NOTIFICATION OF REFUSAL
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 .
Priority Under 35 U.S.C. 119
Acknowledgment is made of applicant’s claim for foreign priority based to Canadian Application No. CA223379 filled on 08/08/2023. A certified copy of Application No. 223279 was included in the file, but not a copy of Application No. CA223379. Therefore, the applicant has not filed a certified copy of the foreign application as required by 37 CFR 1.55. In the case of a design application, the certified copy must be filed during the pendency of the application, unless filed with a petition under 37 CFR 1.55(g) together with the fee set forth in 37 CFR 1.17(g), that includes a showing of good and sufficient cause for the delay in filing the certified copy of the foreign application. If the certified copy of the foreign application is filed after the date the issue fee is paid, the patent will not include the priority claim unless corrected by a certificate of correction under 35 U.S.C. 255 and 37 CFR 1.323.
Priority Under 35 U.S.C. 119
Acknowledgment is made of applicant’s claim for foreign priority under 35 U.S.C. 119 (a)-(d).
Applicant has not met the USPTO requirements for claiming the benefit of priority under 35 U.S.C. §119 to Canadian Application No. CA223379.
Multiple Embodiments – Restriction Not Required
This application contains the following embodiments:
Embodiment 1 – 1.1-1.21
Embodiment 2 – 2.1-2.21
Embodiment 3- 3.1-3.24
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 above-identified embodiments are considered by the examiner to present overall appearances that are visually similar. 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. 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. See In re Lapworth 172 USPQ 129 (1971).
Mere duplication of the design is not invention. Gold Seal Importers Inc. v. Morris White Fashions, Inc. 49 USPQ 607 (1941). Patentability of design cannot be predicated on size or proportioning. In re Zonenstein 36 CCPA 845; 1949 C.D. 131; 80 USPQ 522 (1949) In re Stevens 624 O.G. 366; 81 USPQ 362 (1949). Additionally, obvious changes in arrangement and proportioning are no more patentable in one case than in the other. n re Stevens 624 O.G. 366; 81 USPQ 362 (1949). Accordingly, they are deemed to be obvious variations and are being retained and examined in the same application.
Note, if the groups are determined not to be patentably distinct and they remain in this application, any rejection of one group over prior art will apply equally to all other groups. See Ex parte Appeal No. 315-40, 152 USPQ 71 (Bd. App. 1965). No argument asserting patentability based on the differences between the groups will be considered once the groups have been determined to comprise a single inventive concept.
Claim Refusal - 35 U.S.C. § 112(a) and (b)
The claim is refused 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 because the claim is not consistently or clearly disclosed.
Specifically:
Due to the blurriness and poor quality of the reproductions the disclosure does not provide certainty as to the exact appearance and three-dimensional configuration of the surfaces and elements pointed out in 1.17-1.18, 1.20-1.21, 2.17-2.18, 2.20-2.21, 3.17-3.18, 3.20-3.21, and 3.23-3.24. The annotated image has been provided for example purposes only, however, all reproductions listed should be addressed.
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This portion of the refusal may be overcome by amending the lines to be uniformly thick and well defined and clean throughout the disclosure.
The disclosure does not provide certainty as to the exact appearance and three-dimensional
configuration of the design as a whole because the portions of each element is not consistent throughout the reproductions. The annotated image has been provided for example purposes only, however, all reproductions should be addressed.
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This portion of the refusal may be overcome by amending the reproductions for consistency, provided such an amendment is supported by the original disclosure.
The disclosure does not provide certainty as to where the sectional cut is taken because the reproductions are not properly annotated. The plane upon which a sectional view is taken should be indicated on the view from which the section is cut by a broken line. The ends of the broken line should be designated by Arabic numerals corresponding to the view number of the sectional view, and must have arrows to indicate the direction of sight.
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This portion of the refusal may be overcome by amending 1.9, 2.9 and 3.9 with proper annotations.
Claim Rejection - 35 U.S.C. 112(b)
The claim is refused under 35 U.S.C. 112(b), as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor regards as the invention.
