The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
This application has been examined with the following effect set forth herein under.
This application contains the following embodiments:
Embodiment 1 - Figs. 1.1-1.8
Embodiment 2 - Figs. 2.1-2.8
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.
This application has been examined the following effect set forth herein under in the interest of compact prosecution.
Any analysis for compliance with 35 U.S.C. 112 should begin with a determination of the scope of protection sought by the claims. See In re Moore, 439 F.2d 1232, 169 USPQ 236 (CCPA 1971). Therefore, before any determination can be made as to whether the disclosure meets the requirements of 35 U.S.C. 112(a) (or for applications filed prior to September 16, 2012, pre-AIA 35 U.S.C. 112, first paragraph), for enablement, a determination of whether the claims meet the requirements of 35 U.S.C. 112(b) (or for applications filed prior to September 16, 2012, pre-AIA 35 U.S.C. 112 , second paragraph) must be made. However, since the drawing disclosure and any narrative description in the specification are incorporated into the claim by the use of the language "as shown and described," any determination of the scope of protection sought by the claim is also a determination of the subject matter that must be enabled by the disclosure. Hence, if the appearance and shape or configuration of the design for which protection is sought cannot be determined or understood due to an inadequate visual disclosure, then the claim, which incorporates the visual disclosure violates 35 U.S.C. 112(b) or (pre-AIA 35 U.S.C. 112, second paragraph, because it 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. Furthermore, such disclosure fails to enable a designer of ordinary skill in the art to make an article having the shape and appearance of the design for which protection is sought. In such case, a rejection of the claim under both 35 U.S.C. 112(a) and (b) (or for applications filed prior to September 16, 2012, the first and second paragraphs of pre-AIA 35 U.S.C. 112 ) would be warranted.
Some claimed designs are capable of being enabled and definite, as required by 35 U.S.C. 112, despite being visually disclosed using only a single plan- or planar-view. For example, compliance with 35 U.S.C. 112 was at issue in In re Maatita, 900 F.3d 1369, 127 USPQ2d 1640 (Fed. Cir. 2018), where a design for a shoe bottom was disclosed using only a two-dimensional, plan-view. The Federal Circuit stated that "where the sufficiency of a disclosure for purposes of [35 U.S.C.] § 112 depends on whether a drawing adequately discloses the design of an article, we believe the level of detail required should be a function of whether the claimed design for the article is capable of being defined by a two-dimensional, plan- or planar-view illustration." Maatita, 900 F.3d at 1378. In its analysis, the Federal Circuit distinguished the design for a rug or a placemat from the design for an entire shoe or teapot, which is "inherently three-dimensional and could not be adequately disclosed with a single, plan- or planar-view drawing." Id. The Federal Circuit held that because the scope of the claimed shoe bottom design was capable of being understood from a single plan-view, the claim satisfied the enablement and definiteness requirements of 35 U.S.C. 112. Id. at 1378-9.
An evaluation of the scope of the claim under 35 U.S.C. 112(b) (or for applications filed prior to September 16, 2012, pre-AIA 35 U.S.C. 112, second paragraph), to determine whether the disclosure of the design meets the enablement requirement of 35 U.S.C. 112(a) or for applications filed prior to September 16, 2012, pre-AIA 35 U.S.C. 112, first paragraph, cannot be based on the drawings alone. The scope of a claimed design is understood to be limited to those surfaces or portions of the article shown in the drawing in full lines in combination with any additional written description in the specification. The title of the design identifies the article in which the design is embodied by the name generally known and used by the public and may contribute to defining the scope of the claim. See MPEP § 1503.01, subsection I. It is assumed that the claim has been crafted to protect that which the inventor or a joint inventor, or for applications subject to pre-AIA 35 U.S.C. 112, second paragraph, the applicant "regards as his invention." See In re Zahn, 617 F.2d 261, 204 USPQ 988 (CCPA 1980). Therefore, when visible portions of the article embodying the design are not shown, it is because they form no part of the claim to be protected. It is prima facie evidence that the scope of the claimed design is limited to those surfaces "as shown" in the application drawing(s) in the absence of any additional written disclosure. See MPEP § 1503.01, subsection II. "[T]he adequacy of the disclosure must be determined by reference to the scope asserted." See Philco Corp. v. Admiral Corp., 199 F. Supp. 797, 131 USPQ 413, 418 (D. Del. 1961). However, it should be understood that when a surface or portion of an article is disclosed in full lines in the drawing it is considered part of the claimed design and its shape and appearance must be clearly and accurately depicted in order to satisfy the requirements of 35 U.S.C. 112(a) and (b) (or for applications filed prior to September 16, 2012, the first and second paragraphs of pre-AIA 35 U.S.C. 112 ).
