DETAILED ACTION
This application discloses the following embodiments:
Embodiment 1 - Figs. 1 through 9 drawn to a curved light
Embodiment 2 - Figs. 10 through 18 drawn to the housing portion of the curved light
The designs as grouped are distinct from each other since under the law a design patent covers only the invention disclosed as an entirety, and does not extend to patentably distinct segregable parts; the only way to protect such segregable parts is to apply for separate patents. See Ex parte Sanford, 1914 CD 69; 204 OG 1346 (Comm'r Pat. 1914); and Blumcraft of Pittsburgh v. Ladd, 238 F. Supp. 648, 144 USPQ 562 (D.D.C. 1965). It is further noted that patentably distinct combination/subcombination subject matter must be supported by separate claims, whereas only a single claim is permissible in a design patent application. See In re Rubinfield, 270 F.2d 391, 123 USPQ 210 (CCPA 1959).
By vacating the lens and leds, the applicant has created a new appearance that is patentably distinct from the curved light as a whole. Because the designs are distinct, and have acquired separate status in the art, restriction for examination purposes as indicated is proper (35 U.S.C. 121).
Should applicant traverse this requirement on the grounds that the groups are not patentably distinct, applicant should present evidence or identify such evidence now of record showing the groups to be obvious variations of one another.
The original design as disclosed in figures 1 through 9 is constructively elected for examination in this application.
The original design has received a full examination and is found to contain no error.
Claim Rejections - 35 USC § 251
I. This application for reissue is rejected under 35 U.S.C. 251 based on the fact that there is no "error" in the non-amended original patent claim.
Since the original embodiment has been constructively elected, and the newly added patentably distinct embodiment has been withdrawn from consideration, failure to file a patentably distinct embodiment is no longer a proper reason for the filing of this application for reissue. Since the original invention does not contain an error, there is nothing in this application to correct under 35 U.S.C. 251.
In order to maintain the patent protection for the original patented design while also obtaining patent protection for the newly added embodiment, a divisional application must be filed for the new embodiment and this application will need to be rejoined with said divisional application, upon notification of allowable subject matter. Applicant is advised that a proper response to this rejection must include:
(A) a request to suspend action in this original reissue application pending completion of examination of a divisional reissue application directed to the constructively non-elected segregable part or subcombination subject matter,
(B) the filing of the divisional reissue application, or a statement that one has already been filed (identifying it at least by application number), and
(C) an argument that a complete response to the rejection has been made based upon the filing of the divisional reissue application and the request for suspension.
Action in the original design reissue application will then be suspended, and the divisional will be examined. See MPEP 1457.
II. The reissue oath/declaration filed with this application is defective because it fails to identify at least one error which is relied upon to support the reissue application. See 37 CFR 1.175 and MPEP § 1414.
“A reissue applicant must acknowledge the existence of an error in the specification, drawings, or claims, which error causes the original patent to be defective. In re Wilder, 736 F.2d 1516, 222 USPQ 369 (Fed. Cir. 1984). A change or departure from the original specification or claims represents an “error” in the original patent under 35 U.S.C. 251.”
“A general statement, e.g., that all claims are broadened, is not sufficient to satisfy this requirement. In specifically identifying the error as required by 37 CFR 1.175(a), it is sufficient that the reissue oath/declaration identify the claim being broadened and a single word, phrase, or expression in the specification or in an original claim, and how it renders the original patent wholly or partly inoperative or invalid.”
“It is not sufficient for an oath/declaration to merely state "this application is being filed to correct errors in the patent which may be noted from the changes made in the disclosure." Rather, the oath/declaration must specifically identify an error. “
In a design patent, the drawings act as the specification so when identifying an error to support reissue, the description must identify something that was originally claimed that the applicant finds unduly limiting on their rights to patent protection. For example, the applicant could identify either the lens, leds or both as something that they claim on the original embodiment which they do not want to claim on their new embodiment.
Drawings
The amendment does not comply with 37 CFR. 1.173 because the replacement drawings have not been labeled. Specifically, the new views must be labeled “New”.
Any changes to a patent drawing must be submitted as a replacement sheet of drawings which shall be an attachment to the amendment document. Any replacement sheet of drawings must be in compliance with § 1.84 and shall include all of the figures appearing on the original version of the sheet, even if only one figure is amended. Amended figures must be identified as "Amended," and any added figure must be identified as "New." In the event that a figure is canceled, the figure must be surrounded by brackets and identified as "Canceled." All changes to the drawing(s) shall be explained, in detail, beginning on a separate sheet accompanying the papers including the amendment to the drawings.
Specification
The amendment does not comply with 37 CFR. 1.17 because the canceled matter has improperly been lined across; instead of enclosed within brackets.
Any changes relative to the patent being reissued which are made to the specification, including the claims, upon filing, or by an amendment paper in the reissue application, must include the following markings:
(1) The matter to be omitted by reissue must be enclosed in brackets; and
(2) The matter to be added by reissue must be underlined, except for amendments submitted on compact discs (§§ 1.96 and 1.821(c)).
Conclusion
The claim is rejected under 35 U.S.C. §251.
Any inquiry concerning this communication should be directed to PHILIP S. HYDER at telephone number (571)272-2621.
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 contact the examiner directly or 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, Susan Krakower can be reached on 571-272-4496.
/Philip S. Hyder/
Primary Examiner, Art Unit 2917
psh