DETAILED ACTION
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 .
Examiner’s Understanding
The following are the Examiner’s understanding of the claimed design:
It is understood that the appearance of any part of the article not shown in the drawing or described in the specification forms no part of the claimed design. In re Zahn, 617 F.2d 261, 204 USPQ 988 (CCPA 1980). Therefore, the determination of patentability is based on the design for the article shown and described. For instance, in this particular application, all other views, except for the disclosed front view of this design, forms no part of the claimed design.
Although color is shown in the Reproduction, due to the following portion of the descriptive statement “the color depicted in the reproductions is not part of the claimed design.” It is the Examiner’s Understanding that color forms no part of the claimed design.
Specification
The disclosure is objected to because of the following informalities:
Trademark: A logo, “CUORE BY FIL&LEE”, forming part of the claimed design is possibly a registered trademark. In order to overcome this objection, the specification should be amended to include a statement preceding the claim identifying the trademark forming part of the claimed design and the name of the owner of the trademark. If the logo is not a registered trademark, a statement to that effect should be included in applicant’s response remarks in order to clarify the record. Please see MPEP 1512, subsection IV, for reference.
Extraneous Description: The statement following the figure description that states [[The design consists in a perfume bottle characterized by a sculptural silhouette inspired by the shape of a stylized heart; the overall configuration combines smooth and continuous curves, with balanced proportions between the organic heart-shaped body and the top cap; the design is shown in front view;]] is extraneous information describing what is shown in the reproductions, which adds no new information to the understanding of the claimed design. 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). In order to overcome this objection, The above portion of the descriptive statement should be deleted in its entirety. See Hague Rule 7(5)(a), 37 CFR 1.1024, MPEP 2920.04(a) ll.
Appropriate correction is required.
Claim Rejections - 35 USC § 112
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 the inventor or a joint inventor regards as the invention.
The claim is indefinite and nonenabling due to the following:
Inadequate Visual Disclosure: The visual disclosure is inadequate such that the appearance and shape or configuration of the design for which protection is sought cannot be determined or understood (MPEP § 1504.04). These areas that are indefinite and nonenabling include:
The single view provided within this presently claimed design is not sufficient to enable the claimed design. The three-dimensional characteristics, i.e. the depth / thickness of the complex and varying design elements and the overall perfume bottle itself, are not provided within this disclosure, and therefore any person skilled in the art would not be able to make this design without the use of conjecture. *Note that adding additional views now would most likely not meet the written description requirement under 35 USC 112(a) and add new matter.
The necessity for good drawings in a design patent application cannot be overemphasized. As the drawing constitutes the whole disclosure of the design, it is of utmost importance that it be so well executed both as to clarity of showing and completeness, that nothing regarding the design sought to be patented is left to conjecture. An insufficient drawing may be fatal to validity (35 U.S.C. 112(a) or pre-AIA 35 U.S.C. 112, first paragraph). Moreover, an insufficient drawing may have a negative effect with respect to the effective filing date of a continuing application.
Please note that, any amendment must not introduce new matter and must meet the written description requirement of 35 USC 112(a). That is, it must be apparent that the applicant was in possession of the amended design at the time of filing.
In order to overcome this rejection (1.), the Applicant should take appropriate steps in order to clarify the claim. However, please note that, any amendment must not introduce new matter and must meet the written description requirement of 35 USC 112(a). That is, it must be apparent that the applicant was in possession of the amended design at the time of filing.
The configuration, depth of the surfaces / design features, and shadows pointed to in the illustration below cannot be understood from the provided views. Since an inadequate amount of information is provided, the exact three dimensionality of the claimed design cannot be determined. These portions of the design appear as if they could have a myriad of depths and or other numerous spatial relationships to the adjacent surfaces.
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The configuration and depth of the text portion of the design cannot be understood from the provided views. Since an inadequate amount of information is provided, the exact three dimensionality of the claimed design cannot be determined. This text portion of the design appears as if it could be either surface ornamentation, concave, convex, embossed, engraved, or alternatively have other numerous spatial relationships to the adjacent fully disclosed surfaces. Further, these text design elements appear to the Examiner as though they could have been added / overlayed on top of the photograph of the product. The text lettering appears flat and not physically part of the claimed design as the appearance is not what one would expect when adhered to a non-flat and textured surface.
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To overcome these rejections (2. and 3.), the applicant may disclaim the areas or portions of a claimed design which are considered indefinite and non-enabling in the rejection under 35 U.S.C. 112 above by adding a converting these indefinite and non-enabled surfaces / design elements to form no part of the claimed design above by fading them out using a grey scale and adding a broken line around this faded out area. If the applicant does decide to fade out these areas that form no part of the claimed design and surround these design elements / surfaces in broken lines, then a broken line statement should be added to the Specification directly after the Description of the Reproduction, such as the following:
- - The broken lines and faded out portions illustrated in the drawings depict portions of the PERFUME BOTTLE that form no part of the claimed design. - -
Note: While every attempt has been made to address all possible issues with the disclosure, additional instances may exist. Applicant is reminded of the necessity to set forth a clear and consistent disclosure.
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 indefinite and 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
Corrected reproductions 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. If all the figures on a reproduction 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 reproduction sheet have been
canceled must be presented in the amendment or remarks section that explains the change to
the drawings. 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.
Discussion of the Merits of the Case:
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”, may be used for this purpose:
https://www.uspto.gov/patent/forms/forms-patent-applications-filed-or-after-september-16-2012
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 darcey.gottschalk@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.
When Responding to Official USPTO Correspondence
When responding to an official correspondence issued by the USPTO, including refusals, Ex Parte Quayle, Notice of Allowances, or Notice of Abandonments, please note the following:
The USPTO transacts business in writing. 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-application-process/applying-online/efs-web-guidance-and-resources
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-maintaining-patent/responding-office-actions
Conclusion
The claim stands rejected under 35 U.S.C. § 112 (a) and (b).
Cited Art
The prior art made of record and not relied upon is considered pertinent to applicant’s disclosure.
Contact Information
Any inquiry concerning this communication or earlier communications from the Examiner should be directed to KATHERINE E. MORRIS whose telephone number is (571)272-9621. The Examiner can normally be reached M-F, 8-4 ET.
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 on (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.
/K.E.M/
Examiner, Art Unit 2923
/WENDY L ARMINIO/Supervisory Patent Examiner, Art Unit 2923
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