Only those surfaces of the article that are visible at the point of sale or during use must be disclosed to meet the requirement of 35 U.S.C. 112(a) and (b) (or for applications filed prior to September 16, 2012, pre-AIA 35 U.S.C. 112, first and second paragraphs). "The drawing should illustrate the design as it will appear to purchasers and users, since the appearance is the only thing that lends patentability to it under the design law." See Ex parte Kohler, 1905 C.D. 192, 192, 116 O.G. 1185, 1185 (Comm’r Pat. 1905). The lack of disclosure of those surfaces of the article which are hidden during sale or use does not violate the requirements of 35 U.S.C. 112(a) and (b) (or for applications filed prior to September 16, 2012, the first and second paragraphs of pre-AIA 35 U.S.C. 112 ) because the "patented ornamental design has no use other than its visual appearance...." See In re Harvey, 12 F.3d 1061, 1064, 29 USPQ2d 1206, 1208 (Fed. Cir. 1993). Therefore, to make the "visual appearance" of the design merely involves the reproduction of what is shown in the drawings; it is not necessary that the functionality of the article be reproduced as this is not claimed. In essence, the function of a design is "that its appearance adds attractiveness, and hence commercial value, to the article embodying it." See Ex parte Cady, 1916 C.D. 57, 61, 232 O.G. 619, 621 (Comm’r Pat. 1916).
The undisclosed surfaces not seen during sale or use are not required to be described in the specification even though the title of the design is directed to the complete article because the design is embodied only in those surfaces which are visible. See Ex parte Salsbury, 38 USPQ 149, 1938 C.D. 6 (Comm’r Pat. 1938). While it is not necessary to show in the drawing those visible surfaces that are flat and devoid of surface ornamentation, they should be described in the specification by way of a descriptive statement if they are considered part of the claimed design. See Ex parte Salsbury, 38 USPQ 149, 1938 C.D. 6 (Comm’r Pat. 1938). Such descriptive statement may not be used to describe visible surfaces which include structure that is clearly not flat. See Philco Corp. v. Admiral Corp., 199 F. Supp. 797, 131 USPQ 413 (D. Del. 1961). See also MPEP § 1503.02.
Applications filed in which the title (in the claim) defines an entire article but the drawings and the specification fail to disclose portions or surfaces of the article that would be visible either during use or on sale, will not be considered to violate the requirements of 35 U.S.C. 112(a) and (b) (or for applications filed prior to September 16, 2012, the first and second paragraphs of pre-AIA 35 U.S.C. 112 ). Therefore, amendment to the title will not be required in such applications. However, examiners should include a statement in the first Office action on the merits (including a notice of allowability) indicating that the surface(s) or portion(s) of the article that would be normally visible but are not shown in the drawing or described in the specification are understood to form no part of the claimed design and therefore, the determination of patentability of the claimed design is based on the views of the article shown in the drawing and the description in the specification. Form paragraph 15.85 may be used for this purpose.
