The Subject Patent Already Has Underlining or ... - Bayhdolecentral

More documents

Recommendations

Info

1504.04 MANUAL OF PATENT EXAMINING PROCEDURE 'f[ 15,65 Amendment May Not Be Possible The claim might be fatally defective; that is, it might not be possible to [11 without introducing new matter (35 U.S.C. 132,37 CFR 1.121). Examiner Note: In bracket 1, identify portion of the claimed design which is insufficiently disclosed. 'f[ 15.51.01 Amendment to Disclosure Not Affecting cua«. 35 U.S.c. 132 Objection (New Matter) The [11 is objected to under 35 U.S.C. 132 and 37 CFR 1.121 as introducing new matter hot supported by the original disclosure. The original disclosure does not reasonably -convey to a designer of ordinary skill in the art that applicant was in possession of the amended-subject matter at the time the application was filed. See In reRasmussen, 650 F.2d 1212, 211 USPQ 323 (CCPA 1981). Specifically, there is no support in the original disclosure [2]. To overcome this objection, applicant may attempt to demonstrate that the original disclosure establishes that he or she was in possession of the amended subject matter or [3]. Examiner Note: 1. In bracket l,specify whether new drawing or amendment to the drawing, title or specification. 2. In bracket 2, specifically identify what -is new matter so that the basis for the objection is clear. 3. In bracket 3, insert specific suggestion how the objection may be overcome depending on the basis; such as, "the broken line showing of environmental structure in Fig. 1 ofthe new drawing may be omitted to correspond to the original drawing" or "the title may be amended by deleting the reference to environmental structure". II. 35 U.s.C.112, SECOND PARAGRAPH Defects in claim language give rise to a rejection of the claim under the second paragraph of 35 U.S.c. 112. The fact that claim language, including terms of degree, may not be precise, does not automatically render the claim indefinite under 35 U.S.C. 112, second paragraph. "[T]he definiteness of the language employed must be analyzed - not in a vacuum, but always in light of the teachings of the prior art and of the particular application disclosnre as it would be interpreted by one possessing the ordinary level of skill in the pertinent art." In re Moore, 439F.2d 1232, 1235, 169 USPQ 236, 238 (CCPA 1971). A claim may appear indefinite when read in a vacuum, but may be definite upon reviewing the application disclosure or prior art teachings. Moreover, an otherwise definite claim in a vacuum may be uncertain when reviewing the application disclosure and prior art. August 2001 1500-32 Moore, 439 F.2d at 1235 n.2, 169 USPQ at 238 n.2. See also MPEP § 2173.05(b). Use of the phrases in the claim such as "or similar article:' "or the like," or equivalent terminology has been held to be indefinite. See Ex parte Pappas, 23 USPQ2d 1636 (Bd. Pat. App. & Inter. 1992). However, the use of broadening language such as "or the like," or "or similar article" in the title when directed to the environment of the article embodying the design should not be the basis for a rejection under 35 U.S.C. 112, second paragraph. See MPEP § 1503.01, subsection 1. Examiners are reminded that there is no per se rule, and that the definiteness of claim language must be evaluated on the facts and circumstances of each application. The following form paragraphs may be used. 'f[ 15.22.02 Rejection, 35 U.S.c. 112, 2nd Paragraph ("Or the Like" In Claim) The claim is rejected under 35 U.S.C. 112, second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which applicant regards as the invention. The claim is indefinite because of the use of the-phrase "[1]" following the litle. Cancellalion of said phrase in the claim and each occurrence of the title throughout the papers, except the oath or declaration, will overcome the rejection. See Ex parte' Pappas, 23 USPQ2d 1636 (Bd. App. & Inter. 1992) and 37 CFR 1.153. Examiner Note: 1. This rejection should be used where there is another rejection in the Office action. For issue with an examiner's amendment, see form paragraph 15.69.01. 2. In bracket 1, insert --or the like-. or --or similar article--. 3. This form paragraph should not be used when"or the like" or "of similar article" in the title-is directed to the environment of the article embodying the design. 'f[ 15.69.01 Remove Indefinite Language ("Or The Like") by Examiner's Amendment The phrase [l] in the claim following the title renders the claim indefinite. By authorization of [2] in a telephone interview on [3], the phrase has been cancelled from the claim and at each occurrence of the title throughout the papers, exceptthe oath or declaralion (35 U.S.C. 112, second paragraph, and 37 CFR 1.153): See Ex parte Pappas, 23 USPQ2d 1636 (Bd. Pat. App. & Inter. 1992). Examiner Note: In bracket 1, insert objectionable phrase, e.g., --Of the like--, -or similar article--, etc, The claim should be rejected as indefinite when it cannot be determined from the designation of the design as shown in the drawing, referenced in the title
