FINAL ACTION
Claim Rejection 35 U.S.C. 112 (a)
The claim is FINALLY REJECTED under 35 U.S.C. 112(a) or pre-AIA 35 U.S.C. 112, first paragraph 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 for the design now shown. The below annotated illustrations provide a side-by-side comparisons of the original drawings and the amended drawings and identify the features of the design which have changed shape and appearance, as well as note the surfaces which were not originally shown nor claimed in the original disclosure.
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As shown in the above illustrations, the amended drawings show a new design which now claims:
Different bottom surfaces, not as originally shown
Additional rear bracket surfaces, not originally shown
Wider rear surface on screws, not originally shown
Different top circular surfaces, not as originally shown
Different bottom circular surfaces, not as originally shown
Different, more complex pole insert areas on the bottom surface, not as originally shown
To overcome this rejection, applicant may attempt to demonstrate that the original disclosure establishes that he or she was in possession of the amended claim.
If applicant is unable to demonstrate that the original disclosure establishes that he or she was in possession of the amended claim, it is recommended that the drawings be amended to show the design as originally disclosed.
When 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).
Claimed Foreign Priority
Receipt is acknowledged of certified copies of papers required by 37 CFR 1.55.
Conclusion
The claim stands FINALLY REJECTED under 35 U.S.C. 112 (a) and (b) and FINALLY REJECTED under 35 U.S.C. 112 (a). Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). 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 date of this final action.
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
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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 calvin.vansant@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
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When Responding to Official USPTO Correspondence
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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 Electronic Filing System-Web (EFS-Web) (Registered eFilers only)
· Mail: Commissioner For Patents, P.O. Box 1450, Alexandria, VA, 22313-1450
· Facsimile to the USPTO's Official Fax Number (571-273-8300)
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Richard Kearney can be reached at (571)272-8312. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/I.S.F./Examiner, Art Unit 2933
/Richard Kearney/Supervisory Patent Examiner, Art Unit 2933
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