The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
Value of Assistance
It would appear from an examination of this application that you are unfamiliar with some aspects of design patent prosecuting procedure and/or drafting technique. While an inventor may prosecute the application or execute the drawings, lack of skill in either field usually acts as a liability in obtaining the maximum patent protection. After reviewing this Office action you may want to consider securing the services of a registered patent attorney or patent agent to prosecute the application, and/or an experienced patent draftsperson to execute suitable drawings, since the marketplace value of a design patent greatly depends on skillful preparation and prosecution. A registered patent attorney is an attorney who has been certified by the Patent and Trademark Office as qualified to represent applicants before the Office. A registered agent has also been certified by the Office, but is not an attorney. A draftsperson should have specific (preferably design) patent experience, rather than a basic skill in mechanical drawing. The Office cannot aid in selecting an attorney, agent or draftsperson. However, the following publications are available: Attorneys and Agents Registered to Practice Before the U.S. Patent and Trademark Office and Guide for the Preparation of Patent Drawings. These publications are for sale by the Superintendent of Documents, US Government Printing Office, Washington, DC 20402. Moreover, patent draftspersons can generally be contacted through the telephone book classified listings; it may be more useful to enter <patent drafting services> into an Internet search engine – that search will produce many links to professional services. The Guide to Filing A Design Patent Application can be found at:
http://www.uspto.gov/web/offices/com/iip/pdf/brochure_05.pdf
In addition, information concerning the filing of patent applications can be found on the Internet at:
http://www.uspto.gov/web/offices/com/iip/index.htm
DETAILED ACTION
Drawings -Objection
The drawings are not in compliance with 37 CFR 1.84 (u) Numbering of views. The different views must be numbered in consecutive Arabic numerals, starting with 1, independent of the numbering of the sheets and, if possible, in the order in which they appear on the drawing sheet(s). Partial views intended to form one complete view, on one or several sheets, must be identified by the same number followed by a capital letter. View numbers must be preceded by the abbreviation "FIG."
See Example below provided solely for purposes of explanation.
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Corrected drawings are required to avoid abandonment of the application.
Replacement Drawings:
Any amended replacement drawing sheet should include all of the figures appearing on the immediate prior version of the sheet, even if only one figure is being amended. The figure or figure number of an amended drawing should not be labeled as “amended.”
If a drawing figure is to be canceled, the appropriate figure must be removed from the replacement sheet, and where necessary, the remaining figures must be renumbered and appropriate changes made to the brief description of the several views of the drawings for consistency.
Additional replacement sheets may be necessary to show the renumbering of the remaining figures. If all the figures on a drawing sheet are canceled, a replacement sheet is not required. A marked-up copy of the drawing sheet (labeled as “Annotated Sheet”) including an annotation showing that all the figures on that drawing sheet have been canceled must be presented in the amendment or the remarks section that explains the change to the drawings. Each drawing sheet submitted after the filing date of an application must be labeled in the top margin as either “Replacement Sheet” or “New Sheet” pursuant to 37 CFR 1.121 (d).
If the changes are not accepted by the examiner, the applicant will be notified and informed of any required corrective action in the next Office action.
When preparing new or replacement drawings, be careful to avoid introducing new matter, 35 U.S.C. 132 and 37 CFR 1.121(f). This pertains to either: the addition to, or the removal of, any elements shown in the originally disclosed design.
Specification -Objection
Title
The title is objected to because it is unclear. Furthermore, the title must identify the article in which the design is embodied by the name generally known and used by the public (see MPEP 1503.01).
Furthermore, the title of a design must be in the singular. 35 USC 171 states:
(a) IN GENERAL.—Whoever invents any new, original, and ornamental design for an article of manufacture may obtain a patent therefor, subject to the conditions and requirements of this title.
The current title is plural, that being Pressed Diamonds, although due to the problematic disclosure it is unclear if the claimed design is directed to a single artificial nail or a set of artificial nails, as detailed in the rejection below. Therefore, a suggested amendment to the title will be held in abeyance pending Applicant’s response.
