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1504.04 Considerations Under 35 U.S.C. 112 [R-2] - 1500 Design Patents
1504.04 Considerations Under 35 U.S.C. 112 [R-2]
35 U.S.C. 112 Specification.
The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention.
The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.
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The drawing in a design application is incorporated into the claim by use of the claim language "as shown."
Additionally, the drawing disclosure can be supplemented by narrative description in the specification (see MPEP § 1503.01, subsection II). This description is incorporated into the claim by use of the language "as shown and described." See MPEP § *>1503.01, subsection III<.
I. 35 U.S.C. 112, FIRST >AND SECOND< PARAGRAPH>S<
* Enablement and **>Scope of Protection<
** >Any analysis for compliance with 35 U.S.C. 112 should begin with a determination of whether the claims satisfy the requirements of the second paragraph before moving on to the first paragraph. See In re Moore, 439 F.2d 1232, 169 USPQ 236 (CCPA 1971). Therefore, before any determination can be made as to whether the disclosure meets the requirements of 35 U.S.C. 112, first paragraph, for enablement, a determination of the scope of protection sought by the claim must be made. However, since the drawing disclosure and any narrative description in the specification are incorporated into the claim by the use of the language "as shown and described," any determination of the scope of protection sought by the claim is also a determination of the subject matter that must be enabled by the disclosure. Hence, if the appearance and shape or configuration of the design for which protection is sought cannot be determined or understood due to an inadequate visual disclosure, then the claim, which incorporates the visual disclosure, fails to particularly point out and distinctly claim the subject matter applicant regards as their invention, in violation of the second paragraph of 35 U.S.C. 112. Furthermore, such disclosure fails to enable a designer of ordinary skill in the art to reproduce the shape and appearance of the design for which protection is sought. In such case, a rejection of the claim under both the first and second paragraphs of 35 U.S.C. 112 would be warranted.< An evaluation of the scope of the claim >under 35 U.S.C 112, second paragraph,< to determine ** >whether the disclosure of the design< meets the enablement requirement of 35 U.S.C. 112, first paragraph, cannot be based on the drawings alone. The scope of a claimed design is understood to be limited to those surfaces or portions of the article shown in the drawing in full lines in combination with any additional written description in the specification. The title does not define the scope of the claimed design but merely identifies the article in which it is embodied. See MPEP § 1503.01, subsection I. It is assumed that the claim has been crafted to protect that which the applicant "regards as his invention." In re Zahn, 617 F.2d 261, 204 USPQ 988 (CCPA 1980). Therefore, when visible portions of the article embodying the design are not shown, it is because they form no part of the claim to be protected. It is prima facie evidence that the scope of the claimed design is limited to those surfaces "as shown" in the application drawing(s) in the absence of any additional written disclosure. See MPEP § 1503.01, subsection II. "[T]he adequacy of the disclosure must be determined by reference to the scope asserted." Philco Corp. v. Admiral Corp., 199 F. Supp. 797, 131 USPQ 413, 418 (D. Del. 1961). >However, it should be understood that when a surface or portion of an article is disclosed in full lines in the drawing it is considered part of the claimed design and its shape and appearance must be clearly and accurately depicted in order to satisfy the requirements of the first and second paragraphs of 35 U.S.C. 112.<
Only those surfaces of the article that are visible at the point of sale or during use must be disclosed to meet the requirement of 35 U.S.C. 112, first **>and second paragraphs<. "The drawing should illustrate the design as it will appear to purchasers and users, since the appearance is the only thing that lends patentability to it under the design law." Ex parte Kohler, 1905 C.D. 192, 192, 116 O.G. 1185, 1185 (Comm'r Pat. 1905). The lack of disclosure of those surfaces of the article which are hidden during sale or use does not violate the * requirements of the first >and second< paragraph>s< of 35 U.S.C. 112 because the "patented ornamental design has no use other than its visual appearance...." In re Harvey, 12 F.3d 1061, 1064, 29 USPQ2d 1206, 1208 (Fed. Cir. 1993). Therefore, to make the "visual appearance" of the design merely involves the reproduction of what is shown in the drawings; it is not necessary that the functionality of the article be reproduced as this is not claimed. The function of a design is "that its appearance adds attractiveness, and hence commercial value, to the article embodying it." Ex parte Cady, 1916 C.D. 57, 61, 232 O.G. 619, 621 (Comm'r Pat. 1916).
The undisclosed surfaces not seen during sale or use are not required to be described in the specification even though the title of the design is directed to the complete article because the design is embodied only in those surfaces which are visible. Ex parte Salsbury, 38 USPQ 149, 1938 C.D. 6 (Comm'r Pat. 1938). While it is not necessary to show in the drawing those visible surfaces that are flat and * >devoid of surface ornamentation<, they should be described in the specification by way of a special description if they are considered part of the claimed design. Ex parte Salsbury, 38 USPQ 149, 1938 C.D. 6 (Comm'r Pat. 1938). Such special description may not be used to describe visible surfaces which include structure that is clearly not flat. Philco Corp. v. Admiral Corp., 199 F. Supp. 797, 131 USPQ 413 (D. Del. 1961). See also MPEP § 1503.02.
