MPEP § 1504 — MPEP § 1504
Current through: 2022-07-01

1504-Examination 
 
 

 
 
 
 
 
 
 
 

 

 
 
 

 
 
 
 
 
 
 
 
 
 
 
 
 
 
 
 
 
 
 
 
 

 
 
 
 
 

 
 
 
 
 
 
 
 
 
 
 

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 Manual of Patent Examining Procedure 

 Chapter 1500 

 Section 1504 
 

 
 
 
 
 
 1504 Examination [R-01.2024]

 In design patent applications, ornamentality, novelty, nonobviousness,
 enablement, and definiteness are necessary prerequisites to the grant of a patent. The
 inventive novelty or unobviousness resides in the ornamental shape or configuration of the
 article in which the design is embodied or the surface ornamentation which is applied to or
 embodied in the design.
 

 Novelty and nonobviousness of a design claim must generally be determined
 by a search in the pertinent design classes. It is also mandatory that the search be
 extended to the mechanical classes encompassing inventions of the same general type.
 Catalogs and trade journals as well as available foreign patent databases are also to be
 consulted.
 

 If the examiner determines that the claim of the design patent application
 does not satisfy the statutory requirements, the examiner will set forth in detail, and may
 additionally summarize, the basis for all rejections in an Office action. If a reply to an
 Office action overcomes a rejection either by way of an amendment to the claim or by
 providing convincing arguments that the rejection should be withdrawn, that rejection must
 be indicated as withdrawn in the next Office action, unless such action is a notice of
 allowability. Likewise, any amendment to the specification or claim, or new drawing or
 drawing correction submitted in reply to an objection or objections in an Office action
 must be acknowledged in the next Office action, unless such action is a notice of
 allowability. When an examiner determines that the claim in a design application is
 patentable under all statutory requirements, but formal matters still need to be addressed
 and corrected prior to allowance, an Ex parte Quayle action will be sent
 to applicant indicating allowability of the claim and identifying the necessary
 corrections. 
 

 ¶ 15.19.01 Summary Statement of Rejections

 The claim stands rejected under [1] .
 

 Examiner Note:
 
 1. Use as summary statement of rejection(s) in Office action.

 2. In bracket 1, insert appropriate basis for rejection, i.e., statutory provisions, etc.
 
 

 ¶ 15.58 Claimed Design Is Patentable (Ex parte Quayle Actions)

 The claimed design is patentable over the references cited.

 

 ¶ 15.72 Quayle Action

 This application is in condition for
 allowance except for the following formal matters: [1] .
 

 Prosecution on the merits is closed
 in accordance with the practice under Ex parte Quayle , 25 USPQ 74, 453 OG
 213 (Comm'r Pat. 1935).
 

 A shortened statutory period for reply to this action is set to expire
 TWO (2) MONTHS from the mailing date of this letter. Extensions of time
 may be granted under 37
 CFR 1.136 but in no case can any extension carry the date for
 reply to this Office action beyond the maximum period of SIX MONTHS set by statute
 ( 35 U.S.C.
 133 ).
 

 

 If it is determined that a rejection of the claim should be given after a
 reply to a Quayle action, the indication of allowability set forth in
 the previous action must be withdrawn and prosecution reopened using the following form
 paragraph:
 

 ¶ 15.90 Indication of allowability withdrawn

 The indication of allowability set forth in the previous action is withdrawn and prosecution is reopened in view of the following
 new ground of rejection.
 

 

 With respect to pro se design applications, the
 examiner should notify applicant in the first Office action that it may be desirable for
 applicant to employ the services of a registered patent attorney or agent (practitioner) to
 prosecute the application. The registered patent practitioner can be a design patent
 practitioner registered under 37 CFR 11.6(d) or a patent practitioner
 registered under 37 CFR
 11.6(a) - (c) . Applicant should also be notified
 that the U.S. Patent and Trademark Office cannot aid in the selection of an attorney or
 agent. See MPEP §
 401 . If it appears that patentable subject matter is present and
 the disclosure of the claimed design complies with the requirements of 35 U.S.C. 112 , the
 examiner should include a copy of the “Guide To Filing A Design Patent Application” with
 the first Office action and notify applicant that it may be desirable to employ the
 services of a professional patent draftsperson familiar with design practice to prepare the
 drawings. Applicant should also be notified that the U.S. Patent and Trademark Office
 cannot aid in the selection of a draftsperson. The following form paragraph, where
 appropriate, may be used.
 

 ¶ 15.66 Employ Services of Patent Attorney or Agent (Design Application
 Only)
 

 As the value of a design patent is largely dependent upon the skillful
 preparation of the drawings and specification, applicant might consider it desirable to
 employ the services of a registered patent attorney or agent. The U.S. Patent and
 Trademark Office cannot aid in the selection of an attorney or agent.
 

 A listing of registered patent attorneys and agents is available at
 https://oedci.uspto.gov/OEDCI/ . Applicants may also obtain a list of
 registered patent attorneys and agents located in their area by writing to the Mail Stop
 OED, Director of the U.S. Patent and Trademark Office, P.O. Box 1450, Alexandria, VA
 22313-1450.
 

 

 ¶ 15.66.01 Employ Services of Professional Patent Draftsperson (Design Application Only)

 As the value of a design patent is largely dependent upon the skillful preparation of the drawings, applicant might consider
 it desirable to employ the services of a professional patent draftsperson familiar with design practice. The U.S. Patent and
 Trademark Office cannot aid in the selection of a draftsperson. 
 

 Examiner Note:

 This form
 paragraph should only
 be used in pro se applications where it appears that patentable subject
 matter is present and the disclosure of the claimed design complies with the requirements
 of 35 U.S.C. 112 .
 

 

 
 1504.01 Statutory Subject Matter for Designs [R-07.2015]

 
 35 U.S.C. 171 
 Patents for designs. 

 
 (a) IN GENERAL.—Whoever invents any new, original,
 and ornamental design for an article of manufacture may obtain a patent
 therefor, subject to the conditions and requirements of this title. 
 

 (b) APPLICABILITY OF THIS TITLE.—The provisions of
 this title relating to patents for inventions shall apply to patents for
 designs, except as otherwise provided. 
 

 (c) FILING DATE.—The filing date of an application
 for patent for design shall be the date on which the specification as
 prescribed by section 112 and any required drawings are filed. 
 

 
 

 The language “new, original and ornamental design for an article of
 manufacture” set forth in 35 U.S.C. 171 has been interpreted
 by the case law to include at least three kinds of designs: 
 

 
 (A) a design for an ornament, impression, print, or picture applied
 to or embodied in an article of manufacture (surface indicia); 
 

 (B) a design for the shape or configuration of an article of
 manufacture; and 
 

 (C) a combination of the first two categories.

 
 See In re Schnell, 46 F.2d 203, 8 USPQ 19 (CCPA
 1931); Ex parte Donaldson, 26 USPQ2d 1250 (Bd. Pat. App. & Int.
 1992). 
 

 A picture standing alone is not patentable under 35 U.S.C. 171 . The
 factor which distinguishes statutory design subject matter from mere picture or
 ornamentation, per se (i.e., abstract design), is the embodiment of
 the design in an article of manufacture. Consistent with 35 U.S.C. 171 ,
 case law and USPTO practice, the design must be shown as applied to or embodied in an
 article of manufacture. 
 

 A claim to a picture, print, impression, etc. per
 se, that is not applied to or embodied in an article of manufacture should
 be rejected under 35
 U.S.C. 171 as directed to nonstatutory subject matter. The
 following paragraphs may be used. 
 

 ¶ 15.07.01 Statutory Basis, 35 U.S.C. 171 

 The following is a quotation of 35 U.S.C. 171 :
 

 
 
 (a) IN GENERAL.—Whoever invents any new, original, and
 ornamental design for an article of manufacture may obtain a patent therefor, subject
 to the conditions and requirements of this title.
 

 (b) APPLICABILITY OF THIS TITLE.—The provisions of this title
 relating to patents for inventions shall apply to patents for designs, except as
 otherwise provided.
 

 (c) FILING DATE.—The filing date of an application for patent
 for design shall be the date on which the specification as prescribed by section 112
 and any required drawings are filed.
 

 
 
 

 ¶ 15.09 35 U.S.C. 171 Rejection
 

 The claim is rejected under 35 U.S.C. 171 as directed to nonstatutory subject matter because the design is not shown embodied in or applied to an article.
 

 Examiner Note:

 This rejection should be used when the claim is directed to surface treatment which is not shown with an article in either
 full or broken lines. 
 

 

 ¶ 15.42 Visual Characteristics

 The design for an article consists of the visual characteristics or aspect displayed by the article. It is the appearance
 presented by the article which creates an impression through the eye upon the mind of the observer.
 

 

 ¶ 15.43 Subject Matter of Design Patent

 Since a design is manifested in appearance, the subject matter of a Design Patent may relate to the configuration or shape
 of an article, to the surface ornamentation on an article, or to both.
 

 

 ¶ 15.44 Design Inseparable From Article to Which Applied

 Design is inseparable from the article
 to which it is applied, and cannot exist alone merely as a scheme of ornamentation. It must
 be a definite preconceived thing, capable of reproduction, and not merely the chance result
 of a method or of a combination of functional elements (35 U.S.C. 171; 35 U.S.C. 112(a) and
 (b) or pre-AIA 35 U.S.C. 112, first and second paragraphs). See Blisscraft of
 Hollywood v. United Plastics Co. , 189 F. Supp. 333, 127 USPQ 452 (S.D.N.Y.
 1960), 294 F.2d 694, 131 USPQ 55 (2d Cir. 1961).
 

 

 Form paragraphs 15.38 and 15.40 may be used in
 a second or subsequent action, where appropriate (see MPEP § 1504.02 ).
 

 
 1504.01(a) Computer-Generated Electronic Images [R-01.2024]

 To be directed to statutory subject matter, design applications for
 computer-generated electronic images must comply with the article of manufacture
 requirement of 35
 U.S.C. 171 .
 

 I. GUIDELINES FOR EXAMINATION OF DESIGN PATENT APPLICATIONS FOR
 COMPUTER-GENERATED ELECTRONIC IMAGES The following guidelines have been developed to assist USPTO
 personnel in determining whether design patent applications for computer-generated
 electronic images comply with the article of manufacture requirement of
 35 U.S.C.
 171 .
 

 A. General Principles Governing Compliance With the Article of
 Manufacture Requirement As discussed in MPEP §
 1504.01 , a picture standing alone is not protectable
 by a design patent. Additionally, “[m]ere display of a picture on a screen is
 not significantly different … from the display of a picture on a piece of
 paper” and is not enough “to convert a picture into a design for an article of
 manufacture.” Ex parte Strijland, 26 USPQ2d 1259, 1263 (Bd.
 Pat. App. & Int. 1992). Therefore, images merely displayed on a display
 panel (e.g., computer screen, monitor, computer display system, mobile phone
 screen, virtual reality/augmented reality goggles), or portion thereof are not
 considered eligible under 35 U.S.C. 171 . However, the
 USPTO considers a computer icon or a graphical user interface (GUI) shown on a
 display panel, or a portion thereof, to be more than a mere display of a
 picture on a screen because a computer icon or a GUI is an integral and active
 component in the operation of— i.e., embodied in and/or
 applied to—a programmed computer displaying the computer icon or the GUI.
 Therefore, a computer icon or a GUI is eligible under 35 U.S.C.
 171 , if properly presented and claimed (e.g., the
 drawing(s) fully discloses the design as embodied in the article of
 manufacture).
 

 Computer-generated icons, such as full screen displays and
 individual icons, are 2-dimensional images which alone are surface
 ornamentation. See, e.g., Ex parte Strijland, 26 USPQ2d 1259
 (Bd. Pat. App. & Int. 1992) (computer-generated icon alone is merely
 surface ornamentation). A patentable design is inseparable from the object to
 which it is applied and cannot exist alone merely as a scheme of surface
 ornamentation. See MPEP § 1502 . Thus, a computer
 icon or a GUI must be embodied in a display panel, or portion thereof, to
 satisfy 35
 U.S.C. 171 . Therefore, if properly presented and claimed,
 a display panel (or portion thereof) with a computer icon or a GUI constitutes
 statutory subject matter under 35 U.S.C. 171 .
 

 “We do not see that the dependence of the existence of a
 design on something outside itself is a reason for holding it is not a design
 ‘for an article of manufacture.’” See In re Hruby, 373 F.2d
 997, 1001, 153 USPQ 61, 66 (CCPA 1967) (design of water fountain patentable
 design for an article of manufacture). The dependence of a computer icon or a
 GUI on a central processing unit and computer program for its existence itself
 is not a reason for holding that the design is not for an article of
 manufacture.
 

 B. Procedures for Evaluating Whether Design Patent Applications
 Drawn to Computer-Generated Electronic Images Comply With the Article of
 Manufacture Requirement USPTO personnel shall adhere to the following procedures when
 reviewing design patent applications drawn to computer-generated electronic
 images for compliance with the article of manufacture requirement of
 35 U.S.C.
 171 .
 

 The complete disclosure must be considered when
 evaluating a design claim that includes a computer-generated electronic image.
 More specifically, USPTO personnel must read the disclosure to determine what
 is claimed as the design and whether the design is embodied in an article of
 manufacture. USPTO personnel must:
 

 
 (A) Review the title and claim language to determine whether
 the title and claim adequately describe a design for an article of
 manufacture under 35 U.S.C. 171 . USPTO
 personnel must also consider the following and, where appropriate, make
 the noted objections and rejections. 
 
 (1) A computer-generated electronic image shown on a
 display panel that is not a computer icon or a GUI (i.e., that is
 not an integral and active component in the operation of a
 computer) is a mere illustration of a picture displayed
 electronically. Therefore, a claim to the image per
 se, to a display panel (or a portion thereof) with the
 image, or to the image for display on a display panel, will not
 satisfy the article of manufacture requirement, and such a claim
 should be rejected under 35 U.S.C. 171 
 for failing to comply with the article of manufacture
 requirement.
 

 (2) The USPTO considers computer icons or GUIs to be
 two-dimensional images which standing alone are surface
 ornamentation (i.e., an ornament, impression, print, or picture).
 Therefore, the title and the claim should not be for a computer
 icon or a GUI alone, but must be for an article of manufacture, for
 example, a “display panel with computer icon.”
 

 (3) When a design claim is to a display panel with a
 computer-generated image, the USPTO considers the term “icon” or
 “GUI” in the title and the claim to be indicating that the image on
 the display panel is not merely a displayed picture, but an
 integral and active component in the operation of a programmed
 computer displaying the image. See Strijland, 26
 USPQ2d at 1263. Therefore, a claim and title directed to a display
 screen with an icon or a GUI adequately describes a design for an
 article of manufacture under 35 U.S.C. 171 .
 (Note that though the underlying article of manufacture for an icon
 or a GUI has functional properties, the design of the icon or the
 GUI itself is not functional, and thus this subsection is not in
 tension with, nor does it contradict, the functionality doctrine,
 which requires that design patent protection extend only to the
 “ornamental design” of an article of manufacture. See
 35 U.S.C.
 171(a) ; MPEP §
 1504.01(c) , subsection I). 
 

 (4) The following are examples of claim
 language and titles that do not adequately
 describe a design for an article of manufacture under
 35 U.S.C. 171 :
 “display screen with virtual image,” “virtual image for display on
 computer screen,” “computer icon,” and “icon for computer screen.”
 This list of examples is not exhaustive. These types of claims and
 titles should be objected to under 37 CFR
 1.153(a) or 37 CFR
 1.1067(a) for failing to designate a
 particular article of manufacture, and the objection should be
 maintained until the title and the claim language are appropriately
 amended. See MPEP § 707.07(e) .
 Note that a determination must be made as to whether a rejection
 under 35 U.S.C. 171 
 is appropriate (e.g., the application fails to provide support for
 an icon or a GUI). See item (A)(1) above; see also item (C) and
 subsection I.C, example 2 below. 
 

 (5) The following are examples of claim
 language and titles that do adequately describe a design for an
 article of manufacture under 35 U.S.C. 171 :
 “computer screen with an icon,” “display panel with GUI,” “display
 screen or portion thereof with icon,” “portion of a computer screen
 with an icon,” “portion of a display panel with an icon,” and
 “portion of a monitor displayed with an icon.” This list of
 examples is not exhaustive. 
 

 
 

 (B) Review the specification to determine
 whether a characteristic feature statement is present. If a
 characteristic feature statement is present, determine whether it
 describes the claimed subject matter as a computer icon or a GUI embodied
 in a display panel, or portion thereof. See McGrady v. Aspenglas
 Corp., 487 F.2d 859, 208 USPQ 242 (S.D.N.Y. 1980)
 (descriptive statement in design patent application narrows claim scope).
 
 

 (C) Review the drawing to determine whether a
 display panel, or a portion thereof, is shown in sufficient views to
 fully disclose the design as embodied in the article. See
 Changes to Patent Practice and Procedure, 62 FR
 53132, 53164 (October 10, 1997). Since the claim must be in formal terms
 to the design “as shown, or as shown and described,” the drawing provides
 the best description of the claim. 37 CFR
 1.153 or 1.1025 . USPTO personnel must also consider the
 following and, where appropriate, make the noted rejections.
 
 (1) If the drawing does not 
 depict a computer icon or a GUI embodied in a display panel, or a
 portion thereof, in either solid or broken lines, reject the
 claimed design under 35 U.S.C. 171 
 for failing to comply with the article of manufacture requirement. 
 
 (a) If the disclosure as a whole does
 not suggest or describe the claimed subject
 matter as a computer icon or a GUI embodied in a display
 panel, or a portion thereof, indicate that: 
 
 (i) The claim is fatally defective under
 35 U.S.C.
 171 ; and 
 

 (ii) Amendments to the written description,
 drawings and/or claim attempting to overcome the
 rejection will ordinarily be entered, however, any new
 matter will be required to be canceled from the written
 description, drawings and/or claims. If new matter is
 added that affects the claim, the claim should be
 rejected under 35 U.S.C.
 112(a) .
 

 
 

 (b) If the disclosure as a whole suggests or
 describes the claimed subject matter as a computer icon or a
 GUI embodied in a display panel, or a portion thereof, USPTO
 personnel must indicate that the drawing may be amended to
 overcome the rejection under 35 U.S.C.
 171 . Suggest amendments that would
 bring the claim into compliance with 35 U.S.C.
 171 . 
 

 
 

 
 

 (D) Indicate all objections to the disclosure for failure to
 comply with the requirements of the Rules of Practice in Patent Cases.
 See e.g. 37 CFR 1.71 ,
 1.81 - 1.85 , and
 1.152 - 1.154 . Suggest
 amendments which would bring the disclosure into compliance with the
 requirements of the Rules of Practice in Patent Cases.
 

 (E) Upon reply by applicant: 
 
 (1) Enter any appropriate amendments; and

 (2) Review all arguments and the entire record,
 including any amendments, to determine whether the drawing, title,
 and specification clearly disclose a computer icon or a GUI
 embodied in a display panel, or a portion thereof.
 

 
 

 (F) If, by a preponderance of the evidence (see In
 re Oetiker, 977 F.2d 1443, 1445, 24 USPQ2d 1443, 1444 (Fed.
 Cir. 1992)) (“After evidence or argument is submitted by the applicant in
 response, patentability is determined on the totality of the record, by a
 preponderance of evidence with due consideration to persuasiveness of
 argument.”), the applicant has established that the computer icon or a
 GUI is embodied in a display panel, or a portion thereof, withdraw the
 rejection under 35 U.S.C. 171 . 
 

 C. Examples The following examples are provided to assist USPTO
 personnel in determining whether design patent applications for computer-generated
 electronic images comply with the article of manufacture requirement of
 35 U.S.C.
 171 and whether other objections are appropriate.
 

 Example 1 

 Title: Computer display screen with
 icon
 

 Description: The figure is a front
 view of a computer display screen with icon, showing the new design. The broken
 lines showing a portion of the computer display screen form no part of the claimed
 design.
 

 Claim: The ornamental design for
 computer display screen with icon as shown and described.
 

 As presented, the claimed design in this example
 complies with 35
 U.S.C. 171 because:
 

 
 • the USPTO considers a computer icon or a GUI
 on a display panel to be an integral and active component in the operation of a
 programmed computer displaying the design and more than a displayed picture;
 and
 

 
 
 • the application fully discloses the design as
 embodied in an article of manufacture, as the drawing depicts the design
 embodied in a computer screen in broken lines.
 

 
 In addition, the title and claim comply with
 37 CFR
 1.153(a) or 37 CFR 1.1067(a) because the
 title and claim adequately designate a particular article of manufacture (i.e.,
 the computer display screen).
 

 

 Example 2 

 Title: Virtual paper stack
 

 Description: The figure is a front
 view of a computer display screen with a virtual paper stack showing the new
 design. The broken lines showing a portion of the computer display screen form no
 part of the claimed design.
 

 Claim: The ornamental design for a
 virtual paper stack as shown and described.
 

 As presented, the claimed design in this example
 does not comply with 35 U.S.C. 171 . The image is
 merely a picture displayed on a computer display screen. Because the original
 disclosure does not provide support for amending the claim to include a computer
 icon, the claim is fatally defective under 35 U.S.C. 171 and should be
 rejected under 35 U.S.C. 171 , as set forth in subsection I.B above. In
 addition, the title and claim should be objected to under 37 CFR
 1.153(a) or 37 CFR 1.1067(a) for failing
 to designate a particular article of manufacture.
 

 

 Example 3 

 Title: Paper stack icon for use on a
 mobile device screen
 

 Description: The figure is a front
 view of a paper stack icon showing the new design.
 

 Claim: The ornamental design for a
 paper stack icon for use on a mobile device screen as shown and described.
 

 As presented, the claimed design in this example
 would not comply with 35 U.S.C. 171 because the
 drawing does not depict an article of manufacture (e.g., a display panel) in
 either solid or broken lines. Therefore, the claim should be rejected under
 35 U.S.C.
 171 , as set forth in subsection I.B above. In addition, the
 title and claim should be objected to under 37 CFR
 1.153(a) or 37 CFR 1.1067(a) for failing
 to designate a particular article of manufacture. Specifically, the language “for
 use on a mobile device screen” does not adequately designate a particular article
 of manufacture. However, because the original disclosure provides support for a
 mobile device screen, the application could be amended as follows:
 

 Title: Mobile device screen
 with a paper Paper stack icon for use on a
 mobile device screen 

 Claim: The ornamental design for
 a mobile device screen with a paper stack icon
 for use on a mobile device as shown and described.
 

 Description: The figure is a front
 view of a mobile device screen with a paper stack icon
 showing the new design. The broken lines showing a portion of the
 mobile device screen form no part of the claimed design. 

 Note that a replacement figure showing the portion
 of a mobile device screen in either solid or broken lines must not introduce new
 matter. The replacement figure shown represents a best practice for applicants as
 it is the most likely amendment to be supported by the original disclosure.
 

 Replacement Figure: 

 

 

 Example 4 

 Title: Icon for computer display
 screen
 

 Description: The figure is a front
 view of a computer display screen with icon, showing the new design. The broken
 lines showing a portion of the computer display screen form no part of the claimed
 design.
 

 Claim: The ornamental design for an
 icon for computer display screen as shown and described.
 

 As presented, the title and claim should be
 objected to under 37 CFR 1.153(a) or
 37
 CFR 1.1067(a) for failing to designate a particular article
 of manufacture. In particular, the language “for computer display screen” does not
 adequately designate a particular article of manufacture. However, as presented,
 the claimed design in this example complies with 35 U.S.C.
 171 because:
 

 
 • the USPTO considers a computer icon or a GUI
 on a display panel to be an integral and active component in the operation of a
 programmed computer displaying the design and more than a displayed picture;
 and
 

 
 
 • the application fully discloses the design as
 embodied in an article of manufacture, as the description and drawing depict
 the design embodied in a computer display screen in broken lines and the
 description (i.e., the broken line statement) describes a portion of a computer
 display screen.
 

 
 To address the objections to the title and claim,
 the application could be amended as follows:
 

 Title: lcon for
 computer Computer display screen
 with icon 

 Claim: The ornamental design for
 an icon for a computer display screen
 with icon as shown and described.
 

 
 II. TREATMENT OF TYPE FONTS Traditionally, type fonts have been generated by solid blocks
 from which each letter or symbol was produced. Consequently, the USPTO has
 historically granted design patents drawn to type fonts. USPTO personnel should
 not reject claims for type fonts under 35 U.S.C. 171 for failure to
 comply with the article of manufacture requirement on the basis that more modern
 methods of typesetting, including computer-generation, do not require solid
 printing blocks.
 

 III. CHANGEABLE COMPUTER-GENERATED ELECTRONIC IMAGES Computer-generated electronic images that change in appearance
 during viewing may be the subject of a design claim. Such a claim may be shown in
 two or more views. The images are understood as viewed sequentially, no ornamental
 aspects are attributed to the process or period in which one image changes into
 another. A descriptive statement must be included in the specification describing
 the transitional nature of the design and making it clear that the scope of the
 claim does not include anything that is not shown. Examples of such a descriptive
 statement are as follows:
 

 “The subject matter in this patent includes a process or period
 in which an image changes into another image. This process or period forms no part
 of the claimed design;” or
 

 “The appearance of the transitional image sequentially
 transitions between the images shown in Figs. 1-8. The process or period in which
 one image transitions to another image forms no part of the claimed design;”
 or
 

 “The appearance of the transitional image sequentially
 transitions between the images shown in Figs. 1-8. No ornamental aspects are
 associated with the process or period in which one image transitions to another
 image.”
 

