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 .
Objections to the Specification and Claim
The specification is objectionable because the title does not comply with the MPEP. Specifically, the title includes language about material. Applicant’s attempt to claim material, in this case "plastic", is inappropriate in a design application, and thus does not patentably distinguish designs. From In re Schnell 46 F.(2d) 203; 1931 C.D. 115; 8 USPQ 19 (1931). Applicant’s attempt to claim “plastic or other, similar material”, is inappropriate in a design application. From In re Schnell 46 F.(2d) 203 ; 1931 C.D. 115; 8 USPQ 19 (1931) : Former Commissioner Butterworth in Ex parte Traitel (C. D. 1883, 92; 25 O. G., 783) set forth as a general rule, to which there may be rare exceptions, that a design is independent of the material of which the article of manufacture is composed and that a design is capable of being described or delineated on paper without reference to the material used in the construction of the article. Therefore, for proper description, the word “plastic” in the title must be canceled throughout the application, original oath or declaration excepted.
The description for Fig. 1.1 is objectionable because it is incomplete.
The description for Fig. 1.8 is objectionable because it is not in proper form. When describing a cross-section view, the original drawings indicating that cross-section must be clearly referenced, using the same number(s) associated with the cross-section view itself. The most logical figure to indicate this cross-section appears to be Fig. 1.7. See Rejection below for more information regarding Fig. 1.8.
For better form, the following language is suggested:
-- Fig. 1.1 is a perspective view of a [AMENDED TITLE].
Fig. 1.2 is a left side view thereof;
Fig. 1.3 is a right side view thereof;--
--Fig. 1.8 is a cross-section view thereof, taken along and in the direction of line 1.8-1.8 in Fig. 1.7.--
Broken lines can be used in design patent drawings for a number of reasons. Further, the broken-line description should expressly identify what is represented by the broken lines in addition to defining their relationship to the claimed design. In this instance, it appears that the broken lines are showing the environment of the spring. For better form, the following is suggested:
--The broken lines illustrate the environment of the [AMENDED TITLE] and form no part of the claimed design.--
However, further revisions may be necessitated by the 112 Rejection below. See rejection below for details and suggestions.
Rejection under 35 USC § 112(a) and (b)
The claim is rejected under 35 U.S.C. 112(a) and (b) or pre-AIA 35 U.S.C. 112, 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 indefinite and nonenabling for the following:
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:
FIG. 1.6: The full appearance of the design is not shown. Specifically, the three-dimensional form of the bottom of the article cannot be ascertained from the drawings. See diagrams below, wherein the gray shading represents subject matter within Fig. 1.6 that is indefinite and non-enabled. It is unclear if the details within this area lie flush with the surrounding surfaces and represent surface ornamentation, or if they represent recessed features or structure. Furthermore, if these details are intended to represent recessed features or structure, it cannot be known to what degree the features or structures are recessed.
PNG
media_image1.png
578
1142
media_image1.png
Greyscale
FIGS. 1.7-1.8: The lack of numerical cross-section markers indicating the placement and direction of sight of the cross-section of Fig. 1.8 make the cross-section impossible to understand without introducing conjecture. Cross-section indicators should include the Fig. # of the drawing that they are indicating. The most logical figure to apply these indicators to appears to be Fig. 1.7.
An example of what these indicators may look like is shown below. This example is included for the purpose of explanation only, and is not intended to be accurate.
PNG
media_image2.png
521
1108
media_image2.png
Greyscale
For clarity, it is also suggested that the cross-hatching indicating cut portions in Fig. 1.8 in the areas shaded below be tightened up.
PNG
media_image3.png
171
966
media_image3.png
Greyscale
Because of the inadequate disclosure described 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 (dot-dash is recommended, to differentiate from the environmental structure shown in the drawings) and amending the specification to indicate those portions form no part of the claimed design. For clarity, it is also suggested that the shading/contour lines currently present in certain portions of the article be applied to all claimed portions of the article, particularly those bordering environment, or bordering portions of the article which form no part of the claim.
Should the applicant elect to incorporate the suggestions above, it appears that the broken lines would illustrate both portions AND environmental structure. A suggested broken line description would be:
--The dash-dash broken lines illustrate environmental structure. The dot-dash broken lines illustrate portions of the [AMENDED TITLE]. The broken lines form no part of the claimed design.--
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. 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”, 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.
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
Replacement Drawings
A response is required in reply to the Office action to avoid abandonment of the application. If corrected drawings are submitted in response to this Office action, they must be in compliance with 37 CFR 1.121(d). 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.
When preparing new or replacement drawings, any amendment must meet the written description requirement of 35 USC 112(a). It must be apparent that applicant was in possession of the amended design at the time of filing. This pertains to either: the addition to, or the removal of, any elements shown in the originally disclosed design.
Conclusion
The claim stands rejected under 35 U.S.C 112(a) and (b).
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 AMANDA KAY BIRDWELL whose telephone number is (571)272-9125. The examiner can normally be reached Mon-Fri 8:30-5.
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, Primary Examiner Barbara Fox can be reached at (571)272-4456, or, the examiner’s supervisor, Rich Edgar, can be reached at (571)272-4816. 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.
/A.K.B./
Examiner, Art Unit 2931
/BARBARA FOX/Supervisory Patent Examiner, Art Unit 2936