1504.04 Considerations Under 35 U.S.C. 112 [R-07.2022]

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(a) and (b)

A.Enablement and Scope of Protection

Any analysis for compliance with 35 U.S.C. 112 should begin with a determination of the scope of protection sought by the claims. 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(a) (or for applications filed prior to September 16, 2012, pre-AIA 35 U.S.C. 112, first paragraph), for enablement, a determination of whether the claims meet the requirements of 35 U.S.C. 112(b) (or for applications filed prior to September 16, 2012, pre-AIA 35 U.S.C. 112 , second paragraph) 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 violates 35 U.S.C. 112(b) or (pre-AIA 35 U.S.C. 112, second paragraph, because it 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. Furthermore, such disclosure fails to enable a designer of ordinary skill in the art to make an article having the shape and appearance of the design for which protection is sought. In such case, a rejection of the claim under both 35 U.S.C. 112(a) and (b) (or for applications filed prior to September 16, 2012, the first and second paragraphs of pre-AIA 35 U.S.C. 112) would be warranted.

Some claimed designs are capable of being enabled and definite, as required by 35 U.S.C. 112, despite being visually disclosed using only a single plan- or planar-view. For example, compliance with 35 U.S.C. 112 was at issue in In re Maatita, 900 F.3d 1369, 127 USPQ2d 1640 (Fed. Cir. 2018), where a design for a shoe bottom was disclosed using only a two-dimensional, plan-view. The Federal Circuit stated that “where the sufficiency of a disclosure for purposes of [35 U.S.C.] § 112 depends on whether a drawing adequately discloses the design of an article, we believe the level of detail required should be a function of whether the claimed design for the article is capable of being defined by a two-dimensional, plan- or planar-view illustration.” Maatita, 900 F.3d at 1378. In its analysis, the Federal Circuit distinguished the design for a rug or a placemat from the design for an entire shoe or teapot, which is “inherently three-dimensional and could not be adequately disclosed with a single, plan- or planar-view drawing.” Id. The Federal Circuit held that because the scope of the claimed shoe bottom design was capable of being understood from a single plan-view, the claim satisfied the enablement and definiteness requirements of 35 U.S.C. 112. Id. at 1378-9.

An evaluation of the scope of the claim under 35 U.S.C. 112(b) (or for applications filed prior to September 16, 2012, pre-AIA 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(a) or for applications filed prior to September 16, 2012, pre-AIA 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 of the design identifies the article in which the design is embodied by the name generally known and used by the public and may contribute to defining the scope of the claim. See MPEP § 1503.01, subsection I. It is assumed that the claim has been crafted to protect that which the inventor or a joint inventor, or for applications subject to pre-AIA 35 U.S.C. 112, second paragraph, the applicant “regards as his invention.” See 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.” See 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 35 U.S.C. 112(a) and (b) (or for applications filed prior to September 16, 2012, the first and second paragraphs of pre-AIA 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(a) and (b) (or for applications filed prior to September 16, 2012, pre-AIA 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.” See 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 35 U.S.C. 112(a) and (b) (or for applications filed prior to September 16, 2012, the first and second paragraphs of pre-AIA 35 U.S.C. 112) because the “patented ornamental design has no use other than its visual appearance….” See 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. In essence, the function of a design is “that its appearance adds attractiveness, and hence commercial value, to the article embodying it.” See 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. See 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 descriptive statement if they are considered part of the claimed design. See Ex parte Salsbury, 38 USPQ 149, 1938 C.D. 6 (Comm’r Pat. 1938). Such descriptive statement may not be used to describe visible surfaces which include structure that is clearly not flat. See 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 35 U.S.C. 112(a) and (b) (or for applications filed prior to September 16, 2012, the first and second paragraphs of pre-AIA 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(a) and (b) (or for applications filed prior to September 16, 2012, pre-AIA 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. Rather, 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(a) and (b) (or for applications filed prior to September 16, 2012, pre-AIA 35 U.S.C. 112, first and second paragraphs), 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(a) and (b) (or for applications filed prior to September 16, 2012, pre-AIA 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 make an article having 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 inventor or a joint inventor (or, for applications subject to pre-AIA 35 U.S.C. 112, second paragraph, the applicant) regards as his or her invention. Form paragraph 15.21 may be used to reject a claim for the above reasons.