 Example The following example is provided to assist
 USPTO personnel in determining whether design patent applications for
 changeable computer-generated electronic images comply with the article of
 manufacture requirement of 35 U.S.C. 171 and whether
 other objections are appropriate.
 

 

 Title: Animated Icon
 

 Description: Figure 1 is a front
 view showing a first image in a sequence for an animated icon showing a new
 design. Figure 2 is a second image thereof. The appearance of the animated
 image sequentially transitions between the images shown in Figs. 1-2. The
 process or period in which one image transitions to another image forms no part
 of the claimed design. The broken lines showing a portion of a computer display
 screen form no part of the claimed design. 
 

 Claim: The ornamental design for an
 animated icon as shown and described.
 

 As presented, the title and claim should be
 objected to under 37 CFR 1.153(a) or
 37 CFR 1.1067(a) for failing to designate a particular
 article of manufacture. However, as presented, the claimed design in this
 example does comply with 35 U.S.C. 171 because:
 

 
 • the USPTO considers a computer icon or a
 GUI on a display panel to be an integral and active component in the
 operation of a programmed computer displaying the design and more than a
 displayed picture; and
 

 
 
 • the application fully discloses the design
 as embodied in an article of manufacture, as the drawing depicts the design
 embodied in a computer display screen in broken lines and the description
 (i.e., the broken line statement) describes a portion of a computer display
 screen.
 

 
 To address the objections to the title and
 claim, the application could be amended as follows:
 

 Title: Computer display
 screen with A a nimated icon
 

 Claim: The ornamental design for
 a computer display screen with an animated icon as
 shown and described.
 

 The objections should be maintained until the
 title and the claim are appropriately amended.
 

 

 

 
 1504.01(b) Design Comprising Multiple Articles or Multiple Parts
 Embodied in a Single Article [R-08.2012]
 

 While the claimed design must be embodied in an article of
 manufacture as required by 35 U.S.C. 171 , it may encompass
 multiple articles or multiple parts within that article. See Ex parte
 Gibson, 20 USPQ 249 (Bd. App. 1933). When the design involves multiple
 articles, the title must identify a single entity of manufacture made up by the parts
 (e.g., set, pair, combination, unit, assembly). A descriptive statement should be
 included in the specification making it clear that the claim is directed to the
 collective appearance of the articles shown. If the separate parts are shown in a
 single view, the parts must be shown embraced by a bracket “}”. The claim may also
 involve multiple parts of a single article, where the article is shown in broken
 lines and various parts are shown in solid lines. In this case, no bracket is needed.
 See MPEP §
 1503.01 .
 

 

 
 1504.01(c) Lack of Ornamentality [R-07.2015]
 I. FUNCTIONALITY VS. ORNAMENTALITY An ornamental feature or design has been defined as one which was
 “created for the purpose of ornamenting” and cannot be the result or “merely a
 by-product” of functional or mechanical considerations. See In re
 Carletti, 328 F.2d 1020, 140 USPQ 653, 654 (CCPA 1964);
 Blisscraft of Hollywood v. United Plastic Co., 189 F. Supp.
 333, 337, 127 USPQ 452, 454 (S.D.N.Y. 1960), aff’d, 294 F.2d
 694, 131 USPQ 55 (2d Cir. 1961). It is clear that the ornamentality of the article
 must be the result of a conscious act by the inventor, as 35 U.S.C.
 171 requires that a patent for a design be given only to
 “whoever invents any new, original, and ornamental design for
 an article of manufacture.” Therefore, for a design to be ornamental within the
 requirements of 35 U.S.C. 171 , it must be “created
 for the purpose of ornamenting.” See In re Carletti, 328 F.2d
 1020, 1022, 140 USPQ 653, 654 (CCPA 1964).
 

 To be patentable, a design must be “primarily ornamental.” “In
 determining whether a design is primarily functional or primarily
 ornamental the claimed design is viewed in its entirety, for the
 ultimate question is not the functional or decorative aspect of each separate
 feature, but the overall appearance of the article, in determining whether the
 claimed design is dictated by the utilitarian purpose of the article.” See
 L. A. Gear Inc. v. Thom McAn Shoe Co., 988 F.2d 1117, 1123,
 25 USPQ2d 1913, 1917 (Fed. Cir. 1993). The court in Norco Products, Inc.
 v. Mecca Development, Inc., 617 F. Supp. 1079, 1080, 227 USPQ 724,
 725 (D. Conn. 1985), held that a “primarily functional invention is not
 patentable” as a design. 
 

 A determination of ornamentality is not a quantitative analysis
 based on the size of the ornamental feature or features but rather a determination
 based on their ornamental contribution to the design as a whole.
 

 While ornamentality must be based on the entire design, “[i]n
 determining whether a design is primarily functional, the purposes of the
 particular elements of the design necessarily must be considered.” See
 Power Controls Corp. v. Hybrinetics, Inc., 806 F.2d 234,
 240, 231 USPQ 774, 778 (Fed. Cir. 1986). See, e.g., Smith v. M & B
 Sales & Manufacturing, 13 USPQ2d 2002, 2004 (N. D. Cal. 1990) (if
 “significant decisions about how to put it [the item] together and present it in
 the marketplace were informed by primarily ornamental considerations”, this
 information may establish the ornamentality of a design.). 
 

 “However, a distinction exists between the functionality
 of an article or features thereof and the functionality of
 the particular design of such article or features thereof that
 perform a function.” See Avia Group International Inc. v. L. A. Gear
 California Inc., 853 F.2d 1557, 1563, 7 USPQ2d 1548, 1553 (Fed. Cir.
 1988). The distinction must be maintained between the ornamental design and the
 article in which the design is embodied. The design for the article
 cannot be assumed to lack ornamentality merely because
 the article of manufacture would seem to be primarily functional.
 

 II. ESTABLISHING A PRIMA FACIE BASIS FOR REJECTIONS UNDER 35 U.S.C. 171 To properly reject a claimed design under 35 U.S.C.
 171 on the basis of a lack of ornamentality, an examiner
 must make a prima facie showing that the claimed design lacks
 ornamentality and provide a sufficient evidentiary basis for factual assumptions
 relied upon in such showing. See In re Jung, 637 F.3d 1356,
 1362, 98 USPQ2d 1174, 1177 (Fed. Cir. 2011). See, e.g., In re
 Oetiker, 977 F.2d 1443, 1445, 24 USPQ2d 1443, 1444 (Fed. Cir. 1992),
 (“the examiner bears the initial burden, on review of the prior art or on any
 other ground, of presenting a prima facie case of
 unpatentability.”). 
 

 The proper evidentiary basis for a rejection under
 35 U.S.C.
 171 that a claim is lacking in ornamentality is an
 evaluation of the appearance of the design itself. The examiner’s
 knowledge of the art, a reply to a letter of inquiry, a brochure emphasizing the
 functional/mechanical features of the design, the specification of an analogous
 utility patent (the applicant’s or another inventor), or information provided in
 the specification may be used to supplement the analysis of the
 design. If a design is embodied in a specific mechanical article, the analysis
 that the design lacks ornamentality because its appearance is dictated by
 functional requirements should be supported by reference to utility patents or
 some other source of information about the function of the design. If the design
 is embodied in an article that has a more general use, such as a clip, the
 analysis and explanation as to why the design lacks ornamentality should be
 detailed and specific. The examiner’s contention that the specific appearance of
 the claimed design lacks ornamentality may be supported by In re Carletti
 et al., 328 F.2d 1020, 140 USPQ 653 (CCPA 1964) (a design to be
 patentable must be “created for the purpose of ornamenting” the article in which
 it is embodied.). The presence or lack of ornamentality must be made on a case by
 case basis.
 

 Knowledge that the article would be hidden during its end use
 based on the examiner’s experience in a given art or information that may have
 been submitted in the application itself would not be considered
 prima facie evidence of the functional nature of the design.
 See Seiko Epson Corp v. Nu-Kote Int’l Inc., 190 F.3d 1360, 52
 USPQ2d 1011 (Fed. Cir. 1999). “Visibility during an article’s ‘normal use’ is not
 a statutory requirement of § 171 , but rather a guideline
 for courts to employ in determining whether the patented features are
 ‘ornamental’.” See Larson v. Classic Corp., 683 F. Supp. 1202,
 7 USPQ2d 1747 (N.D. Ill. 1988). If there is sufficient evidence to show that a
 specific design 
 "is clearly intended to be
 noticed during the process of sale and equally clearly intended to be
 completely hidden from view in the final use,"
 
 
 it is not
 necessary that a rejection be made under 35 U.S.C. 171 . See In
 re Webb, 916 F.2d 1553, 1558, 16 USPQ2d 1433, 1436 (Fed. Cir. 1990).
 The mere fact that an article would be hidden during its ultimate end use is
 not the basis for a rejection under 35 U.S.C.
 171 , but this information provides additional evidence to be
 used in support of the contention that the design lacks ornamentality. The only
 basis for rejecting a claim under 35 U.S.C. 171 as lacking in
 ornamentality is an evaluation of the design itself in light of
 additional information, such as that identified above.
 

 Examples of proper evidentiary basis for a rejection under
 35 U.S.C.
 171 that a claim is lacking in ornamentality would be: (A)
 common knowledge in the art; (B) the appearance of the design itself; (C) the
 specification of a related utility patent; or (D) information provided in the
 specification. 
 

 A rejection under 35 U.S.C. 171 for lack of
 ornamentality must be supported by evidence and rejections should
 not be made in the absence of such evidence.
 

 III. REJECTIONS MADE UNDER 35 U.S.C. 171 Rejections under 35 U.S.C. 171 for lack of
 ornamentality based on a proper prima facie showing fall into
 two categories: 
 

 
 (A) a design visible in its ultimate end use which is primarily
 functional based on the evidence of record; or
 

 (B) a design not visible in its normal and intended use as
 evidence that its appearance is not a matter of concern. See In re
 Stevens, 173 F.2d 1015, 81 USPQ 362 (CCPA 1949); In re
 Webb, 916 F.2d 1553, 1558, 16 USPQ2d 1433, 1436 (Fed. Cir.
 1990).
 

 
 When the examiner has established a proper prima
 facie case of lack of ornamentality, “the burden of coming forward
 with evidence or argument shifts to the applicant.” See In re
 Oetiker, 977 F.2d 1443, 1445, 24 USPQ2d 1443, 1444 (Fed. Cir. 1992).
 A rejection under 35 U.S.C. 171 for lack of
 ornamentality may be overcome by providing evidence from the inventor himself or a
 representative of the company that commissioned the design that there was an
 intent to create a design for the “purpose of ornamenting.” See In re
 Carletti, 328 F.2d 1020, 1022, 140 USPQ 653, 654 (CCPA 1964).
 Attorney’s arguments are not a substitute for evidence. Once a proper
 prima facie case of lack of ornamentality is established by
 the examiner, it is incumbent upon applicant to come forth with countervailing
 evidence to rebut the rejection made by the examiner. See Ex parte
 Webb, 30 USPQ2d 1064, 1067-68 (Bd. Pat. App. & Int. 1993). Form
 paragraph 15.08 or 15.08.01 ,
 where appropriate, may be used to reject a claim under 35 U.S.C.
 171 for lack of ornamentality.
 

 ¶ 15.08 Lack of Ornamentality (Article Visible in End Use)

 The claim is rejected under
 35 U.S.C.
 171 as being directed to nonstatutory subject matter in that it lacks
 ornamentality. To be patentable, a design must be “created for the purpose of ornamenting” the
 article in which it is embodied. See In re Carletti, 328 F.2d 1020, 140
 USPQ 653 (CCPA 1964). 
 

 The following evidence establishes a
 prima facie case of a lack of ornamentality: [1] 

 Evidence that demonstrates the design
 is ornamental may be submitted from the applicant in the form of an affidavit or declaration
 under 37 CFR
 1.132 :
 

 (a) stating the ornamental
 considerations which entered into the design of the article; and
 

 (b) identifying what aspects of the
 design meet those considerations.
 

 An affidavit or declaration under
 37 CFR
 1.132 may also be submitted from a representative of the company, which
 commissioned the design, to establish the ornamentality of the design by stating the
 motivating factors behind the creation of the design.
 

 Attorney arguments are not a
 substitute for evidence to establish the ornamentality of the claim. Ex parte
 Webb , 30 USPQ2d 1064, 1067-68 (Bd. Pat. App. & Inter. 1993).
 

 Examiner Note:

 In bracket 1, insert source of
 evidence of lack of ornamentality, for example, a utility patent, a brochure, a response to
 a letter of inquiry, etc.
 

 

 ¶ 15.08.01 Lack of Ornamentality (Article Not Visible in its Normal and Intended Use)

 The claim is rejected under 35 U.S.C. 171 as being directed to nonstatutory subject matter in that the design lacks ornamentality since it appears there is no period
 in the commercial life of applicant’s [1] when its ornamentality may be a matter of concern. In re Webb , 916 F.2d 1553, 1558, 16 USPQ2d 1433, 1436 (Fed. Cir. 1990); In re Stevens , 173 F.2d 1015, 81 USPQ 362 (CCPA 1949).
 

 The following evidence establishes a prima facie case of lack of ornamentality: [2] 

 In order to overcome this rejection, two types of evidence are needed:

 (1) Evidence to demonstrate there is some period in the commercial life of the article embodying the claimed design when its
 ornamentality is a matter of concern. Such evidence may include a showing of a period in the life of the design when the
 ornamentality of the article may be a matter of concern to a purchaser during the process of sale. An example of this type
 of evidence is a sample of sales literature such as an advertisement or a catalog sheet which presents the appearance of the
 article as ornamental and not merely as a means of identification or instruction; and
 

 (2) Evidence to demonstrate the design
 is ornamental. This type of evidence should demonstrate “thought of ornament” in the design
 and should be presented in the form of an affidavit or declaration under 37 CFR 1.132 from the
 applicant:
 

 (a) stating the ornamental considerations which entered into the design of the article; and

 (b) identifying what aspects of the design meet those considerations.

 An affidavit or declaration under
 37 CFR
 1.132 may also be submitted from a representative of the company, which
 commissioned the design, to establish the ornamentality of the design by stating the
 motivating factors behind the creation of the design.
 

 Attorney arguments are not a substitute for evidence to establish the
 ornamentality of the claim. See Ex parte Webb , 30 USPQ2d 1064, 1067-68 (Bd.
 Pat. App. & Inter. 1993).
 

 Examiner Note:
 
 1. In bracket 1, insert the name of the article in which the design is embodied.

 2. In bracket 2, insert source of evidence of the article’s design being of no concern, for example, an analysis of a corresponding
 utility patent, a brochure, a response to a letter of inquiry, etc. 
 
 
 
 IV. OVERCOMING A 35 U.S.C. 171 REJECTION BASED ON LACK OF ORNAMENTALITY A rejection under 35 U.S.C. 171 based on lack of
 ornamentality may be overcome by the following:
 

 
 (A) An affidavit or declaration under 37 CFR
 1.132 submitted from the applicant or a representative
 of the company, which commissioned the design, explaining specifically and
 in depth, which features or area of the claimed design were created
 with:
 
 (1) a concern for enhancing the saleable value or
 increasing demand for the article. See Gorham Manufacturing
 Co. v. White, 81 U.S. (14 Wall) 511 (1871), or
 

 (2) a concern primarily for the esthetic appearance of
 the article;
 

 
 

 (B) Advertisements which emphasize the ornamentality of the
 article embodying the claimed design may be submitted as evidence to rebut
 the rejection. See Berry Sterling Corp. v. Pescor Plastics Inc.,
 122 F.3d 1452, 43 USPQ2d 1953 (Fed. Cir. 1997);
 

 (C) Evidence that the appearance of the design is ornamental
 may be shown by distinctness from the prior art as well as an attempt to
 develop or to maintain consumer recognition of the article embodying the
 design. See Seiko Epson Corp. v. Nu-Kote Int’l Inc., 190
 F.3d 1360, 52 USPQ2d 1011 (Fed. Cir. 1999);
 

 (D) Evidence may be provided by a representative of the
 company, which commissioned the design, to establish the ornamentality of
 the design by stating the motivating factors behind the creation of the
 design;
 

 (E) When the rejection asserts that the design is purely
 dictated by functional considerations, evidence may be presented showing
 possible alternative designs which could have served the same function
 indicating that the appearance of the claimed design was not purely dictated
 by function. See L.A. Gear Inc. v. Thom McAn Shoe Co., 
 988 F.2d 1117, 25 USPQ2d 1913 (Fed. Cir. 1993);
 

 (F) When the rejection asserts no period in the commercial life
 of the article when its ornamentality may be a matter of concern, the
 applicant must establish that the “article’s design is a ‘matter of concern’
 because of the nature of its visibility at some point between its
 manufacture or assembly and its ultimate use.” See In re
 Webb, 916 F.2d 1553, 1558, 16 USPQ2d 1433, 1436 (Fed. Cir.
 1990).
 

 
 Attorney arguments are not a substitute for evidence to establish
 the ornamentality of the claim. See Ex parte Webb, 30 USPQ2d
 1064, 1068 (Bd. Pat. App. & Inter. 1993).
 

 V. EVALUATION OF EVIDENCE SUBMITTED TO OVERCOME A REJECTION UNDER 35 U.S.C.
 171 In order to overcome a rejection of the claim under
 35 U.S.C.
 171 as lacking in ornamentality, applicant must provide
 evidence that he or she created the design claimed for the “purpose of
 ornamenting”. See In re Carletti, 328 F.2d 1020, 1022, 140 USPQ
 653, 654 (CCPA 1964). 
 

 The mere display of the article embodying
 the design at trade shows or its inclusion in catalogs is insufficient to
 establish ornamentality. See Ex parte Webb, 30 USPQ2d 1064 (Bd.
 Pat. App. & Inter. 1993). There must be some clear and specific indication of
 the ornamentality of the design in this evidence for it to be given probative
 weight in overcoming the prima facie lack of ornamentality. See
 Berry Sterling Corp. v. Pescor Plastics Inc., 122 F.3d 1452,
 43 USPQ2d 1953 (Fed. Cir. 1997).
 

 The examiner must evaluate evidence submitted by the applicant in
 light of the design as a whole to decide if the claim is primarily ornamental. It
 is important to be aware that this determination is not based on the size or
 amount of the features identified as ornamental but rather on their influence on
 the overall appearance of the design. 
 

 In a rejection of a claim under 35 U.S.C.
 171 in which some of the evidentiary basis for the rejection
 is that the design would be hidden during its end use, the applicant must
 establish that the “article’s design is a ‘matter of concern’ because of the
 nature of its visibility at some point between its manufacture or assembly and its
 ultimate use.” See In re Webb, 916 F.2d 1553, 1558, 16 USPQ2d
 1433, 1436 (Fed. Cir. 1990). This concern may be shown by the submission of
 evidence that the appearance of the article was of concern during its period of
 commercial life by declarations from prospective/actual customers/users attesting
 that the ornamentality of the article was of concern to them. Unless applicant is
 directly involved with the sale of the design or works with users of the design,
 he or she cannot provide factual evidence as to the reasons for the
 purchase/selection of the article embodying the design. See MPEP §
 716.03(b) , citing In re Huang, 100 F.3d
 135, 140, 40 USPQ2d 1685, 1690 (Fed. Cir. 1996). In ex parte 
 proceedings before the Patent and Trademark Office, an applicant must show that
 the claimed features were responsible for the commercial success of an article if
 the evidence of nonobviousness is to be accorded substantial weight. See
 In re Huang, 100 F.3d 135, 140, 40 USPQ2d 1685, 1690 (Fed.
 Cir. 1996) (Inventor’s opinion as to the purchaser’s reason for buying the product
 is insufficient to demonstrate a nexus between the sales and the claimed
 invention.).
 

 Once applicant has proven that there is a period of visibility
 during which the ornamentality of the design is a “matter of concern,” it is then
 necessary to determine whether the claimed design was primarily ornamental during
 that period. See Larson v. Classic Corp., 683 F. Supp. 1202, 7
 USPQ2d 1747 (N. D. Ill. 1988). The fact that a design would be visible during its
 commercial life is not sufficient evidence that the design was “created for the
 purpose of ornamenting”. See In re Carletti, 328 F.2d 1020,
 1022, 140 USPQ 653, 654 (CCPA 1964). Examiners should follow the standard for
 determining ornamentality as outlined above.
 

 “The possibility of encasing a heretofore concealed design
 element in a transparent cover for no reason other than to avoid this rule cannot
 avoid the visibility [guideline]... , lest it become meaningless.” See
 Norco Products Inc. v. Mecca Development Inc., 617 F. Supp.
 1079, 1081, 227 USPQ 724, 726 (D. Conn. 1985). Applicant cannot rely on mere
 possibilities to provide factual evidence of ornamentality
 for the claimed design.
 

 The requirement that the design was created for the ‘purpose of
 ornamenting’ must be met with appropriate evidence concerning visibility for a
 rejection under 35 U.S.C. 171 to be overcome if the design would be hidden
 during its end use. See In re Webb, 916 F.2d 1553, 16 USPQ2d
 1433 (Fed. Cir. 1990).
 

 

 
 1504.01(d) Simulation [R-08.2012]

 35 U.S.C.
 171 requires that a design to be patentable be “original.”
 Clearly, a design which simulates an existing object or person is not original as
 required by the statute. The Supreme Court in Gorham Manufacturing Co. v.
 White, 81 U.S. (14 Wall) 511 (1871), described a design as “the thing
 invented or produced, for which a patent is given.” “The arbitrary chance selection
 of a form of a now well known and celebrated building, to be applied to toys,
 inkstands, paper - weights, etc. does not, in my opinion, evince the slightest
 exercise of invention....” Bennage v. Phillippi, 1876 C.D. 135, 9
 O.G. 1159 (Comm’r Pat. 1876). This logic was reinforced by the CCPA in In re
 Smith, 77 F.2d 513, 513, 25 USPQ 359, 360, 1935 C.D. 565, 566 (CCPA
 1935), which stated that “to take a natural form, in a natural pose, ... does not
 constitute invention” when affirming the rejection of a claim to a baby doll. This
 premise was also applied in In re Smith, 77 F.2d 514, 515, 25 USPQ
 360, 362, 1935 C.D. 573, 575 (CCPA 1935), which held that a “baby doll simulating the
 natural features...of a baby without embodying some grotesqueness or departure from
 the natural form” is not patentable.
 

 Therefore, a claim directed to a design for an article which
 simulates a well known or naturally occurring object or person should be rejected
 under 35 U.S.C.
 171 as nonstatutory subject matter in that the claimed design
 lacks originality . Form paragraph 15.08.02 should
 be used. However, when a claim is rejected on this basis, examiners should provide
 evidence, if possible, of the appearance of the object, person or naturally occurring
 form in question so that a comparison may be made to the claimed design. Form
 paragraph 15.08.03 should be used. It would also be
 appropriate, if the examiner has prior art which anticipates or renders the claim
 obvious, to reject the claim under either 35 U.S.C. 102 or
 103(a) concurrently. See In re Wise, 
 340 F.2d 982, 144 USPQ 354 (CCPA 1965).
 

 

 ¶ 15.08.02 Simulation (Entire Article)

 The claim is rejected under
 35 U.S.C.
 171 as being directed to nonstatutory subject matter in that the design
 lacks originality. The design is merely simulating [1] which applicant himself
 did not invent. See In re Smith , 25 USPQ 359, 1935 C.D. 565 (CCPA 1935);
 In re Smith , 25 USPQ 360, 1935 C.D. 573 (CCPA 1935); and
 Bennage v. Phillippi , 1876 C.D. 135, 9 OG
 1159.
 

 Examiner Note:
 
 1. In bracket 1, insert the name of
 the article or person being simulated, e.g., the White House, Marilyn Monroe, an animal
 which is not stylized or caricatured in any way, a rock or shell to be used as
 paperweight, etc.
 

 2. This form paragraph should be
 followed by form paragraph 15.08.03 when evidence has been cited to show the
 article or person being simulated.
 
 
 

 ¶ 15.08.03 Explanation of evidence cited in support of simulation rejection

 Applicant’s design has in no way departed from the natural appearance of [1] . This reference is not relied on in this rejection but is supplied merely as representative of the usual or typical appearance
 of [2] in order that the claim may be compared to that which it is simulating. 
 

 Examiner Note:
 
 1. In bracket 1, insert name of article or person being simulated and source (patent, publication, etc.).

 2. In bracket 2, insert name of article or person being simulated.
 
 

 

 
 1504.01(e) Offensive Subject Matter [R-07.2015]

 Design applications which disclose subject matter which could be
 deemed offensive to any race, religion, sex, ethnic group, or nationality, such as
 those which include caricatures or depictions, should be rejected as nonstatutory
 subject matter under 35 U.S.C. 171 . See also
 MPEP §
 608 . Form paragraph 15.09.01 should
 be used.
 

 ¶ 15.09.01 Offensive Subject Matter

 The disclosure, and therefore the
 claim in this application, is rejected as being offensive and therefore improper subject
 matter for design patent protection under 35 U.S.C. 171 . Such subject matter does
 not meet the statutory requirements of 35 U.S.C. 171 . Moreover, since
 37 CFR
 1.3 proscribes the presentation of papers which are lacking in
 decorum and courtesy, and this includes depictions of caricatures in the disclosure,
 drawings, and/or a claim which might reasonably be considered offensive, such subject matter
 as presented herein is deemed to be clearly contrary to 37 CFR 1.3 . See MPEP §
 608 .
 

