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 .
Specification Objections
The following formal matters are noted:
Risk of Introducing Functional Language
Descriptions of the reproductions are not required to be written in any particular format, however, if they do not describe the views of the drawing clearly and accurately, the examiner should object to the unclear and/or inaccurate descriptions and suggest language which is more clearly descriptive of the views (MPEP 1503.01 (II)).
The specification includes the statement: “Key design feature of this industrial design product: Its shape;” This language is objected to as being vague and uninformative. All design claims inherently cover the shape and surface appearance of the article. Thus, this statement does not meaningfully contribute to the clarity of the disclosure and may be misleading.
The phrase “Key design feature” sometimes raises concern if it implies functionality or claim limitation, which can trigger a 35 U.S.C. 112 refusal if it introduces ambiguity about the scope of the claim.
Applicant is advised that this language is not required under U.S. design practice or Hague examination standards (see MPEP § 1503.01(I) and § 2920.04(a)(II)). Applicant may wish to remove or revise this statement to avoid confusion or redundancy. This is a suggestion for improved clarity, not a requirement at this time.
Description of the Reproductions
Descriptions of the reproductions are not required to be written in any particular format, however, if they do not describe the views of the drawing clearly and accurately, the examiner should object to the unclear and/or inaccurate descriptions and suggest language which is more clearly descriptive of the views (MPEP 1503.01 II).
The specification includes the statement: “The picture or photo that best represents the key design feature:” This statement is objected to because the reproductions provided are line drawings and not photographic images. Referring to a line drawing as a “picture” or “photo” is inaccurate and may cause confusion regarding the nature of the disclosure.
For clarity and consistency with Hague practice and U.S. examination guidelines (see MPEP § 2909.02 and § 2920.04(a)(II)), it is recommended that the phrase “picture or photo” be replaced “reproduction” where appropriate.
Applicant is not required to make this change, but may wish to do so to place the application in better form and avoid mischaracterization of the drawing medium.
Description of the Reproductions
No description of the design in the specification beyond a brief description of the Reproduction is generally necessary, since as a rule the illustration in the Reproduction views is its own best description. See MPEP § 1503.01 (II). The specification is objected to because it includes the statement:
“The reproduction 1.10 is a reference view showing the state of use of the product and do not form part of the claimed design.”
This statement is objectionable under MPEP §§ 1503.01(II)(B)(3) and 2920.04(a)(II) because it includes impermissible functional language. Specifically, the phrase “the state of use of the product” describes the operation or function of the article, rather than its ornamental appearance. Functional statements are not permitted in the specification of a design application filed under the Hague Agreement.
Even when accompanied by a disclaimer, a reference to “usage states” is improper, as it characterizes the nature of the views based on how the product operates rather than how it appears. Such language introduces functional content that is not equivalent to a general “use” statement permitted in the preamble describing the nature or intended use of the article (see MPEP § 1503.01(I)).
Moreover, referencing “state of use” may imply that the design visually varies depending on operation, which, if not clearly and consistently depicted in the reproductions, could raise concerns under 35 U.S.C. 112(a) and (b) with respect to enablement and definiteness.
Correction is required. The statement should be amended to remove the reference to function.
If Reproduction 1.10 is intended to show an environment and forms no part of the claimed design, the Examiner suggests:
-- “Reproduction 1.10 is a perspective view that illustrates subject matter in an environment which forms no part of the claimed design.” --
Applicant is required to amend the specification accordingly to avoid rejection under 35 U.S.C. 112 and to ensure compliance with the Common Regulations and USPTO Hague examination practice.
Reproduction Objections
The reproductions are objected to for failing to fully disclose the industrial design for the following:
Size of Paper
The size of the reproduction sheets is objected to for being various sizes. The reproductions accompanying an international application filed on paper shall be either pasted or printed directly onto a separate sheet of A4 (21.0 cm x 29.7 cm) or 8.5 x 11 inches (21.6 cm x 27.9cm). All reproduction sheets in an application must be the same size. 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). The separate sheet of paper shall be used upright and shall not contain more than 25 reproductions. See Section 401 (c).
Graphic representations must be of professional standard produced with drawing instruments or by electronic means and, where the application is filed on paper, must further be produced on good quality white, opaque paper, all of whose edges are cut at right angles. The industrial design represented may comprise shading and hatching to provide relief. Graphic representations executed by electronic means may be shown against a background, provided that it is neutral and plain and has only edges cut at right angles. See Hague Administrative Instructions Section 404 (b).
The examiner recommends using a lossless file format when submitting drawings through EFS-web (e.g., TIFF, PNG, GIF, BMP). EFS-web PDF Guidelines may be found at https://www.uspto.gov/patents-application-process/applying-online/efs-web-pdf-guidelines
Applicant is not required to correct the above-noted formal matter at this time; however, additional amendments may be required upon receipt of replacement sheets. The applicant may wish to amend paper size to place the application in better form.
