The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
Detailed Office Action
Specification
The specification is objected to as follows:
A. For clarity, as to the scope of the claim, a description indicating the purpose of the boundary lines must be inserted into the Specification preceding the Claim. As required by MPEP § 1503.02 (III), the following boundary line description should be inserted to read:
-- The jagged lines define the bounds of the claimed design and form no part thereof. –
B. If one or more designs are cancelled as a result of a restriction requirement, applicants should not renumber the remaining reproductions. Changing from “5.1” to “FIG. 1.1” is not allowed as per 37 CFR 1.1026 and Section 405 of the Administrative Instruction. Therefore, the reproductions and their descriptions in the Specification should retain their numbers (5.1-5.7) as originally filed .
Reproductions Objected to, Amended Reproductions Do Not Comply With Formal Requirements
The amended reproductions received on 5/19/2025 are objected to because:
A. The quality of the amended reproductions of 5/19/2025 are of a degraded quality compared to the reproductions originally filed on 5/10/2024. Per Hague Regulation Rule 9 (2)(a), the amended reproductions should be of a quality permitting all the details of the industrial design to be clearly distinguished.
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Reproduction 5.1 of 5/10/2024 Vs. FIG. 1.1 of 5/19/2025
B. If one or more designs are cancelled as a result of a restriction requirement, applicants should not renumber the remaining reproductions. Changing from “5.1” to “FIG. 1.1” is not allowed as per 37 CFR 1.1026 and Section 405 of the Administrative Instruction. Therefor, the amended reproductions should retain their numbers (5.1 - 5.7) as originally filed and the reproduction descriptions should correspond.
Corrected drawing sheets in compliance with 37 CFR 1.121(d) 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.
This form paragraph can be used in a FINAL rejection where an outstanding requirement for a drawing correction has not been satisfied.
Claim Rejection - 35 U.S.C. § 102 (a) (1)
The claim is rejected under 35 U.S.C. 102(a)(1) as being clearly anticipated by Philips’, "Ultinon Pro5100 LED car headlight bulb (H11)" 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.
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Claimed design Vs. Philips reference
The appearance of the Philips reference is substantially the same as that of the claimed design. The differences in proportion are considered de minimis. This prior art reference, which appears to be the subject matter of the claim herein, was described on-line prior to the instant application. The ordinary observer test is the sole test for anticipation. International Seaway Trading Corp. v. Walgreens Corp., 589 F.3d 1233, 1237-38, 1240, 93 USPQ2d 1001 (Fed. Cir. 2009).
"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)).
Claim Rejection - 35 U.S.C. § 112, A&B
The claim is rejected under 35 U.S.C. 112, A&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 indefinite and non-enabling because:
A. The appearance of the interior rectangular and circular elements on the left side of the bulb in Reproduction 1.4 are unclear since they do not appear to be illustrated in any of the other drawings. With limited views of the left side of the bulb, it is unknown what the exact appearance of these interior elements may be, and whether they are indentations, surface indicia, or openings.
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Annotated Reproduction 1.4
Applicant may overcome this rejection by placing the unknown interior elements into broken lines, and thus disclaiming them. If applicant chooses to do so, then applicant must amend the specification to include an appropriate broken line statement following the figure descriptions, and prior to the claim. In regards to MPEP 1503.02, III, a suggested broken line statement should be inserted into the Specification preceding the Claim:
-- The broken lines in the drawings illustrate portions of the LED Retrofit Bulb and form no part of the claimed design. --–
B. The appearance of the rectangular interior element on the interior of the LED Retrofit Bulb is unclear since it is inconsistently illustrated between the drawing figures. In Reproductions 1.1 and 1.6, the bulb is illustrated as having a rectangular element connecting the interior and exterior, whereas Reproduction 1.7 illustrates the bulb without this element. Without consistent illustration, it is open to conjecture the intended appearance of the interior of the LED Retrofit Bulb.
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Annotated Reproductions 1.1, 1.6, & 1.7
In order to overcome the rejection, the applicant may amend the drawings to consistently illustrate the interior of the LED Retrofit Bulb.
Applicant is advised that all of the preceding issues must be addressed to overcome these rejections, without the introduction of anything that was not shown in the original disclosure (i.e., new matter), either by the addition or removal of features of the claimed design.
New matter is anything (structure, features, elements) which was not apparent (seen) in the drawings as originally filed. It is possible for new matter to consist of the removal as well as the addition of structure, features or elements. Further, the clarification of drawings with poor line quality can introduce new matter.
Notes on Correspondence
Please note that, at this time, the examiner is prohibited from initiating or returning international telephone calls. If applicant wishes to communicate by telephone, the examiner may be reached by email to arrange a time for a telephone interview: robert.rieker@uspto.gov. The merits of the application may not be discussed via email unless an appropriate authorization for email communication is placed in the U.S. application file at the USPTO. For those applications where applicant wishes to communicate with the examiner via Internet communications, e.g., email or video conferencing tools, the following is a sample authorization form which may be used by applicant:
"Recognizing that Internet communications are not secure, I hereby authorize the USPTO to communicate with the undersigned and practitioners in accordance with 37 CFR 1.33 and 37 CFR 1.34 concerning any subject matter of this application by video conferencing, instant messaging, or electronic mail. I understand that a copy of these communications will be made of record in the application file."
Please see MPEP 502.03 II (Article 5) for more details.
Discussion of the Merits of the Case
A Power of Attorney (POA), filed with the USPTO in the specific case, is required whether or not attorney for the applicant has POA authority in a foreign IP office. Examiner may not discuss the merits or specifics of a case without a proper POA on file.
https://www.uspto.gov/web/forms/sb0080.pdf
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
Accordingly, the claim is rejected, as set forth above.
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).
Any inquiry concerning this communication or earlier communications from the examiner should be directed to ROBERT B RIEKER whose telephone number is (571)272-8607. The examiner can normally be reached M-F, 9-5 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, JENNIFER REMPFER can be reached at (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.B.R./Examiner, Art Unit 2933 6/12/2025
/HOLLY E THURMAN/Supervisory Patent Examiner, Art Unit 2919
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