B.New Matter

New matter is subject matter which has no support in the original specification, drawings or claim (MPEP § 608.04(a)). An amendment to the claim must have support in the original disclosure. See 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) (stating that “a design patent applicant may amend the drawing in his application before final rejection and is entitled to have his thus amended claim reconsidered and reexamined” and finding that the amended figures did not represent a mere clarification of detail but rather constituted new matter, not derivable from the original disclosure) (emphasis in original).

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 support 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. See MPEP § 1503.01, subsection I. Form paragraph 15.51.01 may be used.

A design claim may be amended by broadening or narrowing its scope within the bounds of the disclosure as originally filed provided it complies with the written description requirement of 35 U.S.C. 112(a) (or for applications filed prior to September 16, 2012, pre-AIA 35 U.S.C. 112, first paragraph). See MPEP § 1504.04, subsection I.C (evaluating amendments affecting the claim for compliance with the written description requirement). An amendment to the claim, however, which has no support 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(a) (or for applications filed prior to September 16, 2012, pre-AIA 35 U.S.C. 112, first paragraph) as failing to comply with the written description requirement. Similarly, if an amendment to the title directed to the article in which the design is embodied has no support in the original application, the claim will be rejected under 35 U.S.C. 112(a) (or for applications filed prior to September 16, 2012, pre-AIA 35 U.S.C. 112, first paragraph), as failing to comply with the written description requirement thereof. Ex parte Strijland, 26 USPQ2d 1259, 1262 (Bd. Pat. App. & Inter. 1992).

An example of an amendment which introduces new matter would be an amendment changing the configuration of the original design by the addition of previously undisclosed subject matter. A change in the configuration of the design is considered a departure from the original disclosure and introduces new matter (37 CFR 1.121(f)). See In re Salmon, 705 F.2d 1579, 217 USPQ 981 (Fed. Cir. 1983). “In In re Salmon, the court held that an earlier filed design application showing a chair with a square seat did not describe a later claimed design for a chair with a circular seat; thus, the earlier was not a description of the later….” In re Daniels, 144 F.3d 1452, 1457, 46 USPQ2d 1788, 1790 (Fed. Cir. 1998).

Another example of an amendment which introduces new matter would be an amendment changing the surface appearance of the original design by the addition of previously undisclosed subject matter. Removal of three-dimensional surface treatment that is an integral part of the configuration of the original design, for example, beading, grooves, and ribs, is an additional example of an amendment that would introduce new matter. See MPEP § 1503.02, subsection IV. 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 the applicant was in possession of this amended configuration at the time the application was filed. An amendment, however, which alters the appearance of the original design by removing two-dimensional, superimposed surface treatment would not introduce new matter 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).

Also, an amendment that changes the scope of a design by either converting originally-disclosed solid line structure to broken lines or converting originally-disclosed broken line structure to solid lines would not introduce new matter because such amendment would not introduce subject matter that was not originally disclosed. Similarly, such an amendment to the design would not be a change in configuration of the original design as addressed by the court in Salmon (finding that the parent application disclosing a stool with a square seat did not provide written description support for a seat of another (i.e., circular) configuration). Where such an amendment affects the claimed design, however, the resulting amended design must be evaluated for compliance with the written description requirement. See MPEP § 1504.04, subsection I.C.

Additional examples of amendments that would not introduce new matter include: (A) a preliminary amendment filed simultaneously with the application papers (see MPEP § 608.04(b)); and (B) the inclusion of a disclaimer in the original specification or on the drawings/photographs as filed (see MPEP §§ 1503.01 and 1503.02).

