DETAILED ACTION
Notice of 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 .
Claim 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 reason(s):
The scope of the claim is unclear. Specifically, the nature of broken lines in the Reproductions has not been stated in the specification. The broken lines statement in the specification must indicate the specific purpose of broken lines so that the scope of the claim is clear; i.e. environmental subject matter, a claim boundary, indicia, or, portions of the article that form no part of the design to be patented. Clarification is suggested. Based on applicant’s disclosure, the following statement is suggested:
--The broken lines in the reproductions represent portions of the jewellery pendant and form no part of the claimed design. The other broken lines showing a chain represent environmental subject matter only and form no part of the claimed design.--
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Because some portions of the design cannot be understood from the limited views in which they appear. Specifically, the exact appearance of the facets and circular feature in central area of the jewellery pendant in Reproduction 1.3 cannot be determined from the views. Because these areas either have been shown in a single plan view, without appearing in any corresponding views, it is not possible to determine the exact nature, depth and/or configuration of the contours described. Please see the marked example on page 4, noting with arrows and gray shading, those areas that are not fully disclosed.
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In an attempt to overcome this portion of the rejection, applicant should reduce the non-enabled features indicated above to broken lines to remove them from the claim.
Applicant is kindly reminded that surface shading should not be used on unclaimed subject matter shown in broken lines to avoid confusion as to the scope of the claim (See MPEP §1503.02, subsection III, regarding surface shading on unclaimed subject matter.)
Applicant is cautioned that the amendment should meet the written description requirement of 35 U.S.C. §112(a) and it must be apparent that he/she was in possession of the amended design at the time of original filing.
If new reproductions are prepared as a response to this rejection care should 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.
Corrected reproduction sheets in compliance with 37 CFR 1.121(d) are required in reply to the Office action to avoid abandonment of the application. Any amended replacement reproduction 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 reproduction 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. Each reproduction 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.
Conclusion
The claim stands rejected under 35 U.S.C. §112(a) and (b) for the reasons set forth above.
The references not relied upon are cited as cumulative prior art.
Applicant is reminded that any reply to this Refusal 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).
Any inquiry concerning this communication or earlier communications from the examiner should be directed to NICOLE M LEECH whose telephone number is (571)272-1769. The examiner can normally be reached Monday-Friday, 8am-5pm. If attempts to reach the examiner by telephone are unsuccessful, the examiner's supervisor, Sandra Snapp can be reached on (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.
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.
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: Nicole.Leech@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.
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 Patent Center: https://patentcenter.uspto.gov
Mail: Commissioner For Patents, P.O. Box 1450, Alexandria, VA, 22313-1450
Mailing should be done sufficiently in advance to ensure the USPTO receipt prior to reply period expiration
Facsimile to the USPTO's Official Fax Number (571-273-8300) (Do Not Fax Formal Drawings)
Hand-carry to USPTO's Alexandria, Virginia Customer Service Window
For additional information regarding responding to office actions see:
https://www.uspto.gov/patents/maintain/responding-office-actions
Note that correspondence received will appear in the Patent Center, which may be viewed by the applicant at: https://patentcenter.uspto.gov
/NICOLE M. LEECH/Examiner, Art Unit 2914
