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 .
Objection – Foreign Priority
Acknowledgment is made of applicant’s claim for foreign priority based on an application filed in Singapore on April 26, 2023. It is noted, however, that applicant has not filed a certified copy of the SG 30202300541P application as required by 37 CFR 1.55. The documents dated 08/19/2025 are not acceptable as certified documents and therefore the priority objection stands.
Note that it is applicant’s responsibility to file foreign priority documents during the pendency of a design patent application. The examiner has no means to retrieve or upload foreign priority documents. While the Priority Document Exchange is offered as a service by USPTO to expedite retrieval of such documents from participating patent offices around the world, it is not a replacement for the requirement for applicant to provide such documents in the event the retrieval is unsuccessful. See MPEP § 215.01: “To be entitled to priority, the Office must receive a copy of the foreign application from the participating foreign intellectual property office within the pendency of the application and before the patent is granted, or receive a paper certified copy of the foreign application during that time period.” A copy of the certified copy filed by applicant, including a copy filed via EFS Web, will not satisfy the requirement in 37 CFR 1.55(g) for a certified copy. See MPEP § 502.02, subsection V.
The applicant may also contact the Patent Electronic Business Center (EBC) Customer Support Center at 1-866-217-9197 (toll free) M-F 6am – Midnight (Eastern Time) or email PDX@uspto.gov for more information. Alternatively, applicant may file a certified copy of the priority document(s) through EFS Web, or Patent Center as appropriate.
Objection – Specification
Figure Descriptions
The figure descriptions refer to the article seeking protection as a “collapsible foodstuff package” whereas the WIPO registration and claim refer to the article as a “packaging for foodstuffs”. Correction is required to describe the title of the article consistently throughout the specification as follows (see MPEP 1503.01):
--packaging for foodstuffs--
Descriptive Statement
The statement, “Reproductions with reference views are for illustrative purposes only and form no part of the claimed design” is objected to. The descriptions for these views have been amended and this statement is no longer necessary. No description of the design in the specification beyond a brief description of the drawing is generally necessary, since as a rule the illustration in the drawing views is its own best description. In re Freeman, 23 App. D.C. 226 (App. D.C. 1904). Therefore, the following must be deleted from the specification:
[[Reproductions with reference views are for illustrative purposes only and form no part of the claimed design.]]
Claim Rejection - 35 USC § 112(a) FINAL
The claim is FINALLY REJECTED under 35 U.S.C. 112(a) as 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).
Specifically, there is no support in the original disclosure dated 10/25/2024 for the removal of broken lines in reproductions 1.1, 1.2, 1.7, 1.8, 1.9, 1.10, and 1.11 and the removal of solid line features in reproduction 1.11. The original reproduction 1.11 showed solid line subject matter that is not shown in the other views and has now been deleted from the amended figure 1.11. Removal of the features entirely is considered new matter, see MPEP §608.04. If the intent of this label feature is to show exemplary/environmental subject matter, then this solid line subject matter must be converted to broken lines and all shading removed to remove these features from the claim. See MPEP §1503.02, II and III. Alternatively, applicant may cancel figure view of 1.11 if it does not have a negative impact on the overall understanding of the claimed design.
The remaining reproductions, 1.1, 1.2, 1.7, 1.8, 1.9, 1.10, which have removed broken line portions entirely from the views also constitute new matter. New matter is anything (structure, features, elements) which was not apparent (seen) in the drawings as originally filed. It is possible for new matter to consist of the removal as well as the addition of structure, features or elements, see MPEP §608.04. The current showing of the claimed design has no antecedent basis in the original disclosure and therefore constitutes impermissible new matter.
To overcome this rejection, applicant may either convincingly demonstrate that the original disclosure establishes that he or she was in possession of the amended claim or amend the drawings to return the deleted portions of broken lines to reproductions 1.7-1.10, amend the views of 1.1-1.2 so that broken lines are not seen traveling over solid line subject matter, and accurately describe these broken lines in the specification as parts of the article forming no part of the claimed design. When broken lines are used which cross over the full line showing of the design, 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. See MPEP §1503.02, III. Annotated drawings below highlight areas in question and provide a draft of a proposed amendment for 1.2 that shows the solid line feature extending to, but not crossing over the broken lines.
