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
SPECIFICATION
TITLE
The title of the design identifies the article in which the design is embodied by the name generally known and used by the public and may contribute to defining the scope of the claim (MPEP 1503.01). The title is objected to because the inclusion of the words "(part of)" is confusing and grammatically incorrect. Further, the title is inconsistent. The title in the preamble (of the specification) is indicated to be Pipette (part of), while the title in the claim lists it to be “medical instruments, instruments and tools for laboratory use.”
To overcome this objection, the title must be amended throughout the application, original oath or declaration excepted, to consistently identify the name of the article in which the claimed design is embodied. If the article is indeed intended to be a pipette part, the following title is suggested:
-- PIPETTE PART—
Or another title as appropriate.
REPRODUCTION DESCRIPTIONS
Clear and accurate description of the reproductions are required. (See Hague Rule 7(5)(a), 37 CFR 1.1024, MPEP 2920.04(a)II). Therefore, the Applicant is advised to utilize the following reproduction descriptions to accurately reflect what is depicted in the reproductions.--1.1: Front bottom perspective 1.2 : Top1.3 : Bottom1.4 : Back top perspective1.5 : Right top perspective 1.6 : Left top perspective1.7 :Front top perspective--
REJECTIONS
35 U.S.C. §112(a) and (b)
The claim is rejected under 35 U.S.C. 112(a) and (b) or 35 U.S.C. 112 (pre-AIA ), 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 found to be indefinite and nonenabling for the following reasons:
The claim is indefinite and non-enabling because the visual disclosure of the claimed design as originally filed is of such poor quality that its overall shape and appearance cannot be understood (MPEP § 1504.04). Specifically:
The drawings lack sufficient clarity to fully understand the details of features within the PIPETTE (PART OF) because of the poor image quality, including the fact that the images are blurry, with undefined lines (MPEP §1504.04). In particular the elements identified by arrows and inside the circular regions on the annotations below from 1.2 – 1.7 appear to have a certain level of complexity and detail present, however these structures are not clearly visible and do not adequately show the details of the design. The annotation below is an example of the poor image quality:
PNG
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1678
781
media_image1.png
Greyscale
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864
383
media_image2.png
Greyscale
PNG
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1549
769
media_image3.png
Greyscale
PNG
media_image4.png
1542
744
media_image4.png
Greyscale
PNG
media_image5.png
1627
834
media_image5.png
Greyscale
PNG
media_image6.png
1447
800
media_image6.png
Greyscale
The claim is indefinite and non-enabling because the visual disclosure is inadequate such that the appearance and shape or configuration of the design for which protection is sought cannot be determined or understood (MPEP § 1504.04). Specifically:
the claim is indefinite and non-enabling in the area shown darkened inside the circular regions; indicated by arrows “a”, “b” and “c” and inside arrows “1” and “2” in 1.2 and 1.3 because the depth and three-dimensional appearance cannot be determined from the views in which it appears. Specifically, it cannot be determined if these surfaces are coplanar, contoured or if certain areas are recessed. And if they are recessed or contoured, how far recessed or contoured they are cannot be determined:
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media_image7.png
796
1685
media_image7.png
Greyscale
PNG
media_image8.png
923
1755
media_image8.png
Greyscale
Because of the poor line quality and inadequate disclosure identified above, the claimed design is in fact subject to multiple interpretations, and one of ordinary skill in the art would not be able to make and use 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 nonenabling by converting them to broken line and amending the specification to indicate those portions form no part of the claimed design.
IF REPLACEMENT DRAWINGS ARE SUBMITTED
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 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.
CAUTION AGAINST NEW MATTER
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).
PRIOR ART CITED
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
CONCLUSION
Accordingly, the claim is rejected under 35 U.S.C. §112(a) and (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 prose 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/AIN80 "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.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 [Michelle.Christeon@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
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 Electronic Filing System-Web (EFS-Web) (Registered eFilers only)
https ://www.uspto.gov/patents-application-process/applying-onIine/efs-web-guidance-and-resources
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
CONCLUSION
Applicant is reminded that any reply to this Refusal 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).
Any inquiry concerning this communication or earlier communications from the examiner should be directed to MICHELLE M. CHRISTEON whose telephone number is (571)272-1859. The examiner can normally be reached on M-F 9:00- 5:30 pm. 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, Shannon Morgan, can be reached on 571-272-7979. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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://pair-direct.uspto.gov. Should 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.
/M.M.C./Design Patent Examiner, Art Unit 2915
/JENNIFER L REMPFER/Supervisory Patent Examiner, Art Unit 2933
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