DETAILED CORRESPONDENCE
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 .
Objection to the Title
The title, Belt [clothing] is objectionable because it includes brackets and suggests two different articles of manufacture: belt and clothing. Brackets in a title would not print on an issued U.S. patent and brackets typically indicate deleted text. The title of a design being claimed must correspond to the name of the article in which the design is embodied or applied to. See MPEP § 1503.01 and 37 CFR 1.1067. Furthermore, the reproductions show a buckle, loop, and belt bin unit with a partial belt shown in broken lines which forms no part of the claimed design.
Additionally, the specification says that “the design concerns a belt and more specifically a buckle, a loop and a belt pin” which Examiner understands to be a listing of parts of the claimed design. When the design involves multiple articles, the title must identify a single entity of manufacture made up by the parts (e.g., set, pair, combination, unit, assembly) (see MPEP 1504.01(b)).
For clarity, the title should be amended throughout the application, original oath or declaration excepted. The following, or similar, is recommended:
-- Belt Buckle Unit --
Objection to the Specification
The specification is objectionable because the special description says “the design concerns a belt and more specifically a buckle, a loop and a belt pin” which is inconsistent with the reproductions because the reproductions show a buckle, loop, and belt bin unit with a partial belt shown in broken lines which forms no part of the claimed design.
Descriptions of the figures are not required to be written in any particular format, however, if they do not describe the views of the drawing clearly and accurately, the examiner should object to the unclear and/or inaccurate descriptions and suggest language which provides a clear and accurate description of the views (MPEP 2920.04(a)(II)).
For clarity, the first statement of the special description should be amended to more accurately describe the views. The following is suggested:
-- The design concerns multiple parts which include a belt buckle, a loop and a belt pin; the parts depicted in dashed lines are not claimed; the essential characteristics of the design are featured in the shape and patterns. --
Rejection Under 35 U.S.C. 112(a) and (b)
The claim is 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.
The claim is indefinite and non-enabling for the following reasons:
The appearance of the claimed design cannot be understood because the exact configuration of the inside of the belt buckle in reproductions 1.2 and 1.7 cannot be determined from the views in which it appears. It is unclear what the three-dimensionality of the interior of the rectangular opening looks like and where within the belt buckle the triangular features occur and whether they are flat, round, or other.
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Reproduction 1.2 (left) and 1.7 (right) showing the areas that cannot be understood.
The scope and appearance of the claimed design cannot be determined because it is unclear if the partial belt shown in broken lines is environmental structure or if it is a portion of the article. Because the partial broken line belt is not shown in reproduction 1.2, it appears to be environmental structure; however, the title is directed to a belt [clothing] and not a belt buckle. The purpose of the broken lines which form no part of the claimed design depicting a partial belt should be clarified because as it is possible that broken lines with different purposes may be included in a single application, the description must make a visual distinction between the two purposes (MPEP 1503.02(III)).
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Reproduction 1.2 not showing the partial broken line belt.
In order to overcome this rejection, the scope and appearance of the claim should be clarified. It is recommended to 1.) convert the above mentioned rectangular areas in reproductions 1.2 and 1.7 to broken lines and 2.) if the broken lines depicting a partial belt are for the purpose of illustrating environmental structure illustrating the environment in which the article embodying the design is used, then the broken line statement in the specification (the parts depicted in dashed lines are not claimed) should be canceled and replaced with the following: -- the broken line showing of a belt is for the purpose of illustrating environmental structure and form no part of the claimed design --; however, if the broken lines depicting a partial belt are portions of the article, the broken lines should be added to reproduction 1.2 for consistency.
In a photographic disclosure, portions can be converted to broken line by putting a broken line around the features and making the portions within those broken lines lighter in value by adding a transparent overlay or halftone (see example below). The following broken line statement is suggested if using a transparent overlay and should be added to the specification after the figure descriptions and before the claim: -- the broken lines and lightened portions shown within the broken lines illustrate portions of the [insert new title here] that form no part of the claimed design. --
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An example of broken lines and lightened portions from US Design Patent D1,110,190.
Any amendment must not introduce new matter and must meet the written description requirement of 35 U.S.C. 112(a). That is, it must be apparent that applicant was in possession of the amended design at the time of filing. This pertains to the addition or removal of parts of the design, as well as the conversion of solid lines to broken lines and vice versa. See 35 U.S.C. 132 and 37 CFR 1.121(f) for new matter.
Failure to submit replacement correction sheets overcoming all of the deficiencies in the reproduction disclosure set forth above, or an explanation why the reproduction corrections or additional views are not necessary will result in the rejection of the claim under 35 U.S.C. 112(a) and (b) being made FINAL in the next Office action.
Replacement Drawings Instructions
Any amended replacement drawing 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 drawing should not be labeled as “amended.” If a drawing 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 drawings 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 drawing sheet (labeled as “Annotated Sheet”) including an annotation showing that all the figures on that drawing sheet have been canceled must be presented in the amendment or remarks section that explains the change to the drawings. 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 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 drawings, be careful to avoid introducing new matter into the disclosure, prohibited by 35 U.S.C. 132 and 37 C.F.R. 1.121(f). Additionally, any amendment must meet the written description requirement of 35 U.S.C. 112(a). That is, it must be apparent that applicant was in possession of the amended design at the time of filing. This pertains to either the addition to, or the removal of, any elements shown in the original disclosure of the design.
Conclusion
Accordingly, the claim stands rejected under 35 U.S.C. 112(a) and (b), as set forth above. The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
Reply Reminder
Applicant is reminded that any reply to this communication 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).
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.
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:
To file and manage patent submissions online in Patent Center (available to registered users), visit: https://patentcenter.uspto.gov.
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/maintain/responding-office-actionsConclusion
Contact Information
Any inquiry concerning this communication or earlier communications from the examiner should be directed to GRACE DOYLE whose telephone number is (571)272-9605. The examiner can normally be reached Monday - Friday, 8 a.m. - 5 p.m..
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, 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). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/GRACE DOYLE/Examiner, Art Unit 2914
Prosecution Insights