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 .
Objection – Drawings
Quality of Lines
The reproductions show areas of merging lines and blurriness, which makes it difficult to decipher single lines from double lines and the exact design characteristics of the packaging throughout the reproductions. Reproductions shall be of a quality permitting all the details of the industrial design to be clearly distinguished and permitting publication, see MPEP §2909.02, 37 CFR 1.1026 and Hague Rule 9. It is therefore required that applicant show all such features clearly and consistently throughout the disclosure. Annotated drawing below highlights areas of merging lines and blurriness.
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Replacement Reproductions
Any amended replacement reproductions 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 reproduction 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 reproductions for consistency.
Additional replacement sheets may be necessary to show the renumbering of the remaining figures. If
all the figures on a drawing sheet are canceled, a replacement sheet is not required. A marked-up copy
of the reproduction 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 the remarks section that explains the change to the reproductions. 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.
When preparing new or replacement reproductions, be careful to avoid introducing new matter, 35
U.S.C. 132 and 37 CFR 1.121(f). This pertains to either: the addition to, or the removal of, any
elements shown in the originally disclosed design.
Objection – Title
Inconsistent Title
The title is inconsistently mentioned and referred to as “Cardboard Box Packaging” on the WIPO registration and then as both “Cardboard box [packaging]” and “Cardboard box” throughout the specification. The title of a design must designate the name of the article in which the design is embodied or applied. In addition, the title must correspond with the claim, see MPEP §1503.01 and 37 CFR 1.153 or MPEP §2920.04(a) and 37 CFR 1.1067. For consistency with the claim, the title of the application must be amended and Examiner suggests the following:
--Cardboard Box --
Objection - Specification
The following formal matters are noted:
Descriptions
The specification is objected to under 37 CFR 1.1067 for failing to provide clear and accurate figure descriptions. In addition, the descriptive statements provided refer to each reproduction as “figure” which is not accurate in international applications, see MPEP §2920.04(b). Furthermore, the descriptions are included into the feature statements and not Although descriptions for reproductions are incorporated into the paragraph of feature descriptions, they should be also placed prior to the feature descriptions as described in 37 CFR 1.154(b) (see MPEP 1503.01). Therefore, the following descriptions for 1.1-1.7 may be placed prior to the feature descriptions:
--1.1 is a perspective view; --
--1.2 is a front view; --
-- 1.3 is a right view; --
--1.4 is a left view; --
--1.5 is a back view; --
--1.6 is a top view; --
--1.7 is a bottom view. --
Descriptive Statements
The statement, “the characteristic features of the design lie in the shape of the cardboard box;” is unnecessary as it is understood from the drawings what the shape of the cardboard box is. Furthermore, 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 (MPEP § 1503.01, subsection II). Therefore, the following statement may be deleted from the specification.
[[the characteristic features of the design lie in the shape of the cardboard box;]]
The statement, “the representations of the design are in black and white; the design does not claim protection for a specific coloring;” is unnecessary as it is understood that the reproductions are in black and white, as that is what is shown and no description of the design in the specification beyond a brief description of the drawing is generally necessary, since as a rule the illustration in the drawing views is its own best description. In re Freeman, 23 App. D.C. 226 (App. D.C. 1904). In addition, color is not a patentable distinction in design patents. A new blending or arrangement of colors is not patentable in a design unless a new esthetical effect is produced—an original idea indicated, see In re Hall 1934 C.D. 238; 21 USPQ 19 (1934). Therefore, the following statement may be deleted from the specification.
[[the representations of the design are in black and white; the design does not claim protection for a specific coloring;]]
Applicant is not required to correct the above-noted formal matters but may wish to do so to place the application in better form.
Claim Rejection - 35 U.S.C. § 103
The following is a quotation of 35 U.S.C. 103 which forms the basis for all obviousness rejections set forth in this Office action:
A patent for a claimed invention may not be obtained, notwithstanding that the claimed invention is not identically disclosed as set forth in section 102, if the differences between the claimed invention and the prior art are such that the claimed invention as a whole would have been obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art to which the claimed invention pertains. Patentability shall not be negated by the manner in which the invention was made.
