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 .
Information Disclosure Statement
All references have been considered. Examiner notes that in all of the cited documents, only the images provided within were considered and not the text, as the claim is only directed to the ornamental appearance of the article disclosed.
Specification Objections
The following formal matters are noted:
Risk of Introducing Functional Language
Descriptions of the reproductions are not required to be written in any particular format, however, if they do not describe the views of the drawing clearly and accurately, the examiner should object to the unclear and/or inaccurate descriptions and suggest language which is more clearly descriptive of the views (MPEP 1503.01 (II)).
The specification includes the statement: “Key design feature of this industrial design product: Its shape;” This language is objected to as being vague and uninformative. All design claims inherently cover the shape and surface appearance of the article. Thus, this statement does not meaningfully contribute to the clarity of the disclosure and may be misleading.
The phrase “Key design feature” sometimes raises concern if it implies functionality or claim limitation, which can trigger a 35 U.S.C. 112 refusal if it introduces ambiguity about the scope of the claim.
Applicant is advised that this language is not required under U.S. design practice or Hague examination standards (see MPEP § 1503.01(I) and § 2920.04(a)(II)). Applicant may wish to remove or revise this statement to avoid confusion or redundancy. This is a suggestion for improved clarity, not a requirement at this time.
Description of the Reproductions
Descriptions of the reproductions are not required to be written in any particular format, however, if they do not describe the views of the drawing clearly and accurately, the examiner should object to the unclear and/or inaccurate descriptions and suggest language which is more clearly descriptive of the views (MPEP 1503.01 II).
The specification includes the statement: “The picture or photo that best represents the key design feature:” This statement is objected to because the reproductions provided are line drawings and not photographic images. Referring to a line drawing as a “picture” or “photo” is inaccurate and may cause confusion regarding the nature of the disclosure.
For clarity and consistency with Hague practice and U.S. examination guidelines (see MPEP § 2909.02 and § 2920.04(a)(II)), it is recommended that the phrase “picture or photo” be replaced “reproduction” where appropriate.
Applicant is not required to make this change, but may wish to do so to place the application in better form and avoid mischaracterization of the drawing medium.
Broken Line Statement
The description of broken lines preceding the claim does not properly describe what the broken lines illustrate in the Reproductions. It is critical that the description of the broken lines in the specification explicitly identifies their purpose so that the scope of the claim is clear. Therefore, the description of broken lines preceding the claim, must be amended to read (37 CFR 1.152; MPEP § 1503.02, subsection III; and In re Blum, 153 USPQ 177 (1967)):
-- The dash-dash broken lines in the reproductions form no part of the claimed design; The dash-dotted broken lines define the boundaries of the claim and form no part of the claimed design. --
Reproduction Objection
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 14.41x18.45in. 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 matter at this time; however, additional amendments may be required upon receipt of replacement sheets. The applicant may wish to amend paper size to place the application in better form.
Examiner’s Understanding - Cross Hatching
In Reproduction 1.8 of the Examiner’s annotated drawing below, it is the examiner’s understanding that the outer perimeter of the highlighted region, shown in broke line, is not part of the claimed structure. However, the structures within those broken lines are shown with solid line cross-hatching. This is an inconsistency that causes confusion. As such, to be consistent, the cross-hatching shown in the reproduction should be converted to broken lines so that it is understood those areas are not part of the claimed design. See the Examiner’s annotated drawing below for further details.
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In Examiner’s annotated drawing above, if the areas WITHIN the highlighted regions, in Reproduction 1.8, are intended to form no part of the claimed design the crosshatching should be converted to broken line or colored. The applicant is reminded that surface shading is prohibited on subject matter that forms no part of the claimed design.
Replacement Reproduction Sheet of the Reproductions
Any amended replacement Reproduction 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 Reproduction should not be labeled as “amended”. If a Reproduction 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 Reproduction 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. § 103(a)
A design may be embodied in less than the entire article, In re Zahn, 204 USPQ 988 (CCPA 1980). Therefore, it is reasonable to compare such a design to prior art embodied in less than an entire article. The examiner has done so in the following rejections.
The following is a quotation of 35 U.S.C. § 103 which forms the basis for all obviousness rejections set forth in this Office action:
"A patent for a claimed invention may not be obtained, notwithstanding that the claimed invention is not identically disclosed as set forth in section 102, if the differences between the claimed invention and the prior art are such that the claimed invention as a whole would have been obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art to which the claimed invention pertains. Patentability shall not be negated by the manner in which the invention was made."
The claim is rejected under 35 U.S.C. § 103 as being unpatentable over Non-Patent Literature reference “SEI” (NPL reference V - dated April 2018).
Although the invention is not identically disclosed or described as set forth in 35 U.S.C. § 102, if the differences between the claimed invention and the prior art are such that the claimed invention as a whole would have been obvious before the effective filing date of the claimed invention to a designer having ordinary skill in the art to which the claimed invention pertains, the invention is not patentable.
The SEI reference has an overall appearance with design characteristics that are visually similar to those of the claimed design, in that both designs:
are optical fiber components;
have an overall rectangular design;
have circular openings; and
have extrusion depth.
CLAIMED DESIGN
SEI
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The claim differs from the design of SEI reference in the following way:
The claimed design has a chamfered cylindrical opening.
It would have been obvious to a designer of ordinary skill in the art before the effective filing date of the present claimed invention to duplicate the shape disclosed in the SEI reference and modify the cylindrical opening with a chamfered edge, resulting in an appearance visually similar as the claimed design, and over which the claimed design would have no patentable distinction.
Further, obvious changes in arrangement and proportioning are no more patentable in one case than in the other. In re Stevens, 81 USPQ 362 (CCPA 1949). The change, omission or addition of a few minor details would not justify the multiplication of design patents even though the designs may readily be distinguished from each other by one or more features. Substantial differences are required to render one device patentable over another as a design (In re Freeman 1904 C.D.619; 109 O.G. 1339 (1904)).
For the purposes of design patent examination, the cited prior art design is analogous to the claimed design. This holding of analogousness is based upon the fact that both the prior art and the claimed design are optical fiber components. Note also that case law has held that one skilled in the art is charged with knowledge of all related art. In re Antle, 170 USPQ 285 (CCPA 1961) and In re Nalbandian, 211 USPQ 782 (CCPA 1982).
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. § 103(a).
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).
/BRYAN N. MELVIN/Examiner, Art Unit 2912