DETAILED ACTION
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
Examiner Comment
The following formal matters are noted:
The statement following the descriptions reading: [The bottom view of the design is omitted since it is not easy to see or cannot be seen during usage.] can be misleading as we do see many elements from the bottom of the claim in other views.
Applicant is not required to remove the above-noted formal matter but may wish to do so to place the application in better form.
35 U.S.C. 112 (a) and (b) Rejection
The claim is refused 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 applicant regards as the invention.
The claim is indefinite and nonenabling for the following:
The visual disclosure is inadequate such that the appearance and shape or configuration of the design for which protection is sought cannot be determined or understood (MPEP § 1504.04), specifically:
There are features and mechanisms inside the cab of the forklift that cannot be understood. The placement and dimensionality of the chair, knobs, levels and other solid black features within the cab are non-enabled.
PNG
media_image1.png
738
1661
media_image1.png
Greyscale
There are elements shown inside a grated plate and inside a semi-transparent covering within views 1.3 and 1.7 that cannot be understood. What is the white element showing through the grate? There is some reflection on the elements but the dimensionality and placement is unclear.
PNG
media_image2.png
724
944
media_image2.png
Greyscale
There are complex mechanisms shown inside the wheel wells and under the lift that cannot be understood. There is not enough information from the views and the renders are very dark making it difficult to clearly see certain features. What is the configuration and placement of these complex mechanisms?
PNG
media_image3.png
1221
1920
media_image3.png
Greyscale
Left view 1.5 shows many features and portions of the lift only visible from this single view. Many of the elements cannot be understood due to a single plan view. There are many solid black shapes on the surfaces. Are these recessed openings or solid surface indicia? What is the change in plan from the SANY surface to the surface underneath? There are 2 small knobs shown on the bottom, where are these placed on the claim? The left of the claim in 1.5 is solid black. Is this surface flat or is it angled? There are solid black gaps on the sides of the claim creating a void. What is happening inside these black areas?
PNG
media_image4.png
983
1475
media_image4.png
Greyscale
In attempt to overcome the rejection, applicant could reduce all features only visible from a single plan view to broken line. If the design cannot be fully enabled without introducing new matter because certain portions are indefinite, applicant may be able to exclude those portions of the design from the claim by converting those portions of the article to broken lines, so long as the amendment meets the written description requirement of 35 USC 112(a). It must be apparent that applicant was in possession of the amended design at the time of original filing, or applicant must provide evidence of that possession.
If reducing to broken line a statement should be added to the specification stating the relationship of the broken lines to the claim. The following amendment could be made to the specification to properly describe the purpose of the broken lines in the figures:
--The broken lines shown in the drawings depict portions of the Forklift that form no part of the claimed design.--
Replacement Drawings
Corrected drawing sheets are required in reply to the Office action to avoid abandonment of
the application. Any amended replacement drawing sheet should 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. If all the figures on a drawing sheet are canceled, a replacement sheet is not
required. A marked-up copy of the drawing sheet (labeled as “Annotated Sheet”) including an
annotation showing that all the figures on that drawing sheet have been canceled must be
presented in the amendment or remarks section that explains the change to the drawings. 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.
When preparing new drawings in compliance with the requirement therefor, care must be
exercised to avoid introduction of anything which could be construed to be new matter
prohibited by 35 USC 132 and 37 CFR 1.121. New matter is anything (structure, features,
elements) which was not apparent (seen) 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.
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.) Thus the numbering convention used in the
original submission should not be amended when responding to this Office action.
The Examiner has attempted to identify all the inconsistent, indefinite and non-enabled elements in this application, however additional objections and rejections may be identified if better quality drawings are submitted.
Attention is directed to MPEP Chapter 1500 and 37 CFR §§ 1.84 and 1.152 for guidance on standards for drawings in design patent applications. Applicant is cautioned to carefully review the drawings for accurate and consistent disclosure and to ensure the drawings contain no impermissible new matter. See 35 U.S.C. 132 and 37 CFR 1.121(f).
Conclusion
The claimed design is refused under 35 U.S.C. 112(a) and (b), as set forth above.
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).
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.
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
https://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.
The USPTO transacts business in writing. All replies must be signed in accordance with 37 CFR
1.33(b). Pursuant to 37 CFR 1.33(b)(3), a reply submitted on behalf of a juristic applicant must be signed by an attorney or agent registered to practice before the USPTO. Applicants may submit replies to Office actions only by:
Online via the USPTO's Electronic Filing System‐Web (EFS‐Web) (Registered eFilers only)
https://www.uspto.gov/patents/apply
Mail: Commissioner for Patents, P.O. Box 1450, Alexandria, VA, 22313‐1450
Facsimile to the USPTO's Official Fax Number (571‐273‐8300)
Hand‐carry to USPTO's Alexandria, Virginia Customer Service Window
https://www.uspto.gov/patents/maintain/responding-office-actions
Contact Information
Any inquiry concerning this communication or earlier communications from the examiner should be directed to TAMARA HAHN whose telephone number is (571)272-9648. The examiner can normally be reached on Monday - Friday | 8am-4pm.
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, George Bugg can be reached on 571-272-2998. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
Information regarding the status of an application may be obtained from the Patent Application Information Retrieval (PAIR) system. Status information for published applications may be obtained from either Private PAIR or Public PAIR. Status information for unpublished applications is available through Private PAIR only. For more information about the PAIR system, see https://ppair-my.uspto.gov/pair/PrivatePair. Should you have questions on access to the Private PAIR system, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative or access to the automated information system, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/TAMARA L HAHN/Examiner, Art Unit 2911