The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
OFFICE ACTION
Objections to the Drawings
1. The reproductions show areas of merging, blurry and jagged lines, making it difficult to decipher single lines from double lines and identify the exact design features of the article (see examiner’s annotated examples below). Reproductions shall be of a quality permitting all the details of the industrial design to be clearly distinguished and permitting publication, see MPEP 2909.02, 37 CFR 1.1026 and Hague Rule 9.
Correction of the drawings is required to illustrate ALL design features with crisp, clean, and clear lines
throughout the disclosure.
Applicant is advised that the annotated reproductions provided below are examples of areas of concern,
but are not limited to the areas shown. Applicant is reminded that the issues exist throughout all
reproductions.
PNG
media_image1.png
702
1376
media_image1.png
Greyscale
PNG
media_image2.png
786
1373
media_image2.png
Greyscale
2. The drawing disclosure of Reproductions 1.1, 1.9, 1.10 and 1.11 is objected to because parts of the solid lines appear to be missing (see highlighted corners), resulting in incomplete features. A comparison with corresponding areas throughout the drawing views indicates these are likely drafting errors. Correction is required.
PNG
media_image3.png
925
1510
media_image3.png
Greyscale
PNG
media_image4.png
1516
1160
media_image4.png
Greyscale
PNG
media_image5.png
848
1356
media_image5.png
Greyscale
Replacement Reproductions
Any amended replacement reproductions 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 reproduction should not be labeled as “amended.” If a reproduction 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 reproductions for consistency.
Additional replacement sheets may be necessary to show the renumbering of the remaining figures. If
all the figures on a drawing sheet are canceled, a replacement sheet is not required. A marked-up copy
of the reproduction sheet (labeled as “Annotated Sheet”) including an annotation showing that all the figures on that reproduction sheet have been canceled must be presented in the amendment or the remarks section that explains the change to the reproductions. Each reproduction 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. When preparing new or replacement reproductions, be careful to avoid introducing new matter, 35 U.S.C. 132 and 37 CFR 1.121(f). This pertains to either: the addition to, or the removal of, any elements shown in the originally disclosed design.
Objections to the Specification
1. The specification is objected to for including a paragraph that is overly descriptive containing extraneous information that describes functional features of the design adding no new information to the understanding of the claimed design (see MPEP 1503.02 (II)). Design patent applications are concerned solely with the ornamental appearance of an article of manufacture. The functional and/or structural features stressed by applicant in the papers are of no concern in design cases, and are neither permitted nor required. Function and structure fall under the realm of utility patent applications. In re Carletti et al., 328 F.2d 1020, 140 USPQ 653 (CCPA 1964); Jones v. Progress Industries, Inc., 119 USPQ 92 (D.R.I. 1958). Applicant is advised that any description of the design in the specification other than a brief description of the drawing is generally not necessary, since as a general rule, the illustration in the drawing views is its own best description (see MPEP § 1503.01 (II)).
Therefore, the last paragraph in the specification should be canceled:
[[
2. The use of trademarks in design patent application specifications is permitted under limited circumstances. See MPEP § 608.01 (v). This section assumes that the proposed use of a trademark is a legal use under federal trademark law. MPEP 1512(VI)(A). A mark as defined by 15 U.S.C. 1127 (i.e., trademark, service mark, collective mark, or certification mark) or trade name may be used in a patent application to identify an article or product, service, or organization if:
(A) its meaning is established by an accompanying definition in the specification which is sufficiently descriptive, enabling, precise and definite such that a claim including the mark or trade name complies with the requirements of 35 U.S.C. 112, or
(B) its meaning is well-known to one skilled in the relevant art and is satisfactorily defined in the literature.
The trademark “XKARBO” shown on the claimed design throughout the drawing views (see examiner’s annotation on next page), which form part of the claimed design, is possibly a registered trademark. The specification must be amended to include a statement preceding the claim identifying the trademark forming part of the claimed design and the name of the owner of the trademark. If the logo is not a registered trademark, a statement to that effect should be included in applicant’s response remarks in order to clarify the record.
Rejections under 35 USC § 112, (a) and (b)
The claim is rejected under 35 U.S.C. 112, (a) and (b) because the claimed invention is not described in such full, clear, concise and exact terms as to enable any person skilled in the art to which it pertains to make and use the same nor does it particularly point out and distinctly claim the subject matter which applicant regards as the invention.
The claim is indefinite and non-enabling for the following reasons:
1. The exact shapes, appearances, and locations of the interior claimed portions, shown shaded in gray through the ventilation perforations in FIGS. 1.1, 1.2, and 1.4-1.11 (shown by example in Reproductions 1.1, 1.2, 1.4, 1.5 and 1.6), cannot be understood. Even though they are shown throughout in different views, they are not disclosed sufficiently to give a full understanding of their exact shapes, appearances, and depth/location, and therefore, are left to conjecture.
