Notice of 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 .
Multiple Embodiments
This application discloses the following embodiments:
Embodiment 1 – Reproduction 1.1-1.8 -line drawing
Embodiment 2 – Reproduction 2.1-2.8 -showing tonal value
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).
The above identified embodiments are considered by the examiner to present overall appearances that are visually similar. 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. A claim may be rejected by applying prior art to any embodiment within a patentably indistinct group. See Ex parte Appeal No. 315-40,152 USPQ 71 (Bd. App. 1965). No argument asserting patentability based on the differences between the embodiments will be considered once the embodiments have been determined to comprise a single inventive concept. Failure of applicant to traverse this determination in reply to this action will be considered an admission of lack of patentable distinction between the above identified embodiments.
Drawing Comment
An examiner's comment on the record appears below. Should the comment be unacceptable to Applicant, an amendment may be filed as provided by 37 CFR 1.312.
It is understood that the coloring shown in the reproduction is part of the claimed design showing the tonal qualities of the surfaces in the second embodiment. By using this technique, the claim will broadly cover contrasting surfaces unlimited by colors. The claim would not be limited to specific material either, as long as the appearance of the material does not patentably depart from the visual appearance illustrated in the drawing. See MPEP 1503.02, Subsection II.
Basis for Nonstatutory Double Patenting
The nonstatutory double patenting rejection is based on a judicially created doctrine grounded in public policy (a policy reflected in the statute) so as to prevent the unjustified or improper timewise extension of the “right to exclude” granted by a patent and to prevent possible harassment by multiple assignees. See In re Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993); In re Longi, 759 F.2d 887, 225 USPQ 645 (Fed. Cir. 1985); In re Van Ornum, 686 F.2d 937, 214 USPQ 761 (CCPA 1982); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); and In re Thorington, 418 F.2d 528, 163 USPQ 644 (CCPA 1969).
A timely filed terminal disclaimer in compliance with 37 CFR 1.321(c) may be used to overcome an actual or provisional rejection based on a nonstatutory double patenting ground provided the conflicting application or patent is shown to be commonly owned with this application. See 37 CFR 1.131(c). A registered attorney or agent of record may sign a terminal disclaimer, See 37 CFR 1.321(b).
The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit https://www.uspto.gov/patent/patents-forms. The filing date of the application will determine what form should be used. A web-based eTerminal Disclaimer may be filled out completely online using web-screens. An eTerminal Disclaimer that meets all requirements is auto-processed and approved immediately upon submission. For more information about eTerminal Disclaimers, refer to www.uspto.gov/ patents/apply/applying-online/eterminal-disclaimer.
CLAIM REJECTION - PROVISIONAL NONSTATUTORY DOUBLE PATENTING
The claim is provisionally rejected on the grounds of nonstatutory double patenting of the claim of copending Application No. 35/523,286. Although the conflicting claims are not identical, they are not patentably distinct from each other because the overall appearance has a design characteristic that are visually similar to the claimed design. The slight difference brought by placing the brush roll tab feature on the right side and including a screw-head features within the fitted-slot at the left side of the claimed design, herein compared to copending Application No. 35/523,286 is held to be insufficient within the scope of the complete device to patentably distinguish the two designs. All other features between the two designs, including the overall shape, proportioning, and placement and relationship of features, are visually similar between the two applications. Therefore, the two designs are held to be patentably indistinct.
It is well settled that it is unobviousness in the overall appearance of the claimed design, when compared with the prior art, rather than minute details or small variations in design as appears to be the case here, that constitutes the test of design patentability. See In re Frick, 275 F.2d 741, 125 USPQ 191 (CCPA 1960) and In re Lamb, 286 F.2d 610, 128 USPQ 539 (CCPA 1961).
This is a provisional nonstatutory double patenting rejection because the conflicting claims have not in fact been patented.
CLAIM REJECTION - 35 USC § 112 (a) and (b)
The claim is rejected under 35 U.S.C. 112(a) and (b), 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 regards as the invention.