and described in the specification what article of mannfacture is being claimed, e.g., a design claimed as a "widget" which does not identify a known or recognizable article of manufacture. The following form paragraphs may be used. 'If 15.22.03 Rejection. 35 U.S.c. 112, Second Paragraph (Title Fails to Specify a Known Article ofManufacture) The claim as defined by the title is indefinite in that the title fails to.identify an article of manufacture and-thedrawing disclosure does not inherently identify the article in which the design is embodied. Therefore, any attempt to clarify the title by specifying the article in which the design _is embodied _may introduce new matter. See 35 U.S.C. 132 and 37 CFR 1.121. 'If 15.21.01 Rejection. 35 U.S.c. 112 (Second Paragraph) (Information Requested) The claim is rejected for failing to, particularly point out and distinctly claim the invention as required in 35 U.S:.c. 112, second paragraph. The title of the article in which the design is embodied orapplied is too ambiguous arid therefore indefinite for the examiner to make a proper examination of the claim under 37 CPR 1.104. Applicant is therefore required to _provide a sufficientexplanation of the nature and intended use of the article in which the claimed design is embodied or applied, so that a proper classiflcation and reliable search can be made. See 37 CFR 1.154(b)(l); MPEP 1503.01. Additional information, if available. regarding analogous fields of. search, pertinent prior art, advertising brochures and the filing of copending utility applications would also prove helpful. Ifa utility application has been filed, please furnish its application number. This information should be submitted in the form ofa'separate paper, and should not be inserted in the specification (37 CFR 1.56). See also 37 CFR 1.97, 1.98 and 1.99. 1lI. RELATIONSHIP BETWEEN THE RE QUIREMENTS OF THE FIRST AND SEC OND PARAGRAPHS OF 35 U.S.C.H2 While the requirements ofthe first and second paragraphs of 35 U.S.C. 112 are separate and distinct, the relationship between these requirements is not always easily distinguishable in design patent practice, because the drawing disclosure (which is equivalent to the written description) is incorporated into the claim by the use of the claim language "as shown." This reference to the drawing in the claim is the basis for a rejection under 35 U.S.C. 112, first paragraph, when an amendment to the drawing disclosure of the design introduces new matter (35 U.S.C. 132). A rejection under 35 U.S.C. 112, first and second paragraphs, should be made when the drawing disclosure and the claim disagree; conflict or are inconsistent, DESIGN PATENTS 1504.05 other than in scope, and confusion exists as to whether the claimed design is sufficiently disclosed in the enabling teachings of the drawings. For instance, if the subject matter defined in the claim is directed to a design embodied in a chair and the drawing only discloses a design embodied in a table, the claim should be rejected under 35 U.S.c. 112, first and second paragraphs, as being based on a nonenablingdisclosure and as being indefinite since it is not clear what article of manufacture. is being claimed. Form paragraph 15.21 may be used. 'If 15.21 Rejection, 35 U.S.c. 112. First And Second Paragraphs The Claim is rejected under 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/or for failing to particularly point out and distinctly claim the subject matter which applicant regards as the invention. Examiner Note: 1. This form paragraph should not be used when it is appropriate to make one ormore separate rejections under the first and/or the second paragraph of 35 U.S.C. 112. In other words, separate rejections under either the first or the second paragraph of 35 U.S.C. 112 are preferred. This form paragraph should only be used when either the first or the, second paragraph of35 U.S.C. 112 could be. applicable, but due to some question of interpretation, uncertainty exists as to whether the claimed invention is sufficiently described in the'enabling teachings of the specification or the claim language is indefinite. 2. A full explanation should be provided with this-rejection. Where the design claim would otherwise be patentable but for the presence of any rejection under 35 U.S.C. 112, first and/or second paragraphs, form paragraph 15.58.01 may be used. 'If 15.58.01 Claimed Design Is Patentable. (35 U.S.c. 112 Rejections) The cl
Page 2:
1453 MANUAL OF PATENT EXAMlNING PRO
Page 5:
patent cannot be reissued solely fo
Page 9 and 10:
the patent will issue to the applic
Page 11:
3. Prepare Certificate using form p
Page 15 and 16: to .accept an unintentionally delay
Page 17 and 18: HI' cx-z CFz:/ Column 10, formula x
Page 20 and 21: 1490 MANUAL OF PATENT EXAMINING PRO
Page 35 and 36: 1501 Statutes and RulesApplicable 1
Page 40 and 41: 1503.02 MANUAL OF PATENT EXAMINING
Page 43 and 44: Photographs submitted in lieu of in
Page 45 and 46: 'I 15.64 Addition of "And Described
Page 47 and 48: holding it is not a design 'for an
Page 49: A determination of ornamentality is
Page 53 and 54: 'Jf 15.10 Offensive Subject Matter
Page 55 and 56: DESIGN PATENTS Date(s) Which Can Al
Page 57: DESIGN PATENTS 1504.02 Date(s) Whic
Page 63: Additionally, the drawing disclosur
Page 68: 1504.05 MANUAL OF PATENT EXAMINING
Page 74: 1504.05 MANUAL OF PATENT EXAMINING
Page 80: 1504.20 MANUAL OFPATENTEXAMINING PR
Page 83 and 84: application. Instead, a subsequentl
Page 85: 372 F.2d 593, 152 USPQ 593 (CCPA 19
Page 93 and 94: (i} Arrangement of views. One view
Page 95 and 96: Form Paragraph 16.12 may be used to
Page 97 and 98: 1701 Office Personnel Not To Expres
Page 99 and 100: Any request for testimony addressed
Page 101: actions have been counted during th
Page 106: 1711 MANUAL OF PATENT EXAMlNING PRO
Page 109 and 110: PCT For questions and information c
Page 111 and 112: 1802 1803 1805 1807 1817.02 1824 18
Page 113 and 114: which patent protection is desired.
Page 116:
1805 MANUAL OFPATENT EXAMINING PROC
Page 121 and 122:
Ratification, State Accession or De
Page 123 and 124:
PATENT COOPERATIONTREATY 1817 Ratif
Page 125 and 126:
Ratification, State Accessionor Dec
Page 127:
ary designations are designed parti
Page 133:
(vij indicate explicitly, when it i
Page 140 and 141:
1823,02 MANUAL OF PATENT EXAMIN1NG
Page 143:
(li) a characterizing portion - pre
Page 146 and 147:
1826 MANUALOF PATENT EXAMlNlNGPROCE
Page 148 and 149:
1830 MANUAL OF PATENT EXAMINING PRO
Page 150:
1834.01 MANUAL OF PATENT EXAMINING
Page 154 and 155:
1840 MANUAL OF PATENT EXAM1NlNG PRO
Page 157 and 158:
PCTRule 33. Relevant Prior Art for
Page 159 and 160:
NO SEARCH REQUIRED IF CLAIMS· ARE
Page 163:
PATENT COOPERATION TREATY INTERNATI
Page 173 and 174:
The fact that the alternatives of a
Page 175 and 176:
sequences will be examined with cla
Page 178 and 179:
Page 180 and 181:
1851 Romania Romania Russian Federa
Page 182 and 183:
1851 MANUALOF PATENT EXAMINING PROC
Page 185 and 186:
Bulgaria Opisanie na patent za pole
Page 187 and 188:
PATENTCOOPERATION TREATY 1851 Franc
Page 189 and 190:
PATENTCOOPERATION TREATY 1851 South
Page 193:
(3) been published under Article 21
Page 198 and 199:
1864.03 MANUAL OFPATENT EXAMINING P
Page 205:
to pay the fees. If the preliminary
Page 210:
Page 217 and 218:
search report are to be indicated a
Page 219:
3. In bracket 2, insert name of add
Page 224:
1879 MANUAL OFPATENT EXAMlNlNGPROCE
Page 231:
PATENT COOPERATION TREATY INTERNATI
Page 236 and 237:
1879 MANUALOF PATENT EXAMINING PROC
Page 239:
1879.01 Time Limit for Preparing Re
Page 243:
(C) if the filing of an internation
Page 249 and 250:
izations to charge fees under 37 CP
Page 251 and 252:
(A) the international filing date i
Page 255 and 256:
1893.03(b) The Filing Date ofa U.S.
Page 258:
1893.03(c) MANUALOF PATENT EXAMININ
Page 263 and 264:
1895.01 Handling ofand Consideratio
Page 268:
1896 MANUAL OF PATENT EXANUNITNG PR
Page 272:
1901;03 MANUAL OF PATENT EXAMINING
Page 276:
Page 283 and 284:
2001.06 Sources of Information All
Page 285 and 286:
individuals may satisfy their duty
Page 289:
2010 Office Handling of Duty of Dis
Page 293 and 294:
2105 Patentable Snbject Matter - Ma
Page 295 and 296:
2172 Subject Matter Which Applicant
Page 297 and 298:
Chakrabarty, the Board of Patent Ap
Page 300 and 301:
Page 303 and 304:
eflecting Congressional intent, is
Page 305 and 306:
empt" the law of nature. A patent c
Page 307 and 308:
aliased pixel illumination intensit
Page 310 and 311:
Page 312 and 313:
Page 314:
Page 318:
Page 323:
evidence can be provided that shows
Page 326:
Page 332:
Page 335:
Office cannot maintain the rejectio
Page 339:
no express basis in the claim." The
Page 343:
(Fed. Cir. 2001) (term "having" in
Page 346 and 347:
Page 348 and 349:
Page 350 and 351:
Page 352 and 353:
Page 354 and 355:
Page 356:
show all

The Subject Patent Already Has Underlining or ... - Bayhdolecentral

Create successful ePaper yourself

Delete template?

Save as template?