The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
DETAILED ACTION
General Information
The merits of this case have been carefully reviewed in light of Applicant’s election, received on September 10, 2025. The election without traverse of Group 1 (Figs. 1-7) is acknowledged. Based on the applicant’s election of Group 1, the designs shown in Groups 2 and 3 are withdrawn from further prosecution. 37 CFR 1.142(b). All non-elected groups are hereby cancelled. Group 1 is hereby evaluated on the merits. Applicant’s submission of replacement drawings and figure descriptions reflecting the cancellation of Groups 2 and 3 is noted.
Reproduction Objection
The reproductions are objected to.
The applicant has improperly renumbered the reproductions from Figs. 1.1-1.7 to Figs 1-7. Since the application is a Hague application and each figure does not represent sole figures, the Figures should use 1.1-1.7, being from the same embodiment. The applicant must renumber the figures to read 1.1-1.7, as originally filed.
Any amended replacement drawing sheet should include all of the claimed figures, even if only one figure is being amended. Replacement sheets cancel all previous disclosures. Each drawing sheet submitted after the filing date of an application must be labeled in the top margin as “Replacement Sheet” pursuant to 37 CFR 1.121(d). If the examiner does not accept the changes, the applicant will be notified and informed of any required corrective action in the next Office action.
The corrected drawings must meet the written description requirement of 35 U.S.C. 112(a) and not contain new matter (35 U.S.C. 132; 37 CFR 1.121).
Specification Objection
The specification is objected to for the following reason:
In accordance with the objection to the reproductions, the applicant should amend the figure descriptions so that they read Figs. 1.1-1.7, instead of Figures 1-7.
The broken line statement describes the broken lines as being for “illustrative purposes only”. This wording is no longer used for design applications and should be deleted. Broken line statements need to state the exact purpose of broken lines. MPEP 1503.01. In this situation, the broken lines appear to show a boundary of the claimed design. Therefore, the broken line statement should be amended to read:
--The broken lines illustrate a boundary of the claimed design and forms no part thereof.--
Since there is one inventor, for clarity, the formal claim statement should be prefaced with the phrase “I claim”. For example:
--I Claim:
The ornamental design for a Ferry as shown and described.--
Claim Refusal – 35 USC 112(a) – New Matter
The claim is refused under 35 USC 112(a) for failing to comply with the description requirement. 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).
The applicant has filed amended reproductions with different proportions. The ferry is now much shorter, and relatively tall and wide, when compared to the originally filed reproductions. The significant changes to the proportions to the claimed design are not supported by the original disclosure, and creates a new appearance to the drawing disclosure. This change is considered to be new matter.
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As a potential means of overcoming this portion of the rejection, the applicant may restore an appearance of the ferry which is supported by the original disclosure.
Should the applicant amend the drawings and/or specification, the amendment must meet the written description requirement of 35 U.S.C. 112(a). It must be apparent that the applicant was in possession of the amended design at the time of original filing. When preparing new or replacement drawings, be careful to avoid introducing new matter prohibited by 35 U.S.C. 132(a) and 37 CFR 1.121(f). Applicant may file amendments in reply to the Office action to avoid abandonment of the application. If corrected drawings are submitted in response to the Office action, they must be in compliance with 37 CFR 1.121(d).
Conclusion
The claimed design is refused under 35 USC 112(a) for new matter, with reproduction and specification objections as discussed.
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 Communication
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:
[Symbol font/0xB7] Online via the USPTO's Electronic Filing System‐Web (EFS‐Web) (Registered eFilers only) https://www.uspto.gov/patents/apply
[Symbol font/0xB7] Mail: Commissioner for Patents, P.O. Box 1450, Alexandria, VA, 22313‐1450
[Symbol font/0xB7] Facsimile to the USPTO's Official Fax Number (571‐273‐8300)
[Symbol font/0xB7] Hand‐carry to USPTO's Alexandria, Virginia Customer Service Window https://www.uspto.gov/patents/maintain/responding-office-actions
Contact Information
Any inquiry concerning this communication or earlier communications from the examiner should be directed to JERRY HSU whose telephone number is (571)272-5363. The examiner can normally be reached on MON-FRI 830AM-5PM EST.
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, Susan Krakower can be reached at 571-272-4496. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
The references cited are art of record. Applicant may view and obtain copies of U.S. Patent references by visiting the following site and doing an online search. http://www.uspto.gov/patft/index.html.
Information regarding the status of an application may be obtained from the Patent Application Information Retrieval (PAIR) system. Status information for published applications may be obtained from either Private PAIR or Public PAIR. Status information for unpublished applications is available through Private PAIR only.
For more information about the PAIR system, see http://www.uspto.gov/patents/process/status/private_pair/index.jsp.
If you have questions on access to the Private PAIR system, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative or access to the automated information system, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/JERRY SHIUAN-HUA HSU/Examiner, Art Unit 2917
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