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 .
The following formal matters are noted:
For clarity in the claim, the Reproductions could be improved by amending the drawings to a thinner line weight. Currently, the lines in the drawings are too thick to clearly illustrate all of the details within the claim. For example, the lines pointed to in the illustration below are too thick and appear to merge into one solid black line. The Examiner suggests submitting new drawings in which the lines are shown at a thickness in which all of the details within the claimed design can be clearly understood. Please note that solid lines should appear to be uniformly dense and strong and surface shading lines should be lighter than the structure lines and somewhat darker than the broken lines. It should be obvious, at a glance, which lines are solid and which lines are meant to show shading and broken lines.
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1.7 1.8
For clarity in the claim, the quality of the broken lines, seen in Reproduction 1.8, could be improved by having a more consistent broken line on the bottom of the perfume bottle. Currently, this particular broken line appears to merge with another broken line, thus creating a jagged solid line, which may cause confusion in regards to the claim. See the illustration below. Please note that broken lines should employ an even, consistent rhythm in the breaks, even on curves and angles, with the dashes being larger than the spaces between. Extra care is required in areas of tight detail regarding broken lines due to the tendency of the broken lines and dashes to merge to solid line when reduced for publication.
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partial view of 1.8
Applicant is not required to correct the above – noted formal matters, but may wish to do so to place the application in better form.
Examiner’s Comment
The Examiner is understanding the surface between the two curved lines in the front of the design to be slightly recessed / embossed. Although extraneous descriptive statements are not permissible within the Specification (see the objection below), the phrase “with an arch embossed on the front view” aided in the understanding of the three dimensionality of this surface. Should these understandings of the claim be incorrect or unacceptable to the applicant, an amendment may be filed to further clarify the claim.
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Drawings
The drawings are objected to for the following reason:
Margins in the Reproductions: The Reproduction extends to the edge of the paper. A margin of at least 5 millimeters should be left around the representation of each industrial design. (MPEP 2909.02, Hague Administrative Instructions Section 401(d)). In order to overcome this objection, the applicant is advised to file new drawings with a margin of at least 5 millimeters surrounding each reproduction.
Specification
The disclosure is objected to because of the following informalities:
Title Inconsistencies: There is inconsistency in the title. The title which appears on the application and the Bib Data sheet is “BOX FOR PERFUMES PACKAGING” which is inconsistent with the title that appears in the Specification and in the Claim, which is “Box for perfumes [packaging]”. In order to overcome this objection, the title of a claim must be used consistently throughout the application. See 37 CFR 1.153.
Extraneous Description: The descriptive statement [[The design represents a parallelepiped box, with an arch embossed on the front view; the opened view shows how the box opens and how the perfume bottle is inserted inside it;]] immediately after the description of the reproductions is extraneous information describing what is shown in the reproductions. Any description of the design in the specification other than a brief description of the drawing is generally not necessary, since as a general rule, the illustration in the drawing views is its own best description. See In re Freeman, 23 App. D.C. 226 (App. D.C. 1904). In order to overcome this objection, the above phrase should be deleted in its entirety. See Hague Rule 7(5)(a), 37 CFR 1.1024, MPEP 2920.04(a) ll.
Broken Line Statement: The broken line statement is objected to for the following reasons:
The use of the term “disclaimed”. The design is a unitary thing and all of its portions are material, thus there can be no “unclaimed” or “disclaimed” parts of the claimed design. See In re Blum 153 USPQ 177 (1967).
Inadequate description of the purpose of the broken lines. The broken lines in the drawings appear to show both portions of the design that form no part of the claimed design, as well as exemplary environmental structure of a perfume bottle.
In order to overcome this objection, the broken line statement should be amended to the following:
- - The broken lines shown in the drawings depict portions of the [TITLE] as well as exemplary environmental structure of a perfume bottle. All broken lines in the drawings form no part of the claimed design. - -
Claim Verbiage Objection: The Claim does not state who the claim belongs to. According to MP£P § 608 01(m). "While there is no set statutory form for claims, the present Office practice is to insist that each claim must be the object of a sentence.” The claim should be revised to one of the following:
- - I claim;
The ornamental design for a [TITLE] as shown and described.- -
OR
- - What is claimed is;
The ornamental design for a [TITLE] as shown and described.- -
Appropriate correction is required.
Claim Rejections - 35 USC § 112
The claim is rejected under 35 U.S.C. 112(a) and (b) 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 regards as the invention.
The claim is indefinite and nonenabling due to the following:
Inadequate Visual Disclosure: 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, without shading, the configuration and depth of the surfaces on the inside of the claimed design, in Reproduction 1.8, highlighted in grey in the illustration below, cannot be understood from the provided views. Since an inadequate amount of information is provided, the exact three dimensionality of the claimed design cannot be determined or understood. These surfaces, highlighted in grey in the illustration below, appear as if they could have a multitude of spatial relationships to the adjacent fully disclosed surfaces. To overcome this refusal, the applicant may disclaim the areas or portions of a claimed design which are considered indefinite and nonenabling in the rejection under 35 U.S.C. 112 above by converting the lines inside of the fully disclosed outer edge to broken lines and by adding dot-dash broken line, a boundary line, directly inside of that fully disclosed outer edge of the box. Note that the outer edge line of these non-enabled surfaces is enabled and should remain rendered as a solid line. If the Applicant does decide to add a concentric dot-dash broken line directly inside of the adjacent outer edge the claim and to convert the lines inside box to broken lines, an updated broken line statement (from the updated statement suggest above), in which the purpose of the two different styles of broken lines should be described, should be amended to the following:
- - The dash-dash broken lines shown in the drawings depict portions of the [TITLE] as well as exemplary environmental structure of a perfume bottle. The dot-dash broken lines in drawings depict the boundary of the claim. All broken lines in the drawings form no part of the claimed design. - -
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1.8
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Examiner’s suggested amendments to 1.8
Replacement Reproductions
Corrected reproductions are required in reply to the Office action to avoid abandonment of the
application. Any amended replacement reproduction 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 reproduction 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 reproduction 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 reproduction sheet have been
canceled must be presented in the amendment or remarks section that explains the change to
the drawings. Each reproduction 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.
Discussion of the Merits of the Case:
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”, may be used for this purpose:
https://www.uspto.gov/patent/forms/forms-patent-applications-filed-or-after-september-16-2012
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 darcey.gottschalk@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 an official correspondence issued by the USPTO, including refusals, Ex Parte Quayle, Notice of Allowances, or Notice of Abandonments, please note the following:
The USPTO transacts business in writing. 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-online/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
https://www.uspto.gov/patents-maintaining-patent/responding-office-actions
Conclusion
The claim stands refused under 35 U.S.C. § 112(a) and (b), as set forth above.
Cited Art
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 KATHERINE E. MORRIS whose telephone number is (571)272-9621. The examiner can normally be reached M-F, 9-5 ET.
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, Shawn Gingrich can be reached on (571)270-0218. 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.
/K.E.M/
Examiner, Art Unit 2934
/SHAWN T GINGRICH/ Supervisory Patent Examiner, Art Unit 2934
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