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 .
Comment to Amendments/Remarks
Applicant’s amendments filed on 6/30/2026 have been reviewed and considered. It is the examiner’s position that while the prior rejection of record under 35 USC § 112(a) and (b) was overcome by the amendments, the claim is FINALLY REJECTED under 35 U.S.C. 112(a) as the applicant’s amendment has added new matter to the claim. Applicant’s amendments introduce new matter into the disclosure which necessitate the new grounds of rejection. MPEP 706.07(a)
REFUSAL
Claim Rejection - 35 USC § 112 (a)
The claim is FINALLY rejected under 35 U.S.C. 112(a) as failing to comply with the description requirement thereof since the replacement drawing set is not supported by the original disclosure. 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).
A change in the configuration of the claimed design is considered a departure from the original disclosure and introduces prohibited new matter (37 CFR 1.121(f)). See In re Salmon, 705 F.2d 1579, 217 USPQ 981 (Fed. Cir. 1983).
This includes the removal or addition of three-dimensional surface treatment that is an integral part of the configuration of the claimed design, for example, beading, grooves, and ribs. The configuration revealed by such an amendment would not be apparent in the application as filed and, therefore, it could not be established that applicant was in possession of this amended configuration at the time the application was filed.
“Adequate description of the invention guards against the inventor's overreaching by insisting that he recount his invention in such detail that his future claims can be determined to be encompassed within his original creation.” Vas-Cath, Inc. v. Mahurkar, 935 F.2d 1555, 19 USPQ2d 1111 (Fed. Cir. 1991)
(‘The [written description] inquiry is simply to determine whether the inventor had possession at the earlier date of what was claimed at the later date.' ).”; In re Owens, 106 USPQ2d 1248 (CAFC 2013).
Therefore, the particular overall appearance of the design now claimed, is considered to be a change in configuration not supported by the original disclosure in the manner required by the first paragraph of 35 USC 112. Applicant was not in possession of the design now claimed, as the design now claimed is not recognizable in the original design, to the exclusion of other designs (i.e. the design now claimed was not disclosed at the time of filing), and as the design now claimed was not explicitly described in the parent application.
Specifically, there is no support in the original disclosure for the following.
The appearance created by the introduction of a thickness shown in the side views in FIGS. 1.3-1.5 was not described in the original disclosure, because the original disclosure showed only the front and rear views of the design.
Replacement Drawing Information
Any corrected reproductions submitted in response to this Office action must be in compliance with 37 CFR 1.121(d). The corrected reproductions must not contain new matter. 35 USC 132 and 37 CFR 1.121.
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.
Refusal 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 Applicant. If Applicant is a juristic entity, the reply must be signed by a patent practitioner. See 37 CFR 1.33(b).
Conclusion and Contact Information
THIS ACTION IS MADE FINAL. The claim is finally rejected under 35 U.S.C. § 112(a). 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.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Justin Johnson whose telephone number is (571) 272-5730. The examiner can normally be reached Monday-Friday at 8:00 a.m. to 4:00 p.m. 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, George Bugg, can be reached at (571) 272-2998. 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.
/JUSTIN A JOHNSON/
Examiner, Art Unit 2911
Prosecution Insights