The claim is rejected under 35 U.S.C. 103 as being unpatentable over Uline’s Gift Box (“Uline” dated March, 15, 2015) available at Gift Boxes - 9 x 5 x 4", White Gloss S-12455 - Uline in view of US Design Patent D432,912 (dated October 31, 2000), and as evidenced by US Patent 351,104 (dated October 4, 1994) and Chinese Patent CN114751088 (dated July 15, 2022).
Although the invention is not identically disclosed or described as set forth in 35 U.S.C. 102, if the differences between the claimed invention and the prior art are such that the claimed invention as a whole would have been obvious before the effective filing date of the claimed invention to a designer having ordinary skill in the art to which the claimed invention pertains, the invention is not patentable.
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The Uline Gift Box has an overall appearance with design characteristics that are visually similar to those of the claimed design, in that it shows a rectangular box with incorporated lid and short side flaps on the left/right top sides of the box, as well as front/rear sides which are wider than the left/right sides.
The claimed design differs from Uline in that the two side flaps have straight edges on all four side and the top lid edges are rounded. Design Patent US432,912's box teaches the straight edge flaps that are visually similar to the flaps on the box in the claimed design. In addition, rounding corners is obvious expedient in designs. See In re Peet 101 USPQ 203 (1954).
It would have been obvious for an ordinary designer in the field of the article of manufacture to have modified Uline with the design of D432,912 because it is a simple substitution of one design element for another: straight-edged flaps for angled flaps, as evidenced by the straight edge box flaps shown in prior art references US Patent 351,104 and Chinese Patent CN11471088.
Claim Rejection - 35 USC § 112(a) and (b)
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 applicant regards as the
invention.
The claim is indefinite and non-enabling due to the following inconsistencies/unclear parts which
prevent a clear understanding of the design which applicant seeks protection for:
Unclear Parts
It is unclear whether the scope of the claim ends at the broken line and includes the white portion leading up to that broken line. Without any surface shading or a clear scope defined, it is impossible to understand the article being claimed without resorting to conjecture. If a claim is amenable to two or more plausible claim constructions, the USPTO is justified in requiring the applicant to more precisely define the metes and bounds of the claimed invention by holding the claim unpatentable under 35 U.S.C. § 112, second paragraph, as indefinite. See Ex parte Miyazaki, 89 USPQ2d 1207, (Bd. Pat. App. & Int. 2008). Rejection may be overcome by adding a statement to the specification clarifying the scope of the claim. See annotated drawings below for identification of unclear parts.
If applicant chooses to include a statement to the specification (and this statement is describing the scope of the claim as extending to the broken lines and not including the broken lines), the statement must be added to the specification immediately following the figure descriptions and preceding the claim (see MPEP 1503.02, subsection III and 37 CFR 1.154 (b) (5). Examiner provides the following example of an appropriate statement to be added after the broken line statement:
--The claimed portions of the design extend to, but do not include, the broken lines shown. --
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Because of the insufficient information in the drawings provided, the claimed
design is in fact subject to multiple interpretations, and one of ordinary skill in the art would not be able
to reproduce the design without the use of conjecture. This renders the claim non-enabled. In order to
overcome this rejection, it is suggested that the design be shown clearly and consistently among the
views. All inconsistencies should be remedied or otherwise satisfactorily explained, amended to form no
part of the claim, or figures cancelled [if such does not negatively impact understanding of the
remaining disclosure]. Inconsistency that cannot be either corrected or satisfactorily explained should be amended to form no part of the claim with lightweight broken lines. However, care must be taken to
not introduce new matter.
If applicant chooses to exclude portions of the design from the claim by converting those portions of the
article to broken lines, the amendment must meet the written description requirement of 35 USC
112(a). It must be apparent that applicant was in possession of the amended design at the time of
original filing. 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 § 103 and 35 USC 112(a) and (b).
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 “Patent Number Search”
button.
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 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 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.
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
joan.diehl@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 consider 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 official correspondence issued by the USPTO, including a notification of
refusal, please note the following:
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
https://www.uspto.gov/patents/maintain/responding-office-actions
Contact
Any inquiry concerning this communication or earlier communications from the examiner should be directed to JOAN E. DIEHL whose telephone number is (571)272-9788. The examiner can normally be reached Monday-Friday 9AM-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, Susan E. Krakower can be reached on 571-272-4496. 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.
/JOAN E. DIEHL/Examiner, Art Unit 2917