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 .
Foreign Priority
Acknowledgment is made of applicant’s claim for foreign priority based on an application filed in United Kingdom on 10/26/2023. It is noted, however, that applicant has not filed a certified copy of the GB6321987 and GB6321988 applications as required by 37 C.F.R. 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 C.F.R. 1.55(g) together with the fee set forth in 37 C.F.R. 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 C.F.R. 1.323. Applicant is advised that certified documents as specified in 37 CFR 1.4(f) are not permitted to be filed via EFS-WEB. (See also 37 CFR 1.6(d)(2)).
Restriction Not Required
This application discloses the following designs:
Design 1 - Figs. 1.1-1.11
Design 2 - Figs. 2.1-2.12
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). Patentability of design may not rest on color alone; claim distinguishing over reference only on basis of coloring is rejected since selection of different color would not produce any basic alteration or unexpected appearance. In re Iknayan et. Al. 124 USPQ 507 (1960). 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. In re Lapworth 172 USPQ 129 (1971).
Design 2 shows the lower portion of the article in various illuminated configurations of use. This minor difference in appearance of the designs is considered patentably indistinct. The above identified designs are considered by the examiner to present overall appearances that are visually similar. Furthermore, the differences between the appearances of the designs 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. Any rejection of one embodiment over prior art will apply equally to all other embodiments. See Ex parte Appeal No. 315-40, 152 USPQ 71 (Bd. App. 1965). No argument asserting patentability based on the differences between the designs will be considered once the designs 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 designs.
Specification Objections
The specification is objected to as follows:
The application contains at least one color reproduction or color photograph. To comply with the provisions of 37 CFR 1.84 for color reproductions/photographs in design applications, the specification must be amended to include the following language as the first paragraph of the brief description of the reproductions section:
--The file of this patent contains at least one reproduction/photograph executed in color. Copies of this patent with color reproduction(s)/photograph(s) will be provided by the Office upon request and payment of the necessary fee.--
A substitute specification to the claim is required pursuant to 37 C.F.R. 1.125 and must be submitted with markings showing all the changes relative to the immediate prior version of the specification of record. The text of any added subject matter must be shown by underlining the added text. The text of any deleted matter must be shown by strike-through except that double brackets placed before and after the deleted characters may be used to show deletion of five or fewer consecutive characters. The text of any deleted subject matter must be shown by being placed within double brackets if strike-through cannot be easily perceived. An accompanying clean version (without markings) and a statement that the substitute specification contains no new matter must also be supplied. Numbering the paragraphs of the specification of record is not considered a change that must be shown.
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:
No actual description has been provided to accompany the entire drawing disclosure. An international design application designating the United States must include a specification as prescribed by 35 U.S.C. § 112 and preferably include a brief description of each reproduction. Hague Rule 7(5)(a), 37 CFR 1.1024, MPEP 2920.04(a) II. To overcome the objection, applicant must provide a figure description describing each point of view of the reproductions.
The following statements in the descriptions of the reproductions confuses the scope of the claimed design:
“No claim is made for the colours shown in the reproductions” should be deleted as the statement attempts to disclaim. A disclaimer statement directed to any portion of the claimed design that is shown in solid lines in the drawings is not permitted in the specification of an issued design patent. See MPEP 1503.01 section II. The design claim is limited to what is shown in the drawings.
“Shows the design with no illumination”, “one-sixth illuminated”, “two-thirds illuminated”, and “fully illuminated” should be deleted as describing functional and/or structural features of the design. Design patent applications are concerned solely with the ornamental appearance of an article of manufacture. The functional and/or structural features are of no concern in design cases, and are neither permitted nor required. Function and structure fall under the realm of utility patent applications. In re Carletti et al., 328 F.2d 1020, 140 USPQ 653 (CCPA 1964); Jones v. Progress Industries, Inc., 119 USPQ 92 (D.R.I. 1958).
