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 .
Comment to Amendments/Remarks
Applicant’s amendments filed on 6/4/2026 have been reviewed and considered. It is the examiner’s position that the prior rejection of record under 35 USC § 112(a) and (b) was not overcome by the amendments. The applicant failed to show the design in a way that could be understood completely without resorting to conjecture.
The declaration under 37 C.F.R. 1.130(a) filed 6/4/2026 has been reviewed, and the evidence has been carefully considered.
The declaration does sufficiently establish that: the discloser obtained knowledge of the invention from the inventor (Franco Oriti), the disclosure was of the same subject matter as the claim, and the disclosure was publicly made before the 102(a)(1) date of the reference set forth in the previous Action.
Therefore, the declaration is accepted and the rejection under 35 U.S.C. 102 has been overcome and the rejection is withdrawn.
The claim is FINALLY REJECTED under 35 U.S.C. 112(a) as the applicant’s amendment has added new matter to the claim. Applicant’s amendments introduce new matter into the disclosure which necessitate the new grounds of rejection. MPEP 706.07(a)
REFUSAL
Claim Rejection - 35 USC § 112(a) & (b)
The claim is FINALLY rejected 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 the inventor or a joint inventor (or, for applications subject to pre-AIA 35 U.S.C. 112, the applicant) regards as the invention.
The scope of a claim is definite only when it is supported by an enabling disclosure. When the scope of protection sought exceeds what is enabling in the disclosure, the claim is indefinite.
The claim scope must be less than or equal to the scope of the enablement. The scope of enablement, in turn, is that which is disclosed in the specification and is understandable to a designer of ordinary skill in the art without resorting to conjecture.
Specifically:
Item 1) The claim is indefinite and non-enabled because the disclosure as shown in the reproductions is insufficient. Specifically, the top surface features seen in FIG. 1.2 can’t be understood because they are not visible from any other view. It is not clear if the features are open/closed or raised/indented/flush with the adjacent surfaces. The exact shape, appearance, and configuration are subject to multiple interpretations and cannot be determined without resorting to conjecture. Please refer to the highlighted features and the arrows in the next annotated drawing.
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Item 2) The claim is indefinite and non-enabled because the disclosure as shown in the reproductions is insufficient. Specifically, the bottom surface features seen in FIG. 1.3 can’t be understood because they are not visible from any other view. It is not clear if the features are open/closed or raised/indented/flush with the adjacent surfaces. The exact shape, appearance, and configuration are subject to multiple interpretations and cannot be determined without resorting to conjecture. Please refer to the highlighted features and the arrows in the next annotated drawing.
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Item 3) The claim is indefinite and non-enabled because the disclosure as shown in the reproductions is insufficient. Specifically, the interior features seen in FIG. 1.4 can’t be understood because they are not visible from any other view. It is not clear if the features are open/closed or raised/indented/flush with the adjacent surfaces. The exact shape, appearance, and configuration are subject to multiple interpretations and cannot be determined without resorting to conjecture. Please refer to the highlighted features and the arrows in the next annotated drawing.
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In order to attempt to overcome the rejection, applicant may submit a new reproduction set that consistently shows the scope, shape and appearance of the claimed design, as well as removes the non-enabled details from the claim by reducing those details to broken lines (i.e. converting from solid lines to broken lines, and removing all shading within), so the examiner can make a determination as to whether or not the new views introduce new matter. Applicant is further cautioned to render any corresponding drawing details clearly and consistently in all applicable views.
For clarity and proper form, Applicant may insert a broken line statement in the specification. Examiner suggests:
-- The broken lines in the reproductions depict portions of the Candle Blower that form no part of the claimed design. --
Claim Rejection - 35 USC § 112 (a)
The claim is FINALLY rejected under 35 U.S.C. 112(a) as failing to comply with the description requirement thereof since the replacement drawing set is not supported by the original disclosure. The original disclosure does not reasonably convey to a designer of ordinary skill in the art that applicant was in possession of the design now claimed at the time the application was filed. See In re Daniels, 144 F.3d 1452, 46 USPQ2d 1788 (Fed. Cir. 1998); In re Rasmussen, 650 F.2d 1212, 211 USPQ 323 (CCPA 1981).
