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
Acknowledgement of Applicant’s Response
The merits of this case have been carefully examined again in light of applicant's response filed 05/26/2026.
Applicant’s response to the rejection under 35 USC § 112(a) and (b) has been fully considered but is not considered sufficient to overcome the rejection of record and is hereby restated and made FINAL. Specifically, Items A-G discussed in the non-final rejection under 35 USC § 112(a) and (b) have not been overcome by applicant's amendment and remarks.
Additionally, the amendment includes information that forms the basis for new rejections to the claim, as set forth below.
THIS ACTION IS MADE FINAL. Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
Claim Refusal – 35 U.S.C. § 112(a) and (b) - FINAL
The claim is FINALLY 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, the claim is indefinite and nonenabling and one of skill in the art must necessarily resort to conjecture to determine the appearance of the claim:
Reproduction 1.1 is inconsistent with Reproduction 1.2. Specifically, Reproduction 1.1 shows structures that are not seen in Figure 1.2 or are seen in different locations. Therefore, one exact appearance of the searchlight has not been shown. One of skill in the art must resort to conjecture in order to determine the appearance. See below:
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958
653
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Greyscale
1.1
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956
652
media_image2.png
Greyscale
1.2
Reproduction 1.1 is inconsistent with Reproduction 1.3. Specifically, Reproduction 1.3 shows many structures that are not seen in Figure 1.1 or are seen in different locations. Therefore, one exact appearance of the searchlight can not be determined based on the overall disclosure. Additionally, there are broken lines shown in 1.1 that are shown in solid line in 1.3 One of skill in the art must resort to conjecture in order to determine the appearance. See below:
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818
590
media_image3.png
Greyscale
1.1
PNG
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815
615
media_image4.png
Greyscale
1.3
Reproductions 1.1 and 1.2 are inconsistent with Reproductions 1.6 and 1.7. Reproductions 1.1 and 1.2 show structures that are not seen in 1.6 and 1.7. The posts at the bottom of the light are not consistent. Additionally, there are structures shown in broken line in 1.1 that are shown in solid in 1.2 and different structures shown in broken lines in 1.2 that are shown in solid line in 1.6 and 1.7. Therefore, one exact appearance of the searchlight has not been shown. One of skill in the art must resort to conjecture in order to determine the appearance. See below:
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798
586
media_image5.png
Greyscale
1.1
PNG
media_image6.png
801
615
media_image6.png
Greyscale
1.2
PNG
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725
728
media_image7.png
Greyscale
1.6
PNG
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739
702
media_image8.png
Greyscale
1.7
Reproduction 1.3 is inconsistent with Reproductions 1.7. Specifically, Reproduction 1.3 shows many structures that are not seen in Figure 1.1 or are seen in different locations. Therefore, one exact appearance of the searchlight has not been shown. One of skill in the art must resort to conjecture in order to determine the appearance. See below:
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791
585
media_image9.png
Greyscale
1.3
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732
714
media_image10.png
Greyscale
1.7
Reproduction 1.4 is not consistent with Reproductions 1.3. Specifically, Reproduction 1.4 shows structures differently and double lines in Reproduction 1.4 where there is a single line in Reproduction 1.3. Additionally, the shapes of these structures are inconsistent. Therefore, one exact appearance of the searchlight has not been shown. One of skill in the art must resort to conjecture in order to determine the appearance. See below:
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669
554
media_image11.png
Greyscale
1.4
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791
626
media_image12.png
Greyscale
1.3
Reproduction 1.2 is not consistent with Reproductions 1.3 – 1.7. Reproduction 1.2 shows the identified structure sin broken line however they are shown in solid line in the other Reproductions. Therefore, one exact appearance of the searchlight has not been shown. One of skill in the art must resort to conjecture in order to determine the appearance. See below:
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793
576
media_image13.png
Greyscale
1.2
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media_image14.png
801
597
media_image14.png
Greyscale
1. 3
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media_image15.png
690
536
media_image15.png
Greyscale
1.4
PNG
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653
531
media_image16.png
Greyscale
1.5
PNG
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733
737
media_image17.png
Greyscale
1.6
PNG
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741
716
media_image18.png
Greyscale
1.7
Reproduction 1.4 is not consistent with Reproductions 1.1.-13. Reproduction 1.4 shows the identified structures in broken line however they are shown in solid line in the other Reproductions. Therefore, one exact appearance of the searchlight has not been shown. One of skill in the art must resort to conjecture in order to determine the appearance. See below:
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690
536
media_image19.png
Greyscale
1.4
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827
601
media_image20.png
Greyscale
1.1
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833
616
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Greyscale
1.2
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792
587
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Greyscale
1.3
G. Identified structures and lines in Reproductions 1.4 have not been definitely described by the limited views in which it is shown. The exact location of several surfaces in these views cannot be ascertained in the absence of corroborating views to fully enable their three-dimensional appearances. The depth and placement of these surfaces is unknown.
Applicant is cautioned that if the location of the 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)).
Due to a lack of description of the three-dimensional appearance of the bottom of the card case, one of skill in the art must resort to conjecture in order to determine the location of the surfaces highlighted in gray below:
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690
536
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1.4
It may be possible to overcome this rejection by converting the indefinite portions highlighted in gray or identified by an arrow above to broken lines in all drawings in which they appear 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.
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.
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 FINALLY rejected under 35 U.S.C. 112(a) and (b).
THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
The references cited but not applied are considered cumulative art related to the claimed design.
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).
Contact Information
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Kathryn Chambers whose telephone number is 571-272-9216. The examiner can normally be reached on Monday-Thursday from 9AM EST to 5PM 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, Lakiya Rogers, can be reached at telephone number (571)270-7145. 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 the Patent Application Information Retrieval (PAIR) system. Status information for published applications may be obtained from either Private PAIR or Public PAIR. Status information for unpublished applications is available through Private PAIR only. For more information about the PAIR system, see http://www.uspto.gov/patents/process/status/private_pair/index.jsp. Should you have questions on access to the Private PAIR system, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative or access to the automated information system, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
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 Alex.Milbrath@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 official correspondence issued by the USPTO, including a notification of refusal, 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:
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
/K.E.C./Examiner, Art Unit 2934
/LAKIYA G ROGERS/Supervisory Patent Examiner, Art Unit 2934
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