Therefore, the examiner suggests amending the descriptions of the reproductions similar to:
-- 1.1 Bottom view of the Electronic Cigarette according to a first embodiment of my design;
1.2 Top view thereof;
1.3 Front view thereof;
1.4 Bottom, front perspective view thereof;
1.5 Top, front perspective view thereof;
1.6 Top, rear perspective view thereof;
1.7 Rear view thereof;
1.8 Left side view thereof;
1.9 Right side view thereof;
1.10 Rear perspective view thereof;
1.11 Front perspective view thereof;
2.1 Front perspective view of the Electronic Cigarette according to a second embodiment of my design, shown in an illuminated configuration of use;
2.2 Another front perspective view thereof, shown in an illuminated alternate configuration of use;
2.3 Bottom view thereof;
2.4 Top view thereof;
2.5 Front view thereof;
2.6 Rear view thereof;
2.7 Enlarged front view, shown in an illuminated configuration of use;
2.8 Bottom, front perspective view thereof, shown in an illuminated configuration of use;
2.9 Left side view thereof;
2.10 Right side view thereof;
2.11 Enlarged front view, shown in an illuminated alternate configuration of use;
2.12 Enlarged front view, shown in an illuminated alternate configuration of use;
The disclosure does not provide certainty as to the exact scope of the claimed design without resorting to conjecture because “Enlarged views” Figs. 2.7, 2.11, 2.12 have no reference associated with the views and the views are not clearly associated with any other views due to the changes in size and appearance. Therefore, it is unclear exactly which views they may be associated with, if any. Applicant may attempt to overcome this portion of the refusal by clearly associating the enlarged views with originating views. Alternatively, applicant may consider canceling Figs. 2.7, 2.11, 2.12.
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The disclosure does not provide certainty as to the exact appearance and three-dimensional configuration of the portions within the top and bottom “oval-shaped” openings, and shown pointed to below within the dotted line annotations (colored white for clarity) in Figs. 1.1, 1.2, 1.4, 1.5, 1.7, 1.10, 2.3, 2.4, and 2.6 without resorting to conjecture. Applicant may attempt to overcome this portion of the refusal by indicating that protection is not sought for the indefinite elements by amending the reproductions to color wash or convert the elements to broken lines, thus disclaiming those surfaces. See 37 C.F.R. 1.1026 and Hague Administrative Instructions Section 403.
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Computer generated images of the type submitted by applicant are considered photographs for purposes of design examination. Therefore, applicant may overcome this rejection by either color-washing or by changing the tonal value of the unclaimed areas with broken lines separating the claimed and unclaimed portions of the disclosure. Below is an example illustrating this technique of disclaiming portions of a claimed design.
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Applicant should review the following considerations that must be met when utilizing the above technique as a means of “disclaiming”.
1. The images submitted must be made from digital photographs or digitally scanned photographs.
2. The image needs to be large enough to appreciate the design.
3. The contrast of appearance between the claimed and non-claimed portions should be absolutely clear.
In order to achieve this clarity, a coarse dot pattern image filter should be used over the portion of the photo illustrating the portions that form no part of the claim. Then, the (light/dark) contrast should be reduced and the brightness should be increased. In addition, there should be a dashed broken line following the perimeter of areas of the article that embody no part of the claimed design.
The examiner will determine whether sufficient distinction between claimed and non-claimed areas has been achieved. Claimed subject matter MUST remain consistent throughout ALL views.
4. An appropriate Descriptive Statement must be included. For the attached image, a statement similar to the following would be acceptable:
"The lightened part of the photograph shown in a coarser dot pattern within the broken-line perimeter, illustrates a portion of the tractor that forms no part of the claimed design."
A photo showing the details in the unclaimed areas may be filed as an appendix but should not be included in the specification. No images from the appendix will be printed in or otherwise incorporated into the claim of a patent that would result from the application.
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.
Conclusion
The claim stands refused under 35 U.S.C. 112(a) and (b) as set forth above.
The prior art made of record and not relied upon is considered pertinent to applicant’s disclosure. The additionally cited references show the state of the 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.
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 nick.buffa@uspto.gov to arrange a time and date for the telephone interview. Please include proposed days and times for the proposed call. 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
/NJB/
Examiner, Art Unit 2932
/BAO-YEN T NGUYEN/Primary Examiner, Art Unit 2954