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 .
Examiner’s Comment
The following are the Examiner’s understanding of the claim:
Reproduction 1.1-1.7 to be the unassembled state of 2.1-2.7
Reproduction 3.1-3.7 illustrates the unassembled state of 4.1-4.7
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Should these understandings of the claim be incorrect or unacceptable to the applicant, an amendment may be filed to further clarify the claim.
Restriction Not Required
This application discloses the following embodiments:
Embodiment 1: Reproduction 1.1-1.7
Embodiment 2: Reproduction 2.1-2.7
Embodiment 3: Reproduction 3.1-3.7
Embodiment 4: Reproduction 4.1-4.7
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Embodiment 1: 1.1 Embodiment 2: 2.1
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Embodiment 3: 3.1 Embodiment 4: 4.1
Multiple embodiments of a single inventive concept 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 (CCPA 1959). 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 differences between the various embodiments are not seen as patentably distinct. These differences include; differences in the proportions of the various design elements, a flat vs. an angled top surface in the assembled state of the design, and the presence or absence of a line on the top middle back (as seen in the perspective view of the assembled state) of the design.
In regards to the differences in the proportions and arrangement of the various design elements, case law states that the presence of invention is as essential to granting of design patent as to granting of mechanical patent; obvious changes in arrangement and proportioning are no more patentable in one case than in the other. In re Stevens 624 O.G. 366; 81 USPQ 362(1949).
In regards to a flat vs. and angled top surface in the assembled state of the design, these design features are common in the field of packaging for foodstuffs (cartons) and would have been a simple substitution for one known design characteristic for another, i.e. a flat top vs. an angled top or vice versa.
In regards to the presence or absence of a line on the top middle back of the design in an assembled state, this small difference is seen as de minimis in nature and unrelated to the overall aesthetic appearance of the design. Ex parte Pappas (BdPatApp&Int) 23 USPQ2d 1636; In re Blum, 153 USPQ 177 (CCPA 1967). This difference, in the presence or absence of a line on the top middle back of the design in an assembled state, is considered de minimis because the net effect of the difference does not affect the appearance of the claimed design as a whole and the impression that the design would make to the eye of a designer of ordinary skill. Ex parte Pappas (BdPatApp&Int 1992) 23 USPQ2d 1636. In the case of In re Lamb 128 USPQ 539 (1961), the court ruled that an applicant's design is not patentable over prior art design since minor differences between designs do not create impression of a new or different design; the overall appearance is the same; fact that some dimensions are changed in a different degree than others is not patentably significant. Further, in the case of In re Lapworth, 172 USPQ 129 (C.C.P.A. 1971), the Board’s opinion was that “It is distinctiveness in overall appearance of an object, when compared with the prior art, rather than minute details or small variations in configuration as appears to be the case here, that constitutes the test of design patentability.”
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.
Specification
The disclosure is objected to because of the following informalities:
Title Objection: The current title does not comply with 37 CFR 1.153. Specifically, the current title, “PACKAGING BLANK FOR FOODSTUFFS”, is objectionable because it is specific to only one of the two states of the design that are shown within the Reproductions, in an “unassembled / flat state i.e. the “packaging blank” and also in the assembled “packaging” state. While the claimed design must be embodied in an article of manufacture as required by 35 U.S.C. 171, it may encompass multiple states within that article. When the design involves multiple states, the title should encompass all of the states or configurations within the claim.
To overcome this objection, the title should be amended to accurately encompass the two states within the claim, such as the following suggested title:
- - PACKAGING FOR FOODSTUFFS - -
The title and claim must correspond. 37 CFR 1.153. Any amendment to the language of the title should also be made at each occurrence thereof throughout the application, including the claim and the figure descriptions, except in the oath or declaration. See MPEP 1503.01 I.
Extraneous Description: The sentences following the broken line statement, which begins with “First figure is a perspective view….” and ends with “…seventh figure is a back view.”, in the description of the reproductions is extraneous information describing what is shown in the reproductions, which adds no new information to the understanding of the claimed design. Any description of the design in the specification other than a brief description of the drawing is generally not necessary, since as a general rule, the illustration in the drawing views is its own best description. See In re Freeman, 23 App. D.C. 226 (App. D.C. 1904). The above sentences should be deleted in its entirety. See Hague Rule 7(5)(a), 37 CFR 1.1024, MPEP 2920.04(a) ll.
