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 .
Detailed Office Action
Election
In the paper received 10/21/2025, Applicant responded with an amendment to the drawings representative of an election without traverse to the design shown in Group I (Embodiment 1: Figs. 1-9). Accordingly, the design shown in Group 2 (Embodiment 2: Figs. 10-18) stands withdrawn, and the corresponding drawings and figure descriptions are canceled from further prosecution. 37 CFR 1.142(b).
Drawings
The following formalities are noted:
Examiner acknowledges Applicant’s 10/21/2025 deletion of Figs. 10-18 of the non-elected Groups.
One of the views show environmental elements (stray marks/debris) in addition to the claimed design. 37 CFR 1.84(e). This stray mark extends beyond the drawing figures. Drawings must not disclose environmental elements and must be limited to the design claimed. (See example below.)
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Fig. 5
“A”: Shows a line element that extends beyond the solid line disclosure, this mark is likely a drafting error.
A response from Applicant is not required regarding the above-noted formal matter, but Applicant is strongly encouraged to consider the above, may wish to do so for clarity and to place the application in better form to move toward allowability.
Any corrected drawings submitted in response to this Office action must be compliant with 37 CFR 1.121(d).
An amended replacement drawing sheet should include all the figures appearing on the immediate prior version of the sheet, even if only one figure is amended. The figure (or figure number) of an amended view should not be labeled as amended. If a drawing figure is canceled, that figure must be removed from the replacement sheet and the remaining figures and their related figure descriptions must be renumbered, as necessary.
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 Examiner, 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. New matter is prohibited by 35 U.S.C. 132 and 37 CFR 1.121(f).
Specification
The specification is objected to as follows:
The title, “Orthodontic Clipper and Tools”, is misdescriptive, inaccurate and unclear because it is plural and contains multiple subjects and therefore appears to be directed to more than one article of manufacture. MPEP 1503.01.I. Design patents are restricted to a single claim. 35 USC § 171, 37 CFR § 1.153.
When a design is embodied in an article having multiple functions or is composed of several independent parts that interact with each other, the title must clearly define them as a single entity. MPEP 1503.01.I. An “assembly”, for example, is most often shown with multiple parts or elements, shown fitted together to make a whole.
Therefore, for proper description, accuracy, clarity and to maintain a single claim, the title should be amended throughout the application, original oath or declaration excepted. Examiner suggests:
-- Orthodontic Clipper Assembly --, or -- Orthodontic Multi-Tool --, or another similar title.
Descriptions of the drawings are not required to be written in a particular format; however, they should describe the views of the drawings clearly and accurately. MPEP 1503.01(II). The descriptions for non-elected Figs. 10-18 should be deleted per Applicant's 10/21/2025 election.
The meaning and purpose of the broken lines in a drawing must be made clear in the specification. Therefore, the broken-line description must expressly identify what is depicted by the broken lines in addition to defining their relationship to the claimed design. MPEP § 1503.02.III.
In the description of broken lines preceding the claim, the phrase "for illustrative purposes only" does not properly describe the broken lines in the drawings as required by the MPEP.
Accordingly, for clarity and proper form, the broken line statement should be amended. Examiner suggests:
-- In the drawings, the broken lines depict portions of the [title] that form no part of the claimed design. --
A feature description in the Specification contains language that attempts to broaden the scope of the claim by claiming different potential profiles for the design. A suggested amendment to resolve this concern is held in abeyance pending a response to the rejection below.
An amendment to the title is suggested above; this point is inclusive of the preamble, the figure descriptions, the broken line statement and the claim statement. Applicant is encouraged to incorporate that amendment into the figure descriptions, claim statement and broken line statement upon their reply.
To ensure cohesion within the disclosure, a clean copy of the entire specification document is requested with Applicant’s response. See In re Freeman, 109 O.G. 1904 C.D. 619, 23 App. D.C. 226 (1904).
Claim Rejection - 35 USC § 112(a)&(b)
The claim is rejected under 35 USC 112(a)&(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 the inventor or a joint inventor regards as the invention.
Specifically, the claim is indefinite and non-enabled because:
The inclusion of a feature statement in the specification is noted, however the patentability of the claim is not based on the specified features such as intended use, material, means of construction, application or preparations, but rather on a comparison of the overall appearance of the design with the prior art. In re Leslie, 547 F.2d 116, 192 USPQ 427 (CCPA 1977).
Multiple features explained in the feature description are objected to as follows.
