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 .
DETAIED ACTION
Multiple Embodiments Acknowledgement
This application discloses the following embodiments:
Embodiment 1 – Reproductions 1.1-1.7
Embodiment 2 – Reproductions 2.1-2.7
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).
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.
Figure Description Objection
The following formal matter is noted:
No descriptions of the reproductions have been provided. While descriptions are not required to be written in any particular format, the specification must be amended to provide proper descriptions that clearly and accurately describe each drawing view (Hague Rule 7(5)(a), 37 CFR 1.1067, MPEP 2920.04(a)II). Applicant is advised that for compliance with the Hague requirements, the numbering of the figures must remain as originally filed, consisting only of two separate figures separated by a dot (e.g., 1.1, 1.2, 1.3, etc.) and NOT renumbered. (See 37 Hague Rule 9, Administrative Instructions Section 405(a); CFR 1.1026; MPEP 2909.02).
In order to overcome the objection, the following format and correction is suggested:
-- 1.1 : Front
1.2 : Left
1.3 : Rear
1.4 : Bottom
1.5 : Top
1.6 : Perspective
1.7 : Perspective
2.1 : Front
2.2 : Left
2.3 : Rear
2.4 : Bottom
2.5 : Top
2.6 : Perspective
2.7 : Perspective --
Color Drawing Acknowledgment: Color Drawing(s) /Photograph(s) statement objection
The examiner understands reproductions 1.1-1.7 show the claimed design in color drawing and all features in Embodiment 1 (1.1-1.7) of the Hydraulic Pressing Tool have been claimed. In order to avoid the confusion and to follow the rule, the applicant has to enter the statement below in the specification
The application contains at least one-color drawing or color photograph. To comply with the provisions of 37 CFR 1.84 for color drawings/photographs in design applications, the specification must be amended to include the following language as the first paragraph of the brief description of the drawings section:
--The file of this patent contains at least one drawing/photograph executed in color. Copies of this patent with color drawing(s)/photograph(s) will be provided by the Office upon request and payment of the necessary fee.--
If replacement drawings are submitted, any showing of color in a black and white drawing is limited to the symbols used to line a surface to show color (MPEP § 608.02) and must comply with the written description requirements of 35 U.S.C. 112. Additionally, lining entire surfaces of a design to show color(s) may interfere with a clear showing of the design as required by 35 U.S.C. 112 because surface shading cannot be used simultaneously to define the contours of those surfaces. However, a surface may be partially lined for color with a description that the color extends across the entire surface; this technique would allow for the use of shading on the rest of the surface showing the contours of the design (37 CFR 1.152 ). In the alternative, a separate view, properly shaded to show the contours of the design but omitting the color(s), may be submitted if identified as shown only for clarity of illustration. Photographs and ink drawings are not permitted to be combined as drawings in one application.
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 because the disclosure is unclear, as the exact shape and appearance of the design cannot be determined due to the reasons set forth below:
Reproductions 1.5 and 2.5 are indefinite and non-enabled. As the exact shape, depth and location of the multiple features and surfaces seen inside the gap in the top side view of the claimed design in 1.5 are unclear (See Annotated Drawing Letter A1.) In addition, the exact shape, depth and location of the multiple features and surfaces seen inside the gap in the top side gap on both sides of the cylindrical feature in 2.5 are unclear. Furthermore, the exact shape and depth of the two semicircular features in the left side of the cylindrical feature in top side view is unclear. (See Annotated Drawing Letter A1.) It cannot be fully understood whether these surfaces and features are on the same plane as the understood outermost surface surrounding them or if they are depressed to one or various depths within the claimed design’s body. The lack of shading and different placement of these features and elements imply that they are in different planes as the outermost surface surrounding them, however, the exact three-dimensional shape and depth of these features and elements are not clearly disclosed. Without, for example, an alternative perspective or cross-sectional view, there is no way to understand the exact shape and depth of these features.
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The exact shape and appearance of the top side view is inconsistent between 2.5 and 2.6. As 2.5 top side view shows two parallel lines in the center of the cylindrical feature, while 2.6 perspective view show three parallel lines in that area, creating different appearance (See Annotated Drawing Letter B).
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In addition, in several areas of 2.6 and 2.7, the lines are merging together and showing as solid black areas, which distorts details of the claimed design and causing inconsistently between the shape of the claimed design in 2.1-2.6.(See Annotated Drawing Letter C).
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For the above-noted reasons, the exact shape, appearance, and depth of the noted features are open to multiple interpretations and cannot be fully understood without resorting to conjecture. The applicant is advised that due to the limited views included in the disclosure, the clarification of the shape and contours of theses surfaces may likely constitute new matter.
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In order to overcome the rejection under 35 U.S.C. 112 (a) and (b), it is suggested that the applicant:
Attempt to clarify (without the introduction of new matter) or altogether disclaim (using broken lines) the indefinite and non-enabled areas seen in reproduction 1.5 and 2.5
Consistently show the shape of the cylindrical feature between 2.5 and 2.6
Clearly and distinctly show the lines in the body of the Hydraulic pressing tool in 2.6 and 2.7.
If Applicant chooses to disclaim any features by converting them to broken lines in the drawing disclosure, a statement would also need to be inserted into the specification noting that the broken lines are shown for the purpose of illustrating portions of the Hydraulic pressing tool to form no part of the claimed design.
Applicant is advised that in accordance with Hague Administrative Instruction Section 403, matter excluded from the claim may be indicated:
(a)(i) in the description referred to in Rule 7(5)(a) and/or;
(a)(ii) by means of dotted/broken lines, or coloring.
Per MPEP 2920.05(c), for clarity of the disclosure, Applicant is encouraged not to simply rely on a description to indicate matter shown in a reproduction for which protection is not sought, but rather to also identify the matter for which protection is not sought through the use of broken or dotted lines or coloring.
Replacement Drawing Sheets
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 its description removed from the specification. Applicant is advised that for consistency with the originally filed reproductions published by the Hague, and in order to avoid confusion, the original numbering of any remaining figures should remain the same and not be renumbered. Additional replacement sheets may be necessary to show the renumbering of the remaining figures. 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 drawings in compliance with the requirement therefor, care must be exercised to avoid introduction of anything which could be construed to be new matter prohibited by 35 U.S.C. 132 and 37 CFR 1.121.
Reply Reminder
Applicant is reminded that any amendment filed as provided by 37 CFR 1.312 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.
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:
Online via the USPTO's Electronic Filing System‐Web (EFS‐Web) (Registered eFilers only) https://www.uspto.gov/patents/apply
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 USC § 112 (a) and (b), as outlined above.
Contact Information
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Sara S Sahneh whose telephone number is (571)272-9652. The examiner can normally be reached Monday- Friday, 8:30 AM-4:00 PM (MT).
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, Justin M. 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.
/SARA S SAHNEH/Examiner, Art Unit 2924
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