Detailed Correspondence
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 .
Introduction
Acknowledgement is made of the Applicant’s Remarks and Amendment of 21 March 2025. The specification objection has been overcome. The reproduction objection has been overcome. The rejection under 35 U.S.C. 112(a) and (b) has not been fully overcome and is therefore set forth again below.
Accordingly, this action is MADE FINAL. See MPEP 706.07(a).
REJECTION – 35 U.S.C. 112(a) and (b)
The claim is AGAIN AND FINALLY 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 of deficiencies in the figures that prevent a clear understanding of the appearance of the claimed design. Specifically, the bottom and back views of Reproductions 2.4 and 2.7 do not sufficiently enable a designer of ordinary skill to understand the shape and appearance of the underside and back of the Streetlight. Applicant illustrates multiple internal elements on the bottom side, within the neck, and on the back of the neck. However, it cannot be understood from the present disclosure whether these elements disclose simple two-dimensional surface ornamentation or, more likely, some manner of three-dimensional features. Accordingly, it is difficult to determine the exact location and shape of these internal elements. See areas highlighted in gray in the images on the next page:
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To overcome this rejection, it is suggested that the design be shown clearly and completely.
If the design cannot be clarified without changing its appearance, and there is no description of this changed appearance in the original disclosure, then applicant may wish to amend the design such that the non-enabled areas are removed from the claim by converting them to broken lines and amend the specification to include a statement that the portions of the Streetlight shown in broken lines form no part of the claimed design.
Any amendment to the claim must meet the written description requirement of 35 U.S.C. 112(a). That is, it must be apparent that applicant was in possession of the amended design at the time of original filing; otherwise, applicant must provide evidence of that possession. See 35 U.S.C. 132, 37 CFR 1.121(f), and MPEP 1504.04, subsections I.B and I.C, for new matter and written description requirements.
Replacement Reproductions
Corrected drawing sheets of the reproductions are required in reply to the Office Action to avoid abandonment of the application. Any amended replacement drawing sheet of the reproductions should include all of the views appearing on the immediate prior version of the sheet, even if only one view is being amended. The view number of an amended drawing should not be labeled as "amended." If a drawing view is to be canceled, the appropriate view must be removed from the replacement sheet. Each drawing sheet of reproductions 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).
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 to be new matter prohibited by 35 U.S.C. 132 and 37 CFR 1.121 when preparing new reproductions.
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 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. For acceptable ways to submit forms to the USPTO, see “When Responding to Official USPTO Correspondence” below.If a pro se applicant or registered practitioner located outside of the United States wishes to communicate by telephone, it is suggested that such person email the examiner at raylen.worthington@uspto.gov to arrange a time and date for the telephone interview. Please include suggested days and times for the proposed call. When proposing a day and time for the interview, please take into account the examiner’s work schedule indicated in the last paragraph of this communication. The email should also be used to determine who will initiate the telephone call.Email CommunicationsThe merits of the application will not be discussed via email (or other electronic medium) unless appropriate authorization for internet communication is filed in the application. Form PTO/SB/439 “Authorization for Internet Communications in a Patent Application or Request to Withdraw Authorization for Internet Communications” may be used to provide such authorization and is available at the USPTO web page indicated above. The authorization may not be sent by email to the USPTO. For acceptable ways to submit the authorization form to the USPTO, see “When Responding to Official USPTO Correspondence” below. See MPEP 502.03 II for further information.
When Responding to Official USPTO CorrespondenceWhen responding to an official correspondence issued by the USPTO, including refusals, Ex Parte Quayle, Notice of Allowances, or Notice of Abandonments, please note the following:
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 Patent Center (Registered eFilers only) https://patentcenter.uspto.gov.
• 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-maintaining-patent/responding-office-actions
Conclusion
The claim is finally rejected as set forth above.
Accordingly, THIS ACTION IS MADE FINAL. Applicant is reminded of the extension of time policy as set forth 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 mailing date of this final action.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to RAYLEN WORTHINGTON whose telephone number is (571)272-1782. The examiner can normally be reached M-F, 9-5 PT.
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, JENNIFER REMPFER can be reached on (571) 270-0248. 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.
/R.E.W./Examiner, Art Unit 2933
/LEAH MACCHIAROLO/Supervisory Primary Examiner, Art Unit 2939
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