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 .
Detailed Action
Claim Rejection - 35 USC § 112
The claim is rejected 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 the inventor or joint inventor regards as the invention.
The scope of a claim is definite only when it is supported by an enabling disclosure.[1] When the scope of protection sought exceeds what is enabling in the disclosure, the claim is indefinite.
The claim scope must be less than or equal to the scope of the enablement.[2] The scope of enablement, in turn, is that which is disclosed in the specification and is understandable to a designer of ordinary skill in the art without resorting to conjecture.
The claim is indefinite and nonenabling because the inconsistencies between the views herein render the appearance of the claim uncertain. Specifically:
Reproduction 1.7 shows 2 small circular features on the bottom of the Mobile Phone. However, Reproduction 1.1 does not show the two small circular features. Please see the following illustrations.
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Detail of Reproduction 1.7, indicating the two small circular features referenced above.
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Detail of Reproduction 1.1, indicating the approximate position of the missing circular features.
Reproductions 1.2, 1.3, 1.6, and 1.7 show the small racetrack-shaped button feature on the left side of the Mobile Phone protruding from the side of the Mobile Phone. However, Reproduction 1.1 does not show the small racetrack-shaped button feature protruding from the side of the Mobile Phone. Please see the following illustrations.
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Detail of Reproduction 1.3. Note the button feature protruding from the side of the Mobile Phone.
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Detail of Reproduction 1.1, indicating the small racetrack-shaped button referenced above. Note how the button feature shown does not protrude from the side of the Mobile Phone.
Reproductions 1.3-1.5 show a small sharp-cornered protrusion on the bottom edge of the Mobile Phone’s back surface, located around the “USB Type-C” port on the base of the Mobile Phone. However, this protrusion is not shown in Reproduction 1.1. Please see the following illustrations.
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Detail of Reproductions 1.3 and 1.4. Note the small sharp-cornered protrusion.
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Detail of Reproduction 1.1. Note how the sharp-cornered protrusion shown elsewhere is not visible in this reproduction.
To overcome this part of the rejection, the applicant should amend the drawing disclosure wherein the appearance of all figures is made consistent.
The claim is further indefinite and nonenabling for the following reason:
Reproduction 1.5, the right side view, shows three small racetrack-shaped details, located in the center of the racetrack-shaped buttons, which are not shown in any other views in enough detail to confirm their three-dimensional appearance. Therefore, there is no support in the instant application to enable one of ordinary skill in the art to understand the depth, contour, and configuration of the three small racetrack-shaped details on the right side of the Mobile Phone without resorting to conjecture. Please see the following illustration:
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Detail of Reproduction 1.5, indicating the small racetrack-shaped features referenced above.
To overcome this above rejection, Reproduction 1.5 may be revised to remove the indefinite areas from the claim by converting them to broken lines, as shown below. Please see the following illustration:
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Detail of Reproduction 1.5, demonstrating the examiner’s recommended amendment.
Additionally, if broken lines are used, a statement similar to the following must be added to the specification following the description of the reproductions and preceding the description of the design product’s purpose. Please see MPEP § 1503.02(III) and In re Blum, 374 F.2d 904, 153 USPQ 177 (CCPA 1967)
--The broken lines in the reproductions depict portions of the Mobile Phone that form no part of the claim.--
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). When preparing new or replacement drawings, be careful to avoid introducing new matter. New matter is prohibited by 35 U.S.C. 132 and 37 CFR 1.121(f).
Conclusion: The claim stands rejected under 35 USC § 112(a) and (b) as set forth above.
Hague - Reply Reminder
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).
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 Interviews
A telephonic 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.
Notes on Correspondence
The merits of the application may not be discussed via email unless an appropriate authorization for email communication is placed in the U.S. application file at the USPTO. Replies to office actions may not be sent via email. For those applications where applicant wishes to communicate with the examiner via Internet communications, e.g., email or video conferencing tools, the following is a sample authorization form which may be used by applicant:
"Recognizing that Internet communications are not secure, I hereby authorize the USPTO to communicate with the undersigned and practitioners in accordance with 37 CFR 1.33 and 37 CFR
1.34 concerning any subject matter of this application by video conferencing, instant messaging, or electronic mail. I understand that a copy of these communications will be made of record in the application file."
Please see MPEP 502.03 II (Article 5) for more details.
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 Patent Center https://patentcenter.uspto.gov/ .
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
For additional information regarding responding to office actions see:
https://www.uspto.gov/patents/maintain/responding-office-actions
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Josiah D Parsons whose telephone number is (571)272-1560. The examiner can normally be reached Monday-Friday, 8am-5pm EST.
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, Erich Herbermann can be reached at (571) 272-6390. 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.
/J.D.P./Examiner, Art Unit 2916
/CATHERINE S POSTHAUER/Primary Examiner of Art Unit 2919
[1][1] A patent claim is invalid if it is not supported by an enabling disclosure. MPEP 2164
[2][2] National Recovery Technologies Inc. v. Magnetic Separation Systems Inc., 49 USPQ2d 1671 (Fed. Cir. 1999) See Goodman, 11 F.3d at 1050, 29 USPQ2d at 2013 (“the specification must teach those of skill in the art ‘how to make and how to use the invention as broadly as it is claimed’ “) (citing Vaeck, 947 F.2d at 496); In re Fisher , 427 F.2d 833, 839, 166 USPQ 18, 24 (CCPA 1970)