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 .
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).
Applicant’s Response
Acknowledgement is here made of Applicant’s Remarks and Amendment of 06/10/2026. The merits of the application have been carefully reconsidered in view of Applicant’s Remarks and Amendment of 06/10/2026.
Claim Refusal - 35 USC § 112(a) and (b)
The remarks and amendment of 06/10/2026 presented by the Applicant have been carefully considered, and are sufficient to overcome the refusal of the claim under 35 U.S.C. § 112(a) and (b), set forth in the previous action. The amended reproductions do not meet the description requirement as new matter has been introduced in the amended reproductions.
Therefore, the claim is again refused, and is made final. See Final Refusal under 35 USC 112(a) below.
Claim Refusal - 35 USC 112(a) - FINAL
The claim is finally refused under 35 U.S.C. 112(a), as failing to comply with the description requirement. 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).
Applicant has amended the drawings to add oblique shading and remove a linear feature on the underside of the bird. This creates a new design that was not described in the original disclosure. An ordinary designer would not recognize, nor predict, upon reviewing the complete original disclosure, that the later-claimed design might be formed by adding oblique shading or removing arbitrary portions of the original design. Examples of oblique shading are highlighted on the diagram below.
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Oblique shading could easily be confused as a shiny surface, not just shading for a flat surface. If the lines are intended to be used to show contours, they should be described in the specification so that new matter is not introduced since the oblique lines are not included in the original disclosure. Examiner suggests the following statement, following the description of the reproductions:
--The surface shading is used to depict the contours of the design and does not represent specific material or surface treatment. –
Furthermore, Reproduction 1.1 shows a linear feature on the belly of the bird. This linear feature does not appear in the amended reproductions. Therefore, it is considered new matter. See diagram below which highlights this feature.
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Conclusion
The claim is finally rejected under 35 U.S.C. § 112(a), as set forth above.
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. 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.
Notes on Correspondence
Discussion of the Merits of the Application
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 or has at least one party which has a domicile that is not located within the United States or its territories, the reply must be signed by a patent practitioner. See 37 CFR 1.33(b).
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 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 or has at least one party which has a domicile that is not located within the United States, or its territories 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 www.uspto.gov/PatentForms, 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 webpage 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 sarah.ault@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 contact information section 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
When responding to official correspondence issued by the USPTO, including a notification of
refusal, please note the following:
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-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
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.
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.
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.
/SA/Examiner, Art Unit 2913
/IAN SIMMONS/Supervisory Patent Examiner, Art Unit 2913
