2920.05(c) Considerations Under 35 U.S.C. 112 [R-07.2015]
The requirements of 35 U.S.C. 112(a) and (b) apply to nonprovisional international design applications. See 35 U.S.C. 389. Accordingly, the practice set forth in MPEP § 1504.04 regarding considerations under 35 U.S.C. 112 is generally applicable to nonprovisional international design applications. This section addresses certain additional considerations relevant to international design applications.
As discussed in MPEP § 2920.04(b), Administrative Instruction 403 allows matter shown in a reproduction for which protection is not sought to be indicated “(i) in the description referred to in Rule 7(5)(a) and/or (ii) by means of dotted or broken lines or coloring.” When using broken or dotted lines or coloring in a reproduction to indicate matter shown in a reproduction for which protection is not sought, applicants are encouraged to include an explanation of the purpose of the broken or dotted lines or coloring in the description. This may help to avoid uncertainty as to the scope of the claimed design. Similarly, applicants are encouraged not to simply rely on a description to indicate matter shown in a reproduction for which protection is not sought, but rather to also identify the matter for which protection is not sought through the use of broken or dotted lines or coloring.
The following form paragraphs may be used where the presence of undescribed broken lines or color renders the scope of the claimed design unclear.
¶ 29.21 Rejection, 35 U.S.C. 112(b) – Undescribed Broken Lines (International Design Application)
The claim is rejected for failing to particularly point out and distinctly claim the invention as required in 35 U.S.C. 112(b). The claim is indefinite because the reproductions include, in figure(s) [1], broken lines that are not described in the specification, and the scope of the claimed design cannot be determined.
If the broken line(s) represent portions of the article or environmental structure for which protection is not sought, applicant may overcome this rejection by inserting a statement similar to the following into the specification immediately preceding the claim, provided such statement does not introduce new matter (see 35 U.S.C. 132):
–The broken line showing of [2] is for the purpose of illustrating [3] and forms no part of the claimed design.–
Examiner Note:
- 1. Use this form paragraph in an international design application where the reproductions include broken lines that are not described in the specification, and the scope of the claimed design cannot be determined.
- 2. In bracket 1, insert the number(s) of the figure(s) containing the broken lines.
- 3. In bracket 2, insert name of structure.
- 4. In bracket 3, insert –portions of the “article”– or –environmental structure–.
¶ 29.23 Rejection, 35 U.S.C. 112(b) – Undescribed Broken Lines as Boundary of Design (International Design Application)
The claim is rejected for failing to particularly point out and distinctly claim the invention as required in 35 U.S.C. 112(b). The claim is indefinite because the reproductions include, in figure(s) [1], broken lines that are not described in the specification, and the scope of the claimed design cannot be determined.
If the broken lines represent a boundary line for which protection is not sought, applicant may overcome this rejection by inserting a statement similar to the following into the specification immediately preceding the claim, provided such statement does not introduce new matter (see 35 U.S.C. 132):
–The [2] broken line(s) define the bounds of the claimed design and form no part thereof.–
Examiner Note:
- 1. Use this form paragraph in an international design application where the reproductions include broken lines that are not described in the specification, and the scope of the claimed design cannot be determined.
- 2. In bracket 1, insert the number(s) of the figure(s) containing the broken lines.
- 3. In bracket 2, insert type of broken line, e.g. dashed or dot-dash or dot-dot-dash.
¶ 29.25 Rejection, 35 U.S.C. 112(b) – Unclear Use of Coloring (International Design Application)
The claim is rejected for failing to particularly point out and distinctly claim the invention as required in 35 U.S.C. 112(b). The claim is indefinite because the reproductions include coloring, in figure(s) [1], that is not described in the specification, and the scope of the claimed design cannot be determined.
If the coloring identifies matter for which protection is not sought, applicant may overcome this rejection by inserting a statement similar to the following into the specification immediately preceding the claim, provided such statement does not introduce new matter (see 35 U.S.C. 132 ):
–The portion of the design shown in the color [2] is for the purpose of illustrating [3] and forms no part of the claimed design.–
Examiner Note:
- 1. Use this form paragraph in an international design application where the reproductions include coloring that is not described in the specification, and the scope of the claimed design cannot be determined.
- 2. In bracket 1, insert the number(s) of the figure(s) containing the coloring.
- 3. In bracket 2, identify the color indicating the matter excluded from the claim.
- 4. In bracket 3, insert –portions of the “article”– or –environmental structure–.
Similar to the use of form paragraph 15.20.02 in design applications filed under 35 U.S.C. chapter 16, form paragraph 29.27 may be used in an international design application to suggest how a rejection under 35 U.S.C. 112(a) and (b) as nonenabling and indefinite due to an insufficient drawing disclosure may be overcome.
¶ 29.27 Suggestion To Overcome Rejection Under 35 U.S.C. 112(a) and (b) (International Design Application)
Applicant may indicate that protection is not sought for those portions of the reproductions which are considered indefinite and nonenabling in the rejection under 35 U.S.C. 112 above by amending the reproductions to color those portions or convert those portions to broken lines and by amending the specification to include a statement that the portions of the [1] shown in broken lines form no part of the claimed design or a statement that the portions of the [1] shown by coloring form no part of the claimed design provided such amendments do not introduce new matter (see 35 U.S.C. 132 , 37 CFR 1.121 ).
Examiner Note:
- Use this form paragraph only in an international design application.
- 2. In bracket 1, insert title of the article.