 

 

 

 
 1504.02 Novelty [R-07.2022]

 
 35 U.S.C. 102 
 Conditions for patentability; novelty. 

 
 (a) NOVELTY; PRIOR ART.—A person shall be entitled
 to a patent unless—
 
 (1) the claimed invention was patented,
 described in a printed publication, or in public use, on sale, or
 otherwise available to the public before the effective filing date of the
 claimed invention; or
 

 (2) the claimed invention was described in a
 patent issued under section 151 , or in an
 application for patent published or deemed published under
 section 122(b) , in which the patent or
 application, as the case may be, names another inventor and was
 effectively filed before the effective filing date of the claimed
 invention.
 

 
 

 (b) EXCEPTIONS.—
 
 (1) DISCLOSURES MADE 1 YEAR OR LESS BEFORE
 THE EFFECTIVE FILING DATE OF THE CLAIMED INVENTION.—A disclosure made 1
 year or less before the effective filing date of a claimed invention
 shall not be prior art to the claimed invention under subsection
 (a)(1) if— 
 
 (A) the disclosure was made by the
 inventor or joint inventor or by another who obtained the subject
 matter disclosed directly or indirectly from the inventor or a
 joint inventor; or 
 

 (B) the subject matter disclosed had,
 before such disclosure, been publicly disclosed by the inventor or
 a joint inventor or another who obtained the subject matter
 disclosed directly or indirectly from the inventor or a joint
 inventor. 
 

 
 

 (2) DISCLOSURES APPEARING IN APPLICATIONS AND
 PATENTS.—A disclosure shall not be prior art to a claimed invention under
 subsection (a)(2) if— 
 
 (A) the subject matter disclosed was
 obtained directly or indirectly from the inventor or a joint
 inventor;
 

 (B) the subject matter disclosed had,
 before such subject matter was effectively filed under subsection
 (a)(2) , been
 publicly disclosed by the inventor or a joint inventor or another
 who obtained the subject matter disclosed directly or indirectly
 from the inventor or a joint inventor; or
 

 (C) the subject matter disclosed and
 the claimed invention, not later than the effective filing date of
 the claimed invention, were owned by the same person or subject to
 an obligation of assignment to the same person.
 

 
 

 
 

 (c) COMMON OWNERSHIP UNDER JOINT RESEARCH
 AGREEMENTS.—Subject matter disclosed and a claimed invention shall be deemed to
 have been owned by the same person or subject to an obligation of assignment to
 the same person in applying the provisions of subsection (b)(2)(C) if—
 
 (1) the subject matter disclosed was
 developed and the claimed invention was made by, or on behalf of, 1 or
 more parties to a joint research agreement that was in effect on or
 before the effective filing date of the claimed invention;
 

 (2) the claimed invention was made as a
 result of activities undertaken within the scope of the joint research
 agreement; and
 

 (3) the application for patent for the
 claimed invention discloses or is amended to disclose the names of the
 parties to the joint research agreement. 
 

 
 

 (d) PATENTS AND PUBLISHED APPLICATIONS EFFECTIVE AS
 PRIOR ART.—For purposes of determining whether a patent or application for
 patent is prior art to a claimed invention under subsection (a)(2) , such patent or application shall be considered
 to have been effectively filed, with respect to any subject matter described in
 the patent or application— 
 
 (1) if paragraph (2) does not apply, as of
 the actual filing date of the patent or the application for patent; or
 
 

 (2) if the patent or application for patent
 is entitled to claim a right of priority under section
 119 , 365(a) , or
 365(b) or to claim the benefit of an earlier
 filing date under section 120 ,
 121 , or 365(c) , based upon 1
 or more prior filed applications for patent, as of the filing date of the
 earliest such application that describes the subject matter.
 

 
 

 
 

 

 
 35 U.S.C. 102 (pre-AIA) 
 Conditions for patentability; novelty and loss of right to
 patent. 

 A person shall be entitled to a patent unless —

 
 (a) the invention was known or used by others in this country, or
 patented or described in a printed publication in this or a foreign country,
 before the invention thereof by the applicant for patent, or
 

 (b) the invention was patented or described in a printed
 publication in this or a foreign country or in public use or on sale in this
 country, more than one year prior to the date of the application for patent in
 the United States, or
 

 (c) he has abandoned the invention, or

 (d) the invention was first patented or caused to be patented, or
 was the subject of an inventor’s certificate, by the applicant or his legal
 representatives or assigns in a foreign country prior to the date of the
 application for patent in this country on an application for patent or
 inventor’s certificate filed more than twelve months before the filing of the
 application in the United States, or
 

 (e) the invention was described in — (1) an application for
 patent, published under section 122(b) , by another
 filed in the United States before the invention by the applicant for patent or
 (2) a patent granted on an application for patent by another filed in the
 United States before the invention by the applicant for patent, except that an
 international application filed under the treaty defined in section
 351(a) shall have the effects for the purposes of this
 subsection of an application filed in the United States only if the
 international application designated the United States and was published under
 Article
 21(2) of such treaty in the English language; or
 

 (f) he did not himself invent the subject matter sought to be
 patented, or
 

 (g)(1) during the course of an interference conducted under
 section
 135 or section 291 , another
 inventor involved therein establishes, to the extent permitted in
 section
 104 , that before such person’s invention thereof the
 invention was made by such other inventor and not abandoned, suppressed, or
 concealed, or (2) before such person’s invention thereof, the invention was
 made in this country by another inventor who had not abandoned, suppressed, or
 concealed it. In determining priority of invention under this subsection, there
 shall be considered not only the respective dates of conception and reduction
 to practice of the invention, but also the reasonable diligence of one who was
 first to conceive and last to reduce to practice, from a time prior to
 conception by the other.
 

 
 

 A claimed design may be rejected under 35 U.S.C.
 102 when the invention is anticipated (or is “not novel”) over a
 disclosure that is available as prior art. In design patent applications, the factual
 inquiry in determining anticipation over a prior art reference is the same as in utility
 patent applications. That is, the reference “‘must be identical in all material
 respects.’” Hupp v. Siroflex of America Inc., 122 F.3d 1456, 43
 USPQ2d 1887 (Fed. Cir. 1997). For anticipation to be found, the claimed design and the
 prior art design must be substantially the same. Door-Master Corp. v.
 Yorktowne, Inc., 256 F.3d 1308, 1313, 59 USPQ2d 1472, 1475 (Fed. Cir. 2001)
 (citing Gorham Mfg. Co. v. White, 81 U.S. 511, 528 (1871)).
 

 In International Seaway Trading Corp. v.
 Walgreens Corp., 589 F.3d 1233, 1239-40, 93 USPQ2d 1001, 1005 (Fed. Cir.
 2009), the Federal Circuit held that the ordinary observer test, the test used for
 infringement, is “the sole test for anticipation.” Under the ordinary observer test,
 “‘if, in the eye of an ordinary observer, giving such attention as a purchaser usually
 gives, two designs are substantially the same, if the resemblance is such as to deceive
 such an observer, inducing him to purchase one supposing it to be the other, the first
 one patented is infringed by the other.’” Gorham, 81 U.S. at 528. In
 Egyptian Goddess, an en banc panel of the
 Federal Circuit "characteriz[ed] the ordinary observer as being ‘deemed to view the
 differences between the patented design and the accused product in the context of the
 prior art.’” Seaway, 589 F.3d at 1239-40, 93 USPQ2d at 1005, quoting
 Egyptian Goddess Inc. v. Swissa Inc., 543 F.3d 665, 676, 88 USPQ2d
 1658, 1666-67 (Fed. Cir. 2008) (en banc) . The court also explained
 that “‘when the claimed design is close to the prior art designs, small differences
 between the accused design and the claimed design are likely to be important to the eye
 of the hypothetical ordinary observer.’” Id. 

 The ordinary observer test requires consideration of the
 design as a whole. See Seaway, 589 F.3d at 1243, 93 USPQ2d at 1008;
 Egyptian Goddess, 543 F.3d at 677, 88 USPQ2d 1667. In applying the
 ordinary observer test, “determine whether ‘the deception that arises is a result of the
 similarities in the overall design not of similarities in ornamental features in
 isolation.’” See Richardson v. Stanley Works Inc., 597 F.3d 1288,
 1295, 93 USPQ2d 1937, 1941 (Fed. Cir. 2010), citing Amini Innovation Corp. v.
 Anthony California Inc., 439 F.3d 1365, 1371, 78 USPQ2d 1147, 1151 (Fed.
 Cir. 2006) (holding that the overall infringement test is not to be converted to an
 element-by-element comparison when factoring out the functional aspects of various
 design elements). See Apple Inc. v. Samsung Elecs. Co., 786 F.3d 983,
 998, 114 USPQ2d 1953, 1962 (Fed. Cir. 2015); Ethicon Endo-Surgery, Inc. v.
 Covidien, Inc., 796 F.3d 1312, 1333, 115 USPQ2d 1880, 1896 (Fed. Cir.
 2015); and Sport Dimension, Inc. v. Coleman Co. Inc., 820 F.3d, 1316,
 1320-21, 118 USPQ2d 1607, 1609-10 (Fed. Cir. 2016). “The mandated overall comparison is
 a comparison taking into account significant differences between the two designs, not
 minor or trivial differences that necessarily exist between any two designs that are not
 exact copies of one another.” Seaway, 589 F.3d at 1243, 93 USPQ2d at
 1008. “Just as minor differences between a patented design and an accused article's
 design cannot, and shall not, prevent a finding of infringement, so too minor
 differences cannot prevent a finding of anticipation.” Id. (internal
 quotation marks omitted).
 

 “A design claim is limited to the article of manufacture
 identified in the claim; it does not broadly cover a design in the abstract.”
 In re SurgiSil, L.L.P., 14 F.4th 1380, 1382, 2021 USPQ2d 1008
 (Fed. Cir. 2021). See also MPEP § 1502 . In
 SurgiSil, the Federal Circuit reversed an anticipation rejection
 of a lip implant over an art tool because it determined that the Board's anticipation
 finding “rests on an erroneous interpretation of the claim's scope.”
 Id. The court reasoned that where “[t]he claim language recites ‘a
 lip implant,’” and “the application’s figure depicts a lip implant, … the claim is
 limited to lip implants and does not cover other articles of manufacture.”
 Id. 

 When a claim is rejected under 35 U.S.C. 102 as being unpatentable
 over prior art, those features of the design which are functional and/or hidden during
 end use may not be relied upon to support patentability. See In re
 Cornwall, 230 F.2d 457, 109 USPQ 57 (CCPA 1956); Jones v. Progress
 Ind., Inc., 163 F. Supp. 824, 119 USPQ 92 (D. R.I. 1958). Further, in a
 rejection of a claim under 35 U.S.C. 102 , mere differences in
 functional considerations do not negate a finding of anticipation when determining
 design patentability. See Black & Decker, Inc. v. Pittway Corp., 
 636 F.2d 1193, 231 USPQ 252 (N.D. Ill. 1986). See also In re
 Zonenstein, 172 F.2d 599, 80 USPQ 522, 523 (CCPA 1949) (“Patentability of a
 design cannot be predicated on size or utility.”). 
 

 It is not necessary for the examiner to cite or apply prior art to show
 that functional and/or hidden features are old in the art as long as the examiner has
 properly relied on evidence to support the prima facie lack of
 ornamentality of these individual features. If applicant wishes to rely on functional or
 hidden features as a basis for patentability, the same standard for establishing
 ornamentality under 35
 U.S.C. 171 must be applied before these features can be given any
 patentable weight. See MPEP § 1504.01(c) .
 

 In evaluating a statutory bar based on pre-AIA 35 U.S.C.
 102(b) , the experimental use exception to a statutory bar for
 public use or sale (see MPEP § 2133.03(e) ) does not usually apply for design patents.
 See In re Mann, 861 F.2d 1581, 8 USPQ2d 2030 (Fed. Cir. 1988).
 However, Tone Brothers, Inc. v. Sysco Corp., 28 F.3d 1192, 1200, 31
 USPQ2d 1321, 1326 (Fed. Cir. 1994) held that “experimentation directed to functional
 features of a product also containing an ornamental design may negate what otherwise
 would be considered a public use within the meaning of section 102(b).” See
 MPEP §
 2133.03(e)(6) . 
 

 Registration of a design abroad is considered to be equivalent to
 patenting for priority purposes under 35 U.S.C. 119(a) - (d) and for prior
 art purposes pre-AIA
 35 U.S.C. 102(d) , whether or not the foreign grant is published.
 (See Ex parte Lancaster, 151 USPQ 713 (Bd. App. 1965); Ex
 parte Marinissen, 155 USPQ 528 (Bd. App. 1966); Appeal No. 239-48,
 Decided April 30, 1965, 151 USPQ 711, (Bd. App. 1965); Ex parte
 Appeal decided September 3, 1968 , 866 O.G. 16 (Bd. App. 1966). The basis of
 this practice is that if the foreign applicant has received the protection offered in
 the foreign country, no matter what the protection is called (“patent,” “Design
 Registration,” etc.), if the United States application is timely filed, a claim for
 priority will vest. If, on the other hand, the U.S. application is not timely filed, a
 statutory bar arises under pre-AIA 35 U.S.C. 102(d) as modified
 by 35 U.S.C.
 172 . In order for the filing to be timely for priority purposes
 and to avoid possible statutory bars, the U.S. design patent application must be made
 within 6 months of the foreign filing. See also MPEP § 1504.10 .
 

 The laws of each foreign country vary in one or more respects. 

 The following table sets forth the dates on which design rights can be
 enforced in a foreign country (INID Code (24)) and thus, are also useable in a
 pre-AIA 35 U.S.C.
 102(d) rejection as modified by 35 U.S.C. 172 . It
 should be noted that in many countries the date of registration or grant is the filing
 date.
 

 
 
 
 
 Country or Organization 
 Date(s) Which Can Also Be Used for
 35
 U.S.C. 102(d) Purposes 1 
 (INID Code (24))
 
 Comment 
 

 
 
 
 AT-Austria 
 Protection starts on the date of
 publication of the design in the official gazette
 
 
 

 
 AU-Australia 
 Date of registration or grant which is the
 filing date
 
 
 

 
 BG-Bulgaria 
 Date of registration or grant which is the
 filing date
 
 
 

 
 BX-Benelux (Belgium, Luxembourg, and the
 Netherlands)
 
 Date on which corresponding application
 became complete and regular according to the criteria set by the law
 
 
 

 
 CA-Canada 
 Date of registration or grant 
 
 

 
 CH-Switzerland 
 Date of registration or grant which is the
 filing date
 
 Minimum requirements: deposit application,
 object, and deposit fee
 
 

 
 CL-Chile 
 Date of registration or grant 
 
 

 
 CU-Cuba 
 Date of registration or grant which is the
 filing date
 
 
 

 
 CZ-Czechia 
 Date of registration or grant which is the
 filing date
 
 
 

 
 DE-Germany 
 Date of registration or grant 
 The industrial design right can be enforced
 by a court from the date of registration although it is in force earlier (as
 from the date of filing—as defined by law).
 
 

 
 DK-Denmark 
 Date of registration or grant which is the
 filing date
 
 
 

 
 EG-Egypt 
 Date of registration or grant which is the
 filing date
 
 
 

 
 ES-Spain 
 Date of registration or grant 
 
 

 
 FI-Finland 
 Date of registration or grant which is the
 filing date
 
 
 

 
 FR-France 
 Date of registration or grant which is the
 filing date
 
 
 

 
 GB-United Kingdom 
 Date of registration or grant which is the
 filing date
 
 Protection arises automatically under the
 Design Right provision when the design is created. Proof of the date of the
 design creation needs to be kept in case the design right is challenged. The
 protection available to designs can be enforced in the courts following the
 date of grant of the Certificate of Registration as of the date of
 registration which stems from the date of first filing of the design in the
 UK or, if a priority is claimed under the Convention, as another country.
 
 
 

 
 HU-Hungary 
 Date of registration or grant 
 With retroactive effect as from the filing
 date
 
 

 
 JP-Japan 
 Date of registration or grant 
 
 

 
 KR-Republic of Korea 
 Date of registration or grant 
 
 

 
 MA-Morocco 
 Date of registration or grant which is the
 filing date
 
 
 

 
 MC-Monaco 
 Date of registration or grant which is the
 filing date
 
 Date of prior disclosure declared on
 deposit
 
 

 
 NO-Norway 
 Date of registration or grant which is the
 filing date
 
 
 

 
 OA-African Intellectual Property
 Organization (OAPI) (Benin, Burkina Faso, Cameroon, Central African
 Republic, Chad, Congo, Cote d`Ivoire, Gabon, Guinea, Mali, Mauritania,
 Niger, Senegal, and Togo)
 
 Date of registration or grant which is the
 filing date
 
 
 

 
 PT-Portugal 
 Date of registration or grant 
 
 

 
 RO-Romania 
 Date of registration or grant which is the
 filing date
 
 
 

 
 RU-Russian Federation 
 Date of registration or grant which is the
 filing date
 
 
 

 
 SE-Sweden 
 Date of registration or grant 
 
 

 
 TN-Tunisia 
 Date of registration or grant which is the
 filing date
 
 
 

 
 TT-Trinidad and Tobago 
 Date of registration or grant which is the
 filing date
 
 
 

 
 WO-World Intellectual Property Organization
 (WIPO)
 
 
 Subject to Rule 14.2 of the Regulations (on
 defects), the International Bureau enters the international deposit in the
 International Register on the date on which it has in its possession the
 application together with the items required. Reproductions, samples, or
 models pursuant to Rule 12, and the prescribed fees.
 
 

 
 1 Based on information taken from the “Survey of
 Filing Procedures and Filing Requirements, as well as of Examination Methods
 and Publication Procedures, Relating to Industrial Designs” as adopted by
 the PCIPI Executive Coordination Committee of the World Intellectual
 Property Organization (WIPO) at its fifteenth session on November 25,
 1994.
 
 

 
 
 Rejections under pre-AIA 35 U.S.C. 102(d) as modified
 by 35 U.S.C.
 172 should only be made when the examiner knows that the
 application for foreign registration/patent has actually issued before the U.S. filing
 date based on an application filed more than six (6) months prior to filing the
 application in the United States. If the grant of a registration/patent based on the
 foreign application is not evident from the record of the U.S. application or from
 information found within the preceding charts, then the statement below should be
 included in the first action on the merits of the application:
 

 ¶ 15.03.01.fti Foreign Filing More Than 6 Months Before U.S. Filing, Application
 Filed Before March 16, 2013 
 

 Acknowledgment is made of the
 [1] application identified in the oath or declaration or application data
 sheet which was filed more than six months prior to the filing date of the present
 application. Applicant is reminded that if the [2] application matured into a
 form of patent protection before the filing date of the present application it would
 constitute a statutory bar to the issuance of a design patent in the United States under
 pre-AIA 35 U.S.C.
 102(d) in view of pre-AIA 35 U.S.C. 172 . 
 

 Examiner Note:

 In brackets 1 and 2, insert the
 name of country where application was filed. 
 

 

 Form paragraphs for use in rejections under 35 U.S.C. 102 and
 pre-AIA 35 U.S.C.
 102 are set forth below.
 

 ¶ 15.10.aia Application Examined Under AIA First Inventor to File
 Provisions
 

 The present application, filed on or after March 16, 2013,
 is being examined under the first inventor to file provisions of the AIA. 
 

 Examiner Note:

 This form paragraph should be used in any
 application subject to the first inventor to file provisions of the AIA.
 

 

 ¶ 15.10.fti Application Examined Under First Inventor to File Provisions 

 The present application, filed on or after March 16, 2013,
 is being examined under the pre-AIA first to invent provisions. 
 

 Examiner Note:

 This form paragraph should be used in any
 application filed on or after March 16, 2013, that is subject to the pre-AIA prior art
 provisions.
 

 

 ¶ 15.10.15 Notice re prior art available under both pre-AIA and
 AIA
 

 In the event the determination of the status of the
 application as subject to AIA 35 U.S.C. 102 and 103 (or as
 subject to pre-AIA 35 U.S.C.
 102 and 103 ) is incorrect, any correction of the
 statutory basis for the rejection will not be considered a new ground of rejection if the
 prior art relied upon, and the rationale supporting the rejection, would be the same under
 either status.
 

 Examiner Note:
 
 1. This form paragraph must be used in all Office
 Actions when a prior art rejection is made in an application with an actual filing date
 on or after March 16, 2013 that claims priority to, or the benefit of, an application
 filed before March 16, 2013.
 

 2. This form paragraph should only be used ONCE
 in an Office action.
 
 
 

 ¶ 15.11.aia 35 U.S.C. 102(a)(1) Rejection

 The claim is rejected under 35 U.S.C.
 102(a)(1) as being anticipated by [1] because the claimed
 invention was patented, described in a printed publication, or in public use, on sale or
 otherwise available to the public before the effective filing date of the claimed
 invention.
 

 Examiner Note:
 
 1. In bracket 1, identify the reference applied against
 the claimed design.
 

 2. For applications with an actual filing date on or after March
 16, 2013 that claim priority to, or the benefit of, an application filed before March
 16, 2013, this form paragraph must be preceded by form paragraphs
 15.10.aia and 15.10.15 .
 
 
 

 ¶ 15.11.fti Pre-AIA 35 U.S.C.
 102(a) Rejection
 

 The claim is rejected under
 pre-AIA 35
 U.S.C. 102(a) as being anticipated by [1] because
 the invention was known or used by others in this country, or patented or described in a
 printed publication in this or a foreign country before the invention thereof by the
 applicant for patent.
 

 Examiner Note:
 
 1. In bracket 1, identify the reference applied
 against the claimed design.
 

 2. For applications with an actual filing date
 on or after March 16, 2013 that claim priority to, or the benefit of, an
 application filed before March 16, 2013, this form paragraph must be
 preceded by form paragraph 15.10.15 .
 
 
 

 ¶ 15.12.fti Pre-AIA 35 U.S.C. 102(b)
 Rejection
 

 The claim is rejected under
 35 U.S.C.
 102(b) as being anticipated by [1] because the invention
 was patented or described in a printed publication in this or a foreign country, or in public
 use or on sale in this country more than one (1) year prior to the application for patent in
 the United States.
 

 Examiner Note:
 
 1. In bracket 1, identify the reference applied against
 the claimed design.
 

 2. For applications with an actual filing date on or
 after March 16, 2013, that claim priority to, or the benefit of, an application filed
 before March 16, 2013, this form paragraph must be preceded by form paragraph
 15.10.15 .
 
 
 

 ¶ 15.13.fti Pre-AIA 35 U.S.C.
 102(c) Rejection
 

 The claim is rejected under
 pre-AIA 35 U.S.C.
 102(c) because the invention has been abandoned.
 

 

 ¶ 15.14.fti Pre-AIA 35 U.S.C. 102(d)/35 U.S.C. 172 Rejection

 The claim is rejected under pre-AIA 35 U.S.C. 102(d) , as modified by
 pre-AIA 35 U.S.C.
 172 , as being anticipated by [1] because the invention was
 first patented or caused to be patented, or was the subject of an inventor’s certificate by
 the applicant, or the applicant's legal representatives or assigns in a foreign country prior
 to the date of the application for patent in this country on an application for patent or
 inventor’s certificate filed more than six (6) months before the filing of the application in
 the United States.
 

 Examiner Note:

 In bracket 1, identify the reference applied against
 the claimed design.
 

 

 ¶ 15.15.aia 35 U.S.C. 102(a)(2) Rejection

 The claim is rejected under 35 U.S.C.
 102(a)(2) as being anticipated by [1] because the claimed
 invention was described in a patent issued under section 151 , or in an
 application for patent published or deemed published under section 122(b) , in which the
 patent or application, as the case may be, names another inventor and was effectively filed
 before the effective filing date of the claimed invention.
 

 Examiner Note:
 
 1. In bracket 1, identify the reference applied against
 the claimed design.
 

 2. For applications claiming priority to, or the
 benefit of, an application filed before March 16, 2013, this form paragraph must be
 preceded by form paragraphs 15.10.aia and 15.10.15 .
 

 3. This form paragraph should only be used in an
 application filed on or after March 16, 2013, where the claims are being examined under
 35
 U.S.C. 102 / 103 as amended by the AIA.
 
 
 
 

 ¶ 15.15.fti Pre-AIA 135 U.S.C. 102(e) Rejection

 The claim is rejected under
 pre-AIA 35 U.S.C.
 102(e) as being anticipated by [1] because the invention
 was described in a patented or published application for patent by another filed in the United
 States before the invention thereof by the applicant for patent.
 

 Examiner Note:
 
 1. In bracket 1, identify the reference applied against
 the claimed design.
 

 2. For applications with an actual filing date on or
 after March 16, 2013, that claim priority to, or the benefit of, an application filed
 before March 16, 2013, this form paragraph must be preceded by form paragraph
 15.10.15 .
 
 
 

 ¶ 15.16.fti Pre-AIA 35 U.S.C. 102(f) Rejection
 

 The claim is rejected under
 pre-AIA 35 U.S.C.
 102 because applicant did not himself invent the subject matter sought
 to be patented.
 

 

 ¶ 15.17.aia Pre-AIA 35 U.S.C. 102(g) Rejection

 The claim is rejected under pre-AIA 35 U.S.C. 102 because, before the
 applicant’s invention thereof, the invention was made in this country by another who had not
 abandoned, suppressed or concealed it.
 

