NOTIFICATION OF REFUSAL
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 .
Specification Objections
The title is objected to as follows:
The title “Mounting Device for tools, poles, and other structures” is inaccurate (MPEP 1503.01.I) because it is directed to more than one article of manufacture. 35 U.S.C. 171 requires designs to be directed to “an article of manufacture," and 35 U.S.C. 112 requires that the claim particularly point out and distinctly claim the subject matter which the applicant regards as his invention. Therefore, the title must be in the singular, not plural, form.
For accuracy, the title should be amended throughout the application, original oath or declaration excepted, to read: -- Mount for Tool--.
Amendments to the title, whether directed to the article in which the design is embodied or its environment, must have antecedent basis in the original disclosure and may not introduce new matter. Ex parte Strijland, 26 USPQ2d 1259 (Bd. Pat. App. & Inter. 1992).
The descriptive statement is objected to as follows:
The broken-line description should expressly identify what is represented by the broken lines in addition to defining their relationship to the claimed design (MPEP 1503.01(II)). In this case, the examiner understands the broken lines are understood to be portions of the Mount.
Therefore, for accuracy and clarity, the broken line description should be amended as follows:
-- The broken lines in the drawings depict portions of the Mount that form no part of the claimed design. –
Claim Refusal - 35 U.S.C. § 112(b)
The claim is refused under 35 U.S.C. 112(b) as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor regards as the invention. The disclosure does not provide for certainty as to the exact scope of the claimed design without resorting to conjecture. See MPEP 1504.04 II
Specifically:
The disclosure does not provide certainty of the exact appearance of the surface annotated below (space between solid/broken lines) without resorting to conjecture and whether the space in between the solid and broken lines is intended to be claimed or not.
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This rejection may be overcome by amending the surfaces annotated above to either add linear surface shading between the solid and broken lines to indicate that the surface claimed or by amending the descriptive statement to add a statement similar to: -- The unshaded surfaces shown between solid and broken lines form no part of the claimed design. -- to indicate that the surface is not claimed.
Replacement Sheets
Corrected drawing sheets of the reproductions are required in reply to the Office action to avoid abandonment of the application. Any amended replacement drawing sheet of the reproductions should include all of the views appearing on the immediate prior version of the sheet, even if only one view is being amended. The view of an amended drawing should not be labeled as “amended”. If a drawing view is to be canceled, the appropriate view must be removed from the replacement sheet, and where necessary, the remaining views must be renumbered and appropriate changes made to the brief description of the several views of the drawings for consistency. Additional replacement sheets may be necessary to show the renumbered of the remaining views. Each drawing 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). 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.
Care must be exercised to avoid introduction of anything which could be construed as new matter prohibited by 35 USC 132 and 37 CFR 1.121 when preparing amended reproductions.
Discussion of the Merits of the Case:
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”, may be used for this purpose:https://www.uspto.gov/patent/forms/forms-patent-applications-filed-or-after-september-16-2012
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 kayla.bennett@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, 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
The claim is refused under 35 U.S.C. 112 (b) as set forth above.
The references are cited as pertinent prior art. Applicant may view and obtain copies of the cited references by visiting http://www.uspto.gov/patft/index.html and pressing the “Number Search” button.
Contact Information
Any inquiry concerning this communication or earlier communications from the examiner should be directed to KAYLA MARIE BENNETT whose telephone number is (571)272-9590. The examiner can normally be reached Monday-Friday 8:00AM-3:00 PM 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, Supervisor, Justin Jonaitis can be reached at 571-270-5150. 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). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/KAYLA MARIE BENNETT/Examiner, Art Unit 2924
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