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 .
Acknowledgement of Applicant's Response
The amendment received December 23, 2025 is hereby acknowledged, wherein Group II, consisting of original reproductions 2.1-2.12 was elected without traverse, and original reproductions 1.1-1.11, pertaining to non-elected Group I were cancelled, replacement drawings were submitted featuring 2.1-2.12, and the specification was revised. Group I is hereby withdrawn from further consideration by the examiner, 37 CFR 1.142(b), as being for the nonelected design.
Specification Objection
The present descriptions of 2.10-2.12 do not clearly and accurately describe the reproduction views (Hague Rule 7(5) (a), 37 CFR 1.1024, MPEP 2920.04(a)(II). The term “reference view” in the descriptions of 2.10-2.12 has no clear meaning in a design patent application. As understood, 2.9 and 2.10-2.12 show the claimed design in states of use. Therefore, for clarity and consistency, the descriptions for 2.9-2.12 should be amended. The following language, or similar, is suggested:
--2.9 : Perspective view thereof showing a first usage state;
2.10 : Perspective view thereof showing a second usage state;
2.11 : Perspective view thereof showing a third usage state; and
2.12 : Perspective view thereof showing a fourth usage state.--
Claim Rejection – 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 regards as the invention.
The claim is indefinite and nonenabling due to inconsistencies among the views. Specifically, the configuration of elements disclosed on the rectangular feature on the back of the watch in 2.2 does not correspond to what is shown in 2.9, 2.11 and 2.12. See annotated views 2.2 and 2.12 below for reference.
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Therefore, the claim is not enabled because the appearance of the design is not certain. Without a firm understanding of what is claimed, the appearance of the design sought to be patented is left to conjecture. The claim is indefinite because without a clear understanding of the design, the claim is broadened to include undefined types and numbers of other designs that cannot be determined from the drawings.
Suggestion to Overcome the Rejection
Applicant may be able to overcome the rejection by submission of replacement views in which the areas or portions of the design which are considered indefinite and nonenabling are corrected so that they correspond among the views, so long as the amendment meets 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 the original filing, or applicant must provide evidence of that possession.
If applicant disclaims the areas or portions of the design which are considered indefinite and nonenabling in the rejection under 35 U.S.C. §112 above by converting them to broken lines, the specification must be amended to include a statement that the portions of the article shown in broken lines form no part of the claimed design.
Care must be exercised to avoid introduction of anything which could be construed to be new matter prohibited by 35 U.S.C. 132 and 37 CFR 1.121. New matter is subject matter which has no support in the original specification, drawings or claim (MPEP § 608.04(a)). An amendment to the claim must have support in the original disclosure. See 35 U.S.C. 132; 37 CFR 1.121(f). It is possible for new matter to consist of the removal as well as the addition of structure, features or elements. It is possible that the correction of poor line quality, the removal of digital artifacts, or removal of lines showing changes in elevation in CAD drawings, that cannot be clearly understood to be such without resorting to conjecture, may also introduce new matter.
Failure to submit replacement correction sheets overcoming all of the deficiencies in the drawing disclosure set forth above, or an explanation why the drawing corrections or additional drawing views are not necessary will result in the rejection of the claim under 35 U.S.C. 112(a) and (b) being made FINAL in the next Office action.
CONCLUSION
The claim is rejected under 35 U.S.C. § 112(a) and (b).
Contact Information
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Katherine Glennon whose telephone number is 571-270-1559. The examiner can normally be reached Monday-Friday between 9AM-5PM 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, Karen Kearney can be reached at 571-272-1999. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/KATHERINE GLENNON/
Primary Examiner, Art Unit 2923