Notice of Pre-AIA or AIA Status
The present application is being examined under the first inventor to file provisions of the AIA .
Non-Final Rejection
Election
In the written response of 08/20/2025 applicant made the following election without traverse:
Group III, Embodiment 3 - Figs. 3: ELECTED
Group I, E1 F. 1: WITHDRAWN for being the non-elected group. 37 CFR 1.142(b),
Group II, E2 F. 2: WITHDRAWN for being the non-elected group. 37 CFR 1.142(b),
Group IV, E4 F. 4: WITHDRAWN for being the non-elected group. 37 CFR 1.142(b),
The restriction is made final. The corresponding drawings and figure descriptions of withdrawn groups have been canceled by applicant.
Restriction was required under 35. U.S.C. 121. Differences between Groups were defined in the written restriction of 01/15/2025. Also, see In re Rubinfield, 270 F.2d 391, 123 USPQ 210 (CCPA 1959), and In re Platner, 155 USPQ 222 (Comm'r Pat. 1967).
Specification
A. Applicant's title, "Pattern for an Elevated Slatted Floor" is objectionable. The title of the design must designate the particular article, which is the subject of the design. 37 CFR 1.153. The title of the design identifies the article in which the design is embodied by the name generally known and used by the public… . MPEP 1503, I. The claim in a design patent must be directed to the design for an article. 35 U.S.C. 171. A "Pattern" is not an article.
B. The specification is objected to because it does not include brief descriptions of the drawing
figures. An international design application designating the United States must include a specification as prescribed by 35 U.S.C. 112 and preferably include a brief description of the reproduction pursuant to Rule 7(5)(a) describing the view or views of the reproductions. (37 CFR 1.1024)
See MPEP 2920.04(a)(II) for more information on descriptions in the specification. For proper form and further clarity, applicant should add a figure description to the specification.
Drawings
The photograph of the sole figure is objected to under 37 C.F.R. §1.84(b). Generally, the photograph is not sharply focused. Photographs with sharper focus and consistent tonality or black and white line drawings are required. The low contrast and small size hinder a clear understanding of the details in the figure.
The photographic disclosure is of insufficient quality to assure that all details in the photographs are reproducible in the printed patent. There is insufficient contrast in the photograph and the overall resolution of the photograph is poor.
The photographs must be of the highest quality so that they can be satisfactorily reproduced in the printed patent. 37 CFR § 1.84(b)(1). Due to the current reproduction technique used by the printer when publishing patents, it is imperative that photographic disclosures be of the highest quality and be capable of accurately conveying the actual appearance of the claimed design even when print quality is poor.
Claim Rejection - 35 U.S.C. §112 (a)&(b)
The claim is 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 applicant regards as the invention. The claim is considered indefinite and nonenabling because the shape and configuration of the surface pattern cannot be determined from the provided view as described and shown.
The claim is indefinite because the appearance of the design as seen from the single view cannot be determined without resorting to conjecture. 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.
To overcome this rejection, it is suggested that Applicant submit new drawings of the claimed design that show the design clearly and are consistent with the design shown in the original drawings. If portions of the design cannot be clarified without the addition of new matter (35 U.S.C. § 132, 37 C.F.R. § 1.121), Applicant may disclaim the areas or portions of the design which are considered indefinite and nonenabling by converting them to broken lines and amending the specification to include a statement that the portions of the design shown in broken lines form no part of the claimed design.
35 USC 171 REJECTION
The claim is rejected under 35 U.S.C. 171 as being directed to nonstatutory subject matter in that the design is not an article of manufacture. The applicant appears to be claiming a surface pattern, which is not proper in a design application. Surface patterns, by themselves, are not an article of manufacture and therefore not patentable subject matter.
Design is inseparable from the article to which it is applied, and cannot exist alone merely as a scheme of ornamentation. It must be a definite preconceived thing, capable of reproduction, and not merely the chance result of a method or of a combination of functional elements (35 U.S.C. 171; 35 U.S.C. 112(a) and (b) or pre-AIA 35 U.S.C. 112, first and second paragraphs). See Blisscraft of Hollywood v. United Plastics Co., 189 F. Supp. 333, 127 USPQ 452 (S.D.N.Y. 1960), 294 F.2d 694, 131 USPQ 55 (2d Cir. 1961).
A disembodied design or mere picture is not patentable. As presented, the Claim is not embodied in an article of manufacture.
Conclusion
The claim stands rejected under 35 USC 112(a) and (b) and 35 USC 171.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to JASMINE L. COLEMAN whose telephone number is (571)272-8539. The examiner can normally be reached Monday-Friday 9am-5pm.
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/J.L.C./Examiner, Art Unit 2933 /GEORGE J ULSH/Supervisory Patent Examiner, Art Unit 2922