 A rejection based on this statutory basis can be made in an application
 or patent that is examined under the first to file provisions of the AIA if it also contains
 or contained at any time (1) a claim to an invention having an effective filing date as
 defined in 35
 U.S.C. 100(i) that is before March 16, 2013, or (2) a specific reference
 under 35 U.S.C.
 120, 35 U.S.C.
 121, or 35 U.S.C. 365(c) to any patent or
 application that contains or contained at any time such a claim.
 

 Examiner Note:

 For applications with an actual filing date on or after
 March 16, 2013 that claim priority to, or the benefit of, an application filed before March
 16, 2013, this form paragraph must be preceded by form paragraphs
 15.10.aia 
 and 15.10.15. 

 

 ¶ 15.17.fti Pre-AIA 35 U.S.C. 102(g) Rejection

 The claim is rejected under pre-AIA 35 U.S.C. 102(g) because, before
 the applicant’s invention thereof, the invention was made in this country by another who had
 not abandoned, suppressed or concealed it.
 

 Examiner Note:

 For applications with an actual filing date on or after March 16,
 2013, that claim priority to, or the benefit of, an application filed before March 16,
 2013, this form paragraph must be preceded by form paragraphs 15.10.fti and
 15.10.15 .
 

 

 ¶ 15.09.02.aia Statement of Statutory Bases, 35 U.S.C. 171 and 35 U.S.C.
 115-Improper Inventorship
 

 The following is a quotation of 35 U.S.C. 171 :
 

 (a) IN GENERAL.—Whoever invents any new, original, and ornamental
 design for an article of manufacture may obtain a patent therefor, subject to the conditions
 and requirements of this title. 
 

 (b) APPLICABILITY OF THIS TITLE.—The provisions of this title
 relating to patents for inventions shall apply to patents for designs, except as otherwise
 provided.
 

 (c) FILING DATE.—The filing date of an application for patent for
 design shall be the date on which the specification as prescribed by section 112 and any
 required drawings are filed.
 

 35 U.S.C.
 115(a) reads as follows (in part):
 

 An application for patent that is filed under section 111(a) or
 commences the national stage under section 371 shall include, or be amended
 to include, the name of the inventor for any invention claimed in the application.
 

 The present application sets forth incorrect inventorship because
 [1] . 
 

 The claim is rejected under 35 U.S.C. 171 and 35 U.S.C. 115 for
 failing to set forth the correct inventorship for the reasons stated above.
 

 Examiner Note:

 In bracket 1, insert the basis for concluding that the
 inventorship is incorrect.
 

 

 ¶ 15.09.03.aia Statement of Statutory Basis, 35 U.S.C. 115-Improper
 Inventorship 
 

 35 U.S.C. 115(a) reads as follows (in part):

 An application for patent that is filed under
 section
 111(a) or commences the national stage under section 371 shall
 include, or be amended to include, the name of the inventor for any invention claimed in the
 application. 
 

 The present application sets forth incorrect inventorship
 because [1] . 
 

 The claim is rejected under 35 U.S.C. 171 and
 35 U.S.C.
 115 for failing to set forth the correct inventorship for the reasons
 stated above. 
 

 Examiner Note:
 
 1. This form paragraph is to be used ONLY when a rejection under
 35 U.S.C.
 171 on another basis has been made and the statutory text thereof
 is already present.
 

 2. This form paragraph must be preceded by form paragraph
 15.07.01 
 for a rejection based on improper inventorship.
 

 3. In bracket 1, insert an explanation of the supporting evidence establishing
 that an improper inventor is named. 
 
 
 

 ¶ 15.24.05.fti Identical Claim: Common Assignee

 The claim is directed to the same
 invention as that of the claim of commonly assigned copending Application No.
 [1] . The issue of priority under pre-AIA 35 U.S.C. 102(g) and possibly
 pre-AIA 35 U.S.C.
 102(f) of this single invention must be resolved. Since the U.S.
 Patent and Trademark Office normally will not institute an interference between applications
 or a patent and an application of common ownership (see MPEP § 2302 ), the
 assignee is required to state which entity is the prior inventor of the conflicting subject
 matter. A terminal disclaimer has no effect in this situation since the basis for refusing
 more than one patent is priority of invention under pre-AIA 35 U.S.C.102(f) or (g) and not
 an extension of monopoly. Failure to comply with this requirement will result in a holding
 of abandonment of this application.
 

 

 The following form paragraph should be included after the form
 paragraph setting forth the rejection under 35 U.S.C. 102 (a) , (b) , (d) or
 (e) to provide an explanation of the applied reference.
 

 ¶ 15.15.01.aia Explanation of rejection under 35 U.S.C. 102(a)(1) or 102(a)(2) 

 The appearance of [1] is substantially the
 same as that of the claimed design. See e.g., International Seaway Trading Corp. v.
 Walgreens Corp. , 589 F.3d 1233, 1237-38, 1240, 93 USPQ2d 1001 (Fed. Cir. 2009)
 and MPEP § 1504.02.
 

 Examiner Note:
 
 1. This paragraph should be included after paragraph
 15.11.aia or 15.15.aia to explain the basis of
 the rejection.
 

 2. In bracket 1, identify the reference applied against
 the claimed design.
 
 
 

 ¶ 15.15.01.fti Explanation of rejection under Pre-AIA 35 U.S.C. 102(a), (b), (d),
 or (e) 
 

 The appearance of [1] is
 substantially the same as that of the claimed design. See e.g., International Seaway
 Trading Corp. v. Walgreens Corp. , 589 F.3d 1233, 1237-38, 1240, 93 USPQ2d 1001
 (Fed. Cir. 2009) and MPEP § 1504.02.
 

 Examiner Note:
 
 1. This paragraph should be included after paragraph
 15.11.fti , 15.12.fti ,
 15.14.fti or 15.15.fti to explain the basis of
 the rejection.
 

 2. In bracket 1, identify the
 reference applied against the claimed design.
 

 3. For applications with an actual filing date on or
 after March 16, 2013, that claim priority to, or the benefit of, an application filed
 before March 16, 2013, this form paragraph must be preceded by form paragraph
 15.10.15 .
 
 
 

 The following form paragraphs may be used to reject a claim under
 pre-AIA 35 U.S.C.
 102(e) over an application or patent having an earlier prior art
 date with a common inventor and/or assignee, or that discloses but does not claim the
 design.
 

 ¶ 15.15.02.aia 35 U.S.C. 102(a)(2) Provisional rejection - design disclosed
 in another application with common inventor and/or assignee 
 

 The claim is provisionally rejected under 35 U.S.C.
 102(a)(2) as being anticipated by copending Application No.
 [1] which has a common [2] with the instant application.
 

 Because the copending application names another inventor and has an
 earlier effectively filed date, it would constitute prior art under 35 U.S.C.
 102(a)(2) , if published under 35 U.S.C. 122(b) or patented. This
 provisional rejection under 35 U.S.C. 102(a)(2) is based upon a
 presumption of future publication or patenting of the copending application.
 

 This provisional rejection under 35 U.S.C.
 102(a)(2) might be overcome by: (1) a showing under 37 CFR 1.130(a) 
 that the design in the reference was obtained directly or indirectly from the inventor of this
 application and is thus not prior art under 35 U.S.C.
 102(b)(2)(A) ; (2) perfecting a claim to priority under 35 U.S.C. 119 
 that antedates the reference by filing a certified priority document in the application that
 satisfies the enablement and description requirements of 35 U.S.C.
 112(a) ; (3) perfecting the benefit claim under 35 U.S.C. 120 by
 filing an application data sheet under 37 CFR 1.76 which contains a specific
 reference to a prior application in accordance with 37 CFR 1.78 and
 establishing that the prior application satisfies the enablement and description requirements
 of 35
 U.S.C. 112(a) ; (4) a showing under 37 CFR 1.130(b) of a
 prior public disclosure under 35 U.S.C. 102(b)(2)(B) ; or (5) providing a
 statement pursuant to 35 U.S.C. 102(b)(2)(C) that the subject
 matter disclosed and the claimed invention, not later than the effective filing date of the
 claimed invention, were owned by the same person or subject to an obligation of assignment to
 the same person or subject to a joint research agreement.
 

 This rejection may not be overcome by the filing of a
 terminal disclaimer. See In re Bartfeld , 925 F.2d 1450, 17 USPQ2d 1885
 (Fed. Cir. 1991).
 

 Examiner Note:
 
 1. This form paragraph is used to provisionally reject over a
 copending application (utility or design) that discloses the claimed invention and would
 constitute prior art under 35 U.S.C. 102(a)(2) if patented or
 published under 35
 U.S.C. 122 . The copending application must have either a common
 assignee or at least one common inventor. 
 

 2. In bracket 2, insert inventor or
 assignee.
 

 3. For applications claiming priority to, or the benefit
 of, an application filed before March 16, 2013, this form paragraph must be preceded by
 form paragraphs 15.10.aia and 15.10.15 .
 

 4. This form paragraph should only be used in an
 application filed on or after March 16, 2013, where the claims are being examined under
 35
 U.S.C. 102 / 103 as amended by the AIA.
 
 
 
 

 ¶ 15.15.02.fti Provisional Pre-AIA 35 U.S.C. 102(e) rejection - design disclosed
 but not claimed in another application with common inventor and/or assignee 
 

 The claim is provisionally rejected
 under pre-AIA 35
 U.S.C. 102(e) as being anticipated by copending Application No.
 [1] which has a common [2] with the instant
 application.
 

 Based upon the different inventive entity and the pre-AIA 35 U.S.C. 102(e) 
 date of the copending application, it would constitute prior art if published
 under 35 U.S.C.
 122(b) or patented. This provisional rejection under pre-AIA 35 U.S.C. 102(e) 
 is based upon a presumption of future publication or patenting of the copending application. 
 

 Since the design claimed in the present application is not the same
 invention claimed in the [3] application, the examiner suggests overcoming this
 provisional rejection in one of the following ways: (A) a showing under 37 CFR 1.132 that the
 design in the reference was derived from the designer of this application and is thus not the
 invention “by another;” (B) a showing of a date of invention for the instant application prior
 to the pre-AIA 35 U.S.C.
 102(e) date of the reference under 37 CFR 1.131(a) ; (C)
 perfecting a claim to priority under 35 U.S.C. 119 that antedates the reference
 by filing a certified priority document in the application that satisfies the enablement and
 description requirements of 35 U.S.C. 112(a) or pre-AIA 35 U.S.C. 112, 
 first paragraph; or (D) perfecting the benefit claim under 35 U.S.C. 120 by
 adding a specific reference to the prior filed application in compliance with
 37 CFR
 1.78 and establishing that the prior application satisfies the
 enablement and description requirements of 35 U.S.C. 112(a) or pre-AIA 35 U.S.C. 112, 
 first paragraph. If the application was filed before September 16, 2012, the specific
 reference must be included in the first sentence(s) of the specification following the title
 or in an application data sheet; if the application was filed on or after September 16, 2012,
 the specific reference must be included in an application data sheet. 
 

 This rejection may not be overcome by
 the filing of a terminal disclaimer. See In re Bartfeld , 925 F.2d 1450, 17
 USPQ2d 1885 (Fed. Cir. 1991).
 

 Examiner Note:
 
 1. This form paragraph is used to provisionally reject over a
 copending application (utility or design) that discloses (but does not claim) the
 claimed invention and would constitute prior art under pre-AIA 35 U.S.C.
 102(e) if patented or published under 35 U.S.C. 122 . The
 copending application must have either a common assignee or at least one common
 inventor.
 

 2. Use pre-AIA 35 U.S.C. 102(e) as amended
 by the American Inventor’s Protection Act (AIPA) (form paragraph
 7.12.fti )
 to determine the reference’s prior art date, unless the reference is a U.S. patent
 issued directly, or indirectly, from an international application which has an
 international filing date prior to November 29, 2000. Use pre-AIPA 35 U.S.C.
 102(e) (form paragraph 7.12.01.fti ) only if the reference
 is a U.S. patent issued directly or indirectly from either a national stage of an
 international application (application under 35 U.S.C. 371 ) which has an
 international filing date prior to November 29, 2000, or a continuing application
 claiming benefit under 35 U.S.C. 120, 121, 365(c), or 386(c) to an international
 application having an international filing date prior to November 29, 2000. See the
 Examiner Notes for form paragraphs 7.12.fti and 7.12.01.fti to assist in the
 determination of the reference’s pre-AIA or pre-AIPA 35 U.S.C. 102(e) date. 
 

 3. In bracket 2, insert inventor
 or assignee.
 

 4. For applications with an actual filing date on or
 after March 16, 2013, that claim priority to, or the benefit of, an application filed
 before March 16, 2013, this form paragraph must be preceded by form paragraph
 15.10.15 .
 
 
 

 ¶ 15.15.03.fti Pre-AIA 35 U.S.C. 102(e) provisional rejection - design claimed in
 an earlier-filed design patent application with common inventor and/or assignee 
 

 The claim is provisionally rejected
 under pre-AIA 35
 U.S.C. 102(e) as being anticipated by the claim in copending Design
 Patent Application No. [1] which has a common [2] with the instant
 application.
 

 Based upon the different inventive entity and the pre-AIA 35 U.S.C. 102(e) 
 date of the copending application, it would constitute prior art if patented. This provisional
 rejection under pre-AIA 35
 U.S.C. 102(e) is based upon a presumption of future patenting of the
 copending application. The rejection may be overcome by abandoning the earlier-filed copending
 application. 
 

 Examiner Note:
 
 1. In bracket 2, insert inventor or
 assignee.
 

 2. This form paragraph must be preceded by form paragraph
 15.24.05.fti to notify the applicant that the question
 of patentability under pre-AIA 35 U.S.C. 102(f) / (g) also
 exists.
 

 3. For applications with an actual filing date on or
 after March 16, 2013, that claim priority to, or the benefit of, an application filed
 before March 16, 2013, this form paragraph must be preceded by form paragraph
 15.10.15 .
 
 
 

 ¶ 15.15.04.aia 35 U.S.C. 102(a)(2) rejection - design disclosed in a patent 

 The claim is rejected under 35 U.S.C.
 102(a)(2) as being anticipated by patent
 [1] .
 

 Because the patent names another inventor and has an earlier
 effectively filed date, it constitutes prior art under 35 U.S.C.
 102(a)(2) .
 

 This rejection under 35 U.S.C. 102(a)(2) might be overcome by:
 (1) a showing under 37 CFR
 1.130(a) that the disclosure in the reference was obtained directly or
 indirectly from the inventor of this application and is thus not prior art under
 35 U.S.C.
 102(b)(2)(A) ; (2) perfecting a claim to priority under 35 U.S.C. 119 that
 antedates the reference by filing a certified priority document in the application that
 satisfies the enablement and description requirements of 35 U.S.C.
 112(a) ; (3) perfecting the benefit claim under 35 U.S.C. 120 by
 filing an application data sheet under 37 CFR 1.76 which contains a specific
 reference to a prior application in accordance with 37 CFR 1.78 and establishing that the
 prior application satisfies the enablement and description requirements of 35 U.S.C.
 112(a) ; (4) a showing under 37 CFR 1.130(b) of a prior public
 disclosure under 35 U.S.C. 102(b)(2)(B) ; or (5) providing a statement pursuant to
 35 U.S.C.
 102(b)(2)(C) that the subject matter disclosed and the claimed
 invention, not later than the effective filing date of the claimed invention, were owned by
 the same person or subject to an obligation of assignment to the same person or subject to a
 joint research agreement.
 

 This rejection may not be overcome by the filing of a
 terminal disclaimer. See In re Bartfeld , 925 F.2d 1450, 17 USPQ2d 1885
 (Fed. Cir. 1991).
 

 Examiner Note:
 
 1. This form paragraph should be used when the claimed
 design in the application being examined is disclosed in the drawings of an
 earlier-filed design or utility patent. When the design claimed in the application being
 examined is disclosed in the drawings of an earlier-filed design patent, it would most
 often be in the form of subcombination subject matter, (part or portion of an article),
 that is patentably distinct from the claim for the design embodied by the combination or
 whole article. It may also be unclaimed subject matter depicted in broken lines in the
 earlier-filed application.
 

 2. In bracket 1, insert number of patent.
 
 

 3. For applications claiming priority to, or the
 benefit of, an application filed before March 16, 2013, this form paragraph must be
 preceded by form paragraphs 15.10.aia and 15.10.15 .
 
 
 

 ¶ 15.15.04.fti Pre-AIA 35 U.S.C. 102(e) rejection - design disclosed but not
 claimed in a patent 
 

 The claim is rejected under
 pre-AIA 35 U.S.C.
 102 as being anticipated by patent [1] .
 

 Based upon the different inventive entity and the pre-AIA 35 U.S.C. 102(e) 
 date of the reference, it constitutes prior art.
 

 Since the design claimed in the present application is not the same
 invention claimed in patent [2] , the examiner suggests overcoming this rejection
 in one of the following ways: (A) a showing under 37 CFR 1.132 that the design in the
 reference was derived from the designer of this application and is thus not the invention “by
 another;” (B) a showing of a date of invention for the instant application prior to the
 pre-AIA 35 U.S.C.
 102(e) date of the reference under 37 CFR 1.131(a) ; (C)
 perfecting a claim to priority under 35 U.S.C. 119 that antedates the reference
 by filing a certified priority document in the application that satisfies the enablement and
 description requirements of 35 U.S.C. 112(a) or pre-AIA 35 U.S.C. 112, 
 first paragraph; or (D) perfecting the benefit claim 35 U.S.C. 120 by adding a specific
 reference to the prior filed application in compliance with 37 CFR 1.78 and
 establishing that the prior application satisfies the enablement and description requirements
 of 35 U.S.C.
 112(a) or 35 U.S.C. 112, first paragraph. If the
 application was filed before September 16, 2012, the specific reference must be included in
 the first sentence(s) of the specification following the title or in an application data
 sheet; if the application was filed on or after September 16, 2012, the specific reference
 must be included in an application data sheet. 
 

 This rejection may not be overcome by the filing of a terminal
 disclaimer. See In re Bartfeld, 925 F.2d 1450, 17 USPQ2d 1885 (Fed. Cir.
 1991).
 

 Examiner Note:
 
 1. This form paragraph should be
 used when the claimed design in the application being examined is disclosed in the
 drawings of an earlier-filed design or utility patent but is not claimed therein. When
 the design claimed in the application being examined is disclosed in the drawings of an
 earlier-filed design patent, it would most often be in the form of subcombination
 subject matter, (part or portion of an article), that is patentably distinct from the
 claim for the design embodied by the combination or whole article. It may also be
 unclaimed subject matter depicted in broken lines in the earlier-filed
 application.
 

 2. In brackets 1 and 2, insert
 number of patent.
 

 3. For applications with an actual filing date on or
 after March 16, 2013, that claim priority to, or the benefit of, an application filed
 before March 16, 2013, this form paragraph must be preceded by form paragraph
 15.10.15 .
 
 
 

 The following form paragraphs may be used in a second or subsequent
 action, where appropriate.
 

 ¶ 15.38 Rejection Maintained

 The arguments presented have been carefully considered, but are not persuasive that the rejection of the claim under [1] should be withdrawn.
 

 Examiner Note:

 In bracket 1, insert basis of rejection.

 

 ¶ 15.40.01 Final Rejection Under Other Statutory Provisions

 The claim is FINALLY REJECTED under
 [1] as [2] .
 

 Examiner Note:
 
 1. In bracket 1, insert statutory
 basis.
 

 2. In bracket 2, insert reasons for
 rejection.
 

 3. See paragraphs in MPEP Chapter
 700 , for “Action is Final” and “Advisory after Final”
 paragraphs.
 
 
 

 

 
 1504.03 Nonobviousness [R-01.2024]

 It should be noted that for ease of discussion purposes,
 any reference to 35 U.S.C. 103 in this section refers
 to both AIA
 35 U.S.C. 103 and pre-AIA 35 U.S.C. 103(a) . 
 

 A claimed design that meets the test of novelty must additionally be
 evaluated for nonobviousness under 35 U.S.C. 103 .
 

 I. GATHERING THE FACTS The basic factual inquiries guiding the evaluation of obviousness,
 as outlined by the Supreme Court in Graham v. John Deere Co., 383
 U.S. 1, 148 USPQ 459 (1966), are applicable to the evaluation of design
 patentability:
 

 
 (A) Determining the scope and content of the prior art;

 (B) Ascertaining the differences between the claimed invention and
 the prior art;
 

 (C) Resolving the level of ordinary skill in the art; and

 (D) Evaluating any objective evidence of nonobviousness (i.e.,
 so-called “secondary considerations”).
 

 A. Scope of the Prior Art The scope of the relevant prior art for purposes of evaluating
 obviousness under 35 U.S.C. 103 extends to all
 “analogous arts.” 
 

 While the determination of whether arts are analogous is
 basically the same for both design and utility inventions (see
 MPEP §
 904.01(c) and § 2141.01(a) ), In re
 Glavas, 230 F.2d 447, 450, 109 USPQ 50, 52 (CCPA 1956) provides
 specific guidance for evaluating analogous arts in the design context, which
 should be used to supplement the general requirements for analogous art as
 follows:
 

 
 The question in design cases is not whether the
 references sought to be combined are in analogous arts in the mechanical sense,
 but whether they are so related that the appearance of certain ornamental
 features in one would suggest the application of those features to the
 other.
 

 Thus, if the problem is merely one of giving an attractive
 appearance to a surface, it is immaterial whether the surface in question is
 that of wall paper, an oven door, or a piece of crockery. . . .
 

 On the other hand, when the proposed combination of references
 involves material modifications of the basic form of one article in view of
 another, the nature of the article involved is a definite factor in determining
 whether the proposed change involves [patentable] invention. 
 

 
 Therefore, where the differences between the claimed design and
 the prior art are limited to the application of ornamentation to the surface of an
 article, any prior art reference which discloses substantially the same surface
 ornamentation would be considered analogous art. Where the differences are in the
 shape or form of the article, the nature of the articles involved must also be
 considered.
 

 B. Differences Between the Prior Art and the Claimed
 Design In determining patentability under 35 U.S.C.
 103 , it is the overall appearance of the design that must be
 considered. See In re Leslie, 547 F.2d 116, 192 USPQ 427 (CCPA
 1977). The mere fact that there are differences between a design and the prior art
 is not alone sufficient to justify patentability. See In re
 Lamb, 286 F.2d 610, 128 USPQ 539 (CCPA 1961).
 

 All differences between the claimed design and the closest prior
 art reference should be identified in any rejection of the design claim under
 35 U.S.C.
 103 . If any differences are considered de
 minimis or inconsequential from a design viewpoint, the rejection
 should so state.
 

 C. Level of Ordinary Skill in the Art In order to be unpatentable, 35 U.S.C. 103 requires that an
 invention must have been obvious to a designer having “ordinary skill in the art”
 to which the subject matter sought to be patented pertains. The “level of ordinary
 skill in the art” from which obviousness of a design claim must be evaluated under
 35 U.S.C.
 103 has been held by the courts to be the perspective of the
 “designer of . . . articles of the types presented.” See In re
 Nalbandian, 661 F.2d 1214, 1216, 211 USPQ 782, 784 (CCPA 1981);
 In re Carter, 673 F.2d 1378, 213 USPQ 625 (CCPA 1982). 
 

 D. Objective Evidence of Nonobviousness (Secondary
 Considerations) Secondary considerations, such as commercial success and copying
 of the design by others, are relevant to the evaluation of obviousness of a design
 claim. Evidence of nonobviousness may be present at the time a prima
 facie case of obviousness is evaluated or it may be presented in
 rebuttal of a prior obviousness rejection. See MRC Innovations, Inc. v.
 Hunter Mfg., LLP, 747 F.3d 1326, 1335-36, 110 USPQ2d 1235, 1242-43
 (Fed. Cir. 2014); Crocs Inc. v. International Trade Commission, 
 598 F.3d 1294, 1310, 93 USPQ2d 1777, 1788-89 (Fed. Cir. 2010). For more
 information on evaluating secondary considerations, see subsection III below and
 MPEP §
 716 et seq. 

 II. PRIMA FACIE OBVIOUSNESS Once factual inquiries mandated under Graham v. John Deere
 Co., 383 U.S. 1, 148 USPQ 459 (1966) have been made, the examiner must
 determine whether they establish a prima facie case of
 obviousness. To establish prima facie obviousness, all the claim
 limitations must be taught or suggested by the prior art.
 

 In determining prima facie obviousness, the
 proper standard is whether the design would have been obvious to a designer of
 ordinary skill with the claimed type of article. See In re
 Nalbandian, 661 F.2d 1214, 211 USPQ 782 (CCPA 1981). 
 