When a claim is rejected under 35 U.S.C. 112(a) and (b) (or for applications filed prior to September 16, 2012, pre-AIA 35 U.S.C. 112, first and second paragraphs), as nonenabling and indefinite due to an insufficient drawing disclosure, examiners must specifically identify in the Office action what the deficiencies are in the drawing. A mere statement that the claim is nonenabling and indefinite due to the poor quality of the drawing is not a sufficient explanation of the deficiencies in the drawing disclosure. Rather, examiners must specifically point out those portions of the drawing that are insufficient to permit an understanding of the shape and appearance of the design claimed, and, if possible, suggest how the rejection may be overcome. Form paragraphs 15.21 and 15.20.02 may be used.
When inconsistencies between the views of the drawings are so great that the overall appearance of the design is unclear, the claim should be rejected under 35 U.S.C. 112(a) and (b) (or for applications filed prior to September 16, 2012, pre-AIA 35 U.S.C. 112, first and second paragraphs), as nonenabling and indefinite, and the rejection should specifically identify all of the inconsistencies between the views of the drawing. Otherwise, inconsistencies between drawing views will be objected to by the examiner and correction required by the applicant. See MPEP § 1503.02.
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If the visual disclosure of the claimed design as originally filed is of such poor quality that its overall shape and appearance cannot be understood, applicant should be advised that the claim might be fatally defective by using form paragraph 15.65.
As indicated above, a narrative description in the specification can supplement the drawing disclosure to define the scope of protection sought by the claim. Furthermore, such description is incorporated into the claim by the use of the language "and described" therein. However, if a description in the specification refers to embodiments or modified forms not shown in the drawing, or includes vague and nondescriptive words such as "variations" and "equivalents," or a statement indicating that the claimed design is not limited to the exact shape and appearance shown in the drawing, the claim should be rejected under 35 U.S.C. 112(a) and (b) (or for applications filed prior to September 16, 2012, pre-AIA 35 U.S.C. 112, first and second paragraphs), as nonenabling and indefinite. The reason being the description fails to enable a designer of ordinary skill in the art to make an article having the shape and appearance of those other embodiments, modified forms or "variations" and "equivalents" referred to in the description in the absence of additional drawing views. Furthermore, in the absence of additional drawing views, the description, which is incorporated into the claim, fails to particularly point out and distinctly claim the shape and appearance of those other embodiments, modified forms or "variations" and "equivalents" that inventor or a joint inventor (or, for applications subject to pre-AIA 35 U.S.C. 112, second paragraph, the applicant) regards as his or her invention. Form paragraph 15.21 may be used to reject a claim for the above reasons.
The claim is rejected under 35 U.S.C. 112, paragraphs 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 applicant regards as the invention.
The onus is on the applicant to make sure that the drawing is disclosure is clear and consistent. In this regard, the claim is indefinite and non-enabling due to the manner or method in which applicant has chosen to present the disclosure. This manner or method has resulted in a disclosure that exhibits multiple surface areas throughout the disclosure in which the surface shape and or configuration of the claimed design has not been disclosed in an enabling and definitive manner because of applicant’s employment of lines which are very light and could even be described as “faded”.
Disclosing what applicant seeks to protect via a design patent, is detrimental to understanding all the claimed surface areas that applicant is attempting to claim. Those attempts to claim surfaces by applicant that are not clearly and definitively understood via their shapes and configuration, renders this claim’s disclosure non-enabling and indefinite.
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These concerns inhibit a ready understanding of all surfaces claimed. Thus the exact surface configuration cannot be understood even after an extensive examination from view to view. This is just an example and there maybe other areas of concern shown in the disclosure as filed. …we employ a lower threshold of ambiguity when reviewing a pending claim for indefiniteness than those used by post-issuance reviewing courts. In particular, rather than requiring that the claims are insolubly ambiguous, we hold that if a claim is amenable to two or more plausible claim constructions, the USPTO is justified in requiring the applicant to more precisely define the metes and bounds of the claimed invention by holding the claim unpatentable under 35 U.S.C. § 112, second paragraph, as indefinite.
