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 .
Examiner’s Comment
Applicant’s 05/22/2025 election of Group I (Embodiments 1, 3 and 4: Reproductions 1.1-1.8, 3.1-3.8, and 4.1-4.8) without traverse is acknowledged. Group II (Embodiment 2: Reproductions 2.1-2.8) is withdrawn from further consideration by the examiner, 37 CFR 1.142(b), as being for the nonelected designs.
Objections
Title
The title "Non-telephone Microphone" is objectionable. The title of a design being claimed must correspond to the name of the article in which the design is embodied or applied to. See MPEP § 1503.01 and 37 CFR 1.153 or 37 CFR 1.1067. The title of the design identifies the article in which the design is embodied by the name generally known and used by the public…MPEP 1503.01. The portion of the title “Non-telephone” is unclear and not an article of manufacture. The examiner suggests the title be amended to read:
-- Microphone --
or another title as appropriate. The title must be amended throughout the application, original oath or declaration excepted.
Amendments to the title, whether directed to the article in which the design is embodied or its environment, must have antecedent basis in the original disclosure and may not introduce new matter. Ex parte Strijland, 26 USPQ2d 1259 (Bd. Pat. App. & Inter. 1992).
Specification
The specification is objectionable for the following:
In view of the election of Group I (Embodiments 1, 3 and 4: Reproductions 1.1-1.8, 3.1-3.8, and 4.1-4.8), the title and descriptions for Reproductions 2.1-2.8 should be removed from the specification.
There should be a separate section for the title of the claimed design and reproduction descriptions. The descriptions of the reproductions are not required to be written in any particular format, however, they must describe the views of the reproductions clearly and accurately. See Hague Rule 7(5)(a), 37 CFR 1.1024, MPEP 2920.04(a)II. Correction is required, see example below.
Design No./Product(s):
1. [amended title]
3. [amended title]
4. [amended title]
Description of the Reproduction(s):
1.1: Front
1.2: Left
1.3: Back
1.4: Top
1.5: Bottom
1.6: Right
1.7 Perspective
1.8 Perspective
3.1: Front
3.2: Left
3.3: Back
3.4: Top
3.5: Bottom
3.6: Right
3.7 Perspective
3.8 Perspective
4.1: Front
4.2: Left
4.3: Back
4.4: Top
4.5: Bottom
4.6: Right
4.7 Perspective
4.8 Perspective
The following statements are redundant and unnecessary and should be removed from the specification:
[1. The title of the product incorporating the design is "non-telephone microphone"; 2. The product incorporating the design is used as microphone; 3. The essential feature of the design lies in the shape of product incorporating the design.]
Reproductions
The reproductions are objectionable for the following:
In view of the election of Group I (Embodiments 1, 3 and 4: Reproductions 1.1-1.8, 3.1-3.8, and 4.1-4.8), Reproductions 2.1-2.8 should be removed from the drawing sheets.
In reproduction 3.7-3.8, the bottom-most portion is shown with contour/shade lines (see example annotation below). However, in reproductions 3.1-3.3 and 3.6, the bottom-most portion is shown without any contour/shade lines. Corrections is required to show this portion consistently between all views.
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media_image1.png
668
458
media_image1.png
Greyscale
Rejection under 35 U.S.C. 112(a) and (b)
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 non-enabling for the following:
There are inconsistencies between the views of the drawings that are so great that the overall appearance of the design is unclear (MPEP § 1504.04), specifically:
In reproduction 4.5, portion A (as seen from the bottom view) has a thin outer edge/perimeter shown in a light grey color. However, in reproduction 4.8, portion A has a wider outer edge/perimeter shown in a dark grey color. See all annotations below. Furthermore, in reproduction 4.8, portion A appears to be an opening in view of the showing of the side walls. However, if it is an opening, the exact depth cannot be known based on the illustrations provided. Therefore, the exact shape and configuration of portion A is unclear.
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media_image2.png
366
845
media_image2.png
Greyscale
Because of the inconsistencies, the claimed design is in fact subject to multiple interpretations, and one of ordinary skill in the art would not be able to reproduce the design without the use of conjecture. This renders the claim indefinite and non-enabled.
To overcome this rejection, it is suggested that applicant submit new drawings of the claimed design that show the design clearly and consistently. If certain non-enabled portions of the design cannot be fully enabled without the introduction of new matter, applicant may remove from the claim the areas or portions of the design that are considered indefinite and non-enabling by converting them to broken line and amending the specification to indicate those portions form no part of the claimed design.
The claim as rejected above is indefinite because the art to which it pertains is not clear. However, the ornamental appearance of the claim is sufficient for comparison with the prior art. Accordingly, the claim is also rejected under § 102(a)(1), as follows. See MPEP 2143.03(I).
Replacement Reproductions
Corrected drawing sheets of the reproductions are required in reply to the Office action to avoid abandonment of the application. 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 number 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 drawings for consistency. Additional replacement sheets may be necessary to show the renumbering 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 figures 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 to be new matter prohibited by 35 U.S.C. 132 and 37 CFR 1.121 when preparing new reproductions.
Rejection under 35 U.S.C. 112(b)
The claim is rejected for failing to particularly point out and distinctly claim the invention as required in 35 U.S.C. 112(b). The claim is indefinite because reproductions 3.1-3.3 and 3.5-3.8 include broken lines that are not described in the specification, and the scope of the claimed design cannot be determined.
Broken lines (eg. dashed, dash-dash, dot-dash, long dash, etc.) are used in design patent drawings for a number of reasons. They can show boundaries of a claimed design, environmental subject matter (e.g. a shelf, door, pedestal, etc.), or surface ornamentation (e.g. stitching, indicia, etc.). Broken lines for the purpose of indicating unimportant or immaterial features of the design are not permitted. There are no portions of a claimed design that are immaterial or unimportant. See In re Blum, 374 F.2d 904, 153 USPQ 177 (CCPA 1967).
If the broken lines represent portions of the article or environmental structure for which protection is not sought, applicant may overcome this rejection by inserting a statement similar to the following into the specification immediately preceding the claim, provided such statement does not introduce new matter (see 35 U.S.C. 132):
-- The broken line showing of [whatever the described element is] is for the purpose of depicting [portions of the article or environmental structure or whatever else it may be] and forms no part of the claimed design. --
Rejection under 35 U.S.C. 102(a)(1)
The claim is rejected under 35 U.S.C. 102(a)(1) as being anticipated by non-patent literature reference “First look at Sennheiser MKH 8030 and Rycote BD-10 microphones” (see reference V on 892) 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.
The appearance of “First look at Sennheiser MKH 8030 and Rycote BD-10 microphones” is substantially the same as that of the claimed design. 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) and MPEP § 1504.02.
“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 F.3d 1308, 1313 (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)).
Conclusion
The claim stands rejected under 35 U.S.C. 112(a) and (b), 35 U.S.C. 112(b), and 35 U.S.C. 102(a)(1).
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
Contact Information
Any inquiry concerning this communication or earlier communications from the examiner should be directed to ARAM KWON whose telephone number is (571)272-9081. The examiner can normally be reached Monday - Friday, 8:30 a.m. - 5:00 p.m.
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, DANA WEILAND can be reached at 571-270-0253. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/ARAM KWON/Examiner, Art Unit 2914
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