 As a whole, a design must be compared with something in
 existence , and not something brought into existence by selecting and
 combining features from prior art references. See In re Jennings, 
 182 F.2d 207, 86 USPQ 68 (CCPA 1950). The “ something in
 existence ” referred to in Jennings has been defined
 as “...a reference... the design characteristics of which are basically the same as
 the claimed design....” See In re Rosen, 673 F.2d 388, 391, 213
 USPQ 347, 350 (CCPA 1982) (the primary reference did “...not give the same visual
 impression...” as the design claimed but had a “...different overall appearance and
 aesthetic appeal...”.) Hence, it is clear that “ design
 characteristics ” means overall visual appearance. This definition of
 “ design characteristics ” is reinforced in the decision of
 In re Harvey, 12 F.3d 1061, 1063, 29 USPQ2d 1206, 1208 (Fed.
 Cir. 1993), and is supported by the earlier decisions of In re
 Yardley, 493 F.2d 1389, 181 USPQ 331, 334 (CCPA 1974) and In re
 Leslie, 547 F.2d 116, 192 USPQ 427, 431 (CCPA 1977). Specifically, in
 the Yardley decision, it was stated that “[t]he basic
 consideration in determining the patentability of designs over prior art is
 similarity of appearance.” 493 F.2d at 1392-93, 181 USPQ at 334. Therefore, in order
 to support a holding of obviousness, a primary reference must be more than a design
 concept; it must have an appearance substantially the same as the claimed design. See
 In re Harvey, 12 F.3d 1061, 29 USPQ2d 1206 (Fed. Cir. 1993).
 Absent such a reference, no holding of obviousness under 35 U.S.C. 103 
 can be made, whether based on a single reference alone or in view of modifications
 suggested by secondary prior art.
 

 A rejection under 35 U.S.C. 103 based on a single
 nonanalogous reference would not be proper. The reason is that
 under 35 U.S.C.
 103 , a designer of ordinary skill would not be charged with
 knowledge of prior art that is not analogous to the claimed design.
 

 Examiners are advised that differences between the claimed design
 and a primary reference may be held to be minor in nature and unrelated to the
 overall aesthetic appearance of the design with or without the support of secondary
 references. See In re Nalbandian, 661 F.2d 1214, 211 USPQ 782
 (CCPA 1981). If such differences are shown by secondary references, they should be
 applied so as to leave no doubt that those differences would have been obvious to a
 designer of ordinary skill in the art. In re Sapp, 324 F.2d 1021,
 139 USPQ 522 (CCPA 1963). 
 

 When a claim is rejected under 35 U.S.C. 103 as being
 unpatentable over prior art, features of the design which are functional and/or
 hidden during end use may not be relied upon to support patentability. “[A] design
 claim to be patentable must also be ornamental; and functional features or forms
 cannot be relied upon to support its patentability.” See Jones v. Progress
 Ind., Inc., 163 F. Supp. 824, 826, 119 USPQ 92, 93 (D. R.I. 1958). “It
 is well settled that patentability of a design cannot be based on elements which are
 concealed in the normal use of the device to which the design is applied.” See
 In re Cornwall, 230 F.2d 457, 459, 109 USPQ 57, 58 (CCPA 1956);
 In re Garbo, 287 F.2d 192, 129 USPQ 72 (CCPA 1961). It is not
 necessary that prior art be relied upon in a rejection under 35 U.S.C. 103 
 to show similar features to be functional and/or hidden in the art. However,
 examiners must provide evidence to support the prima facie 
 functionality of such features. Furthermore, hidden portions or functional features
 cannot be relied upon as a basis for patentability. If applicant wishes to rely on
 functional or hidden features as a basis for patentability, then the same standard
 for establishing ornamentality under 35 U.S.C. 171 must be applied
 before these features can be given any patentable weight. See MPEP § 1504.01(c) ,
 subsection I. 
 

 A. Combining Prior Art References A rejection under 35 U.S.C. 103 would be
 appropriate if a designer of ordinary skill would have been motivated to modify a
 primary reference by deleting features thereof or by interchanging with or adding
 features from pertinent secondary references. In order for secondary references to
 be considered, there must be some suggestion in the prior art to modify the basic
 design with features from the secondary references. See In re
 Borden, 90 F.3d 1570, 1572, 39 USPQ2d 1524, 1526 (Fed. Cir. 1996).
 The long-standing test for properly combining references has been “...whether they
 are so related that the appearance of certain ornamental features in one would
 suggest the application of those features to the other.” See In re
 Glavas, 230 F.2d 447, 450, 109 USPQ 50, 52 (CCPA 1956).
 

 The prohibition against destroying the function of the design is
 inherent in the logic behind combining references to render a claimed invention
 obvious under 35
 U.S.C. 103(a) . If the proposed combination of the references
 so alters the primary reference that its broad function can no longer be carried
 out, the combination of the prior art would not have been obvious to a designer of
 ordinary skill in the art. It is permissible to modify the primary reference to
 the extent that the specific function of the article may be affected while the
 broad function is not affected. For example, a primary reference to a cabinet
 design claimed as airtight could be modified to no longer be airtight so long as
 its function as a cabinet would not be impaired.
 

1. Analogous Art 
 When a modification to a primary reference involves a change
 in configuration, both the primary and secondary references must be from
 analogous arts. See In re Glavas, 230 F.2d 447, 109 USPQ 50
 (CCPA 1956). 
 

 Analogous art can be more broadly interpreted when applied to
 a claim that is directed to a design with a portion simulating a well known or
 naturally occurring object or person. The simulative nature of that portion of
 the design is prima facie evidence that art which simulates
 that portion would be within the level of ordinary skill under
 35 U.S.C.
 103 .
 

2. Nonanalogous Art
 When modifying the surface of a primary reference so as to
 provide it with an attractive appearance, it is immaterial whether the
 secondary reference is analogous art, since the modification does not involve a
 change in configuration or structure and would not have destroyed the
 characteristics (appearance and function) of the
 primary reference. See In re Glavas, 230 F.2d 447, 109 USPQ
 50 (CCPA 1956).
 

 III. REBUTTAL OF THE PRIMA FACIE CASE Once a prima facie case of obviousness has been
 established, the burden shifts to the applicant to rebut it, if possible, with
 objective evidence of nonobviousness. See also MPEP § 2145 .
 Examples of secondary considerations are commercial success, expert testimony and
 copying of the design by others. Any objective evidence of nonobviousness or rebuttal
 evidence submitted by applicant, including affidavits or declarations under
 37 CFR
 1.132 , must be considered by examiners in determining
 patentability under 35 U.S.C. 103 . 
 

 When evidence of commercial success is submitted, examiners must
 evaluate it to determine whether there is objective evidence of success, and whether
 the success can be attributed to the ornamental design. See Litton System,
 Inc. v. Whirlpool Corp., 728 F.2d 1423, 221 USPQ 97 (Fed. Cir. 1984);
 In re Nalbandian, 661 F.2d 1214, 211 USPQ 782 (CCPA 1981). An
 affidavit or declaration under 37 CFR 1.132 has minimal
 evidentiary value on the issue of commercial success if there is no nexus or
 connection between the sales of the article in which the design is embodied and the
 ornamental features of the design. See Avia Group Int’l Inc. v. L.A.
 Gear, 853 F.2d 1557, 7 USPQ2d 1548 (Fed. Cir. 1988). See also
 Campbell Soup Co. v. Gamon Plus, Inc., 10 F.4th 1268, 2021
 USPQ2d 875 (Fed. Cir. 2021) and MPEP § 716.01(b) . 
 

 Submission of expert testimony must establish the professional
 credentials of the person signing the affidavit or declaration, and should not
 express an opinion on the ultimate legal issue of obviousness since this conclusion
 is one of law. See Avia Group Int’l Inc. v. L.A. Gear, 853 F.2d
 1557, 7 USPQ2d 1548 (Fed. Cir. 1988); Panduit Corp. v. Dennison Mfg.
 Co., 774 F.2d 1082, 227 USPQ 337 (Fed. Cir. 1985).
 

 With regard to evidence submitted showing that competitors in the
 marketplace are copying the design, more than the mere fact of copying is necessary
 to make that action significant because copying may be attributable to other factors
 such as lack of concern for patent property or indifference with regard to the
 patentee’s ability to enforce the patent. See Cable Electric Products, Inc.
 v. Genmark, Inc., 770 F.2d 1015, 226 USPQ 881 (Fed. Cir. 1985).
 

 “A prima facie case of obviousness can be
 rebutted if the applicant...can show that the art in any material respect ‘taught
 away’ from the claimed invention...A reference may be said to teach away when a
 person of ordinary skill, upon reading the reference...would be led in a direction
 divergent from the path that was taken by the applicant.” See In re
 Haruna, 249 F.3d 1327, 58 USPQ2d 1517 (Fed. Cir. 2001).
 

 For additional information regarding the issue of objective evidence
 of nonobviousness, attention is directed to MPEP § 716 through
 §
 716.06 .
 

 The following form paragraph may be used in an obviousness rejection
 under 35 U.S.C.
 103 , where appropriate.
 

 ¶ 15.18.aia 35 U.S.C. 103 Rejection (Single Reference)

 The claim is rejected under 35 U.S.C. 103 
 as being unpatentable over [1] . Although the invention is not identically
 disclosed or described as set forth in 35 U.S.C. 102 , if the differences between
 the claimed invention and the prior art are such that the claimed invention as a whole would
 have been obvious before the effective filing date of the claimed invention to a designer
 having ordinary skill in the art to which the claimed invention pertains, the invention is not
 patentable.
 

 Examiner Note:

 For applications claiming priority to, or the benefit
 of, an application filed before March 16, 2013, this form paragraph must be preceded by
 form paragraphs 15.10.aia and 15.10.15 .
 

 

 ¶ 15.18.fti Pre-AIA 35 U.S.C. 103(a) Rejection (Single Reference)

 The claim is rejected under
 pre-AIA 35 U.S.C.
 103(a) as being unpatentable over [1] . Although the
 invention is not identically disclosed or described as set forth in pre-AIA 35 U.S.C. 102 ,
 if the differences between the subject matter sought to be patented and the prior art are such
 that the subject matter as a whole would have been obvious at the time the invention was made
 to a designer having ordinary skill in the art to which said subject matter pertains, the
 invention is not patentable.
 

 Examiner Note:
 
 1. In bracket 1, insert the reference
 citation.
 

 2. For applications with an actual filing date on or
 after March 16, 2013, that claim priority to, or the benefit of, an application filed
 before March 16, 2013, this form paragraph must be preceded by form paragraph
 15.10.15 .
 
 
 
 

 

 ¶ 15.70.aia Preface, 35 U.S.C. 103 Rejection

 It would have been obvious to a designer of ordinary skill before the
 effective filing date of the present claimed invention to [1] .
 

 Examiner Note:

 Insert explanation of the use of the reference applied
 in bracket 1.
 

 

 ¶ 15.70.fti Preface, Pre-AIA 35 U.S.C. 103(a) Rejection

 It would have been obvious to a
 designer of ordinary skill in the art at the time the invention was made to
 [1] .
 

 Examiner Note:

 Insert explanation of the use of
 the reference applied in bracket 1.
 

 

 ¶ 15.67 Rationale for 35 U.S.C. 103 Rejection (Single
 Reference)
 

 It is well settled that it is
 unobviousness in the overall appearance of the claimed design, when compared with the prior
 art, rather than minute details or small variations in design as appears to be the case
 here, that constitutes the test of design patentability. See In re Frick ,
 275 F.2d 741, 125 USPQ 191 (CCPA 1960) and In re Lamb , 286 F.2d 610, 128
 USPQ 539 (CCPA 1961).
 

 

 ¶ 15.19.aia 35 U.S.C. 103 Rejection (Multiple Reference)

 The claim is rejected under 35 U.S.C. 103 
 as being unpatentable over [1] in view of [2] . 
 

 Although the invention is not identically disclosed or
 described as set forth in 35 U.S.C. 102 , if the differences between
 the claimed invention and the prior art are such that the claimed invention as a whole would
 have been obvious before the effective filing date of the claimed invention to a designer
 having ordinary skill in the art to which the claimed invention pertains, the invention is not
 patentable.
 

 Examiner Note:

 For applications claiming priority to, or the benefit of, an
 application filed before March 16, 2013, this form paragraph must be preceded by form
 paragraph 15.10.aia and 15.10.15 .
 

 

 ¶ 15.19.fti Pre-AIA 35 U.S.C. 103(a) Rejection (Multiple
 References)
 

 The claim is rejected under
 pre-AIA 35 U.S.C.
 103(a) as being unpatentable over [1] in view of
 [2] .
 

 Although the invention is not
 identically disclosed or described as set forth in 35 U.S.C. 102 , if the differences between
 the subject matter sought to be patented and the prior art are such that the subject matter as
 a whole would have been obvious at the time the invention was made to a designer of ordinary
 skill in the art to which said subject matter pertains, the invention is not
 patentable.
 

 Examiner Note:

 For applications with an actual filing date on or after
 March 16, 2013, that claim priority to, or the benefit of, an application filed before
 March 16, 2013, this form paragraph must be preceded by form paragraph
 15.10.15 .
 

 

 ¶ 15.68 Rationale for 35 U.S.C. 103 Rejection (Multiple
 References)
 

 This modification of the primary
 reference in light of the secondary reference is proper because the applied references are
 so related that the appearance of features shown in one would suggest the application of
 those features to the other. See In re Rosen , 673 F.2d 388, 213 USPQ 347
 (CCPA 1982); In re Carter , 673 F.2d 1378, 213 USPQ 625 (CCPA 1982), and
 In re Glavas , 230 F.2d 447, 109 USPQ 50 (CCPA 1956). Further, it is
 noted that case law has held that a designer skilled in the art is charged with knowledge of
 the related art; therefore, the combination of old elements, herein, would have been well
 within the level of ordinary skill. See In re Antle , 444 F.2d 1168,170
 USPQ 285 (CCPA 1971) and In re Nalbandian , 661 F.2d 1214, 211 USPQ 782
 (CCPA 1981).
 

 

 The following form paragraphs may be used when making a rejection
 under pre-AIA 35
 U.S.C. 103(a) , where the reference application or patent is
 prior art under pre-AIA 35 U.S.C. 102(e) .
 

 ¶ 15.19.02.aia Preface 35 U.S.C. 102(a)(2)/103 rejection - Different inventors, common assignee,
 obvious designs, no evidence of common ownership not later than effective filing date of
 claimed design
 

 The claim is directed to a design not patentably
 distinct from the design of commonly assigned [1] . Specifically, the
 claimed design is different from the one in [2] in that [3] .
 These differences are considered obvious and do not patentably distinguish the overall
 appearance of the claimed design over the design in [4] .
 

 The commonly assigned [5] , discussed above, names
 another inventor and has an earlier effectively filed date. Therefore, it qualifies as prior
 art under 35 U.S.C. 102(a)(2) and would form the basis for a rejection of the claimed design
 in the present application under 35 U.S.C. 103 if the claimed design and the designed
 disclosed were not commonly owned not later than the effective filing date of the claimed
 design under examination. 
 

 This rejection under 35 U.S.C. 102(a)(2)/103
 might be overcome by: (1) a showing under 37 CFR 1.130(a) that the design in the
 reference was obtained directly or indirectly from the inventor or a joint inventor of
 this application and is thus not prior art under 35 U.S.C. 102(b)(2)(A); (2) perfecting
 a claim to priority under 35 U.S.C. 119 that antedates the reference by filing a
 certified priority document in the application that satisfies the enablement and
 description requirements of 35 U.S.C. 112(a); (3) perfecting the benefit claim under 35
 U.S.C. 120 by filing an application data sheet under 37 CFR 1.76 which contains a
 specific reference to a prior application in accordance with 37 CFR 1.78 and
 establishing that the prior application satisfies the enablement and description
 requirements of 35 U.S.C. 112(a); (4) a showing under 37 CFR 1.130(b) of a prior public
 disclosure under 35 U.S.C. 102(b)(2)(B); or (5) providing a statement pursuant to 35
 U.S.C. 102(b)(2)(C) that the design disclosed and the claimed design, not later than the
 effective filing date of the claimed design, were owned by the same person or subject to
 an obligation of assignment to the same person or subject to a joint research
 agreement.
 

 Examiner Note:
 
 1. A nonstatutory double patenting rejection may also be
 included in the action.
 

 2. In brackets 1, 2, 4 and 5, insert
 "patent" and number, or "copending application" and serial
 number.
 

 3. In bracket 3, identify differences
 between design claimed in present application and that claimed in
 earlier-filed patent or copending application.
 

 4. This form paragraph should only be
 used ONCE in an Office action.
 

 5. For applications claiming priority to,
 or the benefit of, an application filed before March 16, 2013, this form
 paragraph must be preceded by form paragraphs 15.10.aia and
 15.10.15.
 
 
 

 ¶ 15.19.02.fti Preface pre-AIA 35 U.S.C. 102(e)/103(a) rejection - Different
 inventors, common assignee, obvious designs, no evidence of common ownership at time later
 design was made
 

 The claim is directed to a design not
 patentably distinct from the design of commonly assigned [1] . Specifically, the
 claimed design is different from the one in [2] in that [3] . These
 differences are considered obvious and do not patentably distinguish the overall appearance of
 the claimed design over the design in [4] .
 

 The commonly assigned
 [5] , discussed above, has a different inventive entity from the present
 application. Therefore, it qualifies as prior art under pre-AIA 35 U.S.C.
 102(e) , (f) or (g) and forms the basis
 for a rejection of the claim in the present application under pre-AIA 35 U.S.C. 103(a) 
 if the conflicting design claims were not commonly owned at the time the design in this
 application was made. In order to resolve this issue, the applicant, assignee or attorney of
 record can state that the conflicting designs were commonly owned at the time the design in
 this application was made, or the assignee can name the prior inventor of the conflicting
 subject matter.
 

 A showing that the designs were
 commonly owned at the time the design in this application was made will overcome a rejection
 under pre-AIA 35
 U.S.C. 103(a) based upon the commonly assigned case as a reference under
 pre-AIA 35 U.S.C.
 102(f) or 35 U.S.C. 102(g) , or pre-AIA 35 U.S.C.
 102(e) for applications filed on or after November 29,
 1999.
 

 Examiner Note:
 
 1. This form paragraph should be
 used when the application being examined is commonly assigned with a conflicting
 application or patent, but there is no indication that they were commonly assigned at
 the time the invention was actually made.
 

 2. If the conflicting claim is in a
 patent with an earlier U.S. filing date, a rejection under pre-AIA 35 U.S.C.
 102(e) / 35 U.S.C. 103(a) should be
 made.
 

 3. If the conflicting claim is in a
 commonly assigned, copending application with an earlier filing date, a provisional
 rejection under pre-AIA 35 U.S.C. 102(e) / 35 U.S.C. 103(a) 
 should be made.
 

 4. A nonstatutory double patenting rejection may also be included in
 the action.
 

 5. In brackets 1, 2, 4 and 5,
 insert patent and number, or copending application and serial number.
 

 6. In bracket 3, identify differences between design claimed in
 present application and that claimed in earlier filed patent or copending
 application.
 

 7. This form paragraph should only
 be used ONCE in an Office action.
 

 8. If the rejection relies upon prior art under pre-AIA 35 U.S.C.
 102(e) , use 35 U.S.C. 102(e) as amended by the
 American Inventor’s Protection Act (AIPA) to determine the reference’s prior art date,
 unless the reference is a U.S. patent issued directly, or indirectly, from an
 international application which has an international filing date prior to November 29,
 2000. Use pre-AIPA 35 U.S.C. 102(e) only if the reference is a U.S. patent issued
 directly or indirectly from either a national stage of an international application
 (application under 35
 U.S.C. 371 ) which has international filing date prior to November
 29, 2000 or a continuing application claiming benefit under 35 U.S.C. 120 ,
 121 , 365(c) , or 386(c) 
 to an international application having an international filing date prior to November
 29, 2000. See the Examiner Notes for form paragraphs 7.12.fti and
 7.12.01.fti to assist in the determination of the
 pre-AIA and pre-AIPA 35 U.S.C. 102(e) dates, respectively.
 

 9. For applications with an actual filing date on or
 after March 16, 2013, that claim priority to, or the benefit of, an application filed
 before March 16, 2013, this form paragraph must be preceded by form paragraph
 15.10.15 .
 
 
 

 

 ¶ 15.19.03.aia 35 U.S.C. 102(a)(2)/103 Provisional Rejection - design
 disclosed in another application with common inventor and/or assignee
 

 The claim is provisionally rejected under 35 U.S.C. 103 
 as being obvious over copending Application No. [1] which has a common
 [2] with the instant application. Because the copending application names
 another inventor and has an earlier effectively filed date, it would constitute prior art
 under 35 U.S.C.
 102(a)(2) if published under 35 U.S.C. 122(b) or patented. This
 provisional rejection under 35 U.S.C. 103 is based upon a presumption
 of future publication or patenting of the conflicting application.
 

 Although the invention is not identically disclosed or
 described as set forth in 35 U.S.C. 102 , if the differences between
 the claimed invention and the prior art are such that the claimed invention as a whole would
 have been obvious before the effective filing date of the claimed invention to a person having
 ordinary skill in the art to which the claimed invention pertains, the invention is not
 patentable.
 

 [3] 

 This provisional rejection under 35 U.S.C.
 102(a)(2) might be overcome by: (1) a showing under 37 CFR 1.130(a) that the
 design in the reference was obtained directly or indirectly from the inventor or a joint
 inventor of this application and is thus not prior art under 35 U.S.C.
 102(b)(2)(A) ; (2) perfecting a claim to priority under 35 U.S.C. 119 that
 antedates the reference by filing a certified priority document in the application that
 satisfies the enablement and description requirements of 35 U.S.C.
 112(a) ; (3) perfecting the benefit claim under 35 U.S.C. 120 by
 filing an application data sheet under 37 CFR 1.76 which contains a specific
 reference to a prior application in accordance with 37 CFR 1.78 and establishing that the
 prior application satisfies the enablement and description requirements of 35 U.S.C.
 112(a) ; (4) a showing under 37 CFR 1.130(b) of a prior public
 disclosure under 35 U.S.C. 102(b)(2)(B) ; or (5) providing a statement pursuant to
 35 U.S.C.
 102(b)(2)(C) that the subject matter disclosed and the claimed
 invention, not later than the effective filing date of the claimed invention, were owned by
 the same person or subject to an obligation of assignment to the same person or subject to a
 joint research agreement. 
 

 Examiner Note:
 
 1. This form paragraph should be used when the claimed
 design in the application being examined is obvious over subject matter disclosed in the
 drawings of an earlier-filed design or utility application. The design claimed in the
 application being examined can be an obvious version of subject matter disclosed in the
 drawings of an earlier-filed design application. This subject matter may be depicted in
 broken lines, or may be in the form of a subcombination (part or portion of an article)
 that is patentably distinct from the claim for the design embodied by the combination or
 whole article.
 

 2. In brackets 1 and 4 insert serial number of
 copending application.
 

 3. In bracket 2, insert inventor or
 assignee.
 

 4. In bracket 3, provide explanation of obviousness
 including differences.
 

 5. For applications claiming priority to, or the
 benefit of, an application filed before March 16, 2013, this form paragraph must be
 preceded by form paragraph 15.10.15 .
 
 
 

 ¶ 15.19.03.fti Provisional Pre-AIA 35 U.S.C. 102(e)/103(a) rejection - design
 disclosed but not claimed in another application with common inventor and/or
 assignee
 

 The claim is provisionally rejected under pre-AIA 35 U.S.C. 103(a) 
 as being obvious over copending Application No. [1] which has a common
 [2] with the instant application. Based upon the different inventive entity
 and the pre-AIA 35 U.S.C.
 102(e) date of the copending application, it would constitute prior art
 if published under 35 U.S.C.
 122(b) or patented. This provisional rejection under pre-AIA 35 U.S.C. 103(a) 
 is based upon a presumption of future publication or patenting of the conflicting
 application.
 

 Although the invention is not
 identically disclosed or described as set forth in pre-AIA 35 U.S.C.
 102 , if the differences between the subject matter sought to be patented
 and the prior art are such that the subject matter as a whole would have been obvious at the
 time the invention was made to a designer having ordinary skill in the art to which said
 subject matter pertains, the invention is not patentable. 
 

 [3] 

 Since the design claimed in the present application is not the same
 invention claimed in the [4] application, this provisional rejection may be
 overcome by a showing under 37 CFR 1.132 that the design in the reference was derived from the
 designer of this application and is thus not the invention “by another,” or by a showing of a
 date of invention for the instant application prior to the pre-AIA 35 U.S.C. 102(e) date of the
 reference under 37 CFR
 1.131(a) . For applications filed on or after November 29, 1999, this
 rejection might also be overcome by showing that the subject matter of the reference and the
 claimed invention were, at the time the invention was made, owned by the same person or
 subject to an obligation of assignment to the same person. See MPEP § 2146 et seq.
 

 Examiner Note:
 
 1. This form paragraph should be
 used when the claimed design in the application being examined is obvious over subject
 matter disclosed in the drawings of an earlier-filed design or utility application but
 is not claimed therein. The design claimed in the application being examined can be an
 obvious version of subject matter disclosed in the drawings of an earlier-filed design
 application. This subject matter may be depicted in broken lines, or may be in the form
 of a subcombination (part or portion of an article) that is patentably distinct from the
 claim for the design embodied by the combination or whole article.
 

 2. In brackets 1 and 4 insert
 serial number of copending application.
 

 3. In bracket 2, insert inventor
 or assignee.
 

 4. In bracket 3, provide
 explanation of obviousness including differences and follow the explanation with form
 paragraphs 15.70.fti and 15.67 or 15.68 .
 