Figure Descriptions
37 CFR 1.154 (b) states:
(b) The specification should include the following sections in order:
(1) Preamble, stating the name of the applicant, title of the design, and a brief description of the nature and intended use of the article in which the design is embodied.
(2) Cross-reference to related applications (unless included in the application data sheet).
(3) Statement regarding federally sponsored research or development.
(4) Description of the figure or figures of the drawing.
(5) Feature description.
(6) A single claim.
No figure descriptions are found in the specification. A figure description section accurately describing the views is required by MPEP 1503.01 subsection II (see also 37 CFR 1.74). It is acknowledged that Applicant included a paragraph starting “Pressed diamond-press on nails, is producing a permate piece of 3D artwork” and ending “creating curves to form different designs”. This description is objected to because design patent applications are concerned solely with the ornamental appearance of an article of manufacture and not the functional and/or structural features. The functional and/or structural features stressed by applicant are of no concern in design cases and are neither permitted nor required. Function and structure fall under the realm of utility applications. Therefore, the aforementioned description must be cancelled as any description of the design in the specification, other than a brief description of the drawings is generally not necessary, since as a general rule the illustration in the drawing views is its own best description.
Claim
The claim statement is not in formal terms and instead contains functional and structural descriptions which are of no concern in design patent applications. For proper form (37 CFR 1.153), the claim must be amended to read:
--I claim: The ornamental design for a [1] as shown and described.--
In bracket 1 insert the title of the article. As stated in the above objection to the title, the title must identify the article in which the design is embodied by the name generally known and used by the public. The title must designate the particular article, and since the claim must be in formal terms to the "ornamental design for the article (specifying name) as shown, or as shown and described," the title and claim must correspond.
Claim Rejection 35 USC 112 (a) and (b)
The claim is rejected under 35 U.S.C. 112(a) and (b) as the claimed invention is not described in such full, clear, concise and exact terms as to enable any person skilled in the art to make and use the same, and fails to particularly point out and distinctly claim the subject matter which applicant regards as the invention.
The claim is indefinite and nonenabling due to the following unclear parts which prevent a clear understanding of the design which applicant seeks protection for:
It is unclear from the information in the application whether the claimed design is for a single artificial nail or a set of artificial nails and therefore the exact scope cannot be determined without resorting to conjecture. The first drawing sheet contains three views of what appears to be a single artificial nail, the second drawing sheet contains what is understood to be the same nail as the first drawing sheet shown in an environment of use, however five total nails are shown in solid lines making it unclear if the claim is for a single nail or a set of nails, and furthermore, the third drawing sheet contains seven different nails of varying shapes that are different from the shape shown in the first two drawing sheets.
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Furthermore, the hand on the second drawing sheet and fingertips shown in the third drawing sheet are in solid line. Applicant is reminded that everything in solid line forms part of the claimed design. Structure that is not part of the claimed design, but is considered necessary to show the environment in which the design is associated, may be represented in the drawing by broken lines. This includes any portion of an article in which the design is embodied, or applied to, that is not considered part of the claimed design. See In re Zahn, 617 F.2d 261, 204 USPQ 988 (CCPA 1980). Unclaimed subject matter may be shown in broken lines for the purpose of illustrating the environment in which the article embodying the design is used. Unclaimed subject matter must be described as forming no part of the claimed design or of a specified embodiment thereof. See MPEP 1503.02, subsection III.
Special Descriptive Statement
The statements in the specification and claim make reference to embodiments and modified forms that are not shown in the drawing views. Patents should be confined in their disclosure to the respective inventions patented (see 37 CFR 1.73, MPEP 1503.01). These statements are not useful in assisting to understand the claimed design (see Ex Parte Spiegel 265 O.G., 741 (CD 1919)). Furthermore, in the absence of additional drawing views, the descriptions, which are incorporated into the claim, fail to particularly point out and distinctly claim the shape and appearance of those other embodiments, modified forms, and features that applicant regards as their invention (see MPEP 1504.04 (1)(A)). As only features shown in solid lines form part of the claimed design and as it is not permissible to refer to embodiments not shown in the drawings (MPEP 1503.01, subsection II), correction is recommended to cancel the aforementioned statement from the specification.