Applications filed in which the title (in the claim) defines an entire article but the drawings and the specification fail to disclose portions or surfaces of the article that would be visible either during use or on sale, will not be considered to violate the * requirements of the first >and second< paragraph>s< of 35 U.S.C. 112. Therefore, amendment to the title will not be required in such applications. However, examiners should include a statement in the first Office action on the merits (including a notice of allowability) indicating that the surface(s) or portion(s) of the article that would be normally visible but are not shown in the drawing or described in the specification are understood to form no part of the claimed design and therefore, the determination of patentability of the claimed design is based on the views of the article shown in the drawing and the description in the specification. Form paragraph 15.85 may be used for this purpose.
>When a claim is rejected under 35 U.S.C. 112, first and second paragraphs, as nonenabling and indefinite due to an insufficient drawing disclosure, examiners must specifically identify in the Office action what the deficiencies are in the drawing. A mere statement that the claim is nonenabling and indefinite due to the poor quality of the drawing is not a sufficient explanation of the deficiencies in the drawing disclosure. Examiners must specifically point out those portions of the drawing that are insufficient to permit an understanding of the shape and appearance of the design claimed, and, if possible, suggest how the rejection may be overcome. Form paragraphs 15.21 and 15.20.02 may be used.<
When inconsistencies between the views of the drawings are so great that the overall appearance of the design is unclear, the claim should be rejected under 35 U.S.C. 112, first >and second< paragraph>s<, as nonenabling >and indefinite, and the rejection should specifically identify all of the inconsistencies between the views of the drawing<. Otherwise, inconsistencies between drawing views will be objected to by the examiner and correction required by the applicant. See MPEP § 1503.02.
>If the visual disclosure of the claimed design as originally filed is of such poor quality that its overall shape and appearance cannot be understood, applicant should be advised that the claim might be fatally defective by using form paragraph 15.65.
As indicated above, a narrative description in the specification can supplement the drawing disclosure to define the scope of protection sought by the claim. Furthermore, such description is incorporated into the claim by the use of the language "and described" therein. However, if a description in the specification refers to embodiments or modified forms not shown in the drawing, or includes vague and nondescriptive words such as "variations" and "equivalents," or a statement indicating that the claimed design is not limited to the exact shape and appearance shown in the drawing, the claim should be rejected under 35 U.S.C. 112, first and second paragraphs, as nonenabling and indefinite. The reason being the description fails to enable a designer of ordinary skill in the art to reproduce the shape and appearance of those other embodiments, modified forms or "variations" and "equivalents" referred to in the description in the absence of additional drawing views. Furthermore, in the absence of additional drawing views, the description, which is incorporated into the claim, fails to particularly point out and distinctly claim the shape and appearance of those other embodiments, modified forms or "variations" and "equivalents" that applicants regard as their invention. Form paragraph 15.21 may be used to reject a claim for the above reasons.<
¶ 15.85 Undisclosed visible surface(s)/portion(s) of article not forming part of the claimed design
As the decision of In re Zahn, 617 F.2d 261, 204 USPQ 988 (CCPA 1980) holds that an ornamental design may be embodied in less than a complete article, it is understood that the surface(s) or portion(s) of the article that would normally be visible but are not shown in the drawing or described in the specification of the present application form(s) no part of the claimed design. Therefore, the determination of patentability of the claimed design is based on the views of the article shown in the drawing and the description in the specification.
Examiner Note
In an examiner's amendment, the above statement should be included after form paragraph 13.02.>¶ 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 fails to particularly point out and distinctly claim the subject matter which applicant regards as the invention.
The claim is indefinite and nonenabling [1].
Examiner Note
1. This form paragraph should not be used when it is appropriate to make one or more separate rejections under the first and/or the second paragraph of 35 U.S.C. 112.
2. In bracket 1, a complete explanation of the basis for the rejection should be provided.
<**>¶ 15.20.02 Suggestion To Overcome Rejection Under 35 U.S.C. 112, First and Second Paragraphs
It is suggested that applicant may submit large, clear informal drawings or photographs which show [1] in order that the examiner may be in a position to determine if the claim may be clarified without the addition of new matter (35 U.S.C. 132, 37 CFR 1.121). In the alternative, applicant may disclaim the areas or portions of the design which are considered indefinite and nonenabling by converting them to broken lines and amend the specification to include a statement that the portions of the [2] shown in broken lines form no part of the claimed design.