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Replacement Reproductions
Any amended replacement drawing sheet should include all of the figures appearing on the immediate
prior version of the sheet, even if only one figure is being amended. The figure or figure number of an
amended drawing should not be labeled as “amended.” If a drawing figure is to be canceled, the
appropriate figure must be removed from the replacement sheet, and where necessary, the remaining
figures 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 figures. If
all the figures on a drawing sheet are canceled, a replacement sheet is not required. A marked-up copy
of the drawing sheet (labeled as “Annotated Sheet”) including an annotation showing that all the figures
on that drawing sheet have been canceled must be presented in the amendment or the remarks section
that explains the change to the drawings. Each drawing sheet 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).
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.
When preparing new or replacement drawings, be careful to avoid introducing new matter, 35
U.S.C. 132 and 37 CFR 1.121(f). This pertains to either: the addition to, or the removal of, any
elements shown in the originally disclosed design.
Claim Rejection - 35 USC § 112(a) and (b) FINAL
The rejection of the claim under 35 U.S.C. 112 (a) and (b), as lacking in enablement for the
reasons set forth in the previous action have not entirely been overcome. Therefore, the claim
is again and FINALLY REJECTED under 35 U.S.C. 112 (a) and (b). Since applicant has not
overcome the rejection under 35 USC 112 (a) and (b) this action is made final (see MPEP 706.07
(a)).
That is, the claim is rejected under 35 U.S.C. 112 (a) 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
applicant regards as the invention.
The claim is indefinite and non-enabling due to the following inconsistencies/unclear parts
which prevent a clear understanding of the design which applicant seeks protection for:
Scope
The scope of the claim is unclear as broken lines are shown in the reproductions but a full and accurate description for these broken lines has been provided in the specification. Broken lines may be used in the drawings to designate environmental structure or parts of the article that form no part of the claim, if clearly designated as such in the specification. See 37 CFR 1.152 and MPEP 1503.02, subsection III. Therefore, the statement, “The parts shown by means of broken/stippled lines in the reproductions are for illustrative purposes and are not part of the claimed design;” must be amended in the specification. In design patents, the drawings are the illustration of the claim, and the description of parts of the drawings as being for "illustrative purposes only" has no clear meaning. In addition, the statement describes “broken/stippled” lines. Broken lines and stippling are two different design features. Stippling is a technique using small dots to create areas of shading wherein the spacing of the dots determines how light or dark an area is based on how dense the dot pattern is. Stippled lines have no clear meaning and there is nothing in the drawings which shows stippling as defined. Therefore, the reference to stippling must be removed. To conform to the requirements for broken lines, the broken line description must be amended. Examiner suggests the following statement, or another as appropriate:
--The broken lines are shown for the purpose of illustrating parts of the article that form no part of the claimed design. –
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 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.
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
joan.diehl@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 consider 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 official correspondence issued by the USPTO, including a notification of
refusal, please note the following:
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
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/maintain/responding-office-actions
Conclusion
The claim stands rejected under 35 US. §112 (a) and 35 USC §112(a) and (b). Applicant’s amendment necessitated the new grounds for rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the
mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of
this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened
statutory period, then the shortened statutory period will expire on the date the advisory action is
mailed, and any extension fee pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of
the advisory action. In no event, however, will the statutory period for reply expire later than SIX
MONTHS from the mailing date of this final action.
Contact
Any inquiry concerning this communication or earlier communications from the examiner should be directed to JOAN E. DIEHL whose telephone number is (571)272-9788. The examiner can normally be reached Monday-Friday 8AM-5PM.
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, Wendy Arminio can be reached on (571) 270-0221. 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.
/J.E.D./Examiner, Art Unit 2923
/WENDY L ARMINIO/Supervisory Patent Examiner, Art Unit 2923