Ex parte Miyazaki, 89 USPQ2d 1207 (Bd. Pat. App. & Int. 2008)
The design of an article consists of the visual characteristics or aspect displayed by the article. It is the appearance presented by the article, which creates an impression through the eye upon the mind of the observer. After reviewing this disclosure, at best, the observer would have a very difficult time understanding these visual characteristics.
The necessity for an understandable disclosure in a design patent application cannot be overemphasized. As the disclosure constitutes the claim, it is of utmost importance that it is so well executed both as to clarity of showing and completeness that nothing regarding the design sought to be patented is left to conjecture. An insufficient drawing may be fatal to validity (35 U.S.C. 112, paragraph A). Moreover, an insufficient drawing may have a negative effect with respect to the effective filing date of a continuing application.
In a design patent application, the subject matter which is claimed is the design embodied in or applied to an article of manufacture (or portion thereof) and not the article itself. Ex parte Cady, 1916 C.D. 62, 232 O.G. 621 (Comm’r Pat. 1916). “[35 U.S.C.] 171 refers, not to the design of an article, but to the design for an article, and is inclusive of ornamental designs of all kinds including surface ornamentation as well as configuration of goods.” In re Zahn, 617 F.2d 261, 204 USPQ 988 (CCPA 1980).
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The design for an article consists of the visual characteristics embodied in or applied to an article.
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Since a design is manifested in appearance, the subject matter of a design patent application may relate to the configuration or shape of an article, to the surface ornamentation applied to an article, or to the combination of configuration and surface ornamentation.
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Design is inseparable from the article to which it is applied and cannot exist alone merely as a scheme of surface ornamentation. It must be a definite, preconceived thing, capable of reproduction and not merely the chance result of a method.
Hence, if the scope of protection sought by the claim cannot be ascertained due to the lack of clarity of the appearance and shape/configuration of the claimed design in the drawing or the absence of descriptive language in the specification the claim must be rejected under 35 U.S.C. paragraphs A and B. That is, because of the ambiguities in the disclosure the scope of protection sought by the claim cannot be determined and therefore fails to particularly point out and distinctly claim the subject matter applicant regards as the invention. Furthermore, such ambiguities in the disclosure fail to enable a designer of ordinary skill in the art to reproduce the shape and appearance of the claimed design.
Applicant must provide a new disclosure absent the visual obstructions now present in the disclosure. A corrected disclosure is required in reply to the Office action to avoid abandonment of the application. 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. The replacement sheet(s) should be labeled “Replacement Sheet” in the page header (as per 37 CFR 1.84(c)) so as not to obstruct any portion of the drawing figures. 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.
If a drawing figure is canceled, a replacement sheet of figures must be submitted without the figure (see 37 CFR 1.121(d)). If the canceled drawing figure was the only figure on the sheet, then only a marked-up copy of the drawing sheet including an annotation showing that the figure has been cancelled is required. The marked-up (annotated) copy must be clearly labeled as ‘Annotated Sheet’ and must be presented in the amendment or remarks section of the amendment document which explains the changes to the drawings (see 37 CFR 1.121(d)(1). The brief description of the drawings should also be amended to reflect this change.
When preparing a new disclosure in compliance with the requirement therefor, care must be exercised to avoid introduction of anything which could be construed to be new matter prohibited by 35 U.S.C. 132 and 37 CFR 1.121. Applicant must be careful not to make alterations to the new or amended disclosure which cannot find antecedent bases in the original.
In view thereof and as set forth herein above, the claim is rejected under 35 U.S.C. 112, paragraphs 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 applicant regards as the invention, all as set forth herein above.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to ANTOINE D DAVIS whose telephone number is (571)272-2636. The examiner can normally be reached Mon-Fri 5:00 am - 5:00 pm flex between 12:00-2:30.
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, Krakower Susan can be reached on 571-272-4496. 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.
/Antoine D Davis/
Primary Examiner, Art Unit 2917
Tuesday, February 24, 2026