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
Multiple Embodiments -- Restriction not Required
This application contains the following embodiments:
Embodiment 1: Figs. 1.1-1.7
Embodiment 2: Figs. 2.1-2.7
Embodiment 3: Figs. 3.1-3.7
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 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.
A claim may be rejected by applying prior art to any embodiment within a patentably indistinct group. See Ex parte Appeal No. 315-40, 152 USPQ 71 (Bd. App. 1965). No argument asserting patentability based on the differences between the embodiments will be considered once the embodiments have been determined to comprise a single inventive concept. Failure of applicant to traverse this determination in reply to this action will be considered an admission of lack of patentable distinction between the above identified embodiments.
Objections
Specification
The following formal matters are noted:
The specification must include a description of each figure. Descriptions of the figures are not required to be written in any particular format, however, they must describe the views of the drawing clearly and accurately. The specification should be amended to include a brief description of the reproduction pursuant to Rule 7(5)(a) describing the views of the reproductions. See 37 CFR § 1.1021(b)(1)(ii), 37 CFR § 1.1024, and MPEP § 2920.04(a)II. Therefore, to avoid redundancy, the examiner suggests canceling the second set of figure descriptions:
[Fig. 1.1 is a perspective view of a tool case, according to the first design of the present application; fig. 1.2 is a front view thereof; fig. 1.3 is a rear view thereof; fig. 1.4 is a left view thereof; fig. 1.5 is a right view thereof; fig. 1.6 is a top view thereof; fig. 1.7 is a bottom view thereof; fig. 2.1 is a perspective view of a tool case according to the second design of the present application; fig. 2.2 is a front view thereof; fig. 2.3 is a rear view thereof; fig. 2.4 is a left view thereof; fig. 2.5 is a right view thereof; fig. 2.6 is a top view thereof; fig. 2.7 is a bottom view thereof; fig. 3.1 is a perspective view of a tool case, according to the third design of the present application; fig. 3.2 is a front view thereof; fig. 3.3 is a rear view thereof; fig. 3.4 is a left view thereof; fig. 3.5 is a right view thereof; fig. 3.6 is a top view thereof; and fig. 3.7 is a bottom view thereof.]
Applicant is not required to correct the above-noted formal matters but may wish to do so to place the application in better form.
Rejections
Claim Rejections -- 35 USC § 112(a) and (b)
The claim is rejected under 35 USC § 112(a) and (b) or pre-AIA 35 USC § 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 USC § 112, the applicant) regards as the invention.
The claim is indefinite and nonenabling due to the following:
The appearance and shape or configuration of the design cannot be determined or understood due to an inadequate visual disclosure (MPEP § 1504.04):
The exact shape and appearance of the left side of the article cannot be determined based on the disclosure provided because the claimed design is a three-dimensional article, a portion of which is only shown in a single planar view. The precise depth and three-dimensionality of the structures shaded in gray in the annotated drawings below cannot be determined. The single views do not clearly distinguish between contours and planar surfaces nor does it explain the differences in depth between various features.
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Because of the inadequate visual disclosure, the claimed design is in fact subject to multiple interpretations, and one of ordinary skill in the art would not be able to make and use the design without the use of conjecture. This renders the claim indefinite and non-enabled.
To overcome this rejection, applicant may submit new drawings of the claimed design that show the design clearly and consistently among the views. If certain non-enabled portions of the design cannot be fully enabled without the introduction of new matter, applicant may remove from the claim the areas or portions of the design that are considered indefinite and nonenabling by converting them to broken lines and amending the specification to indicate those portions form no part of the claimed design.
Replacement Drawings / Reproductions
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. If all the figures on a drawing 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 drawing sheet have been canceled must be presented in the amendment or remarks section that explains the change to the drawings. 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 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 drawings, be careful to avoid introducing new matter. New matter is prohibited by 35 USC § 132 and 37 CFR § 1.121(f).
Conclusion
The claimed design is rejected under 35 USC § 112(a) and (b), as set forth above.
The prior art made of record and not relied upon is considered pertinent to the applicant’s disclosure.
Reply Reminder
Applicant is reminded that any reply to this communication 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).
Notes on Correspondence
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 https://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 jillian.mazzola@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
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 Electronic Filing System‐Web (EFS‐Web) (Registered eFilers only)
https://www.uspto.gov/patents/apply
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 Information
Any inquiry concerning this communication or earlier communications from the examiner should be directed to JILLIAN MAZZOLA whose telephone number is (571)272-0020. The examiner can normally be reached M-F, 8:30 am - 5 pm Eastern.
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, Ian Simmons can be reached at (571) 272-2658. 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.
/JILLIAN MAZZOLA/Examiner, Art Unit 2913