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 .
Specification Objection
The Claim is objectionable because it is directed to more than one article of manufacture. Specifically, the title of the claimed design is “JEWELLERY”. Considered a non-countable word, jewelry can be singular or plural. 35 U.S.C. 171 requires the design to be directed to “an article of manufacture.” 35 U.S.C. 171 states:
IN GENERAL.—Whoever invents any new, original, and ornamental design for an article of manufacture may obtain a patent therefor, subject to the conditions and requirements of this title.
Therefore, the title must be in the singular form, not plural. For proper description, clarity, and to accurately indicate the article being claimed in accordance with 35 USC 171 the title must be amended, at each occurrence throughout the application, original oath or declaration excepted, to read Article of Jewelry, Jewelry Item, or something similar.
Furthermore, the descriptions of the reproductions are objectionable. Specifically, the use of “Fig.” does not adhere to the Hague numbering outlined in Administrative Instruction 405. Figure numbering requirements for international design applications are different from figure numbering requirements for design applications filed under 35 U.S.C. chapter 16. Pursuant to Administrative Instruction 405, "[w]hen the same industrial design is represented from different angles, the numbering shall consist 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)." Therefore, in order to overcome this objection, the descriptions for the reproductions must be amended to remove the “Fig.” from each description.
Claim Refusal – 35 U.S.C. 112(b)
The claim is refused for failing to particularly point out and distinctly claim the invention as required in 35 U.S.C. 112(b). The claim is indefinite because the drawings include, in Reproduction 1.3, broken lines that are not described in the specification. Thus, the scope of the claimed design cannot be determined.
Broken lines are most commonly used for two purposes: 1) to disclose the environment related to the claimed design, or 2) to define the bounds of the claim (MPEP 1503.02 (III)).
The term environment includes portions of the design and environmental structure. While portions are descriptive of actual parts of the article of manufacture (designated by the title of the design), environmental structure is descriptive of subject matter beyond the article embodying the design.
Broken lines used as boundaries define unshaded regions and are normally understood to represent claim limitations.
Since broken lines may mean different things in different circumstances, it must be made clear in each design case what they mean, else the claim is bad for indefiniteness under 35 U.S.C. 112 (In re Blum 153 USPQ 177 (1967)). It appears that the Applicant's intent is that the broken lines illustrate environmental structure. Therefore, in order to clarify the relationship of the broken line subject matter to the solid line of the claim, the broken line description should be amended as follows (MPEP § 1503.02, (III)):
-- The broken lines shown in the drawings illustrate environmental structure and form no part of the claim. --
Furthermore, the broken lines shown only in Reproduction 1.3 must also be clarified in the description of the reproduction so that there is no confusion as to the embodiment claimed. It is the Examiner’s understanding that Reproduction 1.3 is intended to show the claim in environment, and that Applicant does not intend to include a second embodiment. Therefore, for clarity, the description for Reproduction 1.3 should be amended to read:
--1.3 perspective view of claim shown in environment;--
Should the Applicant intend to show the claim as a second embodiment in 1.3, a Restriction/Election action will be forthcoming.
Claim Rejection – 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 regards as the invention.
The claim is indefinite and non-enabling because the exact and complete appearance of the Jewellery cannot be determined because of the following reasons:
The side opening in Reproduction 1.5 is shown inconsistently. Reproductions 1.1 and 1.6 show the opening on the opposite side of the jewellery. See diagram below which highlights this inconsistency.
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Reproduction 1.1 shows edges in the side opening having a tilted angle, with a triangular cross-section. These edges and cross-sectional shape are not consistent with Reproductions 1.3, 1.4 and 1.5. See diagram below which highlights the tilted edges and triangular cross-section.
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Reproductions 1.3, 1.4, and 1.5 show a straight, not tilted, edge and a square/rectangular cross section. See Diagrams below.
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Conclusion
The Claim stands refused under 35 U.S.C. 112(a) and (b). The references cited but not applied are considered cumulative art related to the claimed design.
Contact Information
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Sarah Ault whose telephone number is (571)272-9278. The examiner can normally be reached on Monday-Friday from 8:00am to 2:00pm EST.
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.
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/SA/Examiner, Art Unit 2913
/IAN SIMMONS/Supervisory Patent Examiner, Art Unit 2913