DETAILED OFFICE 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 .
Restriction Not Required
This application discloses the following embodiments:
Embodiment 1- Figs. 1- : drawn to a medical pad with central rectangular shell having two straps protruding from each of the long sides and a short side open with closed loop strings attached to the outer portions of this side. The broad sides of the shell are made of a dimpled material. The short sides of the shell are black. The shell is filled with two yellow rectangular cushion inserts.
Embodiment 2- Figs.: drawn to the medical pad of fig. 1. The shell is filled with one rectangular insert.
Multiple embodiments of a single inventive concept may be included in the same design application only if they are patentably indistinct. See In re Rubinfield, 270 F.2d 391, 123 USPQ 210 (CCPA 1959). Embodiments that are patentably distinct from one another do not constitute a single inventive concept and thus may not be included in the same design application. See In re Platner, 155 USPQ 222 (Comm’r Pat. 1967).
The above identified embodiments are considered by the examiner to present overall appearances that are visually similar. Furthermore, the differences between the appearances of the embodiments are considered minor and patentably indistinct or are shown to be obvious in view of analogous prior art cited. The difference being the application of one or two cushion inserts. Accordingly, they are deemed to be obvious variations and are being retained and examined in the same application. A claim made up of various patentably indistinct designs may be rejected by applying prior art to any one of the embodiments. See Ex parte Appeal No. 315-40, 152 USPQ 71 (Bd. App. 1965). No argument asserting patentability based on the differences between the embodiments will be considered once the embodiments have been determined to comprise a single inventive concept. Failure of applicant to traverse this determination in reply to this action will be considered an admission of lack of patentable distinction between the above identified embodiments.
Claim Rejection – 35 U.S.C. § 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 inventor or a joint inventor regards as the invention.
The claim is indefinite and nonenabling because the exact appearance, configuration and scope of the claimed article have not been definitively described due to a lack of clarity in the photographic disclosure.
A. The photographs contain background texture and structure that may be interpreted to form a part of the claim. The textures and wrinkled structure of the material surrounding the medical pad resemble claimed subject matter and may be the background or may be a part of the claim. It isn’t clear if the textured and structured material that the pad sits on is claimed or not. It has texture and dimension indicated by the presence of shadows. See below.
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B. The straps are not enabled due to the poor quality of the disclosure and the lack of clarifying views. The straps are solid black and blend and merge into each other and the sides of the pad. Therefore, the appearance of the straps is not discernable as the black portions merge and lack clear definition. It is not clear if the straps have a hook and loop fastener on the surface. It is not clear how and where the straps attach to the sides of the pad and the appearance of the hardware (strap fasteners) is also obscured. The disclosure does not contain any clarifying views of the sides which may show the exact location and appearance of the strap attachments. Due to the lack of contrast and clarity around the solid black portions, the configuration of the straps is open to conjecture and multiple possible interpretations. See below.
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The necessity for good drawings in a design patent application cannot be overemphasized. As the drawing constitutes the whole disclosure of the design, it is of utmost importance that it be so well executed both as to clarity of showing and completeness, that nothing regarding the design sought to be patented is left to conjecture. An insufficient drawing may be fatal to validity (35 U.S.C. 112(a) or pre-AIA 35 U.S.C. 112, first paragraph). Moreover, an insufficient drawing may have a negative effect with respect to the effective filing date of a continuing application.
Due to the presence of solid black in the photographs, the attachment and appearance of the straps and fasteners are not definitely described. Further, it is not clear the extent to which the textures and structure of the areas around the pad are claimed. It may be possible to overcome this rejection by submitting line drawings that have been completed by a professional draftsperson skilled in U.S. Design patents. On the alternative, corrected photographs that are properly exposed and show the claim on a plain white background free of wrinkles, shadows, textures, may be submitted. In this case the photographs must clearly show the appearance of the straps, their attachment positions, hardware (fasteners) and surface appearances.
Any replacement figures must maintain the original shape, textures and appearances shown in the original filing. Any change to the appearance of the claim that was not originally shown or described will not meet the written description requirement of 35 USC 112(a). As a result of such an amendment, a final rejection under 35 USC 112(a) will be issued.
The corrected drawings must not contain new matter (37 CFR 1.121, 35 USC 112(a))
New matter is anything (structure, features, elements) which was not shown in the drawings as originally filed. It is possible for new matter to consist of the removal as well as the addition of structure, features or elements. Further, the clarification of drawings with poor line quality can introduce new matter.
Applicant may indicate that protection is not sought for those portions of the reproductions which are considered indefinite and nonenabling in the rejection under 35 U.S.C. 112 above by amending the reproductions to color those portions or convert those portions to broken lines and by amending the specification to include a statement that the portions of the [1] shown in broken lines form no part of the claimed design or a statement that the portions of the [1] shown by coloring form no part of the claimed design provided such amendments do not introduce new matter (see 35 U.S.C. 132 , 37 CFR 1.121 ).
Failure to submit replacement correction sheets overcoming all of the deficiencies in the drawing disclosure set forth above, or an explanation why the drawing corrections or additional drawing views are not necessary will result in the rejection of the claim under 35 U.S.C. 112(a) and (b) or pre-AIA 35 U.S.C. 112, first and second paragraphs, being made FINAL in the next Office action
Reply Reminder
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).
Discussion of the Merits of the Application
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.
Conclusion
In conclusion the claim stands rejected under 35 U.S.C. § 112(a) and (b).
The references cited but not applied are considered cumulative art related to the claimed design.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to JENNIFER WATKINS whose telephone number is (571)272-6415. The examiner can normally be reached on M-F 8:00- 4:00 pm PST. 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.
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, Shannon Morgan, can be reached on 571-272-7979.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.
/JENNIFER L WATKINS/Primary Examiner, Art Unit 2915