DETAILED ACTION
Claim Rejections - 35 USC § 112 (a) and (b)
The claim is rejected under 35 USC 112 (a) and (b), 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 regards as the invention.
The claim is indefinite and non-enabling for the following:
The drawing disclosure lacks adequate surface shading. While surface shading is not required under 37 CFR 1.152, it may be necessary in particular cases to shade the figures to show clearly the character and contour of all surfaces of any 3-dimensional aspects of the design. Surface shading is also necessary to distinguish between any open and solid areas of the article. However, surface shading should not be used on any unclaimed subject matter, shown in broken lines, to avoid confusion as to the scope of the claim.
Lack of appropriate surface shading in the drawing as filed may render the design non-enabling and indefinite under 35 USC 112 (a) and (b). Additionally, if the surface shape is not evident from the disclosure as filed, the addition of surface shading after the fact may comprise new matter. (MPEP 1503.02.II)
1. It is unclear whether the top right corner of the measuring tape is solid or open. Fig. 1.1 1.2 and 1.3 show a curved corner with an angled side. There is a semi-circular form under the curved corner. Without surface shading, it is unclear to the examiner whether that shape is an open void or a solid plane.
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To overcome this rejection, the applicant should submit replacement drawings converting the shaded forms shown above to broken lines.
2. Fig. 1.1 and 1.5 show a circular recess on the side of a protruding from on the front of the measuring tape. There is a small circle in the center of the recess. It is unclear to the examiner whether the small circle is coplanar to the surrounding area or recessed within it.
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To overcome this rejection, the applicant should convert the shaded portion shown above to broken lines.
3. Fig. 1.4 and 1.7 show lines on the side of the measuring tape. It is unclear to the examiner whether the lines are surface indicia coplanar to the surrounding areas or recessed.
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To overcome this rejection, the applicant should convert the lines in Fig. 1.4 and 1.7 to broken lines and remove any contour lines.
6. Fig. 1.3 shows the back of the measuring tape. There is an angled outer edge that is shown in Fig. 1.4, 1.5, 1.6 and 1.7. The positioning of the back plane and second outer frame are unclear. It is unclear whether the back plane and second outer frame are coplanar to each other and the angled outer edge or recessed and if so, how much.
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To overcome this rejection, the applicant should submit replacement drawings converting the shaded portions above to broken line. See below for an example.
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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).
The applicant should also include a broken line statement following the figure descriptions. The examiner suggests:
“The broken lines depict portions of the Measuring Tape that form no part of the claimed design.”
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 or has at least one party which has a domicile that is not located within the United States or its territories, the reply must be signed by a patent practitioner. See 37 CFR 1.33(b).
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 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 or has at least one party which has a domicile that is not located within the United States, or its territories 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/PatentForms, 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 webpage indicated above). See MPEP § 405. For acceptable ways to submit forms to the USPTO, see "When Responding to Official USPTO Correspondence" below.
Conclusion
The claim stands rejected under 35 U.S.C. 112 (a)&(b).
A response is required in reply to the Office action to avoid abandonment of the application. Any amendment submitted in response to this Office action must be in compliance with 37 CFR 1.121.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to MARY ANNE ARNTZEN whose telephone number is (703)756-1439. The examiner can normally be reached Monday-Friday 9AM-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, 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.
/M.A.A./Examiner, Art Unit 2914 /BRETT MILLER/Examiner, Art Unit 2934
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