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 .
Specification Objection
Title
The title is inconsistently stated throughout the documents. Specifically, the title "Electricity switch”, is used in the specification. The title “automatic transfer switch” is used in the claim and declaration. In order to clarify the subject matter of the claim, the title should be amended for consistency throughout the application, the original oath or declaration excepted (37 CFR 1.153; MPEP 1503.01.I).
Claim
In accord with the above specification objection, the present Office practice is to insist that each claim must be the object of a sentence starting with "I (or we) claim: the ornamental design for the article". The claim is not in formal terms (37 CFR 1.153). For proper form, the claim should be amended to read:
-- I CLAIM:
The ornamental design for an {Amended Title}, as shown and described. --
Reproduction Objections
The reproductions are objected to for failing to fully disclose the industrial design for the following:
Size of Paper
The size of the reproduction sheets are objected to for being 13.42x20.20. The size of the sheets which the reproductions are made must be either A4 (21.0 cm x 29.7 cm) or 8.5 x 11 inches (21.6 cm x 27.9cm). All reproduction sheets in an application must be the same size. Reproductions shall be of a quality permitting all the details of the industrial design to be clearly distinguished and permitting publication. See Hague Rule 9(2).
Applicant is not required to correct the above-noted formal matters at this time; however, additional amendments may be required upon receipt of the amended high-resolution replacement sheets. The applicant may wish to amend line quality to place the application in better form.
Replacement Drawing Sheet of the Reproductions
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 reproductions 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 reproductions 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 USC 132 and 37 CFR 1.121 when preparing amended reproductions.
Claim Refusals
35 U.S.C. § 112, (a) and (b)
The claim is 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:
The visual disclosure is inadequate such that the appearance and shape or configuration of the design for which protection is sought cannot be determined or understood. Specifically, the precise shape and relative location of elements, in Reproduction 1.2 & 1.4-1.6, cannot be determined. It is unclear to the Examiner if the identified features are intended to be recesses, protrusions, surface ornamentation or features having some other appearance. Without sectional views to corroborate or explain the changes in contours and differences in the depths of these features it is not possible to determine the exact appearance or spatial characteristics for this portion of the design. One skilled in the art would necessarily resort to conjecture attempting to understand these details. Please see Examiner's annotated drawings on the following page for identification of the non-enabled subject matter.
In an effort to overcome this refusal, Applicant may indicate that protection is not sought for those portions of the reproductions which are considered indefinite and non-enabling in the refusal under 35 U.S.C. 112 above by converting the identified areas in the annotated drawings to broken line 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 OR by amending the reproductions to color the identified portions and amend the specification to include a statement that the portions of the design shown by coloring form no part of the claimed design, provided such amendments do not introduce new matter (see 35 U.S.C. 132, 37 CFR 1.121). Converting these elements to broken line may be difficult, but an attempt should be made.
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1.2
In Reproduction 1.2 of the Examiner's annotated reproductions above, all elements WITIHN the highlighted boundaries identify the indefinite and non-enabled subject matter. The annotated arrows “FEATURE (A-F)” identify the outermost boundary of the elements which should also be included. Applicant may attempt to overcome this portion of the rejection by converting the identified elements to broken line 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 OR by coloring the identified elements and amending the specification to include a statement that the portions of the design shown by coloring form no part of the claimed design. An example is provided on the following page for reference.
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1.4
In Reproduction 1.4 of the Examiner's annotated reproductions above, all elements WITIHN the highlighted boundaries identify the indefinite and non-enabled subject matter. The annotated arrows “FEATURE (A-C)” identify the outermost boundary of the elements which should also be included. Applicant may attempt to overcome this portion of the rejection by converting the identified elements to broken line 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 OR by coloring the identified elements and amending the specification to include a statement that the portions of the design shown by coloring form no part of the claimed design. An example is provided on the following page for reference.
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1.5
In Reproduction 1.5 of the Examiner's annotated reproductions above, all elements WITIHN the highlighted boundaries identify the indefinite and non-enabled subject matter. The magnified areas identified by annotate circles “A-C” identify the portions of the features that should also be included. Applicant may attempt to overcome this portion of the rejection by converting the identified elements to broken line 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 OR by coloring the identified elements and amending the specification to include a statement that the portions of the design shown by coloring form no part of the claimed design. An example is provided on the following page for reference.
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1.6
In Reproduction 1.6 of the Examiner's annotated reproductions above, all elements WITIHN the highlighted boundaries identify the indefinite and non-enabled subject matter. The annotated arrows “FEATURE (A-E)” identify the outermost boundary of the elements which should also be included. Applicant may attempt to overcome this portion of the rejection by converting the identified elements to broken line 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 OR by coloring the identified elements and amending the specification to include a statement that the portions of the design shown by coloring form no part of the claimed design. An example is provided on the following page for reference.
EXAMPLE
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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 darcey.gottschalk@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)
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 stands rejected under 35 U.S.C. § 112, (a) and (b).
The references are cited as pertinent prior art. Applicant may view and obtain copies of the cited references by visiting http://www.uspto.gov/patft/index.html and pressing the “Patent Number Search” button.
Contact
Any inquiry concerning this communication or earlier communications from the examiner should be directed to BRYAN N. MELVIN whose telephone number is (571)272-9675. The examiner can normally be reached on Monday-Thursday 9AM-4:30PM.
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, Sandra Snapp can be reached on (571)272-8364. 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.
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).
B. N. M.
Examiner
Art Unit 2912
/SANDRA SNAPP/Supervisory Patent Examiner, Art Unit 2912