Examiner’s Understanding - Cross Hatching
In Reproduction 1.8 of the Examiner’s annotated drawing below, it is the examiner’s understanding that the outer perimeter of the highlighted region, shown in broke line, is not part of the claimed structure. However, the structures within those broken lines are shown with solid line cross-hatching. This is an inconsistency that causes confusion. As such, to be consistent, the cross-hatching shown in the reproduction should be converted to broken lines so that it is understood those areas are not part of the claimed design. See the Examiner’s annotated drawing below for further details.
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In Examiner’s annotated drawing above, if the areas WITHIN the highlighted regions, in Reproduction 1.8, are intended to form no part of the claimed design the crosshatching should be converted to broken line or colored. The applicant is reminded that surface shading is prohibited on subject matter that forms no part of the claimed design. This same inconsistency also applies to Reproduction 1.9.
Environmental Elements
The specification is objectionable because, although it states that “Reproduction 1.10 is a reference view showing the state of use of the product and do not form part of the claimed design.” the corresponding reproduction includes environmental elements that are not properly disclaimed using an acceptable visual technique. Specifically, environmental structure in Reproduction 1.10 is shown with solid lines, which suggests that it may be part of the claimed design despite the accompanying disclaimer statement.
Under MPEP § 2920.05(c) and Hague Administrative Instructions Section 403, while disclaimer by statement is permitted, environmental subject matter must also be disclaimed by appropriate visual means in the reproduction itself. Acceptable disclaimer techniques include broken or dotted lines and coloring.
The failure to use proper visual disclaimer techniques may render the scope of the claimed design unclear and thus may raise a rejection under 35 U.S.C. 112(b) if not corrected. For compliance with USPTO practice, any environmental elements shown that form no part of the claimed design, in Reproduction 1.10, must be visually disclaimed using one of the accepted methods referenced above.
Correction is required. Applicant is advised to submit an amended Reproduction 1.10 using appropriate visual disclaimer techniques consistent with the statement in the specification.
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In the Examiner’s annotated drawings above, the highlighted elements indicate what the Examiner understands to represent the environmental structure and should be converted to broken line or shown with coloring. The above annotated Examiner’s drawings provide a reference for amendment.
Replacement Reproduction Sheet of the Reproductions
Any amended replacement Reproduction sheet of the reproductions should include all of the views appearing on the immediate prior version of the sheet, even if only one view is being amended. The view of an amended Reproduction should not be labeled as “amended”. If a Reproduction view is to be canceled, the appropriate view must be removed from the replacement sheet, and where necessary, the remaining views must be renumbered and appropriate changes made to the brief description of the several views of the reproductions for consistency.
Additional replacement sheets may be necessary to show the renumbered of the remaining views. Each Reproduction sheet of reproductions 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). Applicant is reminded that the numbering of the reproductions and legends must follow the Hague Administrative Instructions Section 405(a) consisting of two separate reproductions separated by a dot (e.g., 1.1, 1.2, 1.3, etc. for the first design, 2.1, 2.2, 2.3, etc. for the second design, and so on) (see 37 CFR 1.1026 and MPEP 2909.02). 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.
Care must be exercised to avoid introduction of anything which could be construed as new matter prohibited by 35 USC 132 and 37 CFR 1.121 when preparing amended reproductions.
Claim Refusal
35 U.S.C. § 112, (a) and (b)
The claim is refused 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:
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 due to inconsistencies, in Reproductions 1.1 and 1.4-1.9. The exact three-dimensional appearance of features identified in the Examiner’s annotated drawings on the following page cannot be determined. It is unclear to the examiner what the identified features represent. One skilled in the art would necessarily resort to conjecture attempting to understand these details.
Please see the Examiner's annotated drawings on the following page for identification of the inconsistent subject matter. In an effort to overcome the 35 U.S.C. § 112, (a) and (b) refusal, the inconsistent reproductions must be corrected by the applicant in order to disclose a consistent design throughout the reproductions.
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In Reproductions 1.1, 1.4 & 1.6 of the Examiner's annotated drawings above, the overall appearance of the elements WITHIN the highlighted boundary and identified by arrows is shown differently between the reproductions and cannot be determined. In Reproductions 1.4 & 1.6, the arrows identify a boundary line that is only partially shown in Reproduction 1.1. This same type of inconsistency can be seen when comparing reproductions 1.5 & 1.7-1.9.
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
Contact
Any inquiry concerning this communication or earlier communications from the examiner should be directed to BRYAN N. MELVIN whose telephone number is (571)272-9675. The examiner can normally be reached on Monday-Thursday 9AM-4:30PM.
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, Shawn Gingrich can be reached on 571-270-0218. 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.
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).
/BRYAN N. MELVIN/Examiner, Art Unit 2971
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