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 .
Examiner’s Comment
The following are the Examiner’s understanding of the claim:
Reproduction 1.1-1.7 to be the unassembled state of 2.1-2.7, and 3.1-3.7
Reproduction 4.1-4.7 illustrates the unassembled state of 5.1-5.7
Reproduction 6.1-6.7 illustrates the unassembled state of 7.1-7.7
Reproduction 8.1-8.7 illustrates the unassembled state of 9.1-9.7
Reproduction 10.1-10.7 illustrates the unassembled state of 11.1-11.7
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Additionally, it is the Examiner’s understanding of the claim that:
The area highlighted in grey below forms part of the claimed design.
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Should these understandings of the claim be incorrect or unacceptable to the applicant, an amendment may be filed to further clarify the claim.
Restriction Not Required
This application discloses the following embodiments:
Embodiment 1: Reproduction 1.1-1.7
Embodiment 2: Reproduction 2.1-2.7
Embodiment 3: Reproduction 3.1-3.7
Embodiment 4: Reproduction 4.1-4.7
Embodiment 5: Reproduction 5.1-5.7
Embodiment 6: Reproduction 6.1-6.7
Embodiment 7: Reproduction 7.1-7.7
Embodiment 8: Reproduction 8.1-8.7
Embodiment 9: Reproduction 9.1-9.7
Embodiment 10: Reproduction 10.1-10.7
Embodiment 11: Reproduction 11.1-11.7
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Embodiment 1: 1.1 Embodiment 2: 2.1 Embodiment 3: 3.1
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Embodiment 4: 4.1 Embodiment 5: 5.1
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Embodiment 6: 1.1 Embodiment 7: 7.1
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Embodiment 8: 8.1 Embodiment 9: 9.1
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Embodiment 10: 10.1 Embodiment 11: 11.1
Multiple embodiments of a single inventive concept may be included in the same design application only if they are patentably indistinct. See In re Rubinfield, 270 F.2d 391, 123 USPQ 210 (CCPA 1959). Embodiments that are patentably distinct from one another do not constitute a single inventive concept and thus may not be included in the same design application. See In re Platner, 155 USPQ 222 (Comm’r Pat. 1967).
In regards to the differences, in the portions of the claim (in solid lines), between the various embodiments are not seen as patentably distinct. These differences include; differences in the proportions and arrangement of the various design elements, a flat vs. an angled top surface in the assembled state of the design, and the presence or absence of a line on the top middle back (as seen in the perspective view of the assembled state) of the design.
In regards to the differences in the proportions and arrangement of the various design elements, case law states that the presence of invention is as essential to granting of design patent as to granting of mechanical patent; obvious changes in arrangement and proportioning are no more patentable in one case than in the other. In re Stevens 624 O.G. 366; 81 USPQ 362(1949).
In regards to a flat vs. and angled top surface in the assembled state of the design, these design features are common in the field of packaging for foodstuffs (cartons) and would have been a simple substitution for one known design characteristic for another, i.e. a flat top vs. an angled top or visa versa.
In regards to the presence or absence of a line on the top middle back of the design in an assembled state, this small difference is seen as de minimis in nature and unrelated to the overall aesthetic appearance of the design. Ex parte Pappas (BdPatApp&Int) 23 USPQ2d 1636; In re Blum, 153 USPQ 177 (CCPA 1967). This difference, in the presence or absence of a line on the top middle back of the design in an assembled state, is considered de minimis because the net effect of the difference does not affect the appearance of the claimed design as a whole and the impression that the design would make to the eye of a designer of ordinary skill. Ex parte Pappas (BdPatApp&Int 1992) 23 USPQ2d 1636. In the case of In re Lamb 128 USPQ 539 (1961), the court ruled that an applicant's design is not patentable over prior art design since minor differences between designs do not create impression of a new or different design; the overall appearance is the same; fact that some dimensions are changed in a different degree than others is not patentably significant. Further, in the case of In re Lapworth, 172 USPQ 129 (C.C.P.A. 1971), the Board’s opinion was that “It is distinctiveness in overall appearance of an object, when compared with the prior art, rather than minute details or small variations in configuration as appears to be the case here, that constitutes the test of design patentability.”
The above identified embodiments are considered by the examiner to present overall appearances that are basically the same. Furthermore, the differences between the appearances of the embodiments are considered minor and patentably indistinct, or are shown to be obvious in view of analogous prior art cited. Accordingly, they are deemed to be obvious variations and are being retained and examined in the same application.