The disclosure does not provide for certainty as to the exact scope of the claimed design without resorting to conjecture. See MPEP 1504.04 II.
Specifically:
The claim is indefinite because the drawings include, in the figure(s), broken lines that are not described in the specification, and the scope of the claimed design cannot be determined.
When utilizing broken lines in a drawing, a broken line description which clearly describes the use of the broken lines must be included in the specification. See 37 CFR 1.152 and MPEP § 1503.02(III). Because broken lines can be used in design patent drawings for a number of reasons, the broken‐line description should expressly identify the purpose of the broken lines in addition to defining their relationship to the claimed design. See MPEP 1503.01(III).
This portion of the rejection may be overcome by inserting a statement similar to the following into the specification immediately preceding the claim (see 35 U.S.C. 132).: --The dash-dash broken lines shown illustrate portions of the Mounting Bracket that form no part of the claimed design. The additional dash-dash broken lines shown in 1.9, 2.9 and 3.9 are for the purpose of annotating the cut line for the cross sectional view only and from no part of the claimed design.—
In 1.1-1.4, 1.7-1.10, 1.17-1.18, 1.20-1.21, 2.1-2.4, 2.7-2.10, 2.17-2.18, 2.20-2.21, 3.1-3.4, 3.7- 3.10, 3.17-3.18, 3.20-3.21 and 3.23-3.24 the disclosure does not provide certainty where exactly the claim begins and ends because several lines transition between broken and solid. Without resorting to conjecture, the disclosure dose not confirm what portions of these surfaces and elements are intended to be claimed or not. Therefore, a question arises as to exactly what is being claimed, thereby rendering the claim indefinite. The annotated image has been provided for example purposes only, however, all reproductions listed should be addressed.
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Where no boundary line is shown in a design application as originally filed, but it is clear from the design specification that the boundary of the claimed design is a straight broken line connecting the ends of existing full lines defining the claimed design, applicant may amend the drawing(s) to add a straight broken line connecting the ends of existing full lines defining the claimed subject matter where such amendment complies with the written description requirement of 35 U.S.C. 112(a) . Additionally, any broken line boundary other than a straight broken line may constitute new matter prohibited by 35 U.S.C. 132 and 37 CFR 1.121(f).
The descriptive statement may also need amended to add a statement similar to: The dot-dash broken lines define the bounds of the claimed design and form no part thereof. -- (if applicable)
Replacement Sheets
Corrected drawing sheets of the reproductions are required in reply to the Office action to avoid abandonment of the application. Any amended replacement drawing sheet of the reproductions should include all of the views appearing on the immediate prior version of the sheet, even if only one view is being amended. The view of an amended drawing should not be labeled as “amended”. If a drawing view is to be canceled, the appropriate view must be removed from the replacement sheet, and where necessary, the remaining views 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 renumbered of the remaining views. Each drawing sheet of reproductions 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). Applicant is reminded that the numbering of the reproductions and legends must follow the Hague Administrative Instructions Section 405(a) consisting of two separate figures separated by a dot (e.g., 1.1, 1.2, 1.3, etc. for the first design, 2.1, 2.2, 2.3, etc. for the second design, and so on) (see 37 CFR 1.1026 and MPEP 2909.02). 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.
Care must be exercised to avoid introduction of anything which could be construed as new matter prohibited by 35 USC 132 and 37 CFR 1.121 when preparing amended reproductions.
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 kayla.bennett@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 is refused under 35 U.S.C. 112(a) and (b) as set forth above.
The references are cited as pertinent prior art. Applicant may view and obtain copies of the cited references by visiting http://www.uspto.gov/patft/index.html and pressing the “Number Search” button.
Contact Information
Any inquiry concerning this communication or earlier communications from the examiner should be directed to KAYLA MARIE BENNETT whose telephone number is (571)272-9590. The examiner can normally be reached Monday-Friday 7:00AM-3:00 PM 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, Supervisor, Amber Stiles can be reached at 571-272-7611. 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.
/KAYLA MARIE BENNETT/Examiner, Art Unit 2913
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