PNG
media_image6.png
1105
1376
media_image6.png
Greyscale
PNG
media_image7.png
825
1460
media_image7.png
Greyscale
PNG
media_image8.png
1164
1683
media_image8.png
Greyscale
PNG
media_image9.png
836
1450
media_image9.png
Greyscale
PNG
media_image10.png
834
1456
media_image10.png
Greyscale
In an attempt to overcome this rejection, the applicant may convert claimed portions shown within the gray shaded areas (through the ventilation perforations) shown by example in Reproductions 1.1, 1.2, 1.4, 1.5 and 1.6, including all of the corresponding portions in Reproductions 1.7-1.11, to distinctly broken lines. In addition, a broken line statement preceding the claim should be added in the specification following the reproduction descriptions (e.g. “The broken lines in the drawings depict portions of the Portable Gas Grill that form no part of the claimed design.").
2. The exact shapes and appearances of the grey-shaded portions [A] and [B] shown in Reproductions 1.7 and 1.8 (shown by example in Reproduction 1.8) cannot be understood. Although these portions are shown somewhat in Reproduction 1.10, they are not disclosed sufficiently to provide a full understanding of their precise shapes and appearances; therefore, they are left to conjecture.
PNG
media_image11.png
1288
738
media_image11.png
Greyscale
PNG
media_image12.png
945
1153
media_image12.png
Greyscale
In an attempt to overcome this rejection, Applicant may convert gray-shaded claimed portions [A] and [B] shown in Reproductions 1.7 and 1.8 (shown by example in Reproduction 1.8), including the visible part of portion [B] in Reproduction 1.10, to distinctly broken lines.
Rejection under 35 USC § 102 (a)(1)
The following is a quotation of the appropriate paragraphs of 35 U.S.C. 102 that forms the basis for the rejections under this section made in this office action:
A person shall be entitled to a patent unless –
(a)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale or otherwise available to the public before the effective filing date of the claimed invention.
From what is understood of the claimed design, the claim is rejected under 35 U.S.C. 102(a)(1) as being clearly anticipated by Karbo Grill X1 published on YouTube.com at https://www.youtube.com/watch?v=68pX0ONPerI on 04/01/2024 (citation “U” page 1 on the attached PTO-892) because the cited reference was patented, described in a printed publication, or in public use, on sale or otherwise available to the public before the effective filing date of the claimed invention.
The appearance of the Karbo Grill X1 design, as shown, is substantially the same as that of the claimed design (see figures below). The ordinary observer test is the sole test for anticipation. International Seaway Trading Corp. v. Walgreens Corp., 589 F.3d 1233, 1237-38, 1240, 93 USPQ2d 1001 (Fed. Cir. 2009) and MPEP § 1504.02.
PNG
media_image13.png
750
597
media_image13.png
Greyscale
PNG
media_image14.png
752
600
media_image14.png
Greyscale
Karbo Grill X1
PNG
media_image15.png
844
1024
media_image15.png
Greyscale
Claimed design
“Two designs are substantially the same if their resemblance is deceptive to the extent that it would induce an ordinary observer, giving such attention as a purchaser usually gives, to purchase an article having one design supposing it to be the other.” Door-Master Corp. v. Yorktowne Inc., 256 F.3d 1308, 1313 (Fed. Cir. 2001) (citing Gorham Co. v. White, 81 U.S. 511, 528 (1871)). See MPEP § 1504.02.
The mandated overall comparison is a comparison taking into account significant differences between the two designs, not minor or trivial differences that necessarily exist between any two designs that are not exact copies of one another. “Just as ‘minor differences between a patented design and an accused article's design cannot, and shall not, prevent a finding of infringement,’ so too minor differences cannot prevent a finding of anticipation.” Int'l Seaway, 589 F.3d at 1243 (citing Litton Sys., Inc. v. Whirlpool Corp., 728 F.2d 1423, 1444 (Fed. Cir. 1984)).
Applicant’s effective filing date, 05/25/2025, is predated by the 04/01/2024, date first available of the Karbo Grill X1. The examiner was unable to locate any evidence providing inventorship of the design shown in Karbo Grill X1, accordingly a 35 USC 102(a)(1) has been given.
Conclusion
The claim stands rejected under 35 USC § 112(a)(b) and 35 USC § 102(a)(1), as set forth above. The prior art made of record and not relied upon is considered pertinent to applicant’s disclosure.
NOTES ON CORRESPONDENCE
Refusal Reply
Applicants are 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 the applicants. If the applicant is a juristic entity, the reply must be signed by a patent practitioner. See 37 CFR 1.33(b).
Discussion of the Merits of the Application
All discussions between the applicants 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 applicants’ representative if the representative is not registered to practice before the USPTO. Appointment as applicants’ 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 applicants 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”, available at https://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.
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 Chariton.Alexakis@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, Notice of Allowances, or Notice of Abandonments, please note the following:
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:
International design applications can be filed electronically through the USPTO via Patent Center https://www.uspto.gov/patents/apply
See the Patent Center Quick Start Guide for international design application submissions available at: https://www.uspto.gov/sites/default/files/documents/Patent_Center_User_Guide_September_2023.pdf.
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
Contact Information
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Chariton Alexakis whose telephone number is 571-272-8924. The examiner can normally be reached on Monday-Friday from 10:00am to 6:00pm CT.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Wendy Arminio can be reached at 571-270-0221. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
Information regarding the status of an application 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, for more information about Patent Center visit https://www.uspto.gov/patents/apply/patent-center and for information about filing in DOCX format visit https://www.uspto.gov/patents/docx. 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.
/CHARITON ALEXAKIS/Examiner, Art Unit 2923
Prosecution Insights