DETAILED ACTION
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 .
Examiner’s Comments
The merits of this case have been carefully reviewed in light of the applicant’s amendment received on 09/26/2025. The specification objection has been withdrawn as the applicant has addressed the objection by amendment. The 112(a) and (b) rejection regarding the preamble has been withdrawn as the applicant has addressed the issue by amendment. However, the 112(a) and (b) rejection regarding the inconsistencies with the use of broken line and solid line in depicting the claimed design has not been fully overcome and is thus repeated again in this action and made final. Additionally, after careful reconsideration of the application, preamble and specification objections are presented below.
Restriction Election
This application discloses the following embodiments:
Embodiment 1: FIGS. 1-8, chair back
Embodiment 2: FIGS. 9-16, chair seat
Multiple embodiments of a single inventive concept may be included in the same design application only if they are patentably indistinct. See In re Rubinfield, 270 F.2d 391, 123 USPQ 210 (CCPA 1959). Embodiments that are patentably distinct from one another do not constitute a single inventive concept and thus may not be included in the same design application. See In re Platner, 155 USPQ 222 (Comm' r Pat. 1967). The presence or absence of a chair back or chair seat creates patentably distinct designs.
The above disclosed embodiments divide into the following patentably distinct groups of designs:
Group I: Embodiment 1
Group II: Embodiment 2
Restriction is required under 35 U.S.C. 121 to one of the patentably distinct groups of designs.
In the response filed on 09/26/2026, applicant elected Group I without traverse.
Group II is withdrawn from further consideration by the examiner, 37 CFR 1.142(b), as being for a nonelected design.
Information Disclosure Statement
The Information Disclosure Statements filed on 10/06/2023, 05/29/2025, 06/27/2025, 11/11/2025, 12/04/2025, 01/14/2026, and 06/05/2026 have been reviewed by the examiner and meets the requirements of 37 CFR 1.98. The information disclosure statement filed 10/06/2023 contained a reference with an incorrect patent number. The examiner has corrected the patent number on the information disclosure statement and has considered the reference. The originally cited number “D7853945” for reference no. 39, Johnson, has been corrected to “D753945”. The reference lined through in the information disclosure statement filed 05/29/2025 was not considered because no corresponding foreign reference document was attached for reference. The Information Disclosure Statements have been placed in the application file.
Objections
Preamble
For accuracy and consistency throughout the application, the preamble must be amended to remove “portion of a” before “chair” and to read:
--BE IT KNOWN that I, Frank Clegg, have invented a new, original, and ornamental design for a chair, of which the following is a specification, reference being had to the accompanying drawings, forming a part thereof.—
Specification
For accuracy and clarity, figure 1 must be amended to remove “of an exemplary embodiment” before “of a chair” and to read:
--Figure 1 is an upper perspective view of a chair, showing my new design;--
Rejections
Rejection under 35 U.S.C. 112(a) and (b)
The claim is again and finally 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.
Throughout the views there are inconsistencies with the use of broken line and solid line in depicting the bottom portion of the chair back, leaving the exact appearance unclear. In the amended drawings of 09/26/2025, figures 2, 4 and 8 show the bottom portion of the chair back in solid lines, however, figures 5 and 6 show this in broken lines. As the chair back has varying appearances, the exact appearance cannot be determined. Clarification is required. See annotated figures below:
PNG
media_image1.png
558
990
media_image1.png
Greyscale
Figure 4, amended drawings 09/26/2025
PNG
media_image2.png
653
660
media_image2.png
Greyscale
Figure 5, amended drawings 09/26/2025
For the reasons outlined, the claimed design is in fact subject to multiple interpretations, and one of ordinary skill in the art would not be able to reproduce the design without the use of conjecture and is therefore indefinite. This renders the claim non-enabled.
To overcome these rejections, it is suggested that the drawings be amended to show the design clearly and consistently in all views. Any amendment to the claim must meet the written description requirement of 35 USC 112(a). That is, it must be apparent that applicant was in possession of the amended design at the time of filing. This pertains to the addition or removal of parts of the design, as well as the conversion of solid lines to broken lines and vice versa. See 35 USC 132 and 37 CFR 1.121(f) for new matter.
Replacement Drawings
A response is required in reply to the Office action to avoid abandonment of the application. If corrected drawings are submitted in response to this Office action, they must be in compliance with 37 CFR 1.121(d). 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 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.
Conclusion
The claim stands rejected again and finally under 35 U.S.C. 112 (a) and (b) as set forth above.
THIS ACTION IS MADE FINAL. Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
Contact Information
Any inquiry concerning this communication or earlier communications from the examiner should be directed to ELISABETH M LANGE whose telephone number is (571)272-7424. The examiner can normally be reached M-F, 8 a.m. - 5 p.m. ET.
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, Barbara Fox can be reached at (571) 272-4456. 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.
/E.M.L./Examiner, Art Unit 2931
/JONATHAN J HAN/Primary Examiner, Art Unit 2912
Prosecution Insights