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 .
Appendix
The Appendix, which includes additional drawing figures not claimed within this application, is acknowledged and will remain part of the original file.
Specification Objection
Descriptions of the figures are not required to be written in any particular format; however, they must describe the views of the drawing clearly and accurately. MPEP 1503.01 (II)
The use of the language “We/I” and “my/our” in the preamble and figure descriptions is objectionable. Because there is only a single listed inventor, this language should be amended to --I-- and --my--.
Furthermore, the language of FIG. 1 referring to the “environmental perspective” is objected to for lacking clarity. This can be clarified by rephrasing this as a --front-right perspective view shown in a state of use--.
For clarity and accuracy, the preamble and figure descriptions should be amended to read as follows:
--I have invented a new design for a BREATHING APPARATUS as set forth in the following specification. The claimed BREATHING APPARATUS is used to help improve a person’s breathing.
FIGURE 1 is a front-right perspective view of a BREATHING APPARATUS, showing my design in a state of use;
FIGURE 2 is a front-right perspective view of my design of FIGURE 1, shown with the environmental structure removed;
FIGURE 3 is a right side plan view thereof;
FIGURE 4 is a left side plan view thereof;
FIGURE 5 is a top plan view thereof;
FIGURE 6 is a bottom plan view thereof;
FIGURE 7 is a front plan view thereof;
FIGURE 8 is a back plan view thereof;
FIGURE 9 is a back-left perspective view thereof.--
The broken-line description should expressly identify what is represented by the broken lines in addition to defining their relationship to the claimed design (MPEP 1503.01(III)).
There are two functions of the broken lines within the drawings, but only one is mentioned – there are broken lines within the claimed design, and broken lines which depict environmental structure. The current broken line statement is also objected to for minor grammatical issues.
For clarity and proper form, the examiner recommends amending the broken line statement to read as follows (MPEP 1503.02, subsection III):
--The broken lines depict portions of the Breathing Apparatus that form no part of the claimed design.
The additional broken lines in FIG. 1 depict environmental structure that forms no part of the claimed design.--
The following language – “One or more views (e.g., the bottom view) may be omitted and therefore does not form a part of the claimed design.” -- is deemed unnecessary as the illustration in the drawing views is its own best description. Whatever is shown in solid lines constitutes the claimed design. See In re Freeman, 23 App. D.C. 226 (App. D.C. 1904). Therefore, the examiner recommends canceling this language in the specification.
The use of the language “We/I” in the claim is objectionable. Because there is only a single listed inventor, this language should be amended to --I--.
For clarity and accuracy, the claim statement should read as follows:
--I CLAIM:
The ornamental design for a BREATHING APPARTUS, as shown and described.--
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 the inventors regard as the invention.
The claim is indefinite and nonenabling due to the indefinite language and unclear scope of the claimed design. Refer to the following:
The following language in the specification described below attempts to broaden the scope of the claimed design beyond that shown in the drawings:
“Applicants reserve the right to claim any design element (portion or portions) of any positive airway pressure delivery console design disclosed herein. Each so-called “portion” or design element may be defined along structure lines in which broken lines may be used to delineate and disclaim any surrounding unclaimed structure, and/or each “portion” or design element may be defined along arbitrary borders not necessarily following a structure line, in which case dotted lines will be used to delineate what is claimed and what is not claimed. In general, Applicants reserve the right to claim any portion of the design elements disclosed herein, not limited to claiming incremental portions of each sub-portion and sub-portions or combinations of sub-portions or design elements wherever Applicants may later choose in this or a continuation application.”
“The application includes an Appendix cover page and Appendix pages A-1 to A-4, showing additional design(s) for a breathing apparatus that constitute part of this original disclosure. Applicants reserve the right to pursue these additional designs and/or design element(s) in this or future applications. The Appendix cover sheet and Appendix pages may be canceled by the examiner upon allowance of this application.”
“Appendix page A-1 and A-3, respectively, show the design of Figures 1 & 4 with a regular grid applied thereto, the grid (which does not form a part of the claimed design) being laid over the design in grey scale so as not to obscure the disclosed design. Each square or block of the grid on page A-1 is of standard size (e.g., 5mm x 5mm), and the grid may be applied to any figure of the application, including any Appendix page, whether elevation, color, side, top, bottom, front, rear and/or perspective — with the size of the overall grid being changed in size as necessary to cover the entire design of interest (with the size of the grid squares/block remaining constant). The center “C” of the grid can correspond to the center of the design where practical (some designs may not have a symmetrical center), but it is not necessary to be at the center due to the small size/resolution of the squares of the grid, the only requirement being that the grid must have a size that covers all parts of the intended design, so that one or more of the grid squares can be selected to define other design elements that may be covered. Otherwise, the grid may cover the entirety of each page of any drawing page, with the center of the grid being at the center of the page. It should be noted that any design or design element shown in the figures or Appendix can be enlarged or reduced in size as necessary so that the proper resolution for covering the desired design with the grid may be achieved.”
“Applicants reserve the right to claim the design element contained in any one grid square/block or any combination of grid squares/blocks, whether or not contiguous or grouped, in which case the remaining features to be disclaimed will be placed into broken lines, and dotted (“boundary’) lines will be added along the existing unclaimed structure lines and/or along the overlaid grid lines (between squares/blocks) to delineate what is claimed and what is not claimed. The grids of page A-1 and page A-3 include examples of several grid squares which are highlighted relative to (e.g., darker than) the remaining squares/blocks. The highlighted squares/blocks form just a few non-limiting design element examples of what Applicants may wish to pursue in this or a further continuing application. Appendix pages A-2 and A-4 include the designs of page A-1 and page A-3, respectively, but the grid in each case has been removed and the remaining non-claimed structural features converted to broken lines, thus resulting the example designs or design elements of the highlighted grid squares/blocks of page A-2 and A-4.”
This is broadening, indefinite language regarding the scope of the drawings. The claimed article can only be examined based on the merits of the claim submitted in the application, in its full and definite scope. Any portion of the claim that is described as indeterminate on its face is indefinite in nature and cannot be permitted in a design application. Attention is directed to the fact that a special description which describes variations and modifications of the design, which are not shown in the drawings is not permitted, see MPEP 1503.01, subsection II.
To overcome this portion of the rejection, applicant must remove the indicated language from the specification as it contains indefinite and broadening language described above.
If applicant chooses to amend the drawings and/or specification, the amendment must meet the
written description requirement of 35 U.S.C. 112(a). It must be apparent that applicants
were in possession of the amended design at the time of original filing. A response is
required in reply to the Office action to avoid abandonment of the application.
Conclusion
The claim is rejected under 35 USC § 112(a) and (b). The references not relied upon are cited as cumulative prior art.
Contact Information
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Maheen Khurshid whose telephone number is (571)272-9646. The examiner can normally be reached Monday - Friday 8:30 AM - 5:00 PM 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, Justin Jonaitis can be reached on 571-270-5150. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/M.K./Examiner, Art Unit 2921
/WENDY L ARMINIO/Supervisory Patent Examiner, Art Unit 2935