A portion of the feature description following the broken line description reads as follows:
“The shapes of the cutting mechanism on the side of the device may be different
from that shown without departing from the invention. It may be longer, shorter, or have a different overall shape. The spring shape for the clipper may be claimed or may be a different shape and structure. The teeth of the clipper may be shaped differently than shown. The teeth of the clipper may be formed as a single piece with the arms of the clipper or could be inserts.”
Statements that attempt to broaden the scope of the claimed design beyond that which is shown in the drawings, by describing or suggesting other embodiments of the claimed design that are not illustrated in the disclosure, are not permitted. MPEP 1503.01.II.(B).
Specifically, statements like; “…may be different from that shown…”, “…may be longer, shorter, or have different overall shape…”, “…may be claimed or may be a different shape…”, ”…may be shaped differently…”, ”…or could be inserts.”, all refer to modifications and variations not shown in the drawings.
The claim in a design case must be to the single article shown and should not indicate that the claim is to other embodiments besides what is shown. Ex parte Remington, 1905 C.D. 28; 1140 O.G. 761 (1905).
The feature description continues:
“The spring is movable from an engaged position where the clipper may be pressed down to clip a wire, or a stowed position that permits the clipper to be made flatter. The spring may be coupled to the device in any known manner.”
This feature description adds no new information to the drawing disclosure that is not already evident and contains functional and structural explanations of the invention that have no bearing on the ornamental appearance. MPEP 1503.01, Description. Design patent applications are concerned solely with the ornamental appearance of an article of manufacture. Function and structure fall under the realm of utility patent applications. In re Carletti et al., 328 F.2d 1020, 140 USPQ 653 (CCPA 1964); Jones v. Progress Industries, Inc., 119 USPQ 92 (D.R.I. 1958).
Moreover, descriptions directed to the function or intended use of the claimed subject matter may not be printed on the patent.
The feature statement concludes:
“The connector for connecting the tools to the clipper may be attached in a different manner with a differently shaped fastener.”
Additionally, this feature description is not permitted because it further attempts to broaden the scope of the claim beyond that shown: it describes variations and modifications of the design that are not shown in the drawings.
This statement adds no new information to the disclosure that is not already evident after a review of the drawings and the Specification documents. MPEP 1503.01, Description. Therefore this content of the feature description is extraneous and redundant. See Racing Strollers Inc. v TRI Industries, 11 USPQ2d 1300, (Fed. Cir. 1989). Accordingly this statement should be deleted.
Applicant may attempt to overcome this rejection by showing the claimed design completely and consistently. In doing, Applicant may amend the drawings and/or specification in response to this Office action. Applicant is cautioned that any drawing amendments must show the claimed design, and its corresponding details, completely and consistently throughout all of the views. If Applicant chooses to remove from the claim any elements or portions of the design that are considered indefinite and non-enabling, Applicant must reduce them to legible, properly spaced broken lines. Lastly, Applicant is encouraged to compare the information in the specification to ensure agreement with the drawing disclosure. While Examiner has attempted to comprehensively list all inconsistencies, Applicant is suggested to carefully compare elements in detail among the drawings to ensure consistency in the amended response.
Applicant may also amend the specification to delete the portion of the above-referenced description that is considered indefinite and non-enabled. The remaining portion of this description would thereby support only the claim shown in the instant application and be corroborated by the drawing disclosure.
Conclusion
The claimed design stands rejected under 35 USC § 112(a)&(b) and 102(a)(1).
The references cited but not applied are considered cumulative art related to the claimed design.
Any inquiry concerning this communication of earlier communication from Examiner may be directed to Design Patent Examiner Jameson Padraic Carey, at (703)-756-1020. Examiner may typically be reached Mon-Fri, 6am-3pm PDT.
If attempts to reach the Examiner by telephone are unsuccessful, Examiner’s supervisor, Shawn T. Gingrich can be reached on (571)-270-0218. The fax phone number for the organization where this application or proceeding is assigned is (571)-273-8300.
Information regarding the status of an application may be obtained from Patent Center. Status information for published applications may be obtained from Patent Center. Status information for unpublished applications is available through Patent Center to authorized users only. Should Applicant have questions about access to the USPTO patent electronic filing system, contact the Electronic Business Center (EBC) at (866)-786-9199 (toll-free).
Examiner interviews are available via a variety of formats; see MPEP § 713.01. To schedule an interview, Applicant is encouraged to use the USPTO Automated Interview Request (AIR) Form at http://www.uspto.gov/interviewpractice. Applicant may also contact a USPTO Customer Service Representative for assistance: (800)-786-9199 (USA/CANADA), or 571-272-1000.
/J.P.C./
Design Examiner, Art Unit 2934
/Kendra Leslie Hamilton/Primary Examiner, Art Unit 2915 12/13/2025