DETAILED ACTION
The response filed on January 02, 2025 has been fully considered. The amendments to the reproductions overcome the points of the refusal under 35 U.S.C. 112(a) and (b) presented in the nonfinal action dated August 01, 2024. However, the amendments to the reproductions do not clearly and consistently show the claimed design. Therefore, the refusal under 35 U.S.C. 112(a) and (b) is presented again below as necessitated by amendment. In view of the amendments to the reproductions to include side oval elements as part of the claim, the refusal under 35 U.S.C. 103 in the nonfinal action dated August 01, 2024 has been withdrawn. Accordingly, this action is made FINAL as necessitated by amendment.
Objections to the Reproductions
The reproductions are objected to for the following:
The reproductions are not submitted in ascending numerical order. See Hague Administrative Instructions Section 405. Therefore, the reproductions should be amended to be in ascending numerical order to comply with Hague Administrative Instructions Section 405.
The reproductions are not of a quality permitting all the details of the industrial design to be clearly distinguished and permitting publication. See Hague Rule 9(2). Specifically, the reproductions appear blurry and of low resolution and lines found in the reproduction are too light/faint. See below for one example of each found in the reproductions.
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308
506
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861
671
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Figs. 1.1, 2.1 and 3.1 show the interior top portion of the recessed interior surface, whereas Figs. 1.8, 2.8 and 3.8 show the interior top edge of the recessed surface as not visible. See below for one example, but not all, illustrated with Figs. 1.1 and 1.8.
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984
1264
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This is understood as a minor inconsistency. MPEP 1503.02. Therefore, for accuracy and to avoid confusion, Figs. 1.1, 2.1 and 3.1 should be amended to show the top portion of the interior surface as not visible.
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 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, and where necessary, the remaining views 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 renumbered of the remaining views. 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 as new matter prohibited by 35 U.S.C. 132 and 37 C.F.R. 1.121 when preparing amended reproductions.
Objections to the Specification
The specification is objected to for the following:
The phrase “portions of the article” in the broken line statement is objectionable for broadening the scope of the claimed design beyond that which is shown in the drawings which is not permitted. MPEP 1053.01.II.B(2). The broken line description should expressly identify what is represented by the broken lines in addition to defining their relationship to the claimed design. See MPEP 1503.01, subsection II. Furthermore, 35 U.S.C. 171 requires designs to be directed to “an article of manufacture”. Therefore, for accuracy and to avoid confusion, the broken line statement should be amended similar to:
--The broken lines shown in the drawings are for the purpose of illustrating portions of the Light Therapy Device that form no part of the claimed design.--
A substitute specification to the claim is required pursuant to 37 CFR 1.125 and must be submitted with markings showing all the changes relative to the immediate prior version of the specification of record. The text of any added subject matter must be shown by underlining the added text. The text of any deleted matter must be shown by strike-through except that double brackets placed before and after the deleted characters may be used to show deletion of five or fewer consecutive characters. The text of any deleted subject matter must be shown by being placed within double brackets if strike-through cannot be easily perceived. An accompanying clean version (without markings) and a statement that the substitute specification contains no new matter must also be supplied. Numbering the paragraphs of the specification of record is not considered a change that must be shown.
Claim Refusal - 35 U.S.C. § 112(a) and (b)
The claim is FINALLY 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 the inventor or a joint inventor regards as the invention.
The claim is indefinite and nonenabling because the claim is not consistently or clearly disclosed. Specifically:
The disclosure does not provide certainty as to the exact appearance and three-dimensional configuration of the interior portion of all oval elements shown pointed to below without resorting to conjecture. Specifically, the disclosure does not make clear whether they are openings or flat surfaces.
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795
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1040
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883
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Applicant may attempt to overcome this refusal by amending the reproductions to clearly and consistently show the appearance and three-dimensional configuration of the claimed design, provided any amendment has support in the original disclosure and does not introduce new matter.
Alternatively, applicant may attempt to overcome this refusal by indicating that protection is not sought for the elements indicated in the refusal above by amending the reproductions to either color wash or convert to broken lines, thus disclaiming those surfaces. See 37 C.F.R. 1.1026 and Hague Administrative Instructions Section 403.
If applicant chooses to do so, the surface contour shading must be removed as well.
Discussion of the Merits of the Case:
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”, may be used for this purpose:
https://www.uspto.gov/patent/forms/forms-patent-applications-filed-or-after-september-16-2012
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 brett.melliar@uspto.gov to arrange a time and date for the telephone interview. Please include proposed days and times for the proposed call. When proposing a day/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 Communications
The 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 Correspondence
When 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. Applicants may submit replies to Office actions only by:
• Online via the USPTO's Electronic Filing System-Web (EFS-Web) (Registered eFilers only)
o https://www.uspto.gov/patents-application-process/applying-online/efs-web-guidance-and-resources
• 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 refused under 35 U.S.C. 112(a) and (b) as set forth above.
Applicant's amendment necessitated the ground(s) of refusal presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP 706.07(a). 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 mailing date of this final action.
The prior art made of record and not relied upon is considered pertinent to applicant' s disclosure. The additionally cited references show the state of the art. Applicant may view and obtain copies of the cited references by visiting http://www.uspto.gov/patft/index.html and pressing the “Number Search” button.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to W. BRETT MELLIAR whose telephone number is (571)272-6130. The examiner can normally be reached on Monday through Thursday from 7am to 5pm ET.
If attempts to reach the examiner by telephone are unsuccessful, Primary Patent Examiner, Marissa Cash can be reached at telephone number 571-272-7506 or the examiner’s AU Supervisor, Erich Herbermann, can be reached at telephone number 571-272-6390. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
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.
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 the applicant. If the applicant is a juristic entity, the reply must be signed by a patent practitioner. See 37 CFR 1.33(b).
/W.B.M./Examiner, Art Unit 2916
/MARISSA J. CASH/ Primary Examiner, Art Unit 2915
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