C.Written Description1. General Principles Governing Compliance with the Written Description Requirement for Design Applications

The scope of a design claim is defined by what is shown in full lines in the application drawings. Contessa Food Prods., Inc. v. Conagra, Inc., 282 F.3d 1370, 1378, 62 USPQ2d 1065, 1069 (Fed. Cir. 2002) (“If features appearing in the figures are not desired to be claimed, the patentee is permitted to show the features in broken lines to exclude those features from the claimed design, and the failure to do so signals inclusion of the features in the claimed design.” (citing Door-Master Corp. v. Yorktowne, Inc., 256 F.3d 1308, 1313, 59 USPQ2d 1472, 1475 (Fed. Cir. 2001)). 35 U.S.C. 112(a) (or for applications filed prior to September 16, 2012, pre-AIA 35 U.S.C. 112, first paragraph) provides that “[t]he 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 . . . .” The test for sufficiency of written description is the same for design and utility patents. In re Daniels, 144 F.3d 1452, 1455, 46 USPQ2d 1788, 1789 (Fed. Cir. 1998). See also In re Owens, 710 F.3d 1362, 1366, 106 USPQ 2d 1248, 1250 (Fed. Cir. 2013). For designs, “[i]t is the drawings of the design patent that provide the description of the invention.” Daniels, 144 F.3d at 1455, 46 USPQ2d at 1789 (stating, “Although linguists distinguish between a drawing and a writing, the drawings of the design patent are viewed in terms of the ‘written description’ requirement of Section 112.”).

In evaluating written description, “the test for sufficiency is whether the disclosure of the application relied upon reasonably conveys to those skilled in the art that the inventor had possession of the claimed subject matter as of the filing date.” Ariad Pharms., Inc. v. Eli Lilly & Co., 598 F.3d 1336, 1351, 94 USPQ2d 1161, 1172 (Fed. Cir. 2010) (citations omitted). See also Daniels, 144 F.3d at 1456, 46 USPQ2d at 1789. With respect to showing possession, the Federal Circuit has emphasized that “the hallmark of written description is disclosure” and “[t]hus, ‘possession as shown in the disclosure’ is a more complete formulation.” Ariad, 598 F.3d at 1351, 94 USPQ2d at 1172. Accordingly, “the test requires an objective inquiry into the four corners of the specification from the perspective of a person of ordinary skill in the art” and “[b]ased on that inquiry, the specification must describe an invention understandable to that skilled artisan and show that the inventor actually invented the invention claimed.” Id.

In Racing Strollers, the Federal Circuit stated, “[a]s a practical matter, meeting the [written description] requirement of § 112 is, in the case of an ornamental design, simply a question of whether the earlier application contains illustrations, whatever form they may take, depicting the ornamental design illustrated in the later application and claimed therein . . . .” Racing Strollers Inc. v. TRI Industries Inc., 878 F.2d 1418, 1420, 11 USPQ2d 1300, 1301 (Fed. Cir. 1989) (en banc). Subsequent cases explain that the written description analysis must be conducted from the perspective of an ordinary designer. See, e.g., Daniels, 144 F.3d at 1456–57, 46 USPQ2d at 1790 (stating “The leecher as an article of manufacture is clearly visible in the earlier design application, demonstrating to the artisan viewing that application that [the inventor] had possession at that time of the later claimed design of that article . . . .”) (citations omitted) (emphasis added); In re Owens, 710 F.3d at 1368, 106 USPQ2d at 1252 (stating “the question for written description purposes is whether a skilled artisan would recognize upon reading the parent’s disclosure that the trapezoidal top portion of the front panel might be claimed separately from the remainder of that area.” (citing Ariad, 598 F.3d at 1351, 94 USPQ2d at 1172) (emphasis added)).

