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 .
Comment to Amendments/Remarks
Applicant’s amendments filed on 5/20/2025 have been reviewed and considered. It is the examiner’s position that the prior rejection of record under 35 USC § 112 (a) and (b) was not overcome by the amendments. The applicant failed to show the design in a way that could be understood completely without resorting to conjecture.
REFUSAL
Examiner’s Comment to Reproductions
The examiner has carefully reviewed the reproductions of 2/27/2025. When inconsistencies are found among the views, the examiner should object to the reproductions and request that the views be made consistent. Pursuant to Hague Agreement Rule 9(4), "[a] Contracting Party may however refuse the effects of the international registration on the ground that the reproductions contained in the international registration are not sufficient to disclose fully the industrial design." The following formal matters are noted:
The quality of the drawings is not sufficient. Please see the following international drawing rules from the MPEP:
11.2 Fitness for Reproduction
(a) All elements of the international application (i.e., the request, the description, the claims, the drawings, and the abstract) shall be so presented as to admit of direct reproduction by photography, electrostatic processes, photo offset, and microfilming, in any number of copies.
11.13 Special Requirements for Drawings
(a) Drawings shall be executed in durable, black, sufficiently dense and dark, uniformly thick and well-defined, lines and strokes without colorings.
(c) The scale of the drawings and the distinctness of their graphical execution shall be such that a photographic reproduction with a linear reduction in size to two-thirds would enable all details to be distinguished without difficulty.
11.11 Words in Drawings
(a) The drawings shall not contain text matter, except a single word or words, when absolutely indispensable. The description for reproduction 1.4 is objected to for being too descriptive. Specifically, the use of "with the sets of concentric circle features" is not necessary as the drawings are their own best description.
The examiner recommends using a lossless file format when submitting drawings through EFS-web (e.g., TIFF, PNG, GIF, BMP). EFS-web PDF Guidelines may be found at https://www.uspto.gov/patents-application-process/applying-online/efs-web-pdf-guidelines
Any corrected reproductions submitted in response to this Office action must be compliant with 37 CFR 1.121(d).
An amended replacement reproduction sheet should include all the reproductions appearing on the immediate prior version of the sheet, even if only one reproduction is amended. The reproduction (or reproduction number) of an amended view should not be labeled as amended. If a reproduction is canceled, that reproduction must be removed from the replacement sheet and the remaining reproductions and their related descriptions must be renumbered, as necessary.
Additional replacement sheets may be necessary to show the renumbering of the remaining reproductions. If all the reproductions on a sheet are canceled, a replacement sheet is not required. A marked-up copy of the sheet (labeled as "Annotated Sheet") including an annotation showing that all the reproductions on that sheet have been canceled must be presented in the amendment or remarks section that explains the change to the reproductions.
Each 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 Examiner, Applicant will be notified and informed of any required corrective action in the next Office action.
Examiner’s Comments to the Specification
The Specification must be amended to provide descriptions for the reproductions. Hague Rule 7(5)(a), 37 CFR 1.1024, MPEP 2920.04(a)II. The description should indicate the type of view shown in the corresponding figure, such as "front view," "perspective view," "top view," etc.
The Examiner suggests:
-- 1.1: Front view
1.2: Right view
1.3: Rear perspective view
1.4: Rear perspective view with the sets of concentric circle features --
Additionally, the claim statement contains grammatical errors. For clarity, it is suggested that the claim statement be amended to read:
-- I claim the ornamental design for an extinguisher as shown and described. --
Claim Rejection - 35 USC § 112(a) & (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 scope of a claim is definite only when it is supported by an enabling disclosure. When the scope of protection sought exceeds what is enabling in the disclosure, the claim is indefinite.
The claim scope must be less than or equal to the scope of the enablement. The scope of enablement, in turn, is that which is disclosed in the specification and is understandable to a designer of ordinary skill in the art without resorting to conjecture.
Specifically:
Due to the poor quality of the drawings, the claim is indefinite and non-enabled because the disclosure as shown in the drawings is insufficient. It is not believed that the drawing of record is sufficient to accurately and completely convey the appearance of the claimed design. The exact shape(s), appearance, and configuration are subject to multiple interpretations and cannot be determined without resorting to conjecture. The drawings submitted on 2/27/2025 are almost entirely filled with black and cannot be understood. Please see the examples of the drawings submitted on 2/27/2025.
PNG
media_image1.png
629
505
media_image1.png
Greyscale
PNG
media_image2.png
800
485
media_image2.png
Greyscale
In order to attempt to overcome the rejection, applicant may submit a new reproduction set that consistently shows the scope, shape and appearance of the claimed design, so the examiner can make a determination as to whether or not the new views introduce new matter. Applicant is further cautioned to render any corresponding drawing details clearly and consistently in all applicable views.
The examiner recommends using a lossless file format when submitting drawings through EFS-web (e.g., TIFF, PNG, GIF, BMP). EFS-web PDF Guidelines may be found at https://www.uspto.gov/patents-application-process/applying-online/efs-web-pdf-guidelines
Replacement Drawing Information
Any corrected reproductions submitted in response to this Office action must be in compliance with 37 CFR 1.121(d). The corrected reproductions must not contain new matter. 35 USC 132 and 37 CFR 1.121.
Applicant is reminded that the numbering of the reproductions and legends must follow the Hague Administrative Instructions Section 405(a) consisting of two separate figures separated by a dot (e.g., 1.1, 1.2, 1.3, etc. for the first design, 2.1, 2.2, 2.3, etc. for the second design, and so on) (see 37 CFR 1.1026 and MPEP 2909.02). 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 as new matter prohibited by 35 USC 132 and 37 CFR 1.121 when preparing amended reproductions.
Refusal Reply Reminder
Applicant is reminded that any reply to this Refusal 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 Applicant. If Applicant is a juristic entity, the reply must be signed by a patent practitioner. See 37 CFR 1.33(b).
Conclusion and Contact Information
THIS ACTION IS MADE FINAL. The claim is finally rejected under 35 U.S.C. § 112(a) and (b). 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 extension fee 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 date of this final action.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Justin Johnson whose telephone number is (571) 272-5730. The examiner can normally be reached Monday-Friday at 8:00 a.m. to 4:00 p.m. 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 primary examiner, Leanne Was-Englehart, can be reached at (571) 272-7721. The examiner’s supervisor, Justin Jonaitis, can be reached at (571) 270-5150. 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.
/JAJ/
Examiner, Art Unit 2921
/LEANNE WAS-ENGLEHART/Primary Examiner, Art Unit 2918
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