A change in the configuration of the claimed design is considered a departure from the original disclosure and introduces prohibited new matter (37 CFR 1.121(f)). See In re Salmon, 705 F.2d 1579, 217 USPQ 981 (Fed. Cir. 1983).
This includes the removal or addition of three-dimensional surface treatment that is an integral part of the configuration of the claimed design, for example, beading, grooves, and ribs. The configuration revealed by such an amendment would not be apparent in the application as filed and, therefore, it could not be established that applicant was in possession of this amended configuration at the time the application was filed.
“Adequate description of the invention guards against the inventor's overreaching by insisting that he recount his invention in such detail that his future claims can be determined to be encompassed within his original creation.” Vas-Cath, Inc. v. Mahurkar, 935 F.2d 1555, 19 USPQ2d 1111 (Fed. Cir. 1991)
(‘The [written description] inquiry is simply to determine whether the inventor had possession at the earlier date of what was claimed at the later date.' ).”; In re Owens, 106 USPQ2d 1248 (CAFC 2013).
Therefore, the particular overall appearance of the design now claimed, is considered to be a change in configuration not supported by the original disclosure in the manner required by the first paragraph of 35 USC 112. Applicant was not in possession of the design now claimed, as the design now claimed is not recognizable in the original design, to the exclusion of other designs (i.e. the design now claimed was not disclosed at the time of filing), and as the design now claimed was not explicitly described in the parent application.
Specifically, there is no support in the original disclosure for the following:
Item 1) The appearance created by the removal of the interior features in FIG. 1.2 was not described in the original disclosure, because the original disclosure showed interior features inside of the circles. Please see the arrows in the next annotated drawing.
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Item 2) The appearance created by the removal of the interior features and the additional indefinite features in FIG. 1.3 was not described in the original disclosure, because the original disclosure showed interior and additional features. Furthermore, the appearance created by the removal of the vertical lines on the nozzle feature was not described in the original disclosure because the original disclosure showed two additional vertical lines. Please see the arrows in the next annotated drawing.
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Item 3) The appearance created by the removal of interior and the diagonal line in FIG. 1.4was not described in the original disclosure, because the original disclosure showed the interior and diagonal lines. Please see the arrows in the next annotated drawing.
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The examiner recommends using a lossless file format when submitting drawings through EFS-web (e.g., TIFF, PNG, GIF, BMP). EFS-web PDF Guidelines may be found at https://www.uspto.gov/patents-application-process/applying-online/efs-web-pdf-guidelines
Replacement Drawing Information
Any corrected reproductions submitted in response to this Office action must be in compliance with 37 CFR 1.121(d). The corrected reproductions must not contain new matter. 35 USC 132 and 37 CFR 1.121.
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.
Refusal 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 Applicant. If Applicant is a juristic entity, the reply must be signed by a patent practitioner. See 37 CFR 1.33(b).
Conclusion and Contact Information
THIS ACTION IS MADE FINAL. The claim is finally rejected under 35 U.S.C. § 112(a) as well as 35 U.S.C. § 112(a) and (b). Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any extension fee pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the date of this final action.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Justin Johnson whose telephone number is (571) 272-5730. The examiner can normally be reached Monday-Friday at 8:00 a.m. to 4:00 p.m. 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, George Bugg, can be reached at (571) 272-2998. The fax phone number for the organization where this application or proceeding is assigned is (571) 273-8300.
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/JAJ/
Examiner, Art Unit 2911
/DARCEY E GOTTSCHALK/Primary Examiner, Art Unit 2922
Prosecution Insights