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 .
Multiple Embodiments
This application discloses the following embodiments:
Embodiment 1 – Reproductions 1.1-1.10
Embodiment 2 - Reproductions 2.1-2.10
Multiple embodiments of a single inventive concept may be included in the same design application only
if they are patentably indistinct. See In re Rubinfield, 270 F.2d 391, 123 USPQ 210 (CCPA 1959).
Embodiments that are patentably distinct from one another do not constitute a single inventive concept
and thus may not be included in the same design application. See In re Platner, 155 USPQ 222 (Comm'r
Pat. 1967).
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The above identified embodiments are considered by the examiner to present overall appearances that
are basically the same. Furthermore, the differences between the appearances of the embodiments are
considered minor and patentably indistinct, or are shown to be obvious in view of analogous prior art
cited. Accordingly, they are deemed to be obvious variations and are being retained and examined in
the same application. Any rejection of one embodiment over prior art will apply equally to all other
embodiments. See Ex parte Appeal No. 315-40, 152 USPQ 71 (Bd. App. 1965). No argument asserting
patentability based on the differences between the embodiments will be considered once the
embodiments have been determined to comprise a single inventive concept. Failure of applicant to
traverse this determination in reply to this action will be considered an admission of lack of patentable
distinction between the above identified embodiments.
Objection – Specification
The following formal matters are noted:
The statement, “Each bag for packaging has perforations, multiple large-diameter through holes, multiple small-diameter through holes, and a bag body below the perforations” is unnecessary as it is tacitly understood from the reproductions that the claim shows perforations, holes and a bag body. Any description of the design in the specification other than a brief description of the drawing is generally not necessary, since as a general rule, the illustration in the drawing views is its own best description. See In re Freeman, 23 App. D.C. 226 (App. D.C. 1904) and Hague Rule 7(5)(a), 37 CFR 1.1024, MPEP 2920.04(a) Il. It istherefore recommended that the aforementioned statement be removed from thespecification.
The statements, “The product is a bundle of bags for packaging in which a plurality of bags for packaging are stacked and bundled” and “The bundle of bags for packaging are stacked and glued together so that the through holes of each bag for packaging are aligned” describe basically the same thing and therefore both statements are not needed. Examiner suggests deleting one of the statements above to clarify the descriptive statements.
The statement, “The portion other than the lightly inked portion is a predetermined portion of the leading of the bundle of bags for packaging in the stacking direction” has no clear meaning and does not help describe the article being claimed. Attention is directed to the fact that design patent applications are concerned solely with the ornamental appearance of an article of manufacture. The functional and/or structural features stressed by applicant in the papers are of no concern in design cases, and are neither permitted nor required. Function and structure fall under the realm of utility patent applications, see MPEP 1503.01, II and Hague Rule 7(5)(a), 37 CFR 1.1024, MPEP 2920.04(a) Il. Therefore, Examiner suggests deleting this statement.
The statement, “Therefore, as shown in the front view, the back view and the perspective view, the drawing is made so that the outer edge of the bottom edge of the folded piece of the bag body at the leading and the last of the bundle of bags for packaging in the stacking direction is shown” is not necessary because no description of the design in the specification beyond a brief description of the drawing is generally necessary, since as a rule the illustration in the drawing views is its own best description. In re Freeman, 23 App. D.C. 226 (App. D.C. 1904) and Hague Rule 7(5)(a), 37 CFR 1.1024, MPEP 2920.04(a) Il. Therefore, Examiner suggests deleting this statement.
Applicant is not required to correct the above-noted formal matters but may wish to do so to place the application in better form.
Claim Rejection - 35 USC § 112(a) and (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 non-enabling due to the following inconsistencies/unclear parts which
prevent a clear understanding of the design which applicant seeks protection for:
Unclear Scope
The scope of the claim is unclear because it is not clear from the drawings whether a “bundle of bags” are included in the claim because multiple bags are not clearly seen. The low line quality shown in the perspective and side views does not clearly and fully show how many bags are included in this claim, or even if they are shown bundled. The thick, dark and uneven lines blur into a gradient of dark masses, which makes it impossible to understand the details of the claimed design and what the scope of the claim is. In addition, it is not clear whether the portions claimed extend to the side and top edges of the potential stack of bags or if just the top bag is claimed. Are the striated, black portions intended to show the claimed edges of each bag in the bundle? Are the dark areas the edges of the bags stacked behind the first one? Applicant must clarify the scope of the claim, being careful not to introduce new matter with the addition or subtraction of any features/shading that are not present in the original reproductions. Reproductions shall be of a quality permitting all the details of the industrial design to be clearly distinguished and permitting publication (see Hague Rule 9(2) and MPEP 2909.02 (2)(a)). Annotated drawing below highlights dark areas in question.
