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 .
Embodiment Restriction
Election of Group II (Figs. 2.1 and 2.2) was made with traverse in the reply filed on 9/6/2025. Groups I, III, and IV are withdrawn from further consideration by the examiner, 37 CFR 1.142(b), as being for the nonelected design, the requirement having been traversed in the reply filed on 9/6/2025.
Response to Traverse to Election
A traversal of a restriction requirement based on there being no serious burden to an examiner to search and examine an entire application (as noted in MPEP § 803) is not applicable to design patent applications. The fact that the embodiments may be searched together cannot preclude a requirement for restriction if their appearances are considered patentably distinct, since patentably distinct embodiments cannot be supported by a single formal design claim. Also, clear admission on the record by the applicant, on its own, that the embodiments are not patentably distinct (as noted in MPEP § 809.02(a)) will not overcome a requirement for restriction if the embodiments do not have overall appearances that are basically the same as each other.
Examiner asserts the restriction is proper therefore, the Restriction Requirement is maintained. Applicants’ arguments are found unpersuasive and moot, Examiner will proceed with the election as made without traverse.
Drawings
In replying to this Refusal electing a Group for prosecution, applicant should also consider amending the application to cancel the drawing figures and remove the description corresponding to the nonelected Group(s), and to correct inventorship, as appropriate, resulting from such amendment pursuant to 37 CFR 1.48. See MPEP § 602.01(c)(1). Applicant should note that correcting inventorship after an Office action on the merits has been given or mailed in the application will require an additional fee pursuant to 37 CFR 1.48(c).
Renumbering of the drawing figures is not required. To maintain consistency with the published International Registration, it is recommended that the numbering of the drawing figures included in the elected Group not be changed even if non-elected embodiments are cancelled. Any amendment to the drawing figures should comply with 37 CFR 1.1026 and Part Four of the Administrative Instructions (in particular, see Section 405 of the Administrative Instructions with respect to numbering of reproductions).
Claim Rejections - 35 USC § 112
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 scope of the claim is unclear. The scope of the claim is unclear from the disclosure because there are broken lines in the figures and no explanation on what the broken lines mean. In Fig. 2.1 and 2.2 there are broken lines in the figures. What the broken lines represent in the drawings must be clear. When broken lines are included in the drawing, their use must be defined in the specification; i.e., environment, boundary, stitching, fold lines, etc. Dotted or broken lines may mean different things in different circumstances and it must be made entirely clear what they do mean. See In re Blum, 374 F.2d 904, 153 USPQ 177 (CCPA 1967). See annotated figures below.
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Figs. 2.1 and 2.2 with broken lines with no explanation on what they mean or if they are part of the claim
Clarification is requested. To overcome this portion of the rejection, the Applicant must describe what the broken lines show and whether or not they form a part of the claimed design. Different line styles require separate descriptions. The corresponding description explaining the broken lines and its meaning must be included in the specification, directly following the figure descriptions.
Secondly, the claim is indefinite and nonenabled because portions of the claimed design cannot be understood from the limited views in which they appear. The appearance of the top portion of the writing pen is unclear and cannot be understood without resorting to conjecture. Because these areas are shown only in a single elevation or plan view, without appearing in any corresponding views, is not possible to determine the exact nature, depth of configuration of the contours described. The shape and appearance of the claimed design is not understood and is indefinite.
The positioning and appearance of the ears of the claimed design cannot be understood from the limited views in which they appear. Furthermore, the top portion of the writing pen is unclear whether the top is slightly domed or if it’s showing the roundness of the body from a slight perspective. See annotated figures below.
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Figs. 2.1 (left) and 2.2 (right) - the ears and rounded/domed head is unclear and not understood
The drawings are unclear so that the visual disclosure of the claimed design as filed does not provide for its overall shape and appearance to be understood.
If preparing new or replacement drawings, be careful to avoid introducing new matter. New matter is prohibited by 35 U.S.C. 132 and 37 CFR 1.121(f). Corrected drawing sheets are required in reply to the Office action to avoid abandonment of the application.
Conclusion
The claim is rejected under 35 U.S.C. 112(a) and (b), as set forth above.
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 “Basic Search” or "Advance Search” button.
Contact Information
Any inquiry concerning this communication or earlier communications from the examiner should be directed to LAURA H YU whose telephone number is (408)918-7627. The examiner can normally be reached 0800-1800 PST.
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 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.
Reply Reminder
Applicant is reminded that any reply to this communication 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).
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.
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.
Responding to Official USPTO Correspondence
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: https://patentcenter.uspto.gov
Mail: Commissioner for Patents, P.O. Box 1450, Alexandria, VA, 22313‐1450
Mailing should be done sufficiently in advance to ensure the USPTO receipt prior to reply period expiration
Facsimile to the USPTO's Official Fax Number (571-273-8300) (Do Not Fax Formal Drawings)
Hand-carry to USPTO's Alexandria, Virginia Customer Service Window
For additional information regarding responding to office actions see:
https://www.uspto.gov/patents/maintain/responding-office-actions
Note that correspondence received will appear in the Patent Center, which may be viewed by the applicant at: https://patentcenter.uspto.gov
/LAURA H YU/Design ExaminerArt Unit 2924