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 .
OBJECTION TO SPECIFICATION – DESIGN PATENT, TRADEMARK OVERLAP
A design patent and a trademark may be obtained on the same subject matter. The Court of Customs and Patent Appeals, in In re Mogen David Wine Corp., 328 F.2d 925, 140 USPQ 575 (CCPA 1964), later reaffirmed by the same court at 372 F.2d 539, 152 USPQ 593 (CCPA 1967), has held that the underlying purpose and essence of patent rights are separate and distinct from those pertaining to trademarks, and that no right accruing from the one is dependent upon or conditioned by any right concomitant to the other.
OBJECTION TO SPECIFICATION – TRADEMARK STATEMENT
Due to what appears to be multiple logos or trademarks shown in the reproductions, the specification must be amended to include a statement preceding the claim identifying the trademark material and the name of the owner of the trademark (See MPEP 608.01(v)). Therefore, the following statement is suggested to be inserted to appear immediately before the claim in the specification:
--The “mbs” lettering and icon forming part of the disclosure is a registered trademark of (insert owner).--
--The “Matrix.III” lettering forming part of the disclosure is a registered trademark of (insert owner).--
--The “AGENT” lettering forming part of the disclosure is a registered trademark of (insert owner).--
OBJECTION – FIGURE DESCRIPTION
Descriptions of the figures are not required to be written in any particular format, however, they must describe the views of the drawing clearly and accurately (MPEP 1503.01(II)). The descriptions do not accurately describe the article as shown in the drawings. Accordingly, for clarity and accuracy, the figure descriptions should read as follows:
-- 1.1 is a front, left perspective view of an electronic skateboard showing my new design;
1.2 is a left side view thereof;
1.3 is a top plan view thereof;
1.4 is a rear, right perspective view thereof;
1.5 is a bottom, right perspective view thereof;
1.6 is a bottom plan view thereof;
1.7 is a front side view thereof; and
1.8 is an enlarged view of a detached portion of the article.--
OBJECTION – DESCRIPTIVE STATEMENT
The following descriptive statement is objectionable:
[The design pertains to an electric off-road skateboard, commonly known as a mountainboard, featuring a robust deck optimized for rough terrain, all-terrain wheels and advanced turning system; a key feature is the quick-release detachable battery box, integrated into the design on the top of the board; the robust and aesthetically pleasing quick-release mechanism allows the user to detach the battery box swiftly without tools, enabling efficient swapping or charging; the protective housing around the battery box shields it from environmental elements and impacts; the battery box has a contour-enhanced form, balancing rugged functionality with modern styling.]
No description, other than a reference to the drawing, is ordinarily required in a non-provisional international design application (37 CFR 1.1067). The specification of a nonprovisional international design application is not permitted to include statements describing matters that are directed to function or are unrelated to the design. In addition, the specification may not include statements that describe or suggest other embodiments of the claimed design which are not illustrated in the drawing disclosure, except one that is a mirror image of that shown or has a shape and appearance that would be evident from the one shown. However, such statements may be included in the design application as originally filed to provide antecedent basis for a future amendment. See MPEP 2920.04(a)(II). Therefore, the description must be removed.
CLAIM REFUSAL – 35 U.S.C. § 112(A) AND (B)
The claim is refused 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 applicant regards as the invention.
The claim is indefinite and non-enabling for the following reasons:
The exact appearance of the article is unclear because of inconsistencies that appear within the disclosure. As such, the claim is rendered indefinite and non-enabling. Specifically:
The appearance of the top surface of the battery pack is inconsistent between figures. Figure 1.8 shows a warning label as well as three areas of small lettering on one side, and one area of small lettering on the opposite side. However, Figures 1.1 and 1.3 omit those features. See the following annotation for reference:
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The appearance of the adjustment packs on each side of the article is inconsistent between figures. Figures 1.1 and 1.3 disclose the surfaces of each rectangular pack with two straight arrows pointing the opposite direction and illegible lettering beneath each arrow. However, Figure 1.8 shows two curved arrows on each pack with lettering between them that says “Rotate to Adjust,” and lettering beneath each arrow that says “Tighter” on one side, and “Looser” on the other. See the following annotation on the next page for reference:
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The appearance of one side of the battery pack is inconsistent between figures. Figures 1.3-1.5 disclose a circular covered port that is flushed with the surface, a rectangular plug in it, and a circular protruding tab with a loop to connect it to the surface. Additionally, Figures 1.4 and 1.5 show a rectangular recess that has a plain surface. However, inside a circular recess, Figure 1.8 shows a hexagon with protruding port and loop where other figures show it flushed. Additionally, Figure 1.8 shows the rectangular recess with a label and barcode. Also, the cord seen at 1.4 appears flat, whereas Figure 1.5 shows it with a ridge at the center. It is noted that Figure 1.8 is shown without the plug, but the examiner understands the view to be in a detached state. See the following exemplary annotation on the next page for reference:
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It is suggested that applicant may overcome this portion of the refusal by ensuring features are consistent throughout the entire disclosure.
Therefore, because the exact three-dimensional appearance of numerous elements cannot be understood without resorting to conjecture, the claim is indefinite and non-enabling.
REPLACEMENT REPRODUCTIONS
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 reproduction 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 reproductions for consistency. Additional replacement sheets may be necessary to show the renumbering of the remaining figures. 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 examiner does not accept the changes, the applicant will be notified and informed of any required corrective action in the next office action. The corrected reproductions must not contain new matter (35 U.S.C. 132; 37 CFR 1.121).
CONCLUSION
In summary, the claim stands rejected under 35 U.S.C. 112(a) and (b) as set forth above.
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).
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CONTACT INFORMATION
Any inquiry concerning this communication or earlier communications from the examiner should be directed to SARAH LYNNE SMITH whose telephone number is 571-272-6076.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Holly Thurman, can be reached at telephone number 571-272-8068. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/SARAH L SMITH/Examiner, Art Unit 2919