Examiner Note
1. In bracket 1, identify the areas or portions of the design which are unclear.
2. In bracket 2, insert title of the article.
<¶ 15.65 Amendment May Not Be Possible
The claim might be fatally defective; that is, it might not be possible to [1] 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.**>¶ 15.73 Corrected Drawing Sheets Required
Failure to submit replacement correction sheets overcoming all of the deficiencies in the drawing disclosure set forth above, or an explanation why the drawing corrections or additional drawing views are not necessary will result in the rejection of the claim under 35 U.S.C. 112, first and second paragraphs, being made FINAL in the next Office action.
<* New Matter
New matter is subject matter which has no antecedent basis in the original specification, drawings or claim ( MPEP § 608.04). An amendment to the claim must have antecedent basis in the original disclosure. 35 U.S.C. 132; 37 CFR 1.121(f). Prior to final action, all amendments will be entered in the *>application< and will be considered by the examiner. Ex parte Hanback, 231 USPQ 739 (Bd. Pat. App. & Inter. 1986). An amendment to the claim which has no antecedent basis in the specification and/or drawings as originally filed introduces new matter because that subject matter is not described in the application as originally filed. The claim must be rejected under 35 U.S.C. 112, first paragraph. An amendment to the disclosure not affecting the claim (such as environment in the title or in broken lines in the drawings), which has no antecedent basis in the application as originally filed, must be objected to under 35 U.S.C. 132 as lacking support in the application as originally filed and a requirement must be made to cancel the new matter.
The scope of a design claim is defined by what is shown in full lines in the application drawings. In re Mann, 861 F.2d 1581, 8 USPQ2d 2030 (Fed. Cir. 1988). The claim may be amended by broadening or narrowing its scope within the bounds of the disclosure as originally filed.
A change in the configuration of the claimed design is considered a departure from the original disclosure and introduces prohibited new matter ( 37 CFR 1.121(f)). See In re Salmon, 705 F.2d 1579, 217 USPQ 981 (Fed. Cir. 1983). This includes the removal of three-dimensional surface treatment that is an integral part of the configuration of the claimed design, for example, beading, grooves, and ribs. The underlying configuration revealed by such an amendment would not be apparent in the application as filed and, therefore, it could not be established that applicant was in possession of this amended configuration at the time the application was filed. >However, an amendment that changes the scope of a design by either reducing certain portions of the drawing to broken lines or converting broken line structure to solid lines is not a change in configuration as defined by the court in Salmon. The reason for this is because applicant was in possession of everything disclosed in the drawing at the time the application was filed and the mere reduction of certain portions to broken lines or conversion of broken line structure to solid lines is not a departure from the original disclosure. Examiners are cautioned that if broken line structure is converted to solid lines by way of amendment, the shape and configuration of that structure must have been fully disclosed and enabling at the time the application was filed.< An amendment which alters the appearance of the claimed design by removing two-dimensional, superimposed surface treatment may be permitted if it is clear from the application that applicant had possession of the underlying configuration of the design without the surface treatment at the time of filing of the application. See In re Daniels, 144 F.3d 1452, 1456-57, 46 USPQ2d 1788, 1790 (Fed. Cir. 1998).
Amendments to the title must have antecedent basis in the original application to be permissible. If an amendment to the title directed to the article in which the design is embodied has no antecedent basis in the original application, the claim will be rejected under 35 U.S.C. 112, first paragraph, as failing to comply with the written description requirement thereof. Ex parte Strijland, 26 USPQ2d 1259 (Bd. Pat. App. & Inter. 1992). If an amendment to the title directed to the environment in which the design is used has no antecedent basis in the original application, it will be objected to under 35 U.S.C. 132 as introducing new matter into the disclosure. See MPEP § 1503.01, subsection I.
Examples of permissible amendments filed with the original application include: (A) a preliminary amendment filed simultaneously with the application papers, that is specifically identified in the original oath/declaration as required by 37 CFR 1.63 and MPEP § 608.04(b); and (B) the inclusion of a disclaimer in the original specification or on the drawings/photographs as filed. See 37 CFR 1.152 and MPEP § 1503.01 and § 1503.02.
An example of a permissible amendment submitted after the filing of the application would be an amendment that does not involve a departure from the configuration of the original disclosure ( 37 CFR 1.121(f)).
An example of an impermissible amendment which introduces new matter would be an amendment to the claim without antecedent basis in the original disclosure which would change the configuration or surface appearance of the original design by the addition of previously undisclosed subject matter. In re Berkman, 642 F.2d 427, 209 USPQ 45 (CCPA 1981).
