DETAILED ACTION
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 .
Election Acknowledgement
The applicant’s election of Embodiment 2 without traverse, received on 02/11/2025, is acknowledged. Additionally, the specification amendments and the cancellation of former figure views 1.1 - 1.4, also received on 02/11/2025, are acknowledged. An annotated sheet showing remaining and cancelled figure views is attached to this office action.
As per 37 CFR 1.142(b), Embodiment 1 is withdrawn from further consideration by the applicant as being for a non-elected design.
Specification Objections
The figure descriptions are objected to as per Hague Rule 7(5)(a), 37 CFR 1.1024, MPEP 2920.04(a) II. 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 each reproduction. In this instance, for clarity, a full description which refers to the article in 2.1 is suggested. Additionally, the enlarged views, as well as the views shown in a state of use, should be stated as such. To overcome the objection, applicant should provide a figure description describing each point of view of the reproductions with clarity. The following changes are suggested:
-- 2.1 is a front view of a SYRINGE PISTON;
2.2 is a left view thereof;
2.3 is a perspective view thereof;
2.4 is an enlarged top view thereof;
2.5 is an enlarged bottom view thereof;
2.6 is a front view thereof in a state of use;
2.7 is a left view thereof in a state of use;
2.8 is a perspective view thereof in a state of use; and
2.9 is an enlarged top view thereof in a state of use. –
The examiner objects to the insufficient broken lines statement as per MPEP 1503.02(III), MPEP 7(5)(a) & 2920.05(b). The use of broken lines must be clearly and fully described. A broken lines statement which describes their use should be inserted into the specification below the figure descriptions and above the single claim. The examiner suggests the below:
-- The broken lines shown in 2.6 through 2.9 are intended to show environmental structure and form no part of the claimed design. –
The descriptive statement included in the specification is impermissible as per MPEP 1503.01 (II) and 1503.02(II). Scale is not a consideration within a design application. In a design claim, the claim is directed towards what is shown and described. Protection cannot be sought for embodiments or possible future actions beyond what is in the instant application. The claim should not be limited to specific material. The examiner suggests the description below be canceled as any description of the design in the specification, other than a brief description of the drawing, is generally not necessary, since as a general rule, the illustration in the drawing views is its own best description.
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The claim is objected to for a typographical error and for improper form as per 37 CFR 1.153. The word [show] should be cancelled and replaced with --shown-- proper form and to correct the error. The examiner suggests the claim be amended to the below:
-- CLAIM: The ornamental design for a SYRINGE PISTON, as shown and described. --
Rejection Under 35 USC 112 (a)&(b)
The claim is rejected under 35 U.S.C. 112(a) and (b) or pre-AIA 35 U.S.C. 112, first and second paragraphs, 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 (or, for applications subject to pre-AIA 35 U.S.C. 112, the applicant) regards as the invention.
The claim is indefinite and nonenabling because the shape, appearance, and description of some portions of the design are unclear due to inconsistent and insufficient disclosure of the claimed design as currently depicted. MPEP § 1504.04
One cannot totally understand the dimensionality due to lack of adequate figure views and inconsistent and contradictory figure views. The examiner has attempted to illustrate most of the drawing deficiencies in the annotated examples below; however, the onus is on the applicant to show every aspect of the claimed design accurately and consistently throughout views.
The claimed design cannot be understood because the lines are not presented clearly throughout the disclosure. The details of the claim cannot be distinguished nor corroborated between each other as their presentation is not clearly shown, and details appear to be inconsistent. This issue is present throughout the figure views. Specifically, the lines are jagged, faint, and merging. It is suggested the figures be resubmitted with lines which are clearly presented and well-defined, and which are consistently shown throughout the figure views. Be careful to avoid introducing new matter when correcting this issue, especially in the areas defined as a solid mass; no new subject matter may be introduced into these areas (whether claimed or forming no part of the claimed design). See annotation on the following page exemplifying the issue described.
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The features seen between the ridges under the top portion of the article in the bottom view of 2.5 cannot be understood. There appears to be features within each ridge seen on the underside of the top portion of the article in this figure view. However, there is no clarifying view of these features and planes. The exact dimensionality and location of these areas cannot be understood and should be removed from the claim. See annotation below.
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The recessed features and planes seen within the two openings in the left views of 2.2 and 2.7 cannot be understood. There is no clarifying view of the features/planes seen within these recessed portions of the article. Their exact dimensionality and the location of these areas relative to one another within the article cannot be understood. It is suggested they be removed from the claim. See annotation below.
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Certain features are shown as claimed in figure views that cannot be understood. The views presented do not clarify the features’ shape, configuration, or dimensionality, and at what relative depth features are located to the adjacent surfaces.
While the application contains drawings of the invention in multiple views, the inconsistencies in the different figures present confusing and contradictory conditions along with insufficient disclosures that require the examiner to rely on conjecture to understand the intention of the applicant.
These portions of the design that are inconsistently depicted may be made consistent in order to overcome that portion of the rejection.
Portions of the design considered insufficiently disclosed may be removed from the claim by conversion to broken lines or as defined by a broken line boundary with all shading/contour lines removed. Applicant is cautioned however that removal of random items from the claim could introduce new matter if the resulting claimed design was not evident within the originally filed drawings.
Correction of the drawing is suggested.
When preparing new or replacement drawings, be careful to avoid introducing new matter. Any change to the drawing or specification must have support from the original disclosure. New matter is prohibited by 35 U.S.C. 132 and 37 CFR 1.121(f).
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.” 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.
Summation
The claim stands rejected for the reasons set forth above.
Any possible prior art rejections are withheld pending resolution of the current rejection under 35 USC 112.
Hague - Reply Reminder
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).
NOTES ON CORRESPONDANCE
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 amanda.berlinski@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 official correspondence issued by the USPTO, including a notification of refusal, 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
Any inquiry concerning this communication or earlier communications from the examiner should be directed to AMANDA J BERLINSKI whose telephone number is 571-272-8061. The examiner can normally be reached Monday - Friday 10:00a-6:00p EST.
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, MICHAEL C STOUT can be reached on 408-918-7558. 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.
/A.J.B./
Examiner, Art Unit 2924
/BAO-YEN T NGUYEN/Primary Examiner, Art Unit 2919