly or indirectly from the inventor, or a joint inventor if there is an identified joint inventor.

The Applicant respectfully denied the Patent Examiner’s rejection under 35 U.S.C. §102(a)(1) based on the Amazon posting of the BDTTBZ Reusable Bling Crystal Face Mask with a prior public availability date of May 23, 2020. The Applicant was able to show that Amazon listing dates are not mutable with a printed publication under 35 U.S.C. §102(a)(1). The Applicant provided evidence that Amazon allows for multiple material changes to be made to an Amazon listing without any update to the date first available which does not constitute a publication date in the same way a printed publication is dated under 35 U.S.C. §102(a)(1).  Patent Attorney Eisenberg who responded on behalf of the Applicant, stated: “In fact, many Amazon sellers take advantage of the fact that a mature listing may have gained a certain visibility on the Amazon platform, will change the listing to sell a new item, and benefit the new item with the same visibility gained by a previous item.” With this rationale, perhaps, the Amazon e-commerce marketplace is favorable to Trademark holders rather than to Patent holders. In addition, the Applicant provided evidence that she had disclosed the MASK to the public as early as May 22, 2020 thereby invoking the exception under 35 U.S.C. §102(b)(1)(A) 1 year grace period allowing a disclosure made by (1) inventor, here, Natalie – Dale Mills; (2) joint inventor; or (3) by another, who obtained the subject matter directly or indirectly from the inventor or joint inventor. The Applicant’s arguments were successful, the Patent Examiner allowed the claim to the ornamental design of the MASK, and, subsequently, the Design Patent issued on March 9, 2021.

This Post is not an Advertisement or an Endorsement. I have chosen to post the link to the Inventor Natalie Mills’ ecommerce site on “Etsy” with the intent to spread the United States Patent Office’s mission of promoting innovation, creativity, and novel discoveries gaining protection from a U.S. Patent, where American industries can flourish, even where the industry is powered by the individual inventor, and, in particular a woman inventor.

Natalie Mills – Rhinestone Crystal Destiny Face Mask in Gorgeous Colors found at: https://www.etsy.com/listing/986931461/natalie-mills-rhinestone-crystal-destiny?ga_order=most_relevant&ga_search_type=all&ga_view_type=gallery&ga_search_query=natalie+mills+mask&ref=sc_gallery-1-3&plkey=db8057f6a45071be99c9903a7614374e044ca3a9%3A986931461&pro=1&frs=1&col=1.

References: USPTO at Public Pair at Patent D912,801 at NonFinal Office Action; Amendment and Remarks.

Website: Patentpending, PLLC owner Elizabeth Reilly and ISSUED TM.