DETAIELD CORRESPONDENCE
Applicant's Response
The reply of October 31, 2025, has been received and entered into the electronic case file.
The amendment to the reproductions, which clarifies the scope in reproductions 1.1-1.5, acts to only partially overcome the previously given refusal under 35 U.S.C. 112(a) and (b). Point 3 of the previously given refusal under 35 U.S.C. 112(a) and (b) is restated below and made final.
Objection to the Reproductions
The reproduction disclosure is objectionable because the reproductions are labeled “FIG.”; however, in an international design application, the reproductions must be labeled with two separate numerals separated by a dot (e.g., 1.1, 1.2, 1.3, etc.). The number that precedes the decimal corresponds to the design (embodiment) number. See MPEP 2909.02 and Hague Administrative Instructions Section 405.
Correction is required to amend the reproductions so that they are relabeled as “1.1-1.7”, without “FIG.”, as originally filed. See replacement reproduction instructions below.
Objection to the Specification
The specification is objectionable because the broken line statement says, “the dash-dot-dash broken line represents a boundary between the claimed design and unclaimed subject matter.” The design is a unitary thing and all of its portions are material, thus there can be no “unclaimed” or “disclaimed” parts of the claimed design. See In re Blum 153 USPQ 177 (1967). In addition to the use of broken or dotted lines to indicate matter shown in a reproduction for which protection is not sought, Administrative Instruction 403 permits such matter to be indicated in the description and/or by coloring (MPEP 2920.04(b)).
For clarity, it is recommended to cancel the amended broken line statement beginning with “The dash-dot-dash…” and ending with “… forms no part of the claimed design” and replace with the following sentence:
-- The dash-dot-dash broken lines define the bounds of the claimed design and form no part thereof. --
Final Claim Rejection under 35 U.S.C. 112(a) (New Matter)
The claim is finally rejected under 35 U.S.C. 112(a) as failing to comply with the description requirement thereof since the new drawing disclosure is not supported by the original disclosure. The original disclosure does not reasonably convey to a designer of ordinary skill in the art that applicant was in possession of the design now claimed at the time the application was filed. See In re Daniels, 144 F.3d 1452, 46 USPQ2d 1788 (Fed. Cir. 1998); In re Rasmussen, 650 F.2d 1212, 211 USPQ 323 (CCPA 1981).
Specifically, there is no support in the original disclosure for the following:
A plant trough having square features abutting the top edge of the exterior side walls in reproduction 1.5. In the original disclosure, there is a line in between the square features and the top edges of the walls.
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Original reproduction 1.5 (left) and amended reproduction 1.5 (right).
To overcome this rejection, applicant may attempt to demonstrate (by means of argument or evidence) that the original disclosure establishes that he or she was in possession of the amended claim having square features abutting the top edge of the exterior side walls in reproduction 1.5. Additionally, applicant may amend the reproductions so that they correspond with the original reproductions. It is recommended to add the two lines shown in original reproduction 1.5 back to reproduction 1.5.
Final Claim Refusal Under 35 U.S.C. 112(a) and (b)
The claim is again and finally refused 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 non-enabling for the following reasons:
The appearance of the claimed design cannot be understood because the exact configuration of the square features and thin rectangular features in reproduction 1.8 cannot be determined from the view in which they appear. It is unclear if they are flat, angled, curved, or other, how they relate to each other, and where within the article they occur.
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Reproduction 1.8 showing the features that cannot be understood.
The scope of the claimed design cannot be understood because it is unclear in reproduction 1.8 what is inside and what is outside the dash-dot-dash boundary lines because both the square and the oval features are shown with dash-dot-dash boundary lines. Additionally, reproduction 1.7 shows the oval features in evenly spaced broken lines.
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Reproduction 1.8 showing a few examples of the oval features shown in dash-dot-dash lines.
In order to overcome this refusal, the scope and appearance of the claim should be clarified. It is recommended to 1.) convert the two straight lines adjacent to the outer edge full claim lines to dash-dot-dash boundary lines, convert the remaining square features and thin rectangular features identified above in reproduction 1.8 to evenly spaced broken lines, and to convert the square dash-dot-dash boundary lines to evenly spaced broken lines, and 2.) convert the oval features in reproduction 1.8 to evenly spaced broken lines so that reproduction 1.8 is consistent with reproduction 1.7.
Any amendment must not introduce new matter and 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 filing. This pertains to the addition or removal of parts of the design, as well as the conversion of solid lines to broken lines and vice versa. See 35 U.S.C. 132 and 37 CFR 1.121(f) for new matter.
Replacement Reproduction Instructions
Any amended replacement reproduction 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 reproduction should not be labeled as “amended.” If a reproduction 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 reproductions for consistency. Additional replacement sheets may be necessary to show the renumbering of the remaining figures. If all the figures on a reproduction sheet are canceled, a replacement sheet is not required. A marked-up copy of the reproduction sheet (labeled as “Annotated Sheet”) including an annotation showing that all the figures on that reproduction sheet have been canceled must be presented in the amendment or remarks section that explains the change to the reproductions. Each reproduction 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.
When preparing new or replacement reproductions, be careful to avoid introducing new matter into the disclosure, prohibited by 35 U.S.C. 132 and 37 C.F.R. 1.121(f). Additionally, any amendment 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 filing. This pertains to either the addition to, or the removal of, any elements shown in the original disclosure of the design.
Conclusion
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. The claim is finally refused under 35 U.S.C. 112(a) New Matter and again and finally refused under 35 U.S.C. 112(a) and (b). 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 date of this final action.
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/G.D./Examiner, Art Unit 2914
/SANDRA SNAPP/Supervisory Patent Examiner, Art Unit 2914