The claim is indefinite and nonenabling 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 actual depth of the recessed feature in reproductions 1.4 and 2.4; and the actual configuration of the internal elements shown within the recessed feature in the reproductions 1.3 and 2.3 cannot be determined based on the disclosure provided. The elements of these features are only shown in single planar view. It is unclear whether these features are concave, convex, raised, and/or depressed. The disclosure does not clearly distinguish between contours and planar surfaces, nor does it explain the differences in depth between surfaces. It is impossible to understand the transitions between the surfaces that are shown. This creates confusion and makes it difficult to reconcile the details among the views. 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. See marked-up example below.
PNG
media_image1.png
672
745
media_image1.png
Greyscale
PNG
media_image2.png
678
662
media_image2.png
Greyscale
1.3 detail view
1.4 detail view
PNG
media_image3.png
872
871
media_image3.png
Greyscale
PNG
media_image4.png
898
873
media_image4.png
Greyscale
2.3 detail view
2.4 detail view
To overcome this part of rejection, applicant may indicate that protection is not sought for those portions of the reproductions which are considered indefinite and nonenabling in the rejection under 35 U.S.C. 112 above by:
Amending the reproductions to convert those portions to broken lines,or by demarcating and lowering the opacity of the nonenabled features, consistently throughout the disclosure. Example statement:
--The broken line shown in the reproductions are for the purpose of illustrating portions of the Part of Cleaning Head for Floor Washing Appliance and forms no part of the claimed design. --
In the alternative, applicant may attempt to use coloring consistently throughout the disclosure as a means to remove the indefinite and nonenabled portions of the article from the scope of the claim. The specification would then be amended to include a statement that the portions of the article illustrated with the specific coloring form no part of the claimed design. Example statement:
--The portion of the design shown in the color [identify the color indicating the matter excluded from the claim] is for the purpose of illustrating portions of the Part of Cleaning Head for Floor Washing Appliance and forms no part of the claimed design. --
Matter excluded from the claim: Hague Administrative Instructions Section 403: (a) Matter which is shown in a reproduction but for which protection is not sought may be indicated
(i) in the description referred to in Rule 7(5)(a) and/or
(ii) by means of dotted or broken lines or coloring.
Avoidance of New Matter
When preparing new or replacement reproductions, be careful to avoid introducing new matter. New matter is prohibited by 35 U.S.C. 132 and 37 CFR 1.121(f).
Replacement Drawings
Any amended replacement drawing sheet of the reproductions should include all of the views appearing on the immediate prior version of the sheet, even if only one view is being amended. The view number of an amended drawing should not be labeled as "amended." If a drawing view is to be canceled, the appropriate view must be removed from the replacement sheet and appropriate changes made to the brief description of the several views of the drawings for consistency. Each drawing sheet of reproductions 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). Applicant is reminded that the numbering of the reproductions and legends must follow the Hague Administrative Instructions Section 405(a) consisting of two separate figures separated by a dot (e.g., 1.1, 1.2, 1.3, etc. for the first design, 2.1, 2.2, 2.3, etc. for the second design, and so on) (see 37 CFR 1.1026 and MPEP 2909.02).
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.
CLAIM REJECTION – 35 U.S.C. 103
The claim as rejected above is indefinite because the art to which it pertains is not clear. However, the ornamental appearance of the claim is sufficient for comparison with the prior art. Accordingly, the claim is also rejected under 35 U.S.C. §103, as follows. See MPEP 2143.03(I).
The claim is rejected under 35 U.S.C. § 103 as being unpatentable over the roller brush for a vacuum cleaner/mop in the internet publication roborock Soft Roller Brush… Replacement Parts Accessory Kit (“roborock”), with date first available on 06/20/2024 at https://www.amazon.ca/-/fr/roborock-Brosse-rouleau-souple-aspirateur/dp/B0D2QRM4TC.
Although the invention is not identically disclosed or described as set forth 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 (EFD) of the claimed invention to a designer having ordinary skill in the art to which the claimed invention pertains, the invention is not patentable.
The reference roborock has an overall appearance with design characteristics that are visually similar to those of the claimed design, in showing a roller brush with an attached brush roll tab on one side and a fitted slot on the other side.
PNG
media_image5.png
1582
1460
media_image5.png
Greyscale
PNG
media_image6.png
735
876
media_image6.png
Greyscale
Claimed Design
EFD: 08/01/2024
Roborock
Published Date:06/20/2024
The claimed design differs from roborock in that the roller brush has a plain and unadorned surface and includes internal elements within the fitted slot. Those features are considered de minimis, minor in nature and unrelated to the overall aesthetic appearance of the design resulting in a design having an overall appearance that are visually similar claimed design, and over which the claimed design would have no patentable distinction.
