FINAL REJECTION
Reconsideration has been accorded the merits of the claim in view of applicant’s response. While the lack of a boundary was addressed by the revised drawings, applicant overlooked the problem that the boundary on the exterior surface of the base is not supported by the disclosure in application as it was originally filed. Thus, the original ground of rejection under 35 U.S.C. 112, (a) and (b), is withdrawn and a new ground of rejection under 35 U.S.C. 112 (a) is necessitated.
Claim Rejection; 35 U.S.C. 112
The claim is rejected under 35 U.S.C. 112(a) as failing to comply with the written description requirement thereof since the amended appearance is not supported by the original disclosure. The original disclosure does not reasonably convey to a designer of ordinary skill in the art that the inventor was in possession of the design now claimed at the time the application was filed. See In re Daniels, 144 F.3d 1452, 46 USPQ2d 1788 (Fed. Cir. 1998); In re Rasmussen, 650 F.2d 1212, 211 USPQ 323 (CCPA 1981).
When by amendment applicant broadens a design claim by designating additional portions of the article for the design to vacate, there is a hazard of creating a new design. If the design resulting from the process of demarcating new boundaries for the claimed design could not have been recognized in the original design, at the time it was filed, to the exclusion of other designs, then the resulting design is new relative the original one. An objective standard for determining compliance with the written description is, “does the description clearly allow persons of ordinary skill in the art to recognize that he or she invented what is claimed.” Moreover, “adequate description of the invention guards against the inventor's overreaching by insisting that he recount his invention in such detail that his future claims can be determined to be encompassed within his original creation.”
The point of a design application is to evidence possession of an ornamental appearance, which if anything less than the totality of the drawing disclosure, must of course be able to be extracted from the drawings without adding new matter. Similarly, if prior portions of the drawings were shown in solid lines and conveyed as claimed portions, the applicant must evidence possession of the broadening claim by vacating portions without introducing new matter. With this concept in mind, no one skilled in the art would view half of the base as a segregable portion of the design claimed in the parent application.
Whether or not any or all portions of any ornamental design are visible or disclosed in the parent is not a measure of if and how much the written description requirement has been met. Rather, it is the literal selection of any or all of those portions that defines and describes the resulting overall ornamental appearance that is being claimed. Actual selection means that an ornamental appearance that was actually disclosed in the parent must result in any subsequent continuation or amended disclosure. “It does not follow from Daniels that an applicant, having been granted a claim to a particular design element, may proceed to subdivide that element in subsequent continuations however he pleases.” In other words, the U.S. Court of Appeals for the Federal Circuit decided In re Owens et al No. 2012-1261 (Fed. Cir. Mar. 26, 2013) that in removing only a portion of a claimed component, the applicant provided an appearance that was not originally described and consequently did not comply with the written description requirement. Comparably, in this application, the broadening of the claim to include only a collection of segregable portions is view as an analogous attempt to “subdivide” an element “however he pleases”.
The design for half of the exterior of the base is an attempt by the applicant to subdivide an element “however he pleases” because the examiner is unable to find any evidence that the applicant was in possession of this appearance at the time the application was original filed. In In re Owens, the court created the present standard that “un-claimed boundary lines typically should satisfy the written description requirement only if they make explicit a boundary that already exists but was unclaimed, in the original filing.” The new boundary on the exterior of the base does not meet this standard.
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Conclusion
The claim is finally rejected under 35 U.S.C. 112.
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any nonprovisional extension fee (37 CFR 1.17(a)) pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the mailing date of this final action.
Any inquiry concerning this communication should be directed to Philip 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.
/Philip S. Hyder/
Primary Examiner, Art Unit 2917
Feb. 10, 2026