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 examiner cannot require removal of the repetition of the figure descriptions but may simply suggest removal of repetitive descriptions for clarity without making a requirement. In accordance with MPEP 1503.01(II), the examiner suggests that applicant cancel the descriptive statement beginning “Fig 1.1 shows a perspective […]” and ending “design lie in the shape” because 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).
Objections
Reproductions
The examiner objects to the reproductions because they do not appear consistent. Specifically, the oblique line shading indicated in figure 1.7 on page 3, below, is inconsistent with the rest of the disclosure, which shows the same features with opaque surface shading.
When inconsistencies are found among the views, the examiner should object to the reproductions and request that the views be made consistent. Pursuant to Hague Agreement Rule 9(4), "[a] Contracting Party may however refuse the effects of the international registration on the ground that the reproductions contained in the international registration are not sufficient to disclose fully the industrial design."
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The figures must be made consistent. Clarity and consistency are required. The examiner notes that oblique line shading is also shown on the top of the lid, however, the figures consistently show this feature with oblique line shading, therefore, amending this shading to show an opaque surface would constitute new matter. Only features that are shown inconsistently in the views should be addressed.
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New, corrected formal drawings are now required. Any amended replacement drawing 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 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 drawings for consistency. Additional replacement sheets may be necessary to show the renumbering of the remaining figures. The replacement sheet(s) should be labeled "Replacement Sheet" in the page header (see 37 CFR 1.84(c)) so as not to obstruct any portion of the drawing figures. The corrected drawings must not contain new matter (35 U.S.C. 132; 37 CFR 1.121).
Refusal
Claim Refusals - 35 USC § 112
The claim is 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 applicant regards as the invention.
The claim is indefinite and non-enabling because the examiner cannot completely understand the claim based on the limited views provided. Specifically, the examiner cannot understand the interior and/or inset portions of the tumbler indicated in the top and bottom plan views in the absence of a cross-sectional or an exploded view.
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In order to overcome this rejection, the drawings must be amended to show the design consistently among all figures. Clarity and consistency are required. Applicant may disclaim the areas or portions of the design which are considered indefinite and non-enabling in the refusal under 35 U.S.C. 112 above by converting them to broken lines and amending the specification to include a statement that:
--The portions of the Tumbler shown in broken lines form no part of the claimed design.--
For clarity, the examiner has provided an example of how this refusal may be overcome. The following example also demonstrates how the drawing objection above (on pages 2 and 3) may be overcome.
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The necessity for good drawings in a design patent application cannot be overemphasized. As the drawing constitutes the whole disclosure of the design, it is of utmost importance that it be so well executed both as to clarity of showing and completeness, that nothing regarding the design sought to be patented is left to conjecture. An insufficient drawing may be fatal to validity (35 U.S.C. 112(a) or pre-AIA 35 U.S.C. 112, first paragraph). Moreover, an insufficient drawing may have a negative effect with respect to the effective filing date of a continuing application.
If preparing new drawings in compliance with the requirement therefor, 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.
Conclusion
The claim is refused under 35 USC 112(a) and (b). The references are cited as the most pertinent art and are not applied in this refusal.
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 tia.polidori@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
Please note that the USPTO transacts business in writing.
When responding to an official correspondence issued by the USPTO, including Refusals, Ex Parte Quayle, Notice of Allowances, or Notice of Abandonments, applicants may only submit replies to Office actions via:
Online through the USPTO's Electronic Filing System-Web (EFS-Web) (Registered eFilers only)
https:/Awww.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
For additional information regarding responding to office actions see: https://www.uspto.gov/patents/maintain/responding-office-actions
Note that correspondence received will appear in the Patent Center, which may be viewed by the applicant at: https://patentcenter.uspto.gov
Contact Information
Any inquiry concerning this communication or earlier communications from the examiner should be directed to TIA R POLIDORI whose telephone number is (571)272-9235. The examiner can normally be reached Monday-Friday 9AM-6PM (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, Jae Liang can be reached on 571-270-0229. 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.
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).
/TIA RUTH-RENEE POLIDORI/Examiner, Art Unit 2921