When an amendment affecting the claim is submitted that introduces new matter into the drawing, specification or title and a rejection under 35 U.S.C. 112, first paragraph is made, the examiner should specifically identify in the Office action the subject matter which is not considered to be supported by the original disclosure. A statement by the examiner that merely generalizes that the amended drawing, specification or title contains new matter is not sufficient. Examiners should specifically identify the differences or changes made to the claimed design that are considered to introduce new matter into the original disclosure, and if possible, suggest how the amended drawing, specification or title can be corrected to overcome the rejection. Form paragraph 15.51 may be used.
If an amendment that introduces new matter into the claim is the result of a rejection under 35 U.S.C. 112, first >and second< paragraph>s< for lack of enablement >and indefiniteness<, and it is clear that the disclosure of the claimed design as originally filed cannot be corrected without the introduction of new matter, the record of the application should reflect that the claim is seen to be fatally defective. Form paragraph 15.65 may be used to set forth this position.
¶ 15.51 35 U.S.C. 112, First Paragraph Rejection (New Matter)
The claim is rejected under 35 U.S.C. 112, first paragraph as failing to comply with the description requirement thereof since the [1] introduces new matter not 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 design now claimed at the time the application was filed. See In re Daniels, 144 F.3d 1452, 46 USPQ2d 1788 (Fed. Cir. 1998); In re Rasmussen, 650 F.2d 1212, 211 USPQ 323 (CCPA 1981).
Specifically, there is no support in the original disclosure [2].
To overcome this rejection, applicant may attempt to demonstrate that the original disclosure establishes that he or she was in possession of the amended claim or [3].
Examiner Note
1. In bracket 1, 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 rejection is clear.
3. In bracket 3, insert specific suggestion how rejection may be overcome depending on the basis; such as, "the bracket in figures 3 and 4 of the new drawing may be corrected to correspond to the original drawing" or "the specification may be amended by deleting the special description."
¶ 15.65 Amendment May Not Be Possible
The claim might be fatally defective; that is, it might not be possible to [1] 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.¶ 15.51.01 Amendment to Disclosure Not Affecting Claim - 35 U.S.C. 132 Objection (New Matter)
The [1] is objected to under 35 U.S.C. 132 and 37 CFR 1.121 as introducing new matter not 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 re Rasmussen, 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 1, 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 of the new drawing may be omitted to correspond to the original drawing" or "the title may be amended by deleting the reference to environmental structure".
*>III. < 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 disclosure as it would be interpreted by one possessing the ordinary level of skill in the pertinent art." In re Moore, 439 F.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. Moore, 439 F.2d at 1235 n.2, 169 USPQ at 238 n.2. See also MPEP § 2173.05(b).
Use of * 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 I.
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.
¶ 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 title. Cancellation 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 "or similar article" in the title is directed to the environment of the article embodying the design.
¶ 15.69.01 Remove Indefinite Language ("Or The Like") by Examiner's Amendment
The phrase [1] 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, except the oath or declaration ( 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., --or the like--, --or similar article--, etc.>Rejections under 35 U.S.C. 112, second paragraph, should be made when the scope of protection sought by the claim cannot be determined from the disclosure. For instance, a drawing disclosure in which the boundaries between claimed (solid lines) and unclaimed (broken lines) portions of an article are not defined or cannot be understood may be enabling under 35 U.S.C. 112, first paragraph, in that the shape and appearance of the article can be reproduced, but such disclosure fails to particularly point out and distinctly claim the subject matter that applicant regards as the invention. Form paragraph 15.22 may be used.
¶ 15.22 Rejection, 35 U.S.C. 112, 2nd Paragraph
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 [1].
Examiner Note
1. Use this form paragraph when the scope of the claimed design cannot be determined.
2. In bracket 1, provide a full explanation of the basis for the rejection.
<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 manufacture 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.
**>¶ 15.22.03 Rejection, 35 U.S.C. 112, Second Paragraph (Title Fails to Specify a Known Article of Manufacture)
The claim is rejected under 35 U.S.C. 112, second paragraph, as indefinite in that the title, as set forth in the claim, fails to identify an article of manufacture and the drawing disclosure does not inherently identify the article in which the design is embodied. Ex parte Strijland, 26 USPQ2d 1259, 1263 (Bd. Pat. App. & Int. 1992). 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.
<¶ 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 or applied is too ambiguous and therefore indefinite for the examiner to make a proper examination of the claim under 37 CFR 1.104.
Applicant is therefore required to provide a sufficient explanation of the nature and intended use of the article in which the claimed design is embodied or applied, so that a proper classification and reliable search can be made. See 37 CFR 1.154(b)(1); 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. If a utility application has been filed, please furnish its application number.
This information should be submitted in the form of a 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.
**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.
¶ 15.58.01 Claimed Design Is Patentable (35 U.S.C. 112 Rejections)
The claimed design is patentable over the references cited. However, a final determination of patentability will be made upon resolution of the above rejection.
Form paragraphs 15.38 and 15.40.01 may be used in a second or subsequent actioh, where appropriate (see MPEP § 1504.02).
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