NON-FINAL REJECTION
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 .
Priority Claims
Applicant has not met the requirements of 35 USC 119(a) and (b)(3), which requires the priority claim to be based on a prior filing of the same design, along with submission of a certified copy of each foreign application upon which the priority claim is based. To obtain priority under 35 USC 119, applicant must submit a certified copy of the foreign application.
Restriction Not Required
This application contains the following embodiments:
Embodiment 1 - Reproductions 1.1-1.6 (closed state)Embodiment 2 - Reproductions 2.1-2.6 (open state)
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 visually similar. 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. In this case, the second design (2.1-2.6) shows the exact same article but shown in an open state. Accordingly, they are deemed to be obvious variations and are being retained and examined in the same application. However, reproductions 2.1-2.6 do disclose internal elements that are not being claimed in reproductions 1.1-1.6, therefore a restriction can be granted if applicant wants the designs separate.
Specification
The specification is objected to for the following reasons:
There are multiple inventors listed for the claimed design. For proper form (37 CFR 1.153), the claim must be amended to read:
--We claim: the ornamental design for a Dental Instrument Case, as shown and described.--
35 USC 112 (a) and (b)
The claim is 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 claimed invention is indefinite and nonenabling for the following reasons:
Applicant has chosen to use wire-frame style drawings. However, only reproductions 1.1 and 2.1 show the wire-frame lines, resulting in a confusing disclosure. For example, reproduction 1.1 shows the wire frame lines (indicated below) that are not seen in reproduction 1.2, and reproduction 2.1 shows wire-frame lines on the article that are not seen in reproduction 2.3. If applicant uses a wire-frame drawing style, then all reproductions must be drawn using such style; otherwise, applicant must remove all wire frame lines and replace them with surface shade lines complying with 37 CFR § 1.84(m). Consistency is required.
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820
1976
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707
1739
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619
1768
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The scope of the claim is unclear. Specifically, the exact depth and three-dimensional shape of the claimed elements through the indicated small holes on the bottom of the article (indicated below) in reproductions 1.6 and 2.6 are not clearly disclosed. As currently disclosed it would be impossible for one skilled in the art to make and use the design without resort to conjecture.
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589
925
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Applicant may overcome this refusal by amending reproductions 1.6 and 2.6 to reduce the solid lines inside the small holes on the bottom of the article to broken line removing them from the claim. Accordingly, the following broken line statement must be added to the specification immediately preceding the claim:
--The broken lines depict portions of the article that form no part of the claimed design.--
The scope of the claim is unclear. Specifically, the exact depth and three-dimensional shape of inside the two half circle recesses on the indicated surface of the article (indicated below) in reproductions 2.1 and 2.5 are not clearly disclosed. As currently disclosed it would be impossible for one skilled in the art to make and use the design without resort to conjecture.
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Applicant may overcome this refusal by amending reproductions 2.1 and 2.5 to reduce the inside of the two half circle recesses to broken line removing them from the claim.
Reproductions 2.2 and 2.6 are inconsistent with the other views. Reproductions 2.2 and 2.6 are missing the solid line edges on the interior in reproduction 2.2. and the top of the article in reproduction 2.6 (indicated below) which are seen in the other views. Consistency is required.
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824
1895
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695
1021
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The scope of the claim is unclear. Specifically, the exact three-dimensional shape and configuration of the indicated elements on the article (indicated below) in reproduction 2.2 are not clearly disclosed. As currently disclosed it would be impossible for one skilled in the art to make and use the design without resort to conjecture.
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1014
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Applicant may overcome this refusal by amending reproduction 2.2 to reduce the indicated elements to broken line removing them from the claim, or by clearly and consistently showing the indicated elements.
The scope of the claim is unclear. Specifically, the exact three-dimensional shape and configuration of the indicated elements on the article (indicated below) in reproduction 2.5 are not clearly disclosed. As currently disclosed it would be impossible for one skilled in the art to make and use the design without resort to conjecture.
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773
1011
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Applicant may overcome this refusal by amending reproduction 2.5 to reduce the indicated elements to broken line removing them from the claim, or by clearly and consistently showing the indicated elements.
Reproductions 2.3-2.6 are inconsistent with the other views. Reproductions 2.3-2.6 show thicker solid black areas/portions of the article (indicated below) which are not seen in the other views. Consistency is required.
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1080
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643
1051
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197
985
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Reproduction 2.5 is inconsistent with reproduction 2.1. Reproduction 2.1 shows two solid lines forming the round shape of the multiple elements inside the article (indicated below) while reproduction 2.5 shows one solid line. Consistency is required.
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504
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The scope of the claim is unclear. Specifically, the exact depth and three-dimensional shape of the interior of the multiple round elements on the inside of the article (indicated below) in reproductions 2.1 and 2.5 are not clearly disclosed. The small size and poor quality of the reproductions make the depth and shape unknown. As currently disclosed it would be impossible for one skilled in the art to make and use the design without resort to conjecture.
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Applicant may overcome this refusal by amending reproductions 2.1 and 2.5 to reduce the interior of the multiple round elements to broken line removing them it the claim, or by clearly and consistently showing the interior of the elements.
Because of the inconsistencies, and insufficient information in the reproductions provided, the claimed design is in fact subject to multiple interpretations, and one of ordinary skill in the art would not be able to reproduce the design without the use of conjecture. This renders the claim indefinite and non-enabled. In order to overcome this refusal, it is suggested that the design be shown clearly and consistently among the views. However, care must be taken to not introduce new matter. It must be apparent that applicant was in possession of the amended design at the time of original filing. When preparing new or replacement reproductions, be careful to avoid introducing new matter. New matter is prohibited by 35 U.S.C. 132 and 37 CFR 1.121(f).
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 Steven.czyz@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 last paragraph 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 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
Conclusion
The claim stands rejected under 35 U.S.C. 112 (a) and (b).
The references are cited as pertinent prior art. Applicant may view and obtain copies of the cited references by visiting http://www.uspto.gov/patft/index.html and pressing the “Patent Number Search” button.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to STEVEN CZYZ whose telephone number is (571)270-0204. The examiner can normally be reached on Monday to Friday.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Ian Simmons can be reached on 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.
/STEVEN J CZYZ/Primary Examiner, Art Unit 2913
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