It may be possible to overcome this rejection by amending the disclosure to show all portions of the claimed design consistently from figure to figure. The drawings should contain a sufficient number of views to disclose the complete appearance of the design claimed, which may include the front, rear, top, bottom and sides. Furthermore, applicant may use broken lines to illustrate environmental subject matter to avoid confusion as to the metes and bounds and overall scope of the claimed design. Clear figure descriptions corresponding to figure labels in the drawings will also aid in the understanding of the claimed design.
The necessity for good drawings in a design patent application cannot be overemphasized. As the drawing constitutes the whole disclosure of the design, it is of utmost importance that it be so well executed both as to clarity of showing and completeness, that nothing regarding the design sought to be patented is left to conjecture. An insufficient drawing may be fatal to validity (35 U.S.C. 112(a) pre-AIA 35 U.S.C. 112 or, first paragraph). Moreover, an insufficient drawing may have a negative effect with respect to the effective filing date of a continuing application.
NOTE:
Restriction may be required
Due to the problematic disclosure it cannot be determined whether a restriction is required. A determination will be made upon receipt of Applicant’s amendments.
Conclusion
The claim is rejected under 35 U.S.C. 112 (a) and (b).
The references are cited as pertinent prior art. Applicant may view and obtain copies of the cited references by visiting http://www.uspto.gov/patft/index.html and pressing the “Patent Number Search” button.
How to respond to this PTO Office Action
Applicant should keep this letter for his/her files; do not send it back to the Office. If applicant does not have copies of the application as filed, the examiner (see phone number below) can provide a copy because it will be difficult to continue to work on this application without a copy.
If, after reviewing the Office action (this letter), applicant elects to continue prosecution of the application, a reply to the action must be submitted and should request reconsideration or further examination, with or without amendment. In order to be entitled to reconsideration or further examination, this request for reconsideration or further examination must be made in writing. The response must distinctly and specifically point out the supposed errors in the Office action and must respond to every objection and rejection in the Office action. If the examiner has rejected the claim over prior art (an article or articles which were previously invented), a general statement that the claim is patentable without specifically pointing out how the design patentably distinguishes from the prior art does not comply with the rules.
In all cases where the examiner has said that a response to a requirement is necessary, or where the examiner has indicated patentable subject matter, the response must either comply with the requirement(s) or specifically argue each one that is not complied with.
When sending the response to this Office action, applicant should label all papers, except drawings, "RESPONSE/AMENDMENT" and have the following items of information prominently displayed (in the upper right or left hand corner):
Serial number (checked for accuracy)
Group Art Unit number (copied from filing receipt or most recent Office action)
Filing date
Name of the examiner who prepared the most recent Office action
Title of invention
The above information should be added to the back of all drawing sheets submitted.
Certificate of Mailing
It is the applicant's responsibility to make sure that the response is received at the PTO before the expiration of the time set which runs from the mailing date (found on the first page of this action). If that does not happen, the application will be considered abandoned. To ensure that a critical date is not missed, if the response is mailed (in the United States Postal Service) before the response time has expired, a "Certificate of Mailing" may be included which merely certifies that the response is being mailed on a given date. This certification establishes that the response is timely, if it was mailed before the period for response had expired. A Certificate of Mailing is not the same as Certified Mail. A suggested format for a certificate follows.
"I hereby certify that this correspondence is being deposited with the United States Postal Service as first class mail in an envelope addressed to: Commissioner for Patents, P.O. Box 1450 Alexandria, VA 22313-1450, on ___________ (date)."
Name of Applicant, Assignee,
Or Registered Representative _________________________________
Signature ________________________________________________
Date ____________________
In order that applicant receive a receipt which establishes the date on which his response was received in the Office, he/she should include a stamped, self-addressed postcard which lists the types of papers submitted with his/her response (for example, the serial number and applicant's name ALWAYS, 2 pages of response, 3 sheets of drawing, 1 page of a declaration/oath, etc.) on the message side. This postcard will be stamped with the date of receipt and mailed back to applicant; this postcard is evidence that the response was received in the Office on that date.