 5. Use pre-AIA 35 U.S.C. 102(e) as amended
 by the American Inventor’s Protection Act (AIPA) to determine the reference’s prior art
 date, unless the reference is a U.S. patent issued directly, or indirectly, from an
 international application which has an international filing date prior to November 29,
 2000. Use pre-AIPA 35 U.S.C. 102 only if the reference is a U.S. patent issued directly
 or indirectly from either a national stage of an international application (application
 under 35 U.S.C.
 371 ) which has an international filing date prior to November 29,
 2000 or a continuing application claiming benefit under 35 U.S.C. 120
 , 121 , 365(c) , or 386(c) 
 to an international application having an international filing date prior to November
 29, 2000. See the Examiner Notes for form paragraphs 7.12.fti and
 7.12.01.fti to assist in the determination of the
 reference’s pre-AIA and pre-AIPA 35 U.S.C. 102(e) dates, respectively.
 

 6. For applications with an actual filing date on or
 after March 16, 2013, that claim priority to, or the benefit of, an application filed
 before March 16, 2013, this form paragraph must be preceded by form paragraph
 15.10.15 .
 
 
 

 ¶ 15.19.04.fti Pre-AIA 35 U.S.C. 102(e)/103(a) Provisional Rejection - design
 claimed in an earlier-filed design patent application with common inventor and/or
 assignee
 

 The claim is provisionally rejected under pre-AIA 35 U.S.C. 103(a) 
 as being obvious over the claim in copending Design Patent Application No. [1] 
 which has a common [2] with the instant application. Based upon the different
 inventive entity and the 
 pre-AIA 35 U.S.C. 102(e) date of the copending application, it would
 constitute prior art if patented. This provisional rejection under pre-AIA 35 U.S.C. 103(a) 
 is based upon a presumption of future patenting of the conflicting application.
 

 Although the invention is not
 identically disclosed or described as set forth in pre-AIA 35 U.S.C. 102 , if the differences
 between the subject matter sought to be patented and the prior art are such that the subject
 matter as a whole would have been obvious at the time the invention was made to a person
 having ordinary skill in the art to which said subject matter pertains, the invention is not
 patentable. 
 

 [3] 

 Since the design claimed in the present application is not patentably
 distinct from the design claimed in the [4] application, this provisional
 rejection may be overcome by merging the two applications into a single continuation-in-part
 and abandoning the separate parent applications. For applications filed on or after November
 29, 1999, this rejection might also be overcome by showing that the subject matter of the
 reference and the claimed invention were, at the time the invention was made, owned by the
 same person or subject to an obligation of assignment to the same person. See
 MPEP §
 2146 et seq.
 

 Examiner Note:
 
 1. This form paragraph should be used when the claimed design in the
 application being examined is obvious over the design claimed in a copending application
 that would constitute prior art under pre-AIA 35 U.S.C. 102(e) if
 published under 35
 U.S.C. 122 or patented.
 

 2. A provisional nonstatutory double patenting rejection must also be
 included in the action.
 

 3. In brackets 1 and 4, insert
 serial number of copending application.
 

 4. In bracket 2, insert inventor
 or assignee.
 

 5. In bracket 3, provide
 explanation of obviousness including differences and follow the explanation with form
 paragraphs 15.70.fti and 15.67 or 15.68 .
 

 6. This form paragraph must be
 preceded by form paragraph 15.19.02.fti .
 

 7. For applications with an actual filing date on or
 after March 16, 2013, that claim priority to, or the benefit of, an application filed
 before March 16, 2013, this form paragraph must be preceded by form paragraph
 15.10.15 .
 
 
 

 ¶ 15.19.05.aia 35 U.S.C. 102(a)(2)/103 rejection - design disclosed, no
 common inventors or common assignees
 

 The claim is rejected under 35 U.S.C. 103 
 as being obvious over [1] .
 

 Because the reference names another inventor and has an earlier
 effectively filed date, it constitutes prior art under 35 U.S.C.
 102(a)(2) . 
 

 Although the invention is not identically disclosed or
 described as set forth in 35 U.S.C. 102 , if the differences between
 the claimed invention and the prior art are such that the claimed invention as a whole would
 have been obvious before the effective filing date of the claimed invention to a person having
 ordinary skill in the art to which the claimed invention pertains, the invention is not
 patentable.
 

 [2] 

 This rejection under 35 U.S.C.
 102(a)(2) / 103 might be overcome by: (1) a showing
 under 37 CFR
 1.130(a) that the subject matter disclosed in the copending application
 was obtained directly or indirectly from the inventor or a joint inventor of this application
 and is thus not prior art in accordance with 35 U.S.C.
 102(b)(2)(A) ; (2) perfecting a claim to priority under 35 U.S.C. 119 
 that antedates the reference by filing a certified priority document in the application that
 satisfies the enablement and description requirements of 35 U.S.C.
 112(a) ; (3) perfecting the benefit claim under 35 U.S.C. 120 by
 filing an application data sheet under 37 CFR 1.76 which contains a specific
 reference to a prior application in accordance with 37 CFR 1.78 and
 establishing that the prior application satisfies the enablement and description requirements
 of 35
 U.S.C. 112(a) or (4) a showing under 37 CFR 1.130(b) of a
 prior public disclosure under 35 U.S.C. 102(b)(2)(B) .
 

 Examiner Note:
 
 1. In bracket 1, insert document number that qualifies
 as prior art under 35 U.S.C. 102(a)(2) .
 
 

 2. In bracket 2, provide explanation of obviousness
 including differences.
 

 3. For applications claiming priority to, or the benefit
 of, an application filed before March 16, 2013, this form paragraph must be preceded by
 form paragraphs 15.10.aia and 15.10.15 .
 
 
 

 ¶ 15.19.05.fti Pre-AIA 35 U.S.C. 102(e)/103(a) rejection - design disclosed but
 not claimed
 

 The claim is rejected under
 pre-AIA 35 U.S.C.
 103(a) as being obvious over [1] .
 

 Based upon the different inventive entity and the pre-AIA 35 U.S.C. 102(e) 
 date of the reference, it constitutes prior art. 
 

 Although the invention is not
 identically disclosed or described as set forth in 35 U.S.C. 102 , if the differences between
 the subject matter sought to be patented and the prior art are such that the subject matter as
 a whole would have been obvious at the time the invention was made to a designer having
 ordinary skill in the art to which said subject matter pertains, the invention is not
 patentable.
 

 [2] 

 Since the design claimed in the present application is not the same
 invention claimed in the [3] patent, this rejection may be overcome by a showing
 under 37 CFR
 1.132 that the design in the reference was derived from the designer of
 this application and is thus not the invention “ by another,” or by a showing of a date of
 invention for the instant application prior to the pre-AIA 35 U.S.C. 102(e) date of the
 reference under 37 CFR
 1.131(a) . For applications filed on or after November 29, 1999, this
 rejection might also be overcome by showing that the subject matter of the reference and the
 claimed invention were, at the time the invention was made, owned by the same person or
 subject to an obligation of assignment to the same person. See MPEP § 2146 et seq.
 

 Examiner Note:
 
 1. This form paragraph should be
 used when the claimed design in the application being examined is obvious over subject
 matter disclosed in the drawings of an earlier filed design or utility patent, or
 application publication, but is not claimed therein. The design claimed in the
 application being examined can be an obvious version of subject matter disclosed in the
 drawings of an earlier filed design application. This subject matter may be depicted in
 broken lines, or may be in the form of a subcombination (part or portion of an article)
 that is patentably distinct from the claim for the design embodied by the combination or
 whole article.
 

 2. In brackets 1 and 3, insert
 number of the U.S. patent, U.S. patent application publication, or the WIPO publication
 of an international application that qualifies as prior art under pre-AIA 35 U.S.C.
 102(e) . See note 4 below.
 

 3. In bracket 2, provide explanation of obviousness including
 differences and follow the explanation with form paragraphs 15.70.fti and
 15.67 or
 15.68 .
 

 4. Use pre-AIA 35 U.S.C. 102(e) as amended by the
 American Inventor’s Protection Act (AIPA) to determine the reference’s prior art date,
 unless the reference is a U.S. patent issued directly, or indirectly, from an
 international application which has an international filing date prior to November 29,
 2000. Use pre-AIPA 35
 U.S.C. 102(e) only if the reference is a U.S. patent issued
 directly or indirectly from either a national stage of an international application
 (application under 35
 U.S.C. 371 ) which has an international filing date prior to
 November 29, 2000 or a continuing application claiming benefit under 35 U.S.C. 120 ,
 121 , 365(c) , or 386(c) to an
 international application having an international filing date prior to November 29,
 2000. See the Examiner Notes for form paragraphs 7.12.fti and
 7.12.01.fti to assist in the determination of the
 reference’s 35 U.S.C.
 102(e) date.
 

 5. For applications with an actual filing date on or
 after March 16, 2013 that claim priority to, or the benefit of, an application filed
 before March 16, 2013, this form paragraph must be preceded by form paragraph
 15.10.15 .
 
 
 

 ¶ 15.19.06.fti Pre-AIA 35 U.S.C. 102(e)/103(a) rejection - design claimed in a
 design patent with an earlier prior art date and common assignee
 

 The claim is rejected under pre-AIA 35 U.S.C. 103(a) as being obvious
 over the claim in design patent [1] .
 

 Based upon the different inventive entity and the pre-AIA 35 U.S.C. 102(e) 
 date of the reference, it constitutes prior art. 
 

 Although the invention is not identically disclosed or described as set
 forth in 35 U.S.C.
 102 , if the differences between the subject matter sought to be patented
 and the prior art are such that the subject matter as a whole would have been obvious at the
 time the invention was made to a designer having ordinary skill in the art to which said
 subject matter pertains, the invention is not patentable.
 

 [2] 

 Since the design claimed in the present application is not patentably
 distinct from the design claimed in the [3] patent, this rejection may be
 overcome by submitting an oath or declaration under 37 CFR 1.131(c) 
 stating that this application and the reference are currently owned by the same party and that
 the inventor named in this application is the prior inventor of the subject matter in the
 reference under 35 U.S.C.
 104 as in effect on March 15, 2013. In addition, a terminal disclaimer
 in accordance with 37 CFR
 1.321(c) is also required. For applications filed on or after November
 29, 1999, this rejection might also be overcome by showing that the subject matter of the
 reference and the claimed invention were, at the time the invention was made, owned by the
 same person or subject to an obligation of assignment to the same person. See
 MPEP §
 2146 et seq.
 

 Examiner Note:
 
 1. This form paragraph should be used when the claimed design in the
 application being examined is obvious over the design claimed in a design patent having
 an earlier prior art date under pre-AIA 35 U.S.C. 102(e) and a
 common assignee.
 

 2. A nonstatutory double patenting rejection must also be included in
 the action.
 

 3. In brackets 1 and 3, insert number of patent.

 4. In bracket 2, provide explanation of obviousness including
 differences and follow the explanation by form paragraphs 15.70.fti and
 15.67 or
 15.68 .
 

 5. This form paragraph must be preceded by form paragraph
 15.19.02.fti .
 

 6. For applications with an actual filing date on or after March
 16, 2013, that claim priority to, or the benefit of, an application filed before March
 16, 2013, this form paragraph must be preceded by form paragraph
 15.10.15 .
 
 
 

 ¶ 15.19.07.fti Pre-AIA 35 U.S.C. 102(e)/103(a) rejection - design claimed in a
 design patent having an earlier prior art date and no common assignee
 

 The claim is rejected under pre-AIA 35 U.S.C. 103(a) as being obvious
 over the claim in design patent [1] .
 

 Based upon the different inventive entity and the pre-AIA 35 U.S.C. 102(e) 
 date of the reference, it constitutes prior art. 
 

 Although the invention is not identically disclosed or described as set
 forth in pre-AIA 35 U.S.C.
 102 , if the differences between the subject matter sought to be patented
 and the prior art are such that the subject matter as a whole would have been obvious at the
 time the invention was made to a designer having ordinary skill in the art to which said
 subject matter pertains, the invention is not patentable.
 

 [2] 

 Examiner Note:
 
 1. This form paragraph should be used when the claimed design in the
 application being examined is obvious over the design claimed in a design patent having
 an earlier prior art date under pre-AIA 35 U.S.C. 102(e) .
 

 2. In bracket 2, provide explanation of obviousness including
 differences and follow explanation with form paragraphs 15.70.fti and
 15.67 or
 15.68 .
 

 3. For applications with an actual filing date on or after March
 16, 2013, that claim priority to, or the benefit of, an application filed before March
 16, 2013, this form paragraph must be preceded by form paragraph
 15.10.15 .
 
 
 

 The following form paragraphs may be used in a second or subsequent
 action where appropriate.
 

 ¶ 15.38 Rejection Maintained

 The arguments presented have been carefully considered, but are not persuasive that the rejection of the claim under [1] should be withdrawn.
 

 Examiner Note:

 In bracket 1, insert basis of rejection.

 

 ¶ 15.39.02.aia Final Rejection Under 35 U.S.C. 103 (Single
 Reference)
 

 The claim is FINALLY REJECTED under 35 U.S.C.
 103 over [1] .
 

 Examiner Note:
 
 1. In bracket 1, insert reference
 citation.
 

 2. See form paragraphs in MPEP Chapter 700 , for
 “Action is Final” and “Advisory after Final” paragraphs.
 
 
 

 ¶ 15.39.02.fti Final Rejection Under pre-AIA 35 U.S.C. 103(a) (Single
 Reference)
 

 The claim is FINALLY REJECTED under
 pre-AIA 35 U.S.C.
 103(a) over [1] .
 

 Examiner Note:

 See form paragraphs in
 MPEP Chapter
 700 , for “Action is Final” and “Advisory after Final”
 paragraphs.
 

 

 ¶ 15.40.aia Final Rejection Under 35 U.S.C. 103 (Multiple
 References)
 

 The claim is FINALLY REJECTED under 35 U.S.C.
 103 as being unpatentable over [1] in view of
 [2] .
 

 Examiner Note:

 See form paragraphs in MPEP Chapter 700 for
 “Action is Final” and “Advisory after Final” paragraphs.
 

 

 ¶ 15.40.fti Final Rejection Under pre-AIA 35 U.S.C. 103(a) (Multiple
 References)
 

 The claim is FINALLY REJECTED under
 pre-AIA 35 U.S.C.
 103(a) as being unpatentable over [1] in view of
 [2] .
 

 Examiner Note:

 See form paragraphs in
 MPEP Chapter
 700 for “Action is Final” and “Advisory after Final”
 paragraphs.
 

 

 

 
 1504.04 Considerations Under 35 U.S.C. 112 [R-01.2024]

 
 35 U.S.C. 112 
 Specification. 

 (a) IN GENERAL.—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 or joint inventor of carrying out the invention.
 

 (b) CONCLUSION.—The specification shall conclude with
 one or more claims particularly pointing out and distinctly claiming the subject
 matter which the inventor or a joint inventor regards as the invention.
 

 *****

 

 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 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 15.21 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

 The [1] of the article [2] not shown in the drawing or described in the specification. It is understood that the appearance of any part of the article
 not shown in the drawing or described in the specification forms no part of the claimed design. In re Zahn , 617 F.2d 261, 204 USPQ 988 (CCPA 1980). Therefore, the determination of patentability is based on the design for the article
 shown and described.
 

 Examiner Note:
 
 1. In bracket 1, insert surface or surfaces which are not shown.

 2. In bracket 2, insert “is” or “are”.
 
 

 ¶ 15.21 Rejection, 35 U.S.C. 112(a) and (b) or pre-AIA 35 U.S.C. 112,
 First And Second Paragraphs
 

 The claim is rejected under 35 U.S.C. 112(a) and (b) or
 pre-AIA 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 the inventor or a joint inventor (or, for applications subject to
 pre-AIA 35 U.S.C.
 112 , the 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
 35
 U.S.C. 112(a) and/or (b) or
 pre-AIA 35 U.S.C.
 112 , first and/or second paragraph(s). 
 

 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(a) and (b) or
 pre-AIA 35 U.S.C. 112, First and Second Paragraphs (Ch. 16 Design Application)
 

 Applicant may disclaim the areas or
 portions of the design which are considered indefinite and nonenabling in the rejection under
 35 U.S.C. 112 above by converting them to broken lines and amend the specification to include
 a statement that the portions of the [1] shown in broken lines form no part of
 the claimed design.
 

 Examiner Note:
 
 1. For international design
 applications, use form paragraph 29.27 instead.
 

 2. In bracket 1, insert title of
 the article.
 
 
 

 ¶ 15.65 Amendment May Not Be Possible

 The application might be fatally defective because [1] . It
 might not be possible to identify any definite and enabled design claim without introducing
 new matter ( 35 U.S.C.
 132 , 37 CFR 1.121 ).
 

 Examiner Note:

 In bracket 1, identify the subject matter 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(a) and (b) or pre-AIA 35 U.S.C.
 112 , first and second paragraphs, being made FINAL in the next Office
 action.
 

 
 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. 
 

 ¶ 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. The original disclosure does not
 reasonably convey to a designer of ordinary skill in the art that the inventor 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 (by
 means of argument or evidence) that the original disclosure establishes that the inventor had
 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.”
 
 
 

 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
 Description 1. 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 when a claim for priority to, or benefit of, the filing date
 of an earlier-filed application (e.g., under 35 U.S.C.
 120 ) has been made. See MPEP §§
 1504.10 and 1504.20 .
 For example, a claimed invention in a continuation application must comply
 with the written description requirement to be entitled to a parent
 application's 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
 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. 
 

 ¶ 15.51 35 U.S.C. 112(a) Rejection (Written Description) 

 The claim is rejected under 35 U.S.C.
 112(a) as failing to comply with the written description requirement
 thereof since the [1] is not supported by the original disclosure. The original
 disclosure does not reasonably convey to a designer of ordinary skill in the art that the
 inventor 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 (by
 means of argument or evidence) that the original disclosure establishes that the inventor had
 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 subject matter is not
 supported 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 descriptive statement.”
 
 
 

 ¶ 15.65 Amendment May Not Be Possible

 The application might be fatally defective because [1] . It
 might not be possible to identify any definite and enabled design claim without introducing
 new matter ( 35 U.S.C.
 132 , 37 CFR 1.121 ).
 

 Examiner Note:

 In bracket 1, identify the subject matter 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. The original disclosure does not
 reasonably convey to a designer of ordinary skill in the art that the inventor 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 (by
 means of argument or evidence) that the original disclosure establishes that the inventor had
 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.”
 
 
 
 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.
 

 ¶ 15.22.02 Rejection, 35 U.S.C. 112(b) or pre-AIA 35 U.S.C. 112, 2nd
 Paragraph (“Or the Like” In Claim)
 

 The claim is rejected under 35 U.S.C. 112(b) or pre-AIA 35 U.S.C. 112 ,
 second paragraph, as being indefinite for failing 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. 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(b) or pre-AIA 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(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.
 

 ¶ 15.22 Rejection, 35 U.S.C. 112(b) or pre-AIA 35 U.S.C. 112, 2nd
 Paragraph
 

 The claim is rejected under 35 U.S.C. 112(b) or pre-AIA 35 U.S.C. 112 ,
 second paragraph, as being indefinite for failing 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.
 

 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(b) or pre-AIA 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(b) or pre-AIA 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(b) or pre-AIA 35 U.S.C. 112, (Second
 Paragraph) (Additional 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(b) or pre-AIA 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 requested to
 provide a sufficient explanation of the nature and intended use of the article in which the
 claimed design is embodied or applied. See 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 and 1.98 .
 

 

 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.
 

 ¶ 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
 action, where appropriate (see MPEP § 1504.02 ).
 

 

 
 1504.05 Restriction [R-01.2024]

 General principles of utility restriction are set forth in
 Chapter
 800 of the MPEP. These principles are also applicable to
 design restriction practice with the exception of those differences set forth in this
 section.
 

 Unlike a utility patent application, which can contain plural claims
 directed to plural inventions, a design patent application may only have a single claim.
 See 37 CFR
 1.153(a) . More than one embodiment of a design may be protected by
 a single claim. However, such embodiments may be presented only if they involve a single
 inventive concept according to the nonstatutory double patenting practice for designs.
 See In re Rubinfield, 270 F.2d 391, 123 USPQ 210 (CCPA 1959).
 Therefore, the examiner will require restriction in each design application which
 contains more than one patentably distinct design. Additionally, while applicant, as a
 matter of right, may not shift from claiming one invention to claiming another, the
 examiner is not precluded from permitting a shift. See MPEP § 819 . However,
 an examiner in a design patent application must ensure that the new invention is limited
 to a single inventive concept.
 

 Restriction will be required under 35 U.S.C. 121 if a design patent
 application claims multiple designs that are patentably distinct from each other. The
 issue of whether a search and examination of an entire application can be made without
 serious burden to an examiner (as noted in MPEP § 803 ) is
 not applicable to design applications when determining whether
 a restriction requirement should be made. Clear admission on the record by the applicant
 that the embodiments are not patentably distinct will not overcome a requirement for
 restriction if the embodiments do not meet the following two requirements: (A) the
 embodiments have overall appearances with basically the same design characteristics; and
 (B) the differences between the embodiments are insufficient to patentably distinguish
 one design from the other. Regarding the second requirement, without evidence, such an
 admission is merely a conclusory statement. If multiple designs are held to be
 patentably indistinct and can be covered by a single claim, any rejection of one over
 prior art will apply equally to all. See Ex parte Appeal No. 315-40,
 152 USPQ 71 (Bd. App. 1965).
 

 I. INDEPENDENT INVENTIONS Design inventions are independent if there is no apparent
 relationship between two or more disparate articles disclosed in the drawings; for
 example, a pair of eyeglasses and a door handle; a bicycle and a camera; an
 automobile and a bathtub. Also note examples in MPEP § 806.06 .
 Restriction in such cases is clearly proper. This situation may be rarely presented
 since design patent applications are seldom filed containing disclosures of
 independent articles.
 

 II. DISTINCT INVENTIONS In determining patentable distinctness, the examiner must compare
 the overall appearances of the multiple designs. Each design must be considered as a
 whole, i.e., the elements of the design are not considered individually as they may
 be when establishing a prima facie case of obviousness under
 35 U.S.C.
 103 . Designs are not distinct inventions if: (A) the multiple
 designs have overall appearances with basically the same design characteristics; and
 (B) the differences between the multiple designs are insufficient to patentably
 distinguish one design from the other. Differences may be considered insufficient to
 patentably distinguish when they are de minimis or obvious to a
 designer of ordinary skill in the art. Therefore, in determining the question of
 patentable distinctness under 35 U.S.C. 121 in a design
 application, a search of the prior art may be necessary. Both of the above
 considerations are important. Differences between the designs may prove to be obvious
 in view of the prior art, but if the overall appearances are not basically the same,
 the designs remain patentably distinct. Embodiments claiming different scopes of the
 same design can be patentably distinct using the two-step analysis above. When an
 application illustrates a component, which is a subcombination of another embodiment,
 the subcombination often has a distinct overall appearance and a restriction should
 be required. When an application illustrates only a portion of the design, which is
 the subject of another embodiment, that portion often has a distinct overall
 appearance and a restriction should be required.
 

 A. Multiple Embodiments - Difference in Appearance It is permissible to illustrate more than one embodiment of a
 design invention in a single application. However, such embodiments may be
 presented only if they involve a single inventive concept. Two designs involve a
 single inventive concept when the two designs are patentably indistinct according
 to the standard of nonstatutory double patenting. See In re
 Rubinfield, 270 F.2d 391, 123 USPQ 210 (CCPA 1959). Embodiments that
 are patentably distinct over one another do not constitute a single inventive
 concept and thus may not be included in the same design application. See
 In re Platner, 155 USPQ 222 (Comm’r Pat. 1967). The
 disclosure of plural embodiments does not require or justify more than a single
 claim, which claim must be in the formal terms stated in MPEP § 1503.01 ,
 subsection III. The specification should make clear that multiple embodiments are
 disclosed and should particularize the differences between the embodiments. If the
 disclosure of any embodiment relies on the disclosure of another embodiment for
 completeness to satisfy the requirements of 35 U.S.C.
 112(a) (or for applications filed prior to September 16,
 2012, 35 U.S.C.
 112 , first paragraph), the differences between the
 embodiments must be identified either in the figure descriptions or by way of a
 descriptive statement in the specification of the application as filed. For
 example, the second embodiment of a cabinet discloses a single view showing only
 the difference in the front door of the cabinet of the first embodiment; the
 figure description should state that this view “is a second embodiment of Figure
 1, the only difference being the configuration of the door, it being understood
 that all other surfaces are the same as those of the first embodiment.” This type
 of statement in the description is understood to incorporate the disclosure of the
 first embodiment to complete the disclosure of the second embodiment. However, in
 the absence of such a statement in the specification of an application as filed,
 the disclosure of one embodiment will normally not be permitted to provide
 antecedent basis for any written or visual amendment to the disclosure of other
 embodiments.
 

 The obviousness standard under 35 U.S.C.
 103 must be applied in determining whether multiple
 embodiments may be retained in a single application. See MPEP § 1504.03 .
 That is, it must first be determined whether the embodiments have overall
 appearances that are basically the same as each other. If the appearances of the
 embodiments are considered to be basically the same, then it must be determined
 whether the differences are either minor between the embodiments and not a
 patentable distinction, or obvious to a designer of ordinary skill in view of the
 analogous prior art. If embodiments meet both of the above criteria they may be
 retained in a single application. If embodiments do not meet either one of the
 above criteria, restriction is required. It should be noted, that if the
 embodiments do not have overall appearances that are basically the same,
 restriction must be required since their appearances are patentably distinct. In
 such case it does not matter for restriction purposes, if the differences between
 the appearances of the embodiments are shown to be obvious in view of analogous
 prior art.
 

