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 .
Election of Group I
Applicant's election of Group I with traverse is acknowledged. Applicant's argument in traversal of the restriction requirement is that because the groups are directed to the same function or have a similar appearance and would, therefore, be searched together that they should not be subject to restriction. While this standard may apply to a utility application where the multiple claims may protect multiple inventions, the standard is quite different for design applications. As only a single claim protecting a single invention may be included in a design patent, only patentably indistinct designs, considered to be a single invention, may be included in a design patent. Therefore, the embodiments filed in this application could not be protected by the single formal design claim. Applicant is referred to MPEP 1504.05.II(A and B), which sets forth the legal support for a restriction requirement in design applications. Accordingly, the restriction requirement is made FINAL.
Specification
The specification should be amended to reflect the election of Group I. Design number 2 along with the corresponding descriptions of the reproductions should be cancelled.
For clarity and accuracy, the title of the design in the specification should be amended to read --Chair--. The term “seat” in brackets should be removed.
The paragraph [Design 1: the design…Figs. 1.1-1.7).] in the description of the reproductions is extraneous information describing what is shown in the reproductions, which adds no new information to the understanding of the claimed design. Any description of the design in the specification other than a brief description of the drawing is generally not necessary, since as a general rule, the illustration in the drawing views is its own best description. See In re Freeman, 23 App. D.C. 226 (App. D.C. 1904).
The above paragraph should be deleted in its entirety. See Hague Rule 7(5)(a), 37 CFR 1.1024, MPEP 2920.04(a) ll.
Rejection under 35 U.S.C. 112(a) and (b)
The claim is rejected under 35 U.S.C. 112(a) and (b) or pre-AIA 35 U.S.C. 112, first and second paragraphs, 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 (or, for applications subject to pre-AIA 35 U.S.C. 112, the applicant) regards as the invention.
The claim is indefinite and nonenabling because the exact appearance of the design cannot be fully understood for the following reasons. The introduction of both photographs and drawings in a design application would result in a high probability of inconsistencies between corresponding elements on the drawings as compared with the photographs.(MPEP 1503.02(V))
By their nature, the depiction of a design in photographs and line drawings would result in inconsistencies. In this case, the photographs depict a 5 legged base with smooth sides on the legs. The line drawings show the legs of the base to have open spaces, and not a smooth surface. See the annotated reproductions that follow.
PNG
media_image1.png
851
755
media_image1.png
Greyscale
This rejection may be overcome by amending the reproductions to include photographs or line drawings, but not both.
Amended drawings
Any amended replacement drawing sheet shall 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. 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.
Care must be exercised to avoid introduction of anything which could be construed to be new matter
prohibited by 35 U.S.C. 132 and 37 CFR 1.121 when preparing new drawings.
Conclusion
The claim is rejected under 35 U.S.C. 112(a) and (b).
Contact Information
All discussions between the applicant and the examiner regarding the merits of a pending application will be considered an interview and are to be made of record. See MPEP § 713. The examiner will not discuss the merits of the application with applicant's representative if the representative is not registered to practice before the USPTO. Appointment as applicant’s representative before the International Bureau pursuant to Rule 3 of the Common Regulations under the Hague Agreement does NOT entitle such representative to represent the applicant before the USPTO. Furthermore, an applicant that is a juristic entity must be represented by a patent attorney or agent registered to practice before the USPTO. Additional information regarding interviews is set forth below.
Telephonic or in person interviews
A telephonic or in person interview may only be conducted with an attorney or agent registered to practice before the USPTO ("registered practitioner") or with a pro se applicant (an applicant who is the inventor and who is not represented by a registered practitioner).
The registered practitioner may either be of record or not of record. To become "of record," a power of attorney (POA) in accordance with 37 CFR 1.32 must be filed in the application. Form PTO/AIA /80 "Power of Attorney to Prosecute Applications Before the USPTO," available at www.uspto.gov/ patent/forms/forms-patent-applications-filed-or-after-september-16-2012, may be used for this purpose. See MPEP § 402.02(a) for further information. Interviews may also be conducted with a registered practitioner not of record provided the registered practitioner can show authorization to conduct an interview by completing, signing and filing an "Applicant Initiated Interview Request Form" (PTOL-413A) (available at the USPTO web page indicated above). See MPEP § 405. For acceptable ways to submit forms to the USPTO, see "When Responding to Official USPTO Correspondence" below.
Applicant is reminded that any reply to this communication must be signed either by a patent practitioner (i.e., a patent attorney or agent registered to practice before the United States Patent and Trademark Office) or by the applicant. If the applicant is a juristic entity, the reply must be signed by a patent practitioner. See 37 CFR 1.33(b).
Any inquiry concerning this communication or earlier communications from the examiner should be directed to MARK DAVID WOLFLEY whose telephone number is (571)272-0948. The examiner can normally be reached Monday-Friday 9am-5pm EST.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Barbara G. 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.
/MARK DAVID WOLFLEY/Examiner, Art Unit 2931
Prosecution Insights