2. Applying the General Principles to Specific Situations in Design Applications Where Issues of Compliance with the Written Description Requirement May Arise

A written description requirement issue generally involves the question of whether the subject matter of a claim is supported by the disclosure of an application as filed. A question as to whether the original or earlier disclosure of a design provides an adequate written description for a claimed design may arise when an amended claim is presented, or where a claim to entitlement of an earlier priority date or effective filing date (e.g., under 35 U.S.C. 120) has been made. See MPEP § 1504.20. For example, a continuation application must comply with the written description requirement to be entitled to a parent application’s effective filing date. See Owens, 710 F.3d at 1366, 106 USPQ2d at 1250 (citing Daniels, 144 F.3d at 1456, 46 USPQ2d at 1790). In Daniels, the Federal Circuit concluded that applicant’s parent application showed possession of the invention claimed in the continuing application such that the continuing application was entitled to claim benefit under 35 U.S.C. 120. Daniels, 144 F.3d at 1457, 46 USPQ2d at 1790. Compare Munchkin, Inc. v. Luv N’ Care, Ltd., 110 USPQ2d 1580, 1583 (P.T.A.B. 2014) (finding that the claim of a design patent for a drinking cup was not entitled to the parent’s effective filing date; specifically, the Board found that “[a]lthough [the parent] application discloses that an oval or other shape may be used for the spout, it does not identify the specific shape of the spout in the claimed design or otherwise reasonably convey to those skilled in the art that the inventor had possession of the claimed design. See Ariad , 598 F.3d at 1351.”).

Similarly, an amended claim must find written description support in the original disclosure. The resulting amended design as a whole must be evaluated for compliance with the 35 U.S.C. 112(a) or pre-AIA 35 U.S.C. 112, first paragraph, written description requirement. The fact that an amendment only affects features that were originally disclosed does not negate the need to determine whether the amendment complies with the written description requirement, i.e., whether the disclosure of the application relied upon reasonably conveys to those skilled in the art that the inventor had possession of the now claimed design as of the filing date. See Ariad, 598 F.3d 1336, 1348, 94 USPQ2d 1161, 1170 (“[O]ne can fail to meet the requirements of the statute in more than one manner, and the prohibition on new matter does not negate the need to provide a written description of one’s invention.”). In determining whether a claim complies with the written description requirement, an examiner should bear in mind that “the written description question does not turn upon what has been disclaimed, but instead upon whether the original disclosure ‘clearly allow[s] persons of ordinary skill in the art to recognize that [the inventor] invented what is claimed.’” Owens, 710 F.3d at 1368, 106 USPQ2d at 1252 (quoting Ariad, 598 F.3d at 1351, 94 USPQ2d at 1172) (alternations in original) (emphasis added).

Issues of compliance with the written description requirement may arise where an amended claim or a claim in a continuing design application (i.e., a later-claimed design) is composed of only a subset of elements of the originally disclosed design. For example, the later-claimed design converts originally-disclosed solid line structure to broken lines or converts originally-disclosed broken line structure to solid lines, but does not introduce any new elements that were not originally disclosed. In the vast majority of such situations, the examiner will be able to determine based on a review of the drawings that the inventor had possession of the later-claimed design at the time of filing the original/earlier application. See Racing Strollers, 878 F.2d at 1420, 11 USPQ2d at 1301 (in discussing the requirements for satisfying 35 U.S.C. 120, the Federal Circuit stated, “As a practical matter, meeting the [written description] requirement of Sec. 112 is, in the case of an ornamental design, simply a question of whether the earlier application contains illustrations, whatever form they may take, depicting the ornamental design illustrated in the later application and claimed therein . . . .”). See also Daniels, 144 F.3d at 1456-1457, 46 USPQ2d at 1790 (finding that “[t]he leecher as an article of manufacture is clearly visible in the earlier design application, demonstrating to the artisan viewing that application that [the inventor] had possession at that time of the later claimed design of that article [alone without the leaf ornamentation claimed in the earlier design application]”). In these situations, no further analysis by the examiner would be necessary with respect to the written description requirement.