 Form paragraph 15.27.02 or
 15.27.03 , if appropriate, may be used to notify
 applicant that restriction is not required because the embodiments are not
 patentably distinct. 
 

 ¶ 15.27.02 Restriction Not Required - Change In Appearance (First Action - Non Issue)

 This application discloses the following embodiments:

 Embodiment 1 - Figs. [1] 

 Embodiment 2 - Figs. [2] 

 [3] 

 Multiple embodiments of a single inventive concept may be included in the same design application only if they are patentably
 indistinct. See In re Rubinfield , 270 F.2d 391, 123 USPQ 210 (CCPA 1959). Embodiments that are patentably distinct from one another do not constitute a single
 inventive concept and thus may not be included in the same design application. See In re Platner , 155 USPQ 222 (Comm’r Pat. 1967).
 

 The above identified embodiments are considered by the examiner to present overall appearances that are basically the same.
 Furthermore, the differences between the appearances of the embodiments are considered minor and patentably indistinct, or
 are shown to be obvious in view of analogous prior art cited. Accordingly, they are deemed to be obvious variations and are
 being retained and examined in the same application. Any rejection of one embodiment over prior art will apply equally to
 all other embodiments. See Ex parte Appeal No. 315-40 , 152 USPQ 71 (Bd. App. 1965). No argument asserting patentability based on the differences between the embodiments will
 be considered once the embodiments have been determined to comprise a single inventive concept. Failure of applicant to traverse
 this determination in reply to this action will be considered an admission of lack of patentable distinction between the
 above identified embodiments.
 

 Examiner Note:

 In bracket 3, add embodiments as necessary.

 

 ¶ 15.27.03 Restriction Not Required - Change In Appearance (First Action Issue)

 This application discloses the following embodiments:

 Embodiment 1 - Figs. [1] 

 Embodiment 2 - Figs. [2] 

 [3] 

 Multiple embodiments of a single inventive concept may be included in the same design application only if they are patentably
 indistinct. See In re Rubinfield , 270 F.2d 391, 123 USPQ 210 (CCPA 1959). Embodiments that are patentably distinct from one another do not constitute a single
 inventive concept and thus may not be included in the same design application. See In re Platner , 155 USPQ 222 (Comm’r Pat. 1967).
 

 The above identified embodiments are considered by the examiner to present overall appearances that are basically the same.
 Furthermore, the differences between the appearances of the embodiments are considered minor and patentably indistinct, or
 are shown to be obvious in view of analogous prior art cited. Accordingly, they are deemed to be obvious variations and are
 being retained and examined in the same application. 
 

 Examiner Note:

 In bracket 3, add embodiments as necessary.

 

 The following form paragraphs may be used in a restriction
 requirement. Examiners must include a brief explanation of the differences between
 the appearances of the embodiments that render them patentably distinct.
 

 ¶ 15.27 Restriction Under 35 U.S.C. 121 

 This application discloses the following embodiments:

 Embodiment 1 - Figs. [1] 

 Embodiment 2 - Figs. [2] 

 [3] 

 Multiple embodiments of a single inventive concept may be included in the same design application only if they are patentably
 indistinct. See In re Rubinfield , 270 F.2d 391, 123 USPQ 210 (CCPA 1959). Embodiments that are patentably distinct from one another do not constitute a single
 inventive concept and thus may not be included in the same design application. See In re Platner , 155 USPQ 222 (Comm’r Pat. 1967). The [4] create(s) patentably distinct designs.
 

 Because of the differences identified, the embodiments are considered to either have overall appearances that are not basically the same, or if they are basically the same, the differences are not minor and patentably indistinct or are not shown to be obvious in view of analogous prior art.
 

 The above embodiments divide into the following patentably distinct groups of designs:

 Group I: Embodiment [5] 

 Group II: Embodiment [6] 

 [7] 

 Restriction is required under 35 U.S.C. 121 to one of the above identified patentably distinct groups of designs.
 

 A reply to this requirement must include an election of a single group for prosecution on the merits, even if this requirement
 is traversed, 37 CFR 1.143 . Any reply that does not include election of a single group will be held nonresponsive. Applicant is also requested to
 direct cancellation of all drawing figures and the corresponding descriptions which are directed to the nonelected groups.
 

 Should applicant traverse this requirement on the grounds that the groups are not patentably distinct, applicant should present
 evidence or identify such evidence now of record showing the groups to be obvious variations of one another. If the groups
 are determined not to be patentably distinct and they remain in this application, any rejection of one group over prior art
 will apply equally to all other embodiments. See Ex parte Appeal No. 315-40, 152 USPQ 71 (Bd. App. 1965). No argument asserting patentability based on the differences between the groups will
 be considered once the groups have been determined to comprise a single inventive concept.
 

 In view of the above requirement, action on the merits is deferred pending compliance with the requirement in accordance with
 Ex parte Heckman , 135 USPQ 229 (P.O. Super. Exam. 1960).
 

 Examiner Note:
 
 1. In bracket 3, add embodiments as necessary.

 2. In bracket 4, insert an explanation of the difference(s) between the embodiments.

 3. In bracket 7, add groups as necessary.
 
 

 ¶ 15.27.01 Restriction Under 35 U.S.C. 121 (Obvious Variations Within Group)
 

 This application discloses the following embodiments:

 Embodiment 1 - Figs. [1] 

 Embodiment 2 - Figs. [2] 

 [3] 

 Multiple embodiments of a single inventive concept may be included in the same design application only if they are patentably
 indistinct. See In re Rubinfield , 270 F.2d 391, 123 USPQ 210 (CCPA 1959). Embodiments that are patentably distinct from one another do not constitute a single
 inventive concept and thus may not be included in the same design application. See In re Platner , 155 USPQ 222 (Comm’r Pat. 1967).
 

 The above embodiments divide into the following patentably distinct groups of designs:

 Group I: Embodiment [4] 

 Group II: Embodiment [5] 

 [6] 

 The embodiments disclosed within each group have overall appearances that are basically the same. Furthermore, the differences
 between them are considered minor and patentably indistinct, or are shown to be obvious in view analogous prior art cited.
 Therefore, they are considered by the examiner to be obvious variations of one another within the group. These embodiments
 thus comprise a single inventive concept and are grouped together. However, the [7] patentably distinguishes each group from the other(s).
 

 Because of the differences identified, the embodiments of each Group are considered to either have overall appearances that
 are not basically the same, or if they are basically the same, the differences are not minor and patentably indistinct or are not shown to be obvious in view of analogous prior art.
 

 Restriction is required under 35 U.S.C. 121 to one of the patentably distinct groups of the designs.
 

 A reply to this requirement must include an election of a single group for prosecution on the merits, even if this requirement
 is traversed, 37 CFR 1.143 . Any reply that does not include election of a single group will be held nonresponsive. Applicant is also requested to
 direct cancellation of all drawing figures and the corresponding descriptions which are directed to the nonelected groups.
 

 Should applicant traverse this requirement on the grounds that the groups are not patentably distinct, applicant should present
 evidence or identify such evidence now of record showing the groups to be obvious variations of one another. If the groups
 are determined not to be patentably distinct and they remain in this application, any rejection of one group over prior art
 will apply equally to all other groups. See Ex parte Appeal No. 315-40 , 152 USPQ 71 (Bd. App. 1965). No argument asserting patentability based on the differences between the groups will be considered
 once the groups have been determined to comprise a single inventive concept.
 

 In view of the above requirement, action on the merits is deferred pending compliance with the requirement in accordance with
 Ex parte Heckman , 135 USPQ 229 (P.O. Super. Exam. 1960).
 

 Examiner Note:

 

 
 1. In bracket 3, add embodiments as necessary.

 2. In bracket 6, add groups as necessary.

 3. In bracket 7, insert an explanation of the difference(s) between the groups.
 
 

 ¶ 15.28 Telephone Restriction Under 35 U.S.C. 121 

 This application discloses the following embodiments:

 Embodiment 1 - Figs. [1] 

 Embodiment 2 - Figs. [2] 

 [3] 

 

 Multiple embodiments of a single inventive concept may be included in the same design application only if they are patentably
 indistinct. See In re Rubinfield , 123 USPQ 210 (CCPA 1959). Embodiments that are patentably distinct from one another do not constitute a single inventive
 concept and thus may not be included in the same design application. See In re Platner , 155 USPQ 222 (Comm’r Pat. 1967). The [4] create(s) patentably distinct designs. See In re Platner , 155 USPQ 222 (Comm’r Pat. 1967).
 

 Because of the differences identified, the embodiments of each Group are considered to either have overall appearances that
 are not basically the same, or, if they are basically the same, the differences are not minor and patentably indistinct or are not shown to be obvious in view of analogous prior art.
 

 The above disclosed embodiments divide into the following patentably distinct groups of designs:

 Group I: Embodiment [5] 

 Group II: Embodiment [6] 

 [7] 

 Restriction is required under 35 U.S.C. 121 to one of the patentably distinct groups of designs.
 

 During a telephone discussion with [8] on [9] , a provisional election was made [10] traverse to prosecute the design(s) of group [11] . Affirmation of this election should be made by applicant in replying to this Office action.
 

 Group [12] is withdrawn from further consideration by the examiner, 37 CFR 1.142(b) , as being for a nonelected design(s).
 

 Examiner Note:

 

 
 1. In bracket 3, add embodiments as necessary.

 2. In bracket 4, insert an explanation of the difference(s) between the embodiments.

 3. In bracket 7, add groups as necessary.

 4. In bracket 10, insert --with-- or --without--.
 
 

 ¶ 15.28.01 Telephone Restriction Under 35 U.S.C.121 (Obvious Variations Within Group)

 This application discloses the following embodiments: 

 Embodiment 1 – Figs. [1] 

 Embodiment 2 – Figs. [2] 

 [3] 

 Multiple embodiments of a single inventive concept may be included in the same design application only if they are patentably
 indistinct. See In re Rubinfield , 270 F.2d 391, 123 USPQ 210 (CCPA 1959). Embodiments that are patentably distinct from one another do not constitute a single
 inventive concept and thus may not be included in the same design application. See In re Platner , 155 USPQ 222 (Comm’r Pat. 1967). 
 

 The above embodiments divide into the following patentably distinct groups of designs: 

 Group I: Embodiment [4] 

 Group II: Embodiment [5] 

 [6] 

 The embodiments disclosed within each group have overall appearances that are basically the same. Furthermore, the differences
 between them are considered minor and patentably indistinct, or are shown to be obvious in view of analogous prior art cited.
 Therefore, they are considered by the examiner to be obvious variations of one another within the group. These embodiments
 thus comprise a single inventive concept and are grouped together. However, the [7] patentably distinguishes each group from the other(s). 
 

 Because of the differences identified, the embodiments of each Group are considered to either have overall appearances that
 are not basically the same, or if they are basically the same, the differences are not minor and patentably indistinct or are not shown to be obvious in view of analogous prior art.
 

 Restriction is required under 35 U.S.C. 121 to one of the
 patentably distinct groups of designs.
 

 During a telephone discussion with [8] on [9] , a provisional election was made [10] traverse to prosecute the design(s) of group [11] . Affirmation of this election should be made by applicant in replying to this Office action.
 

 Group [12] is withdrawn from further consideration by the examiner, 37 CFR 1.142(b) , as being for a nonelected design(s).
 

 Examiner Note:
 
 1. In bracket 3, add embodiments as necessary.

 2. In bracket 6, add groups as necessary.

 3. In bracket 7, insert an explanation of the differences between the groups.

 4. In bracket 10, insert --with--or --without--.
 
 

 ¶ 15.31 Provisional Election Required ( 37 CFR 1.143 )
 

 Applicant is advised that the reply to be complete must include a provisional election of one of the enumerated designs, even though the requirement may be traversed
 ( 37 CFR 1.143 ).
 

 
 B. Combination/Subcombination - Difference in Scope A design claim covers the entire design as a whole. Furthermore,
 claim protection to the whole design does not extend to any individual part or
 portion thereof. See KeyStone Retaining Wall Systems Inc. v. Westrock
 Inc., 997 F.2d 1444, 27 USPQ2d 1297 (Fed. Cir. 1993). Embodiments
 directed to a design as a whole (combination) as well as individual parts or
 portions (subcombination) thereof may not be included in a single application if
 the appearances are patentably distinct. In such instance restriction would be
 required since patentably distinct combination/subcombination subject matter must
 be supported by separate claims. However, a design claim may cover embodiments of
 different scope directed to the same inventive concept within a single application
 if the designs are not patentably distinct . See
 In re Rubinfield, 270 F.2d 391, 123 USPQ 210 (CCPA 1959).
 The court held that the inventive concept of a design is not limited to its
 embodiment in a single specific article, and as long as the various embodiments
 are not patentably distinct, they may be protected by a single claim. See
 Blumcraft of Pittsburgh v. Ladd, 238 F. Supp. 648, 144 USPQ
 562 (D.D.C. 1965). The determination that the design of the subcombination/element
 is patentably indistinct from the combination means that
 the designs are not patentable over each other (novel and unobvious) and may
 remain in the same application. In contrast, if the embodiments are
 patentably distinct , the designs are considered to be
 separate inventions which require separate claims, and restriction to one or the
 other is necessary. See In re Kelly, 200 USPQ 560 (Comm’r Pat.
 1978); Ex parte Sanford, 1914 C.D. 69, 204 O.G. 1346 (Comm’r
 Pat. 1914); Ex parte Heckman, 135 USPQ 229 (P.O. Super. Exam.
 1960). In determining whether embodiments of different scope can be retained in a
 single application they must have overall appearances that are basically the same,
 and the difference in scope must be minor and not a patentable distinction. That
 is, they must, by themselves, be considered obvious over each other under
 35 U.S.C.
 103 without the aid of analogous prior art. The reason for
 this, as stated above, is because claim protection to the whole design does not
 extend to any individual part or portion thereof. Therefore, if the difference in
 scope between embodiments has an impact on the overall appearance that
 distinguishes one over the other, they must be restricted since the difference in
 scope creates patentably distinct designs that must be supported by separate
 claims. Form paragraph 15.27.04 or
 15.27.05 , if appropriate, may be used to notify
 applicant that restriction is not required because the embodiments required are
 not patentably distinct. 
 

 ¶ 15.27.04 Restriction Not Required – Change In Scope (First Action – Non
 Issue)
 

 This application discloses the
 following embodiments: 
 

 Embodiment 1 – Figs. [1] 

 Embodiment 2 – Figs. [2] 

 [3] 

 Designs which involve a change in
 scope may be included in the same design application only if they are patentably indistinct.
 However, design patent protection does not extend to patentably distinct segregable parts of a
 design. Ex parte Sanford , 1914 C.D. 69, 204 OG 1346 (Comm’r Pat. 1914);
 Blumcraft of Pittsburgh v. Ladd , 238 F. Supp. 648, 144 USPQ 562 (D.D.C.
 1965).
 

 The above identified embodiments are
 considered by the examiner to present overall appearances that are basically the same.
 Furthermore, the difference in scope between embodiments is considered minor and patentably
 indistinct. Accordingly, they are deemed to be obvious variations and are being retained and
 examined in the same application. Any rejection of one embodiment over prior art will apply
 equally to all other embodiments. Ex parte Appeal No. 315-40 , 152 USPQ 71
 (Bd. App. 1965). No argument asserting patentability based on the differences between the
 embodiments will be considered once the embodiments have been determined to comprise a single
 inventive concept. Failure of applicant to traverse this determination in reply to this Office
 action will be considered an admission of lack of patentable distinction between the
 embodiments. 
 

 Examiner Note:

 In bracket 3, add embodiments as
 necessary.
 

 

 ¶ 15.27.05 Restriction Not Required – Change In Scope (First Action
 Issue)
 

 This application discloses the
 following embodiments: 
 

 Embodiment 1 – Figs. [1] 

 Embodiment 2 – Figs. [2] 

 [3] 

 Designs which involve a change in
 scope may be included in the same design application only if they are patentably indistinct.
 However, design patent protection does not extend to patentably distinct segregable parts of a
 design. Ex parte Sanford , 1914 C.D. 69, 204 OG 1346 (Comm’r Pat. 1914);
 Blumcraft of Pittsburgh v. Ladd , 238 F. Supp. 648, 144 USPQ 562 (D.D.C.
 1965).
 

 The above identified embodiments are
 considered by the examiner to present overall appearances that are basically the same.
 Furthermore, the difference in scope between embodiments is considered minor and patentably
 indistinct. Accordingly, they are deemed to be obvious variations and are being retained and
 examined in the same application. 
 

 Examiner Note:

 In bracket 3, add embodiments as
 necessary.
 

 

 Form paragraph 15.29 or 15.30 , if appropriate, may be used
 to make a restriction requirement.
 

 ¶ 15.29 Restriction Under 35 U.S.C. 121 (Segregable Parts or Combination/Subcombination)

 This application discloses the following embodiments: 

 Embodiment 1 – Figs. [1] drawn to a [2] .
 

 Embodiment 2 – Figs. [3] drawn to a [4] .
 

 [5] 

 Restriction to one of the following inventions is required
 under 35 U.S.C. 121 :
 

 Group I – Embodiment [6] 

 Group II – Embodiment [7] 

 [8] 

 The designs as grouped are distinct from each other since under the law a design patent covers only the invention disclosed
 as an entirety, and does not extend to patentably distinct segregable parts; the only way to protect such segregable parts
 is to apply for separate patents. See Ex parte Sanford , 1914 CD 69, 204 OG 1346 (Comm’r Pat. 1914); and Blumcraft of Pittsburgh v. Ladd , 238 F. Supp. 648, 144 USPQ 562 (D.D.C. 1965). It is further noted that patentably distinct combination/subcombination subject
 matter must be supported by separate claims, whereas only a single claim is permissible in a design patent application. See
 In re Rubinfield , 270 F.2d 391, 123 USPQ 210 (CCPA 1959).
 

 [9] 

 Because the designs are distinct for the reason(s) given above, and have acquired separate status in the art, restriction
 for examination purposes as indicated is proper ( 35 U.S.C. 121 ).
 

 A reply to this requirement must include an election of a single group for prosecution on the merits, even if this requirement
 is traversed. 37 CFR 1.143 . Any reply that does not include an election of a single group will be held nonresponsive. Applicant is also requested to
 direct cancellation of all drawing figures and the corresponding descriptions which are directed to the nonelected groups.
 

 Should applicant traverse this requirement on the grounds that the groups are not patentably distinct, applicant should present
 evidence or identify such evidence now of record showing the groups to be obvious variations of one another. If the groups
 are determined not to be patentably distinct and they remain in this application, any rejection of one group over the prior
 art will apply equally to all other groups. See Ex parte Appeal No. 315-40 , 152 USPQ 71 (Bd. App. 1965). No argument asserting patentability based on the differences between the groups will be considered
 once the groups have been determined to comprise a single inventive concept. 
 

 In view of the above requirement, action on the merits is deferred pending compliance with the requirement in accordance with
 Ex parte Heckman , 135 USPQ 229 (P.O. Super. Exam. 1960).
 

 Examiner Note:
 
 1. In bracket 5, add embodiments as necessary.

 2. In bracket 8, add groups as necessary.

 3. In bracket 9, add comments, if necessary.
 
 

 ¶ 15.30 Telephone Restriction Under 35 U.S.C. 121 (Segregable Parts or Combination/Subcombination)

 This application discloses the following embodiments: 

 Embodiment 1 – Figs. [1] drawn to a [2] .
 

 Embodiment 2 – Figs. [3] drawn to a [4] .
 

 [5] 

 Restriction to one of the following inventions is required
 under 35 U.S.C. 121 :
 

 Group I – Embodiment [6] 

 Group II – Embodiment [7] 

 [8] 

 The designs as grouped are distinct from each other since under the law a design patent covers only the invention disclosed
 as an entirety, and does not extend to patentably distinct segregable parts; the only way to protect such segregable parts
 is to apply for separate patents. See Ex parte Sanford , 1914 CD 69, 204 OG 1346 (Comm’r Pat. 1914); and Blumcraft of Pittsburgh v. Ladd , 238 F. Supp. 648, 144 USPQ 562 (D.D.C. 1965). It is further noted that patentably distinct combination/subcombination subject
 matter must be supported by separate claims, whereas only a single claim is permissible in a design patent application. See
 In re Rubinfield , 270 F.2d 391, 123 USPQ 210 (CCPA 1959).
 

 [9] 

 During a telephone discussion with [10] on [11] , a provisional election was made [12] traverse to prosecute the invention of Group [13] . Affirmation of this election should be made by applicant in replying to this Office action.
 

 Group [14] withdrawn from further consideration by the examiner, 
 37 CFR 1.142(b) 
 as being for a nonelected invention.
 

 Examiner Note:
 
 1. In bracket 5, add embodiments as necessary.

 2. In bracket 8, add groups as necessary.

 3. In bracket 9, insert additional comments, if necessary.
 
 

 Form paragraph 15.27.06 or
 15.27.07 , if appropriate, may be used to notify
 applicant that restriction is not required because the designs are not patentably
 distinct.
 

 ¶ 15.27.06 Restriction Not Required (Change in Appearance and Scope – First
 Action Non Issue)
 

 This application discloses the
 following embodiments:
 

 Embodiment 1 - Figs. [1] 
 drawn to a [2] .
 

 Embodiment 2 - Figs. [3] 
 drawn to a [4] .
 

 [5] 

 Embodiments [6] involve a
 difference in appearance. Multiple embodiments of a single inventive concept may be included
 in the same design application only if they are patentably indistinct. In re
 Rubinfield , 270 F.2d 391, 123 USPQ 210 (CCPA 1959). Embodiments that are
 patentably distinct from one another do not constitute a single inventive concept and thus may
 not be included in the same design application. In re Platner , 155 USPQ 222
 (Comm’r Pat. 1967). 
 

 Embodiment(s) [7] 
 directed to the combination(s) in relation to Embodiment(s) [8] directed to the
 subcombination(s)/element(s). Designs which involve a change in scope may be included in the
 same design application only if they are patentably indistinct. However, design protection
 does not extend to patentably distinct segregable parts of a design. Ex parte
 Sanford , 1914 C.D. 69, 204 OG 1346 (Comm’r Pat. 1914); Blumcraft of
 Pittsburgh v. Ladd , 238 F. Supp. 648, 144 USPQ 562 (D.D.C.1965).
 

 The above identified embodiments are
 considered by the examiner to present overall appearances that are basically the same.
 Furthermore, the differences between embodiments are considered minor and patentably
 indistinct, or are shown to be obvious in view of analogous prior art cited. Accordingly, they
 are deemed to be obvious variations and are being retained and examined in the same
 application. Any rejection of one embodiment over prior art will apply equally to all other
 embodiments. Ex parte Appeal No. 315-40 , 152 USPQ 71 (Bd. App. 1965). No
 argument asserting patentability based on the differences between the embodiments will be
 considered once the embodiments have been determined to comprise a single inventive concept.
 Failure of applicant to traverse this determination in reply to this action will be considered
 an admission of lack of patentable distinction between the embodiments.
 

 Examiner Note:
 
 1. In bracket 5, add embodiments as
 necessary.
 

 2. Insert an explanation of the
 differences between the designs in the explanations of the embodiments; for example,
 Figs. 1 – 5 directed to a cup and saucer; Figs. 6 – 9 directed to a
 saucer.
 

 3. It is possible and proper that
 embodiments may be listed in both explanatory paragraphs. 
 
 
 

 ¶ 15.27.07 Restriction Not Required (Change in Appearance and Scope – First
 Action Issue)
 

 This application discloses the
 following embodiments:
 

 Embodiment 1 – Figs. [1]
 drawn to a [2] .
 

 Embodiment 2 – Figs. [3] 
 drawn to a [4] . 
 

 [5] 

 Embodiment(s) [6] involve
 a difference in appearance. Multiple embodiments of a single inventive concept may be included
 in the same design application only if they are patentably indistinct. In re
 Rubinfield , 270 F.2d 391, 123 USPQ 210 (CCPA 1959). Embodiments that are
 patentably distinct from one another do not constitute a single inventive concept and thus may
 not be included in the same design application. In re Platner , 155 USPQ
 222 (Comm’r Pat. 1967).
 

 Embodiment(s) [7] 
 directed to the combination(s) in relation to Embodiment(s) [8] directed to the
 subcombination(s)/element(s). Designs which involve a change in scope may be included in the
 same design application only if they are patentably indistinct. However, design protection
 does not extend to patentably distinct segregable parts of a design. Ex parte
 Sanford , 1914 C.D. 69, 204 OG 1346 (Comm’r Pat. 1914); Blumcraft of
 Pittsburgh v. Ladd , 238 F. Supp. 648, 144 USPQ 562 (D.D.C.1965).
 

 The above identified embodiments are
 considered by the examiner to present overall appearances that are basically the same.
 Furthermore, the differences between embodiments are considered minor and patentably
 indistinct, or are shown to be obvious in view of analogous prior art cited. Accordingly, they
 were deemed to be obvious variations and are being retained and examined in the same
 application. Accordingly, they were deemed to comprise a single inventive concept and have
 been examined together.
 

 Examiner Note:
 
 1. In bracket 5, add embodiments as
 necessary.
 

 2. Insert an explanation of the
 differences between the designs in the explanations of the embodiments; for example,
 Figs. 1 – 5 directed to a cup and saucer; Figs. 6 – 9 directed to a
 saucer.
 