Drawings
The drawings are objected to for the following reason:
Margins in the Reproductions: Reproduction 4.1, 6.1, 8.1, and 10.1 extend 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:
Broken Line Statement: The broken line statement is objectionable because of the vague statement “If present”, which could cause confusion in regards to the scope of the claim. Broken lines statements are required to indicate the purpose of broken lines in the drawing. See MPEP 1503.01 II.3. To overcome this objection, since there are broken lines in the drawings in Reproduction 3.1-3.7, the Examiner recommends amending the broken line statement to the following:
- - The broken lines in the drawings depict portions of the PACKAGING FOR FOODSTUFFS that form no part of the claimed design. - -
Extraneous Description: The sentences following the broken line statement, which begins with “The first figure of all designs is….” and ends with “…of all designs is a bottom view.”, in the description of the reproductions is extraneous information describing what is shown in the reproductions, which adds no new information to the understanding of the claimed design. 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). The above sentences should be deleted in its entirety. See Hague Rule 7(5)(a), 37 CFR 1.1024, MPEP 2920.04(a) ll.
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:
Indefiniteness in the Scope of the Claim: The claim is indefinite and nonenabled due to the poor quality of the broken lines in the drawings.
Specifically, the broken lines are rendered too thick and too close together, thus causing confusion in regards to the scope of the claim. Generally, 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. For clarity in the claim, broken lines should be rendered at the lightest line weight in the reproductions. It should be obvious, at a glance, which lines are solid and which lines are meant to show shading and broken lines. 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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In order to overcome this rejection, amended figures should be submitted that clearly illustrate the boundary between the solid lines, the portions of the design that forms part of the claim, and an improved style of broken lines (spaced further apart and in a lighter line weight than the solid lines), clearly illustrating the portions that form no part of the claimed design.
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, the configuration of the design elements on the bottom of the claimed design, as seen in 2.7, 3.7, 5.7, 7.7, 9.7, and 11.7, 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. These various folded layers appear as if they could be configured (layered) in a myriad of different configurations and have a variety of different spatial relationships to the adjacent fully disclosed outer edge of the bottom of the claim. 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 a dot-dash broken line, a boundary line, directly inside of that fully disclosed outer edge of the bottom of the claim. 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 of the bottom of the claim and to convert the lines inside of this edge to broken lines, an updated broken line statement (from the updated statement suggested above), in which the purpose of the two different styles of broken lines are described, should be the following:
- - The dash-dash broken lines shown in the drawings depict portions of the PACKAGING FOR FOODSTUFFS that form no part of the claimed design. The dot-dash broken lines in the drawings depict the boundary of the claimed design and form no part of the claimed design - -
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Rejection - 35 U.S.C. § 103
The claim is rejected under 35 U.S.C. 103 as being unpatentable over US Patent D720214 (Citation E on the attached PTO-892, published on 30 December 2014) in view of US Patent 20190077527-A1 (Citation B on the attached PTO-892, published on 14 March 2019).
Although the invention is not identically disclosed or described as set forth in 35 U.S.C. 102, if the differences between the claimed invention and the prior art are such that the claimed invention as a whole would have been obvious before the effective filing date of the claimed invention to a designer having ordinary skill in the art to which the claimed invention pertains, the invention is not patentable.
US Patent D720214 has an overall appearance with design characteristics that are visually similar to those of the claimed design.
These similarities include:
The overall size, proportion, and design characteristics of the design. See “A” below.
The overall size, proportion, and design characteristics of the rectangular packaging blank. See “B” below.
The overall size, positioning, and design characteristics of the line on the top of the designs. See “C” below.
The overall size, positioning, and design characteristics of the two perpendicular line sets on the top of the designs. See “D” below.
The overall size, positioning, and design characteristics of the angled line under the top two perpendicular line sets (referred to above). See “E” below.
The overall size, positioning, and design characteristics of four “diamond shaped” design elements evenly spaced in the middle of the packaging blank. See “F” below.
The overall size, positioning, and design characteristics of the two perpendicular line sets on the bottom of the designs. See “G” below.
The overall size, positioning, and design characteristics of the double lines on either side of the bottom of the packaging blanks that are perpendicular to the bottom of the designs. See “H” below.
The overall size, positioning, and design characteristics of the double lines on either side of the bottom of the packaging blanks that are parallel to the bottom of the designs. See “I” below.
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Claimed Design US Patent D720214
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US Patent 20190077527-A1
The claimed design differs from US Patent D720214 in that the claimed design has rhomboid shapes in the middle of the packaging blank, while US Patent D720214 shows hexagonal shapes in the middle of the packaging blank.
US Patent 20190077527-A1 shows rhomboid shapes in the middle of a packaging blank.
It would have been obvious to a designer of ordinary skill in the art before the effective filing date of the claimed design to modify US Patent D720214 with US Patent 20190077527-A1 by substituting the hexagonal shapes in US Patent D720214 with the rhomboid shapes shown in US Patent 20190077527-A1, as it is no more than a simple substitution of common shape for another.
Further, case law states that the mere choice of one well known geometric form rather than another equally well known, which does not in any way modify the other portions of a design, cannot support a patent. In re Hopkins 390 O.G. 5; 3 USPQ 112 (1929).
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 rejected under 35 U.S.C. § 112(a) and (b), as set forth above.
The claim stands rejected under 35 U.S.C. 103, 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