If you do not respond within the time for response
In the event that applicant is not able to respond within the period for response set in the Office action, the application may still be prevented from becoming abandoned if the response is filed within six months from the mail date of the Office Action. This extension of the period is permitted only if requested and the appropriate fee for an extension of time is included. The Office charges separate fees for each month of extension of time needed to respond to an Action; the fees are set by rule, and could change. To encourage promptness, the fees are larger for the larger amounts of time. Applicant may call the examiner who will provide the fee information if an extension of time is necessary.
Change of address
If applicant changes his/her mailing address or moves, he/she must notify the Office promptly of the new address. Failure to do so will result in future communications being sent to the old address; and, if applicant does not receive a communication and fails to file the required response, the application could become abandoned. Notification should be specific to each pending application (identified as noted above) and should be the subject of a single letter, entitled "Change of Address".
How to Amend an Application
To revise the specification and claim to present your application in proper form, use the following guidance. While your application can be revised (amended) to make it clearly understandable, no subject matter can be added that was not disclosed in the application as originally filed. This is called "new matter" and is prohibited by Title 35, United States Code, Section 132 and Title 37, Code of Federal Regulations, Section 1.121(f). The election of an embodiment for further prosecution as a result of a restriction requirement by the examiner does not constitute new matter.
Normally, you do not need to make an amendment unless the examiner requires or suggests it in an Office action.
To make an amendment(s) to the text of an application, you must send a paper to the Office directing that a specified amendment(s) be made. The paper should be conspicuously titled AMENDMENT, and identified as described in the section above entitled “How to Respond to this PTO Office Action”. Amendments must be made that apply to entire paragraphs or sections, such as the specification. The following procedures must be followed when making amendments to your application.
Begin on separate sheets:
Each section of an amendment (e.g., Claim Amendments, Specification Amendments, Remarks) should begin on a separate sheet. For example, in an amendment containing a.) introductory comments, b.) amendments to the claims, c.) amendments to the specification and d.)remarks, each of these sections should begin on a separate sheet.
A) Amendments to the specification:
An amendment to the specification may be made by presenting a replacement paragraph, section or substitute specification marked up to show changes made relative to the immediate prior version. The changes in any amended specification should be shown by strikethrough (for deleted matter) or underlining (for added matter).
B) Amendments to the claim:
An amendment to the claim must be presented with markings to indicate the changes that have been made relative to the immediate prior version. The changes in any amended claim should be shown by strikethrough (for deleted matter) or underlining (for added matter).
C) Amendments to drawing figures:Drawing changes may be made by presenting replacement figures which incorporate the proposed changes and which comply with 37 CFR 1.84. An explanation of the changes made must be presented in remarks section of the amendment, and may be accompanied by a marked-up copy of one or more of the figures being amended, with annotations. If changes to the drawing figure(s) are not approved by the examiner, applicant will be informed in the next Office action. Any replacement drawing sheet must be identified in the top margin as “Replacement Sheet” and include all of the figures appearing on the immediate prior version of the sheet, even though only one figure may be amended. Any marked-up (annotated) copy showing changes must be labeled “Annotated Marked-up Drawings” and accompany the replacement sheet in the amendment (e.g., as an appendix). The figure or figure number of the amended drawing should not be labeled as "amended." If the changes to the drawing figure(s) are not accepted by the examiner, applicant will be notified of any required corrective action in the next Office action. No further drawing submission will be required, unless applicant is notified.
Contact Information
Any inquiry concerning this communication or earlier communications from the Examiner should be directed to Alison M. Ofstun whose telephone number is 408-918-7649. The Examiner can normally be reached Monday through Friday, 8:00am to 4:00pm CST. 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, Michael Stout, can be reached at 408-918-7558. The fax phone number for the organization where this 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 about filing 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.
/ALISON M OFSTUN/Examiner, Art Unit 2924