 3. It is possible and proper that
 embodiments may be listed in both explanatory paragraphs. 
 
 
 

 The following form paragraphs may be used in a restriction
 requirement.
 

 Examiners must include a brief explanation of the differences
 between embodiments that render them patentably distinct.
 

 ¶ 15.27.08 Restriction with Differences in Appearance and Scope

 This application discloses the
 following embodiments: 
 

 Embodiment 1: Figs. [1] 
 drawn to a [2] .
 

 Embodiment 2: Figs. [3] 
 drawn to a [4] .
 

 [5] 

 The above embodiments divide into the
 following patentably distinct groups of designs:
 

 Group I: Embodiment [6] 

 Group II: Embodiment [7] 

 [8] 

 Group(s) [9] involve a
 difference in appearance. Multiple embodiments of a single inventive concept may be included
 in the same design application only if they are patentably indistinct. In re
 Rubinfield , 270 F.2d 391, 123 USPQ 210 (CCPA 1959). Embodiments that are
 patentably distinct from one another do not constitute a single inventive concept and thus may
 not be included in the same design application. In re Platner , 155 USPQ 222
 (Comm’r Pat. 1967). The [10] creates patentably distinct designs.
 

 Because of the differences identified,
 the embodiments are considered to either have overall appearances that are not 
 basically the same, or if they are basically the same, the differences are not 
 minor and patentably indistinct or are not shown to be obvious in view of
 analogous prior art.
 

 Group(s) [11] directed to
 the combination(s) in relation to Group(s) [12] directed to the
 subcombination(s)/element(s). The designs as grouped are distinct from each other since under
 the law a design patent covers only the design disclosed as an entirety, and does not extend
 to patentably distinct segregable parts; the only way to protect such segregable parts is to
 apply for separate patents. Ex parte Sanford , 1914 C.D. 69, 204 OG 1346
 (Comm’r Pat. 1914); Blumcraft of Pittsburgh v. Ladd , 238 F. Supp. 648, 144
 USPQ 562 (D.D.C.1965). It is further noted that combination/subcombination subject matter, if
 patentably distinct, must be supported by separate claims, whereas only a single claim is
 permissible in a design patent application. In re Rubinfield , 270 F.2d 391,
 123 USPQ 210 (CCPA 1959).
 

 In any groups that include multiple
 embodiments, the embodiments are considered by the examiner to be obvious variations of one
 another within the group and, therefore, patentably indistinct. These embodiments thus
 comprise a single inventive concept and are grouped together.
 

 Restriction is required under
 35 U.S.C.
 121 to one of the patentably distinct groups of designs. 
 

 A reply to this requirement must
 include an election of a single group for prosecution on the merits even if this requirement
 is traversed. 37 CFR
 1.143 . Any reply that does not include an election of a single group
 will be held nonresponsive. Applicant is also requested to direct cancellation of all drawing
 figures and the corresponding descriptions which are directed to the nonelected
 groups.
 

 Should applicant traverse this
 requirement on the grounds that the groups are not patentably distinct, applicant should
 present evidence or identify such evidence now of record showing the groups to be obvious
 variations of one another. If the groups are determined not to be patentably distinct and they
 remain in this application, any rejection of one group over prior art will apply equally to
 all other groups. Ex parte Appeal No. 315-40 , 152 USPQ 71 (Bd. App. 1965).
 No argument asserting patentability based on the differences between the groups will be
 considered once the groups have been determined to comprise a single inventive
 concept.
 

 In view of the above requirement,
 action on the merits is deferred pending compliance with the requirement in accordance with
 Ex parte Heckman , 135 USPQ 229 (P.O. Super. Exam. 1960).
 

 Examiner Note:
 
 1. In bracket 5, add embodiments
 as necessary.
 

 2. In bracket 8, add embodiments
 as necessary.
 

 3. Insert an explanation of the
 differences between the designs in the explanations of the embodiments; for example,
 Figs. 1 – 5 directed to a cup and saucer; Figs. 6 – 9 directed to a
 saucer.
 

 4. It is possible and proper that
 embodiments may be listed in both explanatory paragraphs. 
 

 5. In bracket 10, insert an
 explanation of the differences between the designs.
 
 
 

 ¶ 15.28.02 Telephone Restriction with Differences in Appearance and
 Scope
 

 This application discloses the
 following embodiments:
 

 Embodiment 1: Figs. [1] 
 drawn to a [2] . 
 

 Embodiment 2: Figs. [3] 
 drawn to a [4] .
 

 [5] 

 The above embodiments divide into the
 following patentably distinct groups of designs:
 

 Group I: Embodiment [6] 

 Group II: Embodiment [7] 

 [8] 

 Group(s) [9] involve a
 difference in appearance. Multiple embodiments of a single inventive concept may be included
 in the same design application only if they are patentably indistinct. In re
 Rubinfield , 270 F.2d 391, 123 USPQ 210 (CCPA 1959). Embodiments that are
 patentably distinct from one another do not constitute a single inventive concept and thus may
 not be included in the same design application. In re Platner , 155 USPQ
 222 (Comm’r Pat. 1967). The [10] creates patentably distinct
 designs.
 

 Because of the differences identified,
 the embodiments are considered to either have overall appearances that are not 
 basically the same, or if they are basically the same, the differences are not 
 minor and patentably indistinct or are not shown to be obvious in view of
 analogous prior art.
 

 Group(s) [11] directed to
 the combination(s) in relation to Group(s) [12] directed to the
 subcombination(s)/element(s). The designs as grouped are distinct from each other since under
 the law a design patent covers only the design disclosed as an entirety, and does not extend
 to patentably distinct segregable parts; the only way to protect such segregable parts is to
 apply for separate patents. Ex parte Sanford , 1914 C.D. 69, 204 OG 1346
 (Comm’r Pat. 1914); Blumcraft of Pittsburg v. Ladd , 238 F. Supp. 648, 144
 USPQ 562 (D.D.C.1965). It is further noted that combination/subcombination subject matter, if
 patentably distinct, must be supported by separate claims, whereas only a single claim is
 permissible in a design patent application. In re Rubinfield , 270 F.2d 391,
 123 USPQ 210 (CCPA 1959).
 

 In any groups that include multiple
 embodiments, the embodiments are considered by the examiner to be obvious variations of one
 another within the group and, therefore, patentably indistinct. These embodiments thus
 comprise a single inventive concept and are grouped together.
 

 Restriction is required under
 35 U.S.C.
 121 to one of the patentably distinct groups of designs. 
 

 During a telephone discussion with
 [13] on [14] , a provisional election was made [15] 
 traverse to prosecute the invention of Group [16] . Affirmation of this election
 should be made by applicant in replying to this Office action. 
 

 Group [17] is withdrawn
 from further consideration by the examiner, 37 CFR 1.142(b) , as being for a nonelected
 invention.
 

 Examiner Note:
 
 1. In bracket 5, add embodiments
 as necessary.
 

 2. In bracket 8, add groups as
 necessary.
 

 3. Insert an explanation of the
 differences between the designs in the explanations of the embodiments; for example,
 Figs. 1 – 5 directed to a cup and saucer; Figs. 6 – 9 directed to a
 saucer.
 

 4. It is possible and proper that
 embodiments may be listed in both explanatory paragraphs. 
 

 5. In bracket 10, insert an
 explanation of the differences between the designs.
 

 6. In bracket 15, insert --with--
 or --without--. 
 
 
 

 ¶ 15.33 Qualifying Statement To Be Used In Restriction When A Common Embodiment Is Included In More Than One Group

 The common embodiment is included in more than a single group as it is
 patentably indistinct from the other embodiment(s) in those groups and to give
 applicant the broadest possible choices in the election. If the common embodiment is
 elected in this application, then applicant is advised that the common embodiment
 should not be included in any continuing application to avoid a rejection on the
 ground of double patenting under 35 U.S.C. 171 in the new
 application.
 

 

 The following form paragraphs may be used to notify applicant
 that the nonelected invention(s) are withdrawn from consideration.
 

 ¶ 15.34 Groups Withdrawn From Consideration After Traverse

 Group [1] withdrawn from further consideration by the examiner, 37 CFR 1.142(b) , as being for a nonelected design, the requirement having been traversed in the reply filed on [2] .
 

 

 ¶ 15.35 Cancel Nonelected Design (Traverse)

 The restriction requirement maintained in this application is or has been made final. Applicant must cancel Group [1] directed to the design(s) nonelected with traverse in the reply filed on [2] , or take other timely appropriate action ( 37 CFR 1.144 ). 
 

 

 ¶ 15.36 Groups Withdrawn From Consideration Without Traverse

 Group [1] withdrawn from further consideration by the examiner, 37 CFR 1.142(b) , as being for the nonelected design. Election was made without traverse in the reply filed on [2] .
 

 

 ¶ 15.37 Cancellation of Nonelected Groups, No Traverse

 In view of the fact that this application is in condition for allowance except for the presence of Group [1] directed to a design or designs nonelected without traverse in the reply filed on [2] , and without the right to petition, such Group(s) have been canceled.
 

 
 III. TRAVERSAL OF RESTRICTION REQUIREMENT If a response to a restriction requirement includes an election with
 traverse on the grounds that the groups are not patentably distinct, applicant must
 present evidence or identify such evidence of record showing the groups to be obvious
 variations of one another. Traversal of a restriction requirement alone without an
 explanation in support thereof will be treated as an election without traverse. See
 MPEP §
 818.01(c) and form paragraph 8.25.02 .
 

 A traversal of a restriction requirement based on there being no
 serious burden to an examiner to search and examine an entire application (as noted
 in MPEP §
 803 ) is not applicable to design patent applications. The
 fact that the embodiments may be searched together cannot preclude a requirement for
 restriction if their appearances are considered patentably distinct, since patentably
 distinct embodiments cannot be supported by a single formal design claim. Also, clear
 admission on the record by the applicant, on its own , that the
 embodiments are not patentably distinct (as noted in MPEP § 809.02(a) )
 will not overcome a requirement for restriction if the embodiments do not have
 overall appearances that are basically the same as each other.
 

 When a traversal specifically points out alleged errors in a
 restriction, examiners must reevaluate the requirement in view of these remarks. If
 the restriction requirement is to be maintained, it must be repeated and made final
 in the next Office action and the arguments answered. If the application is otherwise
 in condition for allowance, except for the presence of a non-elected invention, the
 examiner should contact applicant and advise the applicant of the options with regard
 to any pending claims withdrawn from consideration. Alternatively, applicant may be
 notified using form paragraph 8.03 . See MPEP § 821.01 .
 

 

 
 1504.06 Double Patenting [R-07.2022]

 There are generally two types of double patenting rejections. One is
 the same invention type or “statutory” double patenting rejection based on
 35 U.S.C.
 171 which states in the singular that an inventor may obtain “a
 patent.” The second is the “nonstatutory” double patenting rejection based on a
 judicially created doctrine grounded in public policy and which is primarily intended to
 prevent prolongation of the patent term by prohibiting claims in a second patent not
 patentably distinct from claims in a first patent. 
 

 The doctrine of nonstatutory double patenting also seeks
 to prevent the possibility of multiple suits against an accused infringer by different
 assignees of patents claiming patentably indistinct variations of the same invention.
 In re Van Ornum, 686 F.2d 937, 944-48, 214 USPQ 761, 767-70 (CCPA
 1982). The submission of a terminal disclaimer in compliance with 37 CFR
 1.321(b) to overcome a double patenting rejection ensures that a
 patent owner with multiple patents claiming obvious variations of one invention retains
 all those patents or sells them as a group. Van Ornum, 686 F.2d at
 944-45, 214 USPQ at 767. Nonstatutory double patenting includes rejections based on
 anticipation, a one-way determination of “obviousness,” or a two-way determination of
 “obviousness.” It is important to note that the “obviousness” analysis for nonstatutory
 double patenting is “similar to, but not necessarily the same as, that undertaken under
 35 U.S.C.
 103 .” In re Braat, 937 F.2d 589, 592-93, 19
 USPQ2d 1289, 1292 (Fed. Cir. 1991) (citing In re Longi, 759 F.2d 887,
 892 n.4, 225 USPQ 645, 648 n.4 (Fed. Cir. 1985)); Geneva
 Pharmaceuticals, 349 F.3d 1373, 1378 n.1, 68 USPQ2d 1865, 1869 n.1 (Fed
 Cir. 2003). In addition, nonstatutory double patenting also includes rejections based on
 the equitable principle against permitting an unjustified timewise extension of patent
 rights. See In re Schneller, 397 F.2d 350, 158 USPQ 210 (CCPA 1968);
 see also MPEP §
 804 , subsection II.B.6. 
 

 Charts in MPEP § 804 outline procedure for handling all double
 patenting rejections.
 

 Double patenting rejections are based on a comparison of the claims in
 a patent and an application or between two applications which have at least one common
 inventor, common applicant, and/or are commonly assigned/owned or non-commonly
 assigned/owned but subject to a joint research agreement as set forth in
 35 U.S.C.
 102(c) or in pre-AIA 35 U.S.C. 103(c)(2) and
 (3) . Notably, 35 U.S.C. 171 specifically states
 that “a patent” may be obtained if certain conditions are met; this use of the singular
 makes it clear that only one patent may issue for a design and is the basis for the
 statutory double patenting rejections.
 

 Determining if a double patenting rejection is appropriate involves
 answering the following inquiries: Is the same design being claimed twice? If the answer
 is yes, then a rejection under 35 U.S.C. 171 should be made on the
 grounds of “same invention” type or statutory double patenting. If not, are the designs
 directed to patentably indistinct variations of the same inventive concept? If the
 answer is yes, then a rejection based on the nonstatutory double patenting should be
 made.
 

 Double patenting rejections are based on a comparison of claims. In
 double patenting rejections, the disclosure of the patent or application may be relied
 upon only to define the claim. While there is a direct correlation between the drawings
 in a design application and the claim, examiners must be aware that no such correlation
 is necessary in a utility application or patent. Several utility patents may issue with
 the identical drawing disclosure but with claims directed to different inventions. So
 any consideration of possible double patenting rejections
 between a utility application or patent with a design application cannot be based on the
 utility drawing disclosure alone. See Anchor Hocking Corp. v. Eyelet Specialty
 Co., 377 F. Supp. 98, 183 USPQ 87 (D. Del. 1974). The examiner must be able
 to recreate the design claimed from the utility claims without reliance on the
 drawings.
 

 If a provisional double patenting rejection (nonstatutory or statutory)
 is the only rejection remaining in two conflicting applications, the examiner should
 consult MPEP §
 1490 , subsection VI.D to determine which, if any, of the
 provisional double patenting rejections should be withdrawn. 
 

 A provisional double patenting rejection will be converted
 into a double patenting rejection when the first application, which is the basis for the
 rejection, publishes as an application publication or issues as a patent. If more than
 two applications conflict with each other and one is allowed, the remaining applications
 should be cross rejected against the others as well as the allowed application. For this
 type of rejection to be appropriate, there must be either at least one inventor in
 common, common applicant, or a common owner/assignee. If the claims in copending design
 applications or a design patent and design applications have a common assignee but
 different inventive entities, anticipation and/or obviousness rejections based on the
 other application or patent as prior art under 35 U.S.C.
 102(a)(2) or pre-AIA 35 U.S.C. 102(e) ,
 (f) and (g) , as applicable, must be
 considered in addition to the double patenting rejection. See MPEP § 804 ,
 §
 2136 , § 2137 , § 2138 , and
 §
 2154 .
 

 I. “SAME INVENTION” DOUBLE PATENTING REJECTIONS A design - design statutory double patenting rejection based on
 35 U.S.C.
 171 prevents the issuance of a second patent for a design
 already patented. For this type of double patenting rejection to be proper,
 identical designs with identical 
 scope must be twice claimed. See In re Goodman, 11 F.3d 1046, 29
 USPQ2d 2010 (Fed. Cir. 1993). A design - utility “same invention” double patenting
 rejection is based on judicial doctrine as there is no statutory basis for this
 rejection because neither 35 U.S.C. 101 nor
 35 U.S.C.
 171 can be applied against both claims.
 See In re Thorington, 418 F.2d 528, 163 USPQ 644 (CCPA 1969). A
 “same invention” type double patenting rejection, whether statutory or nonstatutory,
 cannot be overcome by a terminal disclaimer. See In re Swett, 451
 F.2d 631, 172 USPQ 72 (CCPA 1971). 
 

 ¶ 15.23 35 U.S.C. 171 Double Patenting Rejection (Design-Design)
 

 The claim is rejected under 35 U.S.C. 171 on the ground of double patenting since it is claiming the same design as that claimed in United States Design Patent No.
 [1] .
 

 Examiner Note:

 Form paragraph 15.23.02 should follow all “same invention” type double patenting rejections.
 

 

 ¶ 15.23.01 35 U.S.C. 171 Provisional Double Patenting Rejection
 (Design-Design)
 

 The claim is provisionally rejected under 35 U.S.C. 171 on the
 ground of double patenting since it is claiming the same design as that claimed in copending
 Application No. [1] . This is a provisional double
 patenting rejection since the conflicting claims have not in fact been patented.
 

 Examiner Note:

 Form paragraph 15.23.02 should follow all “same invention” type double
 patenting rejections.
 

 

 ¶ 15.24.07 Double Patenting Rejection (Design-Utility)

 The claim is rejected under the judicially created doctrine of double patenting as being directed to the same invention as
 that set forth in claim [1] of United States Patent No. [2] . See In re Thorington , 418 F.2d 528,163 USPQ 644 (CCPA 1969).
 

 Examiner Note:

 Form paragraph 15.23.02 should follow all “same invention” type double patenting rejections.
 

 

 ¶ 15.24.08 Provisional Double Patenting Rejection (Design-Utility)

 The claim is provisionally rejected under the judicially created doctrine of double patenting as being directed to the same
 invention as that set forth in claim [1] of copending Application No. [2] . See In re Thorington , 418 F.2d 528,163 USPQ 644 (CCPA 1969).
 

 This is a provisional double patenting rejection because the claims have not in fact been patented.
 

 Examiner Note:

 Form paragraph 15.23.02 should follow all “same invention” type double patenting rejections.
 

 

 ¶ 15.23.02 Summary for “Same Invention” – Type Double Patenting Rejections

 Applicant is advised that a terminal
 disclaimer may not be used to overcome a “same invention” type double patenting rejection.
 In re Thorington , 418 F.2d 528, 163 USPQ 644 (CCPA 1969);
 MPEP §
 804.02 .
 

 Examiner Note:

 This form paragraph should follow all “same invention” type double patenting rejections.

 
 II. NONSTATUTORY DOUBLE PATENTING REJECTIONS A rejection based on nonstatutory double patenting is based on a
 judicially created doctrine grounded in public policy so as to prevent the
 unjustified or improper timewise extension of the right to exclude granted by a
 patent. See In re Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir.
 1993). A double patenting rejection also serves public policy when it prevents the
 possibility of multiple suits against an accused infringer by different assignees of
 patents claiming patentably indistinct variations of the same invention. In
 re Van Ornum, 686 F.2d 937, 944-48, 214 USPQ 761, 767-70 (CCPA 1982). 
 

 A nonstatutory double patenting rejection applies to claims directed
 to the same inventive concept but with different appearances or differing scope that
 are patentably indistinct from each other. Nonstatutory categories of double
 patenting rejections which are not the “same invention” type may be overcome by the
 submission of a terminal disclaimer.
 

 In determining whether a nonstatutory double patenting rejection is
 appropriate, the examiner must compare the overall appearance of the claimed design
 in the application with the overall appearance of the claimed design in the
 conflicting application or patent. The claim in the patent or conflicting application
 must be considered as a whole, i.e., the elements of the claimed design of the
 reference are not considered individually as they may be when establishing a
 prima facie case of anticipation under 35 U.S.C.
 102 or obviousness under 35 U.S.C.
 103 . See MPEP § 804 , subsection II.B.
 (information on the analysis for nonstatutory double patenting rejections). For
 example, in an obviousness analysis, after the factual inquiries mandated under
 Graham v. John Deere Co., 383 U.S. 1, 148 USPQ 459 (1966), have
 been made (as with a rejection under 35 U.S.C. 103 , the examiner must
 then determine whether the results of the inquiries support a conclusion nonstatutory
 double patenting. To establish nonstatutory double patenting under an obviousness
 analysis: (A) the conflicting design claims must have overall appearances with
 basically the same design characteristics; and (B) the differences between the two
 designs must be insufficient to patentably distinguish one design from the other.
 Differences may be considered patentably insufficient when they are de
 minimis or obvious to a designer of ordinary skill in the art. While the
 conflicting application or patent (if less than a year older than the application)
 used to establish nonstatutory double patenting is not considered “prior art,” the
 principle involved is basically the same. See In re Zickendraht, 
 319 F.2d 225, 138 USPQ 22 (CCPA 1963)(see concurring opinion of Judge Rich). 
 

 In determining whether to make a nonstatutory double patenting
 rejection between designs having differing scope, the examiner should compare the
 reference claim with the application claim. A rejection is appropriate if:
 

 
 (A) The difference in scope is minor and patentably indistinct
 between the claims being compared;
 

 (B) Patent protection for the design, fully disclosed in and
 covered by the claim of the reference, would be extended by the allowance of
 the claim in the later filed application; and
 

 (C) No terminal disclaimer has been filed. 

 
 This kind of nonstatutory double patenting rejection in designs will
 occur between designs which may be characterized as a combination (narrow claim) and
 a subcombination/element thereof (broad claim). See MPEP § 1504.05 ,
 subsection II, B. If the designs are patentably indistinct and are directed to the
 same inventive concept the examiner must determine whether the subject matter of the
 narrower claim is fully disclosed in and covered by the broader claim of the
 reference. If the reference does not fully disclose the narrower
 claim, then a double patenting rejection should not be made. The additional
 disclosure necessary to establish that the applicant was in possession of the
 narrower claim at the time the broader claim was filed may be in a title or
 descriptive statement as well as in a broken line showing in the drawings. If the
 broader claim of the reference does not disclose the additional subject matter
 claimed in the narrower claim, then applicant could not have claimed the narrower
 claim at the time the application with the broader claim was filed and a rejection
 under nonstatutory double patenting would be inappropriate.
 

 A nonstatutory double patenting rejection may be made between a
 patent and an application or provisionally between applications. Such rejection over
 a patent may only be necessary if the patent issued less than a year before the
 filing date of the application. If the patent is more than a year older than the
 application, the patent is considered to be “prior art” under 35 U.S.C.
 102(a)(1) or pre-AIA 35 U.S.C. 102(b) which
 may be applied in an anticipation or obviousness rejection as applicable. The purpose
 of a terminal disclaimer is to obviate a nonstatutory double patenting rejection by
 removing potential harm to the public by issuing a second patent. See
 MPEP §
 804 .
 

 If double patenting is raised between a patent and a
 continuing application, examiners are reminded that this ground
 of rejection can only be made when the filing of the continuing application is
 voluntary and not the direct, unmodified result of restriction requirement under
 35 U.S.C.
 121 . See MPEP § 804.01 .
 

 Examiners should particularly note that a design-design nonstatutory
 double patenting rejection does not always have to be made in both
 of the conflicting applications. For the most part, these rejections will be made in
 each of the conflicting applications; but, if the rejection is only appropriate in
 one direction, it is proper to reject only one application. The criteria for
 determining whether a one-way distinctness determination is necessary or a two-way
 distinctness determination is necessary is set forth in MPEP § 804 ,
 subsection II.B.4 and 5. However, in design-utility situations, a two-way
 distinctness determination is necessary for the rejection to be proper. See
 In re Dembiczak, 175 F.3d 994, 50 USPQ2d 1614 (Fed. Cir.
 1999).
 

 The following form paragraphs may be used in making a nonstatutory
 double patenting rejection. Explanation should be provided in the appropriate
 brackets.
 

 ¶ 15.24.06 Basis for Nonstatutory Double Patenting, “Heading
 Only”
 

 The nonstatutory double patenting rejection is based on a judicially
 created doctrine grounded in public policy (a policy reflected in the statute) so as to
 prevent the unjustified or improper timewise extension of the “right to exclude” granted by a
 patent and to prevent possible harassment by multiple assignees. See In re
 Goodman , 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993); In re
 Longi , 759 F.2d 887, 225 USPQ 645 (Fed. Cir. 1985); In re Van
 Ornum , 686 F.2d 937, 214 USPQ 761 (CCPA 1982); In re Vogel ,
 422 F.2d 438, 164 USPQ 619 (CCPA 1970); and In re Thorington, 418 F.2d 528,
 163 USPQ 644 (CCPA 1969).
 

 A timely filed terminal disclaimer in compliance with 37 CFR 1.321(c) may be
 used to overcome an actual or provisional rejection based on a nonstatutory double patenting
 ground provided the conflicting application or patent is shown to be commonly owned with this
 application. See 37 CFR 1.131(c) . A terminal disclaimer must be signed in compliance
 with 37 CFR
 1.321(b) .
 

 The filing of a terminal disclaimer by itself is not a complete
 reply to a nonstatutory double patenting (NSDP) rejection. A complete reply requires
 that the terminal disclaimer be accompanied by a reply requesting reconsideration of the prior
 Office action. Even where the NSDP rejection is provisional, the reply must be complete.
 MPEP §
 804 , subsection I.B.1. For a reply to a non-final Office action, see
 37 CFR
 1.111(a) . For a reply to final Office action, see 37 CFR 1.113(c) . A
 request for reconsideration while not provided for in