Appropriate correction is required.
Claim Rejections - 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 a joint inventor regards as the invention.
The claim is indefinite and nonenabling due to the following:
Inadequate Visual Disclosure: The visual disclosure is inadequate such that the appearance and shape or configuration of the design for which protection is sought cannot be determined or understood (MPEP § 1504.04). Specifically, the configuration of the design elements on the bottom of the claimed design, as seen in 2.7 and 4.7 cannot be understood from the provided views. Since an inadequate amount of information is provided, the exact three dimensionality of the claimed design cannot be determined. These various folded layers appear as if they could be configured (layered) in a myriad of different configurations and have a variety of different spatial relationships to the adjacent fully disclosed outer edge of the bottom of the claim. To overcome this refusal, the applicant may disclaim the areas or portions of a claimed design which are considered indefinite and nonenabling in the rejection under 35 U.S.C. 112 above by converting the lines inside of the fully disclosed outer edge to a dash-dash style of broken line and by adding a dot-dash broken line, a boundary line, directly inside of that fully disclosed outer edge of the bottom of the claim. Note that the outer edge line of these non-enabled surfaces is enabled and should remain rendered as a solid line. If the Applicant does decide to add a concentric dot-dash broken line directly inside of the adjacent outer edge of the bottom of the claim and to convert the lines inside of this edge to broken lines, a broken line statement should be added to the Specification directly after the descriptions of the Reproductions. The Examiner suggests the following:
- - The dash-dash broken lines shown in the drawings depict portions of the [TITLE] that form no part of the claimed design. The dot-dash broken lines in the drawings depict the boundary of the claimed design and form no part of the claimed design - -
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2.7 – comments are also applicable to 4.7
Replacement Reproductions
Corrected reproductions are required in reply to the Office action to avoid abandonment of the
application. 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 drawing 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 drawings for
consistency. Additional replacement sheets may be necessary to show the renumbering of the
remaining figures. If all the figures on a reproduction sheet are canceled, a replacement sheet
is not required. A marked-up copy of the drawing sheet (labeled as “Annotated Sheet”)
including an annotation showing that all the figures on that reproduction sheet have been
canceled must be presented in the amendment or remarks section that explains the change to
the drawings. 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 changes are not accepted by the examiner, the applicant will be notified and
informed of any required corrective action in the next Office action.
Discussion of the Merits of the Case:
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 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”, may be used for this purpose:
https://www.uspto.gov/patent/forms/forms-patent-applications-filed-or-after-september-16-2012
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.
If a pro se applicant or registered practitioner located outside of the United States wishes to communicate by telephone, it is suggested that such person email the examiner at darcey.gottschalk@uspto.gov to arrange a time and date for the telephone interview. Please include proposed days and times for the proposed call. When proposing a day/time for the interview, please take into account the examiner’s work schedule indicated in the last paragraph of this communication. The email should also be used to determine who will initiate the telephone call.
Email Communications
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.
When Responding to Official USPTO Correspondence
When responding to an official correspondence issued by the USPTO, including refusals, Ex Parte Quayle, Notice of Allowances, or Notice of Abandonments, please note the following:
The USPTO transacts business in writing. 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-application-process/applying-online/efs-web-guidance-and-resources
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-maintaining-patent/responding-office-actions
Conclusion
The claim stands rejected under 35 U.S.C. § 112(a) and (b), as set forth above.
Cited Art
The prior art made of record and not relied upon is considered pertinent to applicant’s disclosure.
Contact Information
Any inquiry concerning this communication or earlier communications from the examiner should be directed to KATHERINE E. MORRIS whose telephone number is (571)272-9621. The examiner can normally be reached M-F, 9-5 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, Shawn Gingrich can be reached on (571)270-0218. 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.
/K.E.M/
Examiner, Art Unit 2934
/SHAWN T GINGRICH/ Supervisory Patent Examiner, Art Unit 2934