In determining patentability under 35 U.S.C. 103, it is the overall appearance of the design that must be considered. See In re Leslie, 547 F.2d 116, 192 USPQ 427 (CCPA 1977). The mere fact that there are differences between a design and the prior art is not alone sufficient to justify patentability. See In re Lamb, 286 F.2d 610, 128 USPQ 539 (CCPA 1961).
It is well settled that it is unobviousness in the overall appearance of the claimed design, when compared with the prior art, rather than minute details or small variations in design as appears to be the case here, that constitutes the test of design patentability. See In re Frick, 275 F.2d 741, 125 USPQ 191 (CCPA 1960) and In re Lamb, 286 F.2d 610, 128 USPQ 539 (CCPA 1961).
A 103 rejection where the date of the reference is equal to or less than one year may be overcome by:
Applicant providing persuasive arguments that clearly show and describe the claimed design as patentably distinguishable from the prior art mentioned. In other words, the raised rejection can be overcome by evidence that the product in the prior art reference does not necessarily or inherently possess an integral characteristic of the applicant's claimed design; and/or
Invoking either the 102(b)(1)(A) or 102(b)(1)(B) exceptions. See MPEP 2152.06 (D), MPEP § 717.01 and MPEP § 2155.
Note: In evaluating an affidavit, the examiner need only determine if sufficient evidence has been provided to establish that the subject matter disclosed was obtained from the inventor or a joint inventor. In §717.01, the “disclosure was made” means that the inventor published the disclosure, i.e. responsible for the disclosure of the subject matter (not to be confused with responsible for the subject matter, i.e. the design, itself). In order to establish that “the subject matter disclosed was obtained directly or indirectly…”, an affidavit should state:
that the subject matter in the reference is the design of the inventor;
provide some explanation of how the design came to be published by another.
Hague Reply Reminder
Applicant is reminded that any reply to this communication 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).
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. For additional information regarding interviews, see "Interviews" below.
Any reply to the notification of refusal must be filed directly with the Office and not through the International Bureau. A reply to the notification of refusal is subject to the requirements of 37 CFR 1.111. See 37 CFR 1.1063(b). Any further Office action following the notification of refusal, such as a Final Rejection, will normally be sent directly to the applicant. A response is required in reply to the Office action to avoid abandonment of the application.
Interviews
An 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 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 “Responding to Official USPTO Correspondence” below.
To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at www.uspto.gov/InterviewPractice. Examiner interviews are available via telephone and video conferencing using a USPTO supplied web-based collaboration tool. Examiner requires an interview agenda to be submitted one week prior to the interview.
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 “Responding to Official USPTO Correspondence” below.
Also, see MPEP 502.03 II for further information.
Responding to Official USPTO Correspondence
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/apply
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 for the reasons set forth above.
_________________________________________________________________________
Contact Information
Any inquiry concerning this communication or earlier communications from the examiner should be directed to JENNYLOU M BINAS whose telephone number is (571)272-8778. The examiner can normally be reached on Monday to Friday from 9:00 AM to 5:00 PM (ET).
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, AMBER R. STILES, can be reached at telephone number (571)272-7611.
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
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 https://www.uspto.gov/patents/apply/checking-application-status/pair-resources. 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.
Inventors Assistance Center
The Inventors Assistance Center (IAC) provides patent information and services to the public. The IAC is staffed by former Supervisory Patent Examiners and experienced Primary Examiners who answer general questions concerning patent examining policy and procedure. Applicants should contact the IAC concerning payment of FEES, schedule of PRINTING of Patents, RECEIPTS, and any other administrative issues. IAC is available M-F 8:30 AM - 8:00 PM (ET) except federal holidays at 800-PTO-9199 (800-786-9199) or 571-272-100 and for TTY/TDD 800-877-8339 for customer assistance. For more information about the IAC, see https://www.uspto.gov/learning-and-resources/support-centers/inventors-assistance-center-iac.
/JENNYLOU M BINAS/
Examiner, Art Unit 2913