The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
DETAILED OFFICE ACTION
Claim Rejection - 35 USC § 112(a)(b)
The claim is rejected under 35 U.S.C. 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.
The claim is indefinite and nonenabling because the exact scope of the design cannot be determined. In particular:
A. The appearance of the rectangle elements on the rear side of the air conditioner are unclear since they are not seen in any of the other drawings views. With limited three-dimensional views of the rear side, it is open to conjecture if these rectangle elements are indentations, protrusions, or surface indicia.
B. The appearance of the protruding rectangle elements on the rear side of the air conditioner, seen from the side views, is unclear because it is unknown where they are located on the rear side of the unit. With limited three-dimensional views of the rear side, it is open to conjecture how these elements correspond between the views.
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Annotated Fig. 1.3
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Annotated Figs. 1.3 and 1.4
In order to overcome the rejection, applicant may amend the unknown elements and place them into broken lines.
Applicant is cautioned that any attempt to clarify the scope must meet 37 CFR 1.145 and 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).
Care must be exercised to avoid introduction of anything which could be construed to be new matter prohibited by 35 U.S.C. 132 and 37 CFR 1.121 when preparing new reproductions. Each sheet of reproductions 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). 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)
Claim Rejection – Obvious Type Double Patenting
The claim is provisionally rejected under the judicially created doctrine of the obviousness-type double patenting of the claim of copending Applications 35/526,465. Although the conflicting claims are not identical, they are not patentably distinct from each other because the addition/removal of the lower cover element showing a condition of use as seen in the instant application, is an obvious modification to one skilled in the art at the time of the invention. Furthermore, the appearance of the internal surfaces seen in the instant application are inconsequential to the overall appearance of the claimed design, and alone do not create a patentable distinction.
The nonstatutory double patenting rejection is based on a judicially created doctrine grounded in public policy (a policy reflected in the statute) so as to prevent the unjustified or improper timewise extension of the "right to exclude" granted by a patent and to prevent possible harassment by multiple assignees. See In re Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993); In re Longi, 759 F.2d 887, 225 USPQ 645 (Fed. Cir. 1985); In re Van Ornum, 686 F.2d 937, 214 USPQ 761 (CCPA 1982); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970);and, In re Thorington, 418 F.2d 528, 163 USPQ 644 (CCPA 1969).
A timely filed terminal disclaimer in compliance with 37 CFR 1.321(c) may be used to overcome an actual or provisional rejection based on a non-statutory double patenting ground provided the conflicting application or patent is shown to be commonly owned with this application. See 37 CFR 1.130(b).
A registered attorney or agent of record may sign a terminal disclaimer. A terminal disclaimer signed by the assignee must fully comply with 37 CFR 3.73(b).
The USPTO internet Web site contains terminal disclaimer forms which may be used. Please visit http://www.uspto.gov/forms/. The filing date of the application will determine what form should be used. A web-based eTerminal Disclaimer may be filled out completely online using web-screens. An eTerminal Disclaimer that meets all requirements is auto-processed and approved immediately upon submission.
Notes on Correspondence
Please note that, at this time, the examiner is prohibited from initiating or returning international telephone calls. If applicant wishes to communicate by telephone, the examiner may be reached by email to arrange a time for a telephone interview: natasha.vujcic@uspto.gov. The merits of the application may not be discussed via email unless an appropriate authorization for email communication is placed in the U.S. application file at the USPTO. For those applications where applicant wishes to communicate with the examiner via Internet communications, e.g., email or video conferencing tools, the following is a sample authorization form which may be used by applicant:
"Recognizing that Internet communications are not secure, I hereby authorize the USPTO to communicate with the undersigned and practitioners in accordance with 37 CFR 1.33 and 37 CFR 1.34 concerning any subject matter of this application by video conferencing, instant messaging, or electronic mail. I understand that a copy of these communications will be made of record in the application file."
Please see MPEP 502.03 II (Article 5) for more details.
Discussion of the Merits of the Case
A Power of Attorney (POA), filed with the USPTO in the specific case, is required whether or not attorney for the applicant has POA authority in a foreign IP office. Examiner may not discuss the merits or specifics of a case without a proper POA on file. https://www.usDto.aov/web/forms/sb0080.Ddf
The POA form submitted in the international phase is not effective for purposes of the US. The proper form is available at: https://www.uspto.gov/web/forms/sb0080.pdf
When Responding to Official USPTO Correspondence
When responding to an official correspondence issued by the USPTO, including refusals, Ex Parte Quayle, Notice of Allowances, or Notice of Abandonments, please note the following:
The USPTO transacts business in writing. 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-application-process/applying-online/efs-web-guidance-and-resources
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
Conclusion
In conclusion the claim stands Rejected under 35 U.S.C. § 112, (a) and (b) and Obvious Type Double Patenting.
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 the applicant.
If the applicant is a juristic entity, the reply must be signed by a patent practitioner. See 37 CFR 1.33(b).
Any inquiry concerning this communication or earlier communications from the examiner should be directed to NATASHA VUJCIC whose telephone number is (571)272-6403. The examiner can normally be reached on Monday-Thursday 7-5:30 EST. 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, Richard Kearney can be reached on 571-272-8312. 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 http://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.
/NATASHA VUJCIC/Examiner, Art Unit 2933 February 12, 2026