In limited situations, however, the examiner will not be able to conclude based on a simple review of the drawings that the inventor had possession of the later-claimed design at the time of filing the original/earlier application. That is, even though elements of the later-claimed design may be individually visible in the original/earlier disclosure (whether shown in solid or broken lines), additional consideration is required by the examiner to determine whether the later-claimed design was reasonably conveyed to the ordinary skilled designer and therefore, supported by the original/earlier disclosure. As with all determinations for compliance with the written description requirement, the examiner should consider what design the original/earlier application — in its totality– would have reasonably conveyed to an ordinary designer at the time of the invention. See Ariad, 598 F.3d at 1351, 94 USPQ2d at 1172 (“[T]he test for sufficiency is whether the disclosure of the application relied upon reasonably conveys to those skilled in the art that the inventor had possession of the claimed subject matter as of the filing date.”). See also Owens, 710 F.3d at 1368, 106 USPQ2d at 1252 (citing Ariad, 598 F.3d at 1351, 94 USPQ2d at 1172). If the examiner determines that the later-claimed design was not reasonably conveyed to an ordinary designer by the original/earlier disclosure, the examiner should reject the claim for lack of written description (or when evaluating a priority or benefit claim, the application would not be entitled to the earlier date); see MPEP §§ 201.06(c), subsections III and XII, 602.05, and 1504.20).

3. Ensure That the Record is Clear

The Office has the initial burden of establishing a prima facie case for any rejection. If the examiner determines that a rejection for lack of written description is appropriate, the examiner must set forth express findings of fact which support that rejection. See MPEP § 2163 (examination guidelines pertaining to written description requirement).

After receiving a response from the applicant, before rejecting the claim again under 35 U.S.C. 112(a) or pre-AIA 35 U.S.C. 112, first paragraph, for lack of written description, the examiner should review the basis for the rejection in view of the record as a whole, including amendments, arguments, and any evidence submitted by applicant, such as affidavits or declarations. If the record as a whole demonstrates that the written description requirement is satisfied, the examiner should not repeat the rejection in the next Office action. If, on the other hand, the record does not demonstrate that the written description is adequate to support the claim, the examiner should repeat the rejection under 35 U.S.C. 112(a) or pre-AIA 35 U.S.C. 112, first paragraph, fully respond to applicant’s rebuttal arguments, and properly treat any evidence submitted by applicant in the reply. Any affidavits or declarations filed by applicant that are relevant to the 35 U.S.C. 112(a) or pre-AIA 35 U.S.C. 112, first paragraph, written description requirement, must be thoroughly analyzed and discussed in the Office action when rejecting the claim again for lack of written description. See In re Alton, 76 F.3d 1168, 1176, 37 USPQ2d 1578, 1584 (Fed. Cir. 1996).

If the examiner determines that an amendment to a design claim is not supported by the original disclosure, the examiner should set forth a rejection under 35 U.S.C. 112(a), (or for applications filed prior to September 16, 2012, pre-AIA 35 U.S.C. 112, first paragraph) in the next Office action. The Office action should specifically identify the differences or changes made to the claimed design that are not supported in the original disclosure. A general statement by the examiner that the amended drawing, specification or title contains new matter is not sufficient. If possible, the examiner should 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(a) and (b) (or for applications filed prior to September 16, 2012, pre-AIA 35 U.S.C. 112, first and second paragraphs) for lack of enablement and indefiniteness, and it is clear that the disclosure as originally filed cannot support any definite and enabled design claim without the introduction of new matter, the record of the application should reflect that the application is seen to be fatally defective. Form paragraph 15.65 may be used to set forth this position.

II. 35 U.S.C. 112(b) or pre-AIA 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(b) (or for applications filed prior to September 16, 2012, the second paragraph of pre-AIA 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(b) (or for applications filed prior to September 16, 2012, pre-AIA 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.” See 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(b) (or for applications filed prior to September 16, 2012, pre-AIA 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.

Rejections under 35 U.S.C. 112(b) (or for applications filed prior to September 16, 2012, pre-AIA 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(a) (or for applications filed prior to September 16, 2012, pre-AIA 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 the inventor or a joint inventor, or for applications subject to pre-AIA 35 U.S.C. 112, second paragraph, the applicant regards as the invention. Form paragraph 15.22 may be used.

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.

Where the design claim would otherwise be patentable but for the presence of any rejection under 35 U.S.C. 112(a) and/or (b) (or pre-AIA 35 U.S.C. 112, first and/or second paragraphs), form paragraph 15.58.01 may be used.

Form paragraphs 15.38 and 15.40.01 may be used in a second or subsequent action, where appropriate (see MPEP § 1504.02).