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 .
Office Action
General Information
A mistake was made by the examiner on the non-final rejection of 12/19/2025. Examiner mistakenly entered that the applicant had 2 months to reply, rather than 3, which would be proper for a non-final rejection. Because of this, the time for response has been restarted. Applicant now has 3 months to reply rather than 2.
The non-final rejection of 12/19/2025 is repeated below:
Group Election
Applicant's election of Group III (Embodiment 3, Figs. 3.1-3.4) with traverse made in the reply filed on 07/17/2025, is acknowledged. However, original Emb. 3 contains six figures, Figs. 3.1-3.6. It appears that, in the replacement drawings, applicant has renumbered the figures, and the examiner understands that the election is actually made for original Emb. 4, Figs. 4.1-4.4, now newly renumbered as Figs. 3.1-3.4. (See also Objection to the drawings, regarding figure numbering.) The traversal is on the grounds that:
Embodiments 1 and 2 (original Figs. 2.1-2.3 and Figs. 3.1-3.6) include an overall appearance of the optical sensor (or portion thereof) that is basically the same as the design of elected Embodiment 3. As such, it is submitted that Embodiments 1-3 collectively belong to a single inventive concept.
This is not found persuasive because:
The examiner has restricted the embodiments based on the scope and visual appearance of these three embodiments. Specifically, Embodiment 2 contains an extra figure, (Figure 2.4), which depicts visual information not present in Embodiments 1 or 3, and Embodiments 1 and 2 depict solid claim lines not present in Embodiment 3. Additionally, Embodiment 3 shows several features on the left of the article visible in Fig 3.2, but not present in Embodiments 1 and 2. These features include: two round features on the longest portion of the article, and ovaloid features within the otherwise rectangular features at the end of the article. Lastly, the bolt-like features visible on one side of the flat-sided round feature visible in embodiments 1 and 2 are depicted on the opposite side of this same feature in Embodiment 3.
Therefore, the requirement is still deemed proper and is therefore made FINAL.
The restriction requirement maintained in this application is or has been made final. Applicant must cancel Groups I and II directed to the design(s) nonelected with traverse in the reply filed on 03/22/2016 or take other timely appropriate action (37 CFR 1.144).
Drawings
The drawings are objected to because:
All drawing figures which are not of the elected design must be canceled. This includes figures 1.1-1.3, and figures 2.1-2.6.
Fig 3.4 appears to be an enlarged view, but it is not denoted as such. When a portion of a view is enlarged for magnification purposes, it is recommended that the view and the enlarged view must each be labeled as separate views. Therefore, applicant should amend figure 3.4, and the figure in which the enlarged view is taken from, to properly denote the view. (See below excerpt from US Design Patent D932,124 as an example of a properly disclosed partial enlargement)
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If the applicant chooses this means of overcoming the objection, a new broken line statement should be added to the specification, following the figure descriptions and preceding the claim. Suggested language: "The broken lines depict boundaries of the enlarged view and form no part of the claimed design."
Renumbering of the drawing figures is not required. To maintain consistency with the published International Registration, it is recommended that the numbering of the drawing figures included in the elected Group not be changed even if non-elected embodiments are cancelled. Any amendment to the drawing figures should comply with 37 CFR 1.1026 and Part Four of the Administrative Instructions (in particular, see Section 405 of the Administrative Instructions with respect to numbering of reproductions). Therefore, for proper form, applicant should revert figure numbering system to their original order.
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, first paragraph). Moreover, an insufficient drawing may have a negative effect with respect to the effective filing date of a continuing application.
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 U.S.C. 132 and 37 CFR 1.121.
Specification
In light of the above drawing objections and Final Restriction Requirement, the specification is objected to because:
Figure 3.4 should be reworded to reflect that it is an enlarged view. As should the description of whichever figure it is taken from.
The figure descriptions for Figs. 3.5 and 3.6 should be deleted, as they do not describe any submitted figure views in the drawings.
All figure descriptions for the non-elected embodiments (embodiments 1 and 2) must be deleted.
Descriptions of the figures are not required to be written in any particular format. However, they should describe the views of the drawings clearly and accurately.
Claim Rejection - 35 U.S.C. 102(a)(1)
The claim is rejected under 35 U.S.C. 102(a)(1) as being anticipated by SmartRay achieves technological first with a new compact 3D weld inspection solution achieving maximum reachability (hereinafter “SmartRay Achieves”) because the claimed invention was patented, described in a printed publication, or in public use, on sale or otherwise available to the public before the effective filing date of the claimed invention.
The appearance of SmartRay Achieves is substantially the same as that of the claimed design. The ordinary observer test is the sole test for anticipation. See e.g., International Seaway Trading Corp. v. Walgreens Corp., 589 F.3d 1233, 1237-38, 1240, 93 USPQ2d 1001 (Fed. Cir. 2009) and MPEP § 1504.02.
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The claim is further rejected under 35 U.S.C. 102(a)(1) as being anticipated by SmartRay Innovates With New 3D Weld Solution (hereinafter “SmartRay Innovates”) because the claimed invention was patented, described in a printed publication, or in public use, on sale or otherwise available to the public before the effective filing date of the claimed invention.
The appearance of SmartRay Innovates is substantially the same as that of the claimed design. The ordinary observer test is the sole test for anticipation. See e.g., International Seaway Trading Corp. v. Walgreens Corp., 589 F.3d 1233, 1237-38, 1240, 93 USPQ2d 1001 (Fed. Cir. 2009) and MPEP § 1504.02.
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“Two designs are substantially the same if their resemblance is deceptive to the extent that it would induce an ordinary observer, giving such attention as a purchaser usually gives to purchase an article having one design supposing it to be the other.” Door-Master Corp. v. Yorktowne Inc., 256 F3d. 1308 (Fed. Cir. 2001) citing Gorham Co. v. White, 81 U.S. 511, 528 (1871).
“The mandated overall comparison is a comparison taking into account significant differences between the two designs, not minor or trivial differences that necessarily exist between any two designs that are not exact copies of one another. Just as ‘minor differences between a patented design and an accused article's design cannot, and shall not, prevent a finding of infringement,’ so too minor differences cannot prevent a finding of anticipation.” Int'l Seaway , 589 F.3d at 1243 (citing Litton Sys., Inc. v. Whirlpool Corp., 728 F.2d 1423, 1444 (Fed. Cir. 1984)).
Conclusion
The claim stands twice rejected under 35 U.S.C. 102.
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to ANTOINETTE MARTINE SUITER whose telephone number is (571)272-9573. The examiner can normally be reached on Monday-Wednesday 9:30am-6:30pm and Thursday 10am-2pm EST.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, GARTH RADEMAKER can be reached on 303-297-4274. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/A.M.S./
Examiner, Art Unit 2922
/SANDRA SNAPP/Supervisory Patent Examiner, Art Unit 2914