The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
Detailed Action
Restriction not Required
This application discloses the following embodiments:
Embodiment 1: Reproduction 1.0
Embodiment 2: Reproduction 2.0
Embodiment 3: Reproduction 3.0
Multiple embodiments of a single inventive concept which 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 (CCPA1959). 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 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.
Foreign Priority
This application claims priority to the European Union Design Patent Applications No. 015028844-0002, 015028844-0004 and 015028844-0007. The certified foreign priority documents supporting the priority claims, filed July 21, 2023 were supplied to the USPTO on January 30, 2025, as required by 37 CFR § 1.55.
Incorporation by Reference
This application incorporates by reference European Union Design Patent Applications No. 015028844-0002, 015028844-0004 and 015028844-0007 filed on July 21, 2023. All the material from the Design Patent Applications No. 015028844-0002, 015028844-0004 and 015028844-0007 which is essential to the claimed design is included in this application. It is understood that any material in the Design Patent Applications No. 015028844-0002, 015028844-0004 and 015028844-0007 which is not present in this application forms no part of the claimed design.
Title Objection
The title is misdescriptive, inaccurate or unclear (MPEP § 1503.01.1) because it does not clearly and accurately identify the article in which the design is embodied or applied.
The current title “Decorative Coating for Vehicles”, describes the design in terms of its intended use or function rather than as an article of manufacture. The drawings do not depict a coating as applied to any identifiable vehicle surface or part, but rather appear as isolated patches of material or texture samples. Hence, the title does not correspond to the disclosure and fails to identify the specific article embodying the claimed design.
In a design application, the title must designate a particular article of manufacture to which the design is applied, rather than a material, surface treatment or intended use. Any amendment to the title must clearly identify the article shown in the drawings, have antecedent basis in the original disclosure and not introduce new matter. Ex parte Strijland, 26 USPQ2d 1259 (Bd. Pat. App. & Inter. 1992).
Because the drawings do not depict an identifiable vehicle part or surface to which the design is applied, no appropriate title can be suggested at this time. If the applicant intends to claim a decorative surface pattern or texture apart from a specific article, such subject matter may be more appropriate for copyright protection rather than for a design patent.
Specification Objection
The specification is objected for the following:
Descriptions of the reproductions are not required to be written in any particular format. However, they should describe the views of the drawing clearly and accurately. (MPEP § 1503.01, (II))
The description of the reproductions uses the numbers 1.0, 2.0 and 3.0 to describe the top plan view for each embodiment. However, the brief statement following the description uses 1.1, 2.1 and 3.1. Further, the reproductions are each labeled as 1, 2, and 3. The reproduction numbers should be used consistently throughout the application, with a suggestion to be consistent with the reproduction label. Therefore, for accuracy and consistency, the specification statement that includes the reproduction numbers should be amended to read:
--Description of the Reproduction(s)
1: Top plan view
2: Top plan view
3: Top plan view --
-- In reproductions 1 and 2 the decorative coating is represented in colors; In reproduction 3 the decorative coating is represented in grey-scale.--
Claim Objection
The claim must be in formal terms to the ornamental design for the article (specifying name using the appropriate “a” or “an” before the name) as shown, or as shown and described. See 37 CFR § 1.153(a) and ln re Schnell., 8 USPQ 19, 25 (CCPA 1931). Therefore, for proper form (37 CFR § 1.153), the formal claim statement should be amended to read:
--CLAIM:
The ornamental design for a {title} as shown and described.--
Claim Refusal under 35 USC § 171
The following is a quotation of 35 USC § 171:
Whoever invents any new, original, and ornamental design for an article of manufacture may obtain a patent therefor, subject to the conditions and requirements of this title.
The claim is rejected under 35 USC § 171 as being directed to non-statutory subject matter because the disclosure does not appear to be an ornamental design for an article of manufacture as required by the statute.
The drawings consist solely of flat, square surfaces that resemble samples of textured or colored material - one shown in black, one in beige-brown, and one in grayscale shading. The figures do not depict any discernible article of manufacture or any indication as to how the claimed design would be applied to or embodied in an article.
A design for surface ornamentation may be eligible under 35 USC § 171 only if it is shown applied to an article of manufacture or if the article to which it is applied is clearly indicated by broken lines or other context in the drawings. See MPEP § 1504.01(a) and (c); In re Zahn, 617 F.2d 261, 267, 204 USPQ 988 (CCPA 1980).
The present disclosure fails to provide any such context. The drawings appear as isolated patches of material or texture samples without boundaries, or reference to any article. As such, the claimed design cannot be understood as an ornamental design for an article of manufacture or as a surface ornamentation applied to an article. Instead, the disclosure merely presents an abstract surface treatment or material sample, which is not an eligible subject matter under § 171.
Since it is not clear what is being claimed or how it is related to a vehicle, no guidance can be given for overcoming this rejection.
Conclusion
The claimed design is refused under 35 USC § 171 and other objections as set forth above.
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 re presentative 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.
Email Communication
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.
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
Contact Information
Any inquiry concerning this communication or earlier communications from the examiner should be directed to BEENA S PATEL whose telephone number is (703)756-1096. The examiner can normally be reached Mon-Fri. 8AM to 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, Wendy Arminio can be reached at (571)270-0221. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/B.P./Examiner, Art Unit 2935
/SUSAN E KRAKOWER/Supervisory Patent Examiner, Art Unit 2917