The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
Final Office Action
Examiner’s Remarks
The response filed 9/5/2025, wherein amendments were made to the specification, written claim, and reproductions, is acknowledged. The amended specification and written claim overcome the objections. The amended reproductions only partially overcome the rejection under 35 U.S.C. § 112(a) and (b). Accordingly, the refusal under 35 U.S.C. § 112(a) and (b) is maintained and MADE FINAL in the following action.
Final Refusal
35 U.S.C. § 112(a) and (b)
The claim is FINALLY REFUSED 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 inventor or applicant) regards as the invention.
The claim is nonenabling and indefinite because portions shown in reproductions 1.2, 2.2, 3.2 indicate claimed structures that cannot be fully understood without further clarification. Additionally, the amended reproductions 1.2, 2.2, 3.2 are all just the original reproduction 2.2 but slightly more rotated. The provided views do not inform the depth, contour, and complete configuration of the portions and their interactions with each other. The limited views leave one resorting to conjecture in determining the appearance of the claimed design (see annotated portions below).
Reproduction 2.2
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When applicant asserts the design is applied to a three-dimensional article, the drawing and specification must be commensurate with the protection sought.[1] A design patent, therefore, should disclose the configuration and complete appearance of the article in which the design is embodied, so fully, clearly and with such certainty as to enable those skilled in the art to make the article without being forced to resort to conjecture.[2]
“[I]nadequate disclosure may well hinder the judicial determination as to whether the purported novelty and invention are genuine.[3] [I]t has been held that when contour is an important part of a design, failure to disclose it fully in the drawing will be fatal to the patent.”[4]
To overcome the rejection, applicant may demonstrate and persuasively show the errors in the merits of the rejection. However, if applicant does not contest the merits of the rejection, applicant may overcome the rejection by disclaiming the annotated portions in reproductions 1.2, 2.2, 3.2 which are considered indefinite and nonenabling by converting them to broken line and de-emphasizing/fading the unclaimed portions within the broken lines and amend the specification to include a statement that the portions of the VEHICLE WHEEL RIM shown in broken lines forms no part of the claimed design (see MPEP 1503.02(III)).
Replacement Reproductions
Although not required, new reproductions are likely necessary to overcome the aforementioned rejection. If applicant elects to prepares new reproductions, 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.
Any amended replacement drawing sheets 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 reproductions for consistency. Additional replacement sheets may be necessary to show the renumbering of the remaining figures. 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 examiner does not accept the changes, the applicant will be notified and informed of any required corrective action in the next Office Action.
Conclusion
The claim is FINALLY REFUSED under 35 U.S.C. § 112(a) and (b).
THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). Applicant is reminded of the extension of time policy as set forth in 37 CFR § 1.136(a).
A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any extension fee pursuant to 37 CFR § 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the date of this final action.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to ADAM MAGER whose telephone number is (571)272-9780. The examiner can normally be reached on Monday - Friday, 10:00am - 6:00pm.
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, Chris P. McLean can be reached on (571) 270-1996. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
Information regarding the status of an application may be obtained from the Patent Application Information Retrieval (PAIR) system. Status information for published applications may be obtained from either Private PAIR or Public PAIR. Status information for unpublished applications is available through Private PAIR only. For more information about the PAIR system, see https://ppair-my.uspto.gov/pair/PrivatePair. Should you have questions on access to the Private PAIR system, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative or access to the automated information system, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/ADAM C MAGER/Primary Examiner, Art Unit 2923
1[] Philco, id. at 423
2[] Ex parte Salsbury, 38 USPQ 149 (ComrPats 1938)
3[] Philco Corporation v. Admiral Corporation, 131 USPQ 413 (DC Del 1961) citing (Pennsylvania Crusher Co. v. Bethlehem Steel Co., 193 F.2d 445, 92 USPQ 31 (3 Cir. 1951)).
4[] Ex parte Mygatt, 171 O.G. 1257, 1911 C.D. 186.