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The statement, “The dotted line directly below the through holes of the bags for packaging represented in each figure represents the perforation” does not fully describe the broken lines shown in the reproductions. Although it is clear that the broken lines shown represent perforations, it is unclear whether these perforations form part of or no part of the claimed design, further confusing the scope of the claim, see MPEP 1503.02, II and III and Hague Agreement Administrative Instruction 403.
--The broken lines shown illustrate perforations which form (part of/no part) of the claimed design. --
The statement, “The portion of the product colored in lightly ink in the drawings illustrate portions of the bundle of bags for packaging which form no part of the claimed design;” does not clearly and fully describe the unclaimed grey portions of the reproductions further confusing the scope of the claim, see MPEP 1503.02, IIl and 37 CRF 1.1026 and Hague Agreement Administrative Instruction 403. If all the light grey portions are intended to be unclaimed subject matter, then amending the above statement is required to clarify the scope of the claim. Examiner suggests amending the statement as follows:
--The portions of the article shown in light grey illustrate parts of the article which form no part of the claimed design. –
Unclear Parts
The specification describes transparency, however the reproductions show no evidence of any transparency in the design. The statements, “Each bag for packaging is composed of transparent vinyl” and “The entire product is made of transparent material” are confusing because no transparency is shown in the reproductions. Is transparency not visible because the bags are bundled/stacked atop one another? Even the single bag views do not show any evidence of transparency. Without the use of oblique shading, there is nothing shown in the reproductions that supports the description of the views being transparent. Perhaps the claimed portions do not appear transparent because they are stacked? It is unclear. Oblique line shading must be used to show transparent, translucent and highly polished or reflective surfaces, such as a mirror. If the surface shape is not evident from the disclosure as filed, the addition of surface shading after filing may comprise new matter, see MPEP 1503.02, II.
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Cross Sectional Views
The statement, “The cross sectional of a single bag view shows the bag for packaging when the bag for packaging is cut along the length direction of the bag for packaging so as to pass through the through hole of the bag for packaging” does not satisfy the description requirement for cross-sectional views and furthermore, there is no view included of where the cross section views of reproductions 1.9 and 2.9 are taken from, making the cross-sectional views confusing and unclear. Examiner suggests canceling these cross-section views and their descriptions. Alternatively, Applicant may amend the views that the cross-sections are taken from and label them according to 37 CFR 1.84(h)(3) to show exactly where it is being taken from (if that is possible to do without introducing new matter).
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Because of the inconsistencies and insufficient information in the drawings provided, the claimed
design is in fact subject to multiple interpretations, and one of ordinary skill in the art would not be able
to reproduce the design without the use of conjecture. This renders the claim non-enabled. In order to
overcome this rejection, it is suggested that the design be shown clearly and consistently among the
views. All inconsistencies should be remedied or otherwise satisfactorily explained, amended to form no
part of the claim, or figures cancelled [if such does not negatively impact understanding of the
remaining disclosure]. Inconsistency that cannot be either corrected or satisfactorily explained should be amended to form no part of the claim with lightweight broken lines. However, care must be taken to
not introduce new matter.
If applicant chooses to exclude portions of the design from the claim by converting those portions of the
article to broken lines, the amendment must meet the written description requirement of 35 USC
112(a). It must be apparent that applicant was in possession of the amended design at the time of original filing. When preparing new or replacement drawings, be careful to avoid introducing new
matter. New matter is prohibited by 35 U.S.C. 132 and 37 CFR 1.121(f).
Replacement Reproductions
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 the 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, 35
U.S.C. 132 and 37 CFR 1.121(f). This pertains to either: the addition to, or the removal of, any
elements shown in the originally disclosed design.
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 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
joan.diehl@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 consider 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 Patent Center: https://patentcenter.uspto.gov/#!/
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
The claim stands rejected under 35 U.S.C. §112 (a) and (b).
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 “Patent Number Search” button.
Contact
Any inquiry concerning this communication or earlier communications from the examiner should be directed to JOAN E. DIEHL whose telephone number is (571)272-9788. The examiner can normally be reached Monday-Friday 8AM-5PM.
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, Wendy Arminio can be reached at (571) 270-0221. 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.
/JOAN E. DIEHL/Examiner, Art Unit 2923
Prosecution Insights