The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
Non-Final Action
Examiner Comment
The examiner notes that the reproductions appear to disclose two different embodiments of the claimed design. In particular, 1.1, and 1.4-1.7 clearly disclose a mounting bracket, whereas 1.3 appears to disclose the design without a mounting bracket. In 1.2, being a front view, it does not clearly resolve the presence or absence of the mounting bracket. However, a complete analysis of this issue concerning embodiments cannot be made until applicant addresses the rejection under 35 USC 112(a) and (b) as set forth below. Examiner notes that a resolution of the issues regarding scope and clarity of the claimed design, may result in clarification of the disclosure such that the application is directed to a single claim.
Specification
The specification is objected to because the description concerning the yellow highlighted areas as forming no part of the claimed design is not definitively clear (MPEP 2920.04(a)). Applicant must clearly indicate and identify the purpose of the yellow highlighted areas. Examiner suggests the following;
The elements shown within the yellow highlighted areas --depict portions of the movement and image capture sensor with mounting bracket-- and form no part of the claimed design.
Claim Rejection – 35 USC 112(a) and (b)
The claim is rejected under 35 USC 112(a) and (b) 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.
Because of the inconsistencies, the claimed design is subject to multiple interpretations and one of ordinary skill in the art would not be able to determine the exact scope or configuration of the claimed design without resorting to conjecture. This renders the claim indefinite and non-enabled.
Figure 1.3, depicts only a partial portion of the article and appears to omit the mounting bracket as shown in 1.1, 1.4-1.7. As presented, the omission of the mounting bracket results in a different configuration of the claimed design, which makes the claim unclear as it fails to reasonably convey a single definite design. For example;
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Comparing 1.3 and Fig. 1.6
Examiner has used highlight to indicated the area of a claimed area and arrows to indicate where that corresponding area in 1.3 is completely excluded from the claimed design. In 1.3, the bracket appears to be removed and applicant has highlighted the area underneath. In contrast, 1.6 depicts the mounting bracket fully connected, visible, and as forming part of the claimed design. The reproductions are inconsistent as to whether the mounting bracket is included within the scope of the claimed design.
Examiner notes that if applicant chooses to amend the reproductions, applicant may also need to address the corresponding descriptions in the specification to ensure consistency. Specifically, in regards to 1.3 : Back partial view
The yellow highlighted portions of the claimed design are not disclosed consistently throughout the reproductions, leaving the scope of the claimed design unclear. For example;
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Comparing Fig. 1.3 and 1.5 (rotated)
Examiner has used highlight and an arrow to indicate the problematic areas. In Fig. 1.5, only a small circle area is highlighted in yellow. The corresponding area in Fig. 1.3, the entire half capsule shape is highlighted in yellow.
The interior of the backet appears to be disclosed inconsistently between 1.1 and the other figures. In 1.1, the interior surface appears relatively flat or with minimal curvature. In contrast Fig. 1.6 depicts a more aggressive curve and angles. The examiner attributes this inconsistency to a contrast or shading issue in 1.1. For example;
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Comparing 1.1 and 1.6
Examiner has used highlights and arrows to indicate the problematic areas. In Fig. 1.1, the area appears flat. The corresponding area in Fig. 1.6, is depicted with curves and angles.
To overcome this rejection, it is suggested that the applicant submit replacement reproductions of the claimed design that disclose the design clearly and consistently across all views. If non-enabled portions of the design cannot be enabled without the introduction of new matter, the applicant may remove from the claim those areas or portions of the design that are considered indefinite and nonenabling by converting them to broken lines.
If corrected reproduction sheets are submitted in reply to this Office action, each amended replacement reproduction 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. 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 examiner does not accept the changes, the applicant will be notified and informed of any required corrective action in the next Office action.
Provisional Claim Rejection - 35 USC 102(a)(1)
This is a provisional rejection, because the drawings are currently rejected under 35 USC 112(a) and (b) as being indefinite and nonenabling. Though the claim is unclear, if the issues from the rejection under 35 USC 112(a) and (b) can be resolved, the examiner has found the following potential 35 USC 102(a)(1) rejection that the applicant may wish to consider when responding.
The claim is rejected under 35 USC 102(a)(1) as being anticipated by ajax_systems because the claimed invention was patented, described in a printed publication, in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention.
The appearance of ajax_systems is substantially the same as that of the claimed design. 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).
“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, supra).
“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, supra (citing Litton Sys., Inc. v. Whirlpool Corp., 728 F.2d 1423, 1444 (Fed. Cir. 1984)).
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Claimed Design
Date: 05/15/2025
Ajax_systems
02/20/2025
Under this standard, the appearance of the Ajax_systems reference is substantially the same as that of the claimed design. Furthermore, the effective filing date of the claimed invention is 05/15/2025; the publish date of the Ajax_systems reference is 02/20/2026. Accordingly, the rejection under this statute is proper.
Overcoming Rejections under 35 USC 102(a)(1)
The applicant may attempt to overcome the rejections under 35 USC 102(a)(1) by:
Persuasively arguing that the claim is patentably distinct over the prior art, or
Amending the claim to patentably distinguish over the prior art, or
Perfecting a benefit claim under 35 USC 119 or 35 USC 120, or
Filing an affidavit or declaration under 37 CFR 1.130.
The applicant is reminded of the one-year grace period afforded under 35 USC 102(b)(1) for disclosures with a prior public availability date.
Discussion of the Merits of the Application
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”, 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 joseph.kukella@uspto.gov to arrange a time and date for the telephone interview. Please include suggested days and times for the proposed call. When proposing a day and 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
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
Conclusion
In conclusion this application is rejected under 35 USC 112 (a) and (b) and is provisionally rejected under 35 USC 102(a)(1).
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Heather Wencl whose telephone number is 571-272-4326. The examiner can normally be reached on Monday-Thursday, 8:00AM-5:00PM and Friday 8:00AM-12PM (EST). Interviews are available via telephone, in person, and via 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, Sandra Snapp, can be reached at 571-272-8364. 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). For assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/HEATHER WENCL/Examiner, Art Unit 2914
Prosecution Insights