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1504.04 Considerations Under 35 USC

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1504.04 Considerations Under 35 USC DESIGN PATENTS 1504.04 The following form paragraphs may be used in a The drawing in a design application is incorporated second or subsequent action where appropriate. into the claim by use of the claim language “as shown.” ¶ 15.38 Rejection Maintained The arguments presented have been carefully considered, but Additionally, the drawing disclosure can be supple- are not persuasive that the rejection of the claim under [1] should mented by narrative description in the specification be withdrawn. (see MPEP § 1503.01, subsection II). This descrip- Examiner Note: tion is incorporated into the claim by use of the lan- In bracket 1, insert basis of rejection. guage “as shown and described.” See MPEP § 1503.01, subsection III. ¶ 15.39 Obviousness Under 35 U.S.C. 103(a) Repeated It remains the examiner’s position that the [1] design claimed is I. 35 U.S.C. 112, FIRST AND SECOND obvious under 35 U.S.C. 103(a) over [2]. PARAGRAPHS Examiner Note: In bracket 1, insert name of design. Enablement and Scope of Protection ¶ 15.39.01 35 U.S.C. 103(a) Rejection Repeated (Multiple Any analysis for compliance with 35 U.S.C. 112 References) should begin with a determination of whether the It remains the examiner’s position that the claim is obvious under 35 U.S.C. 103(a) over [1] in view of [2]. claims satisfy the requirements of the second para- graph before moving on to the first paragraph. See In ¶ 15.39.02 Final Rejection Under 35 U.S.C. 103(a) (Single re Moore, 439 F.2d 1232, 169 USPQ 236 (CCPA Reference) 1971). Therefore, before any determination can be The claim is again and FINALLY REJECTED under 35 U.S.C. made as to whether the disclosure meets the require- 103(a) over [1]. ments of 35 U.S.C. 112, first paragraph, for enable- Examiner Note: ment, a determination of the scope of protection See form paragraphs in MPEP Chapter 700, for “Action is sought by the claim must be made. However, since the Final” and “Advisory after Final” paragraphs. drawing disclosure and any narrative description in ¶ 15.40 Final Rejection Under 35 U.S.C. 103(a) (Multiple the specification are incorporated into the claim by References) the use of the language “as shown and described,” any The claim is again and FINALLY REJECTED under 35 U.S.C. determination of the scope of protection sought by the 103(a) as being unpatentable over [1] in view of [2]. claim is also a determination of the subject matter that must be enabled by the disclosure. Hence, if the Examiner Note: See form paragraphs in MPEP Chapter 700 for “Action is appearance and shape or configuration of the design Final” and “Advisory after Final” paragraphs. for which protection is sought cannot be determined or understood due to an inadequate visual disclosure, then the claim, which incorporates the visual disclo- 1504.04 Considerations Under 35 U.S.C. sure, fails to particularly point out and distinctly claim the subject matter applicant regards as their invention, 112 [R-5] in violation of the second paragraph of 35 U.S.C. 112. 35 U.S.C. 112. Specification. Furthermore, such disclosure fails to enable a The specification shall contain a written description of the designer of ordinary skill in the art to *>make an arti- invention, and of the manner and process of making and using it, cle having< the shape and appearance of the design in such full, clear, concise, and exact terms as to enable any per- for which protection is sought. In such case, a rejec- son skilled in the art to which it pertains, or with which it is most tion of the claim under both the first and second para- nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his inven- graphs of 35 U.S.C. 112 would be warranted. An tion. evaluation of the scope of the claim under 35 U.S.C The specification shall conclude with one or more claims par- 112, second paragraph, to determine whether the dis- ticularly pointing out and distinctly claiming the subject matter closure of the design meets the enablement require- which the applicant regards as his invention. ment of 35 U.S.C. 112, first paragraph, cannot be ***** based on the drawings alone. The scope of a claimed 1500-35 Rev. 5, Aug. 2006 1504.04 MANUAL OF PATENT EXAMINING PROCEDURE design is understood to be limited to those surfaces or article embodying it.” Ex parte Cady, 1916 C.D. 57, portions of the article shown in the drawing in full 61, 232 O.G. 619, 621 (Comm’r Pat. 1916). lines in combination with any additional written The undisclosed surfaces not seen during sale or description in the specification. The title does not use are not required to be described in the specifica- define the scope of the claimed design but merely tion even though the title of the design is directed to identifies the article in which it is embodied. See the complete article because the design is embodied MPEP § 1503.01, subsection I. It is assumed that the only in those surfaces which are visible. Ex parte claim has been crafted to protect that which the appli- Salsbury, 38 USPQ 149, 1938 C.D. 6 (Comm’r Pat. cant “regards as his invention.” In re Zahn, 617 F.2d 1938). While it is not necessary to show in the draw- 261, 204 USPQ 988 (CCPA 1980). Therefore, when ing those visible surfaces that are flat and devoid of visible portions of the article embodying the design surface ornamentation, they should be described in are not shown, it is because they form no part of the the specification by way of a **>descriptive state- claim to be protected. It is prima facie evidence that ment< if they are considered part of the claimed the scope of the claimed design is limited to those sur- design. Ex parte Salsbury, 38 USPQ 149, 1938 C.D. 6 faces “as shown” in the application drawing(s) in the (Comm’r Pat. 1938). Such **>descriptive statement< absence of any additional written disclosure. See may not be used to describe visible surfaces which MPEP § 1503.01, subsection II. “[T]he adequacy of include structure that is clearly not flat. Philco Corp. the disclosure must be determined by reference to the v. Admiral Corp., 199 F. Supp. 797, 131 USPQ 413 scope asserted.” Philco Corp. v. Admiral Corp., 199 F. (D. Del. 1961). See also MPEP § 1503.02. Supp. 797, 131 USPQ 413, 418 (D. Del. 1961). How- Applications filed in which the title (in the claim) ever, it should be understood that when a surface or defines an entire article but the drawings and the spec- portion of an article is disclosed in full lines in the ification fail to disclose portions or surfaces of the drawing it is considered part of the claimed design article that would be visible either during use or on and its shape and appearance must be clearly and sale, will not be considered to violate the require- accurately depicted in order to satisfy the require- ments of the first and second paragraphs of 35 U.S.C. ments of the first and second paragraphs of 35 U.S.C. 112. Therefore, amendment to the title will not be 112. required in such applications. However, examiners Only those surfaces of the article that are visible at should include a statement in the first Office action on the point of sale or during use must be disclosed to the merits (including a notice of allowability) indicat- meet the requirement of 35 U.S.C. 112, first and sec- ing that the surface(s) or portion(s) of the article that ond paragraphs. “The drawing should illustrate the would be normally visible but are not shown in the design as it will appear to purchasers and users, since drawing or described in the specification are under- the appearance is the only thing that lends patentabil- stood to form no part of the claimed design and there- ity to it under the design law.” Ex parte Kohler, 1905 fore, the determination of patentability of the claimed C.D. 192, 192, 116 O.G. 1185, 1185 (Comm’r Pat. design is based on the views of the article shown in 1905). The lack of disclosure of those surfaces of the the drawing and the description in the specification. article which are hidden during sale or use does not Form paragraph 15.85 may be used for this purpose. violate the requirements of the first and second para- When a claim is rejected under 35 U.S.C. 112, first graphs of 35 U.S.C. 112 because the “patented orna- and second paragraphs, as nonenabling and indefinite mental design has no use other than its visual due to an insufficient drawing disclosure, examiners appearance....” In re Harvey, 12 F.3d 1061, 1064, must specifically identify in the Office action what the 29 USPQ2d 1206, 1208 (Fed. Cir. 1993). Therefore, deficiencies are in the drawing. A mere statement that to make the “visual appearance” of the design merely the claim is nonenabling and indefinite due to the involves the reproduction of what is shown in the poor quality of the drawing is not a sufficient explana- drawings; it is not necessary that the functionality of tion of the deficiencies in the drawing disclosure. the article be reproduced as this is not claimed.
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