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 .
DETAILED ACTION
Claim Refusal – 35 U.S.C. § 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.
For the following reasons, one of skill in the art must necessarily resort to conjecture to determine the appearance of the claim:
A. The horizontal band on the back of the bag, shown in reproduction 1.3, has not been definitely described by the single view in which it is shown. This horizontal band appears to lie on top of the vertical straps in 1.3, but 1.2 and 1.4-1.7 do not corroborate this appearance. Due to a lack of description of the three-dimensional appearance of this horizontal band, one of skill in the art must resort to conjecture in order to determine its location. See the area highlighted in gray and pointed to below:
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Applicant is cautioned that if the location of a surface is not evident from the disclosure as filed, the introduction of additional views of those surfaces after filing may comprise new matter (37 CFR 1.152(II)).
It may be possible to overcome this point of rejection by converting the indefinite portions highlighted in gray above to broken lines and amending the specification to include a statement that the portions of the article shown in broken lines form no part of the claimed design.
B. It is unclear how reproductions 1.1 and 1.2 combine with reproductions 1.6 and 1.7 to form one definite claimed appearance. Specifically, 1.1 and 1.2 show a square pocket on the front of the bag with a horizontal piece of trim on the top edge. In 1.1, this pocket and its trim are shown with a thickness that protrudes off the front surface of the bag; the trim being thicker than the pocket surface itself. These thicknesses are not shown in 1.6 and 1.7. Since one definite appearance of the thickness of the pocket and its trim have not been shown, one of skill in the art must resort to conjecture in order to determine the appearance of the claimed design. See below:
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C. Reproduction 1.1 is inconsistent with reproductions 1.4 and 1.5. A solid horizontal line is shown on the surface of the side of the bag in 1.4 and 1.5 that is not shown in 1.1. As both 1.4 and 1.5 are described as “side view”, not specifying which side such as right or left, and they are identical drawings, it is not possible to determine if 1.4 or 1.5 shows the same side of the bag that is shown in 1.1. It is, however, understood that the sides are identical. Therefore it is unclear how the appearance of the side shown in 1.1 combines with what is shown in 1.4 and 1.5 to form one definite claimed appearance. One of skill in the art must resort to conjecture in order to determine the appearance of the side because 1.1 is lacking a solid, structural line that is shown in 1.4 and 1.5. See below:
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It may be possible to overcome this portion of the rejection by amending reproduction 1.1 to consistently show the solid horizontal line pointed to above in 1.4.
The corrected drawings must not contain new matter (37 CFR 1.121, 35 USC 112(a)).
Applicant is advised that all of the preceding issues must be addressed to overcome this rejection, without the introduction of anything that was not shown in the original disclosure (i.e. new matter), either by the addition or removal of features of the claimed design.
New matter is anything (structure, features, elements) which was not shown in the drawings as originally filed. It is possible for new matter to consist of the removal as well as the addition of structure, features or elements. Further, the clarification of drawings with poor line quality can introduce new matter.
Failure to submit replacement correction sheets overcoming all of the deficiencies in the drawing disclosure set forth above, or an explanation why the drawing corrections or additional drawing views are not necessary will result in the rejection of the claim under 35 U.S.C. 112(a) and (b) or pre-AIA 35 U.S.C. 112, first and second paragraphs, being made FINAL in the next Office action.
Certain portions of the claim may be indefinite, so the design is not fully enabled. Applicant may be able to exclude indefinite portions of the design from the claim by converting them to broken lines, so long as the amendment meets the written description requirement of 35 USC112 (a). It must be apparent that applicant was in possession of the amended design at the time of original filing; otherwise, applicant must provide evidence of that possession.
A response is required in reply to the Office action to avoid abandonment of the application. If corrected drawings are submitted in response to the Office action, they must be in compliance with 37 CFR 1.121 (d).
Conclusion
Accordingly, the claim is rejected under 35 U.S.C. 112(a) and (b).
The references cited but not applied are considered cumulative art related to the claimed design.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Samantha L Brodowski whose telephone number is (571)272-9142. The examiner can normally be reached Monday-Friday, 8:30 AM-5:00 PM.
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, 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.
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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, 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 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
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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/ patent/forms/forms-patent-applications-filed-or-after-september-16-2012, 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 web page indicated above). See MPEP § 405. For acceptable ways to submit forms to the USPTO, see "When Responding to Official USPTO Correspondence" below.
When Responding to Official USPTO Correspondence
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/apply
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/maintain/responding-office-actions
/SAMANTHA LYNNE BRODOWSKI/Examiner, Art Unit 2913
Prosecution Insights