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 .
Foreign Priority
The claim to priority to EUIPO Application Serial No. 015086278-0011, filed with the European Union Intellectual Property Office on December 23, 2024 is acknowledged. A copy of the foreign priority document has been received with the application and is accepted.
Restriction Not Required
As understood, this application contains the following embodiments:
Embodiment 1 – Figs. 1.1-1.7 (shoe for right foot)
Embodiment 2 – described but not shown (shoe for left foot)
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. The mirroring of one shoe for use on the opposing side foot is an obvious variation between embodiments. 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.
Objections to the Specification
The statement directly following the figure descriptions is objected to for unclear descriptions. The examiner believes the statement indicates that the left shoe, which is a mirror image of the right shoe shown, forms a part of the claimed design as another embodiment. However, the wording used is vague and unclear. Furthermore, the design of the present invention is a unitary thing and all of its portions are material, thus there can be no “unclaimed” or “disclaimed” parts of the claimed design described within a broken line statement. See In re Blum 153 USPQ 177 (1967). The examiner suggests amending the feature statement to read as follows:
-- The characteristic features of the design lie in the shape of the shoe as shown in the representations; the various views of the design show only the right shoe; the left shoe is not shown as it is symmetrical to the right one and is also claimed; in the representations, dotted lines indicate parts for which protection is not claimed, while parts for which protection is claimed are represented by solid lines. --
Rejection under 35 U.S.C. 112, (a) and (b)
The claim is rejected under 35 U.S.C. 112 (a) and (b) or 35 U.S.C. 112, first and second paragraphs, (pre-AIA ), 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 claim is indefinite and nonenabling because the shape, appearance, and description of the design are unclear due to inconsistent disclosure of the claimed design as currently depicted. Specifically, the following are noted:
The component attaching the footwear ornament to the strap is shown to be disclaimed in broken line in Figure 1.1, while the remaining figures claim this feature in solid line. The scope cannot be determined as presented. See below.
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While it is understood that portions of the claimed strap should be visible from the bottom view of Figure 1.7, the innermost line would not represent a claimed portion of the strap as presently shown. The unclaimed shoe upper would obscure the innermost tapering edge of the strap when compared to the top view of Figure 1.6. See below.
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While the application contains drawings of the invention in multiple views, the inconsistencies in the different figures present confusing and contradictory conditions that require the examiner to rely on conjecture to understand the intention of the applicant.
Those portions of the design that are inconsistently depicted may be made consistent in order to overcome that portion of the rejection.
The drawings must consistently depict the claimed design.
Correction of the drawing is suggested.
When preparing new or replacement drawings, be careful to avoid introducing new matter. New matter is prohibited by 35 U.S.C. 132 and 37 CFR 1.121(f).
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.” Each drawing sheet submitted after the filing date of an application must be labeled in the top margin as either “Replacement Sheet” or “New Sheet” pursuant to 37 CFR 1.121(d). 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.
Summation
The references are cited as cumulative art, but are not applied other than as noted above.
The claim stands rejected for the reasons set forth above.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Molly K Orzechowski whose telephone number is (571)272-1605. The examiner can normally be reached Monday through Friday from 8:30AM to 5:00PM.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Michelle Wilson, can be reached at telephone number (571)272-7639. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/MOLLY K. ORZECHOWSKI/Examiner, Art Unit 2912
/MICHELLE E. WILSON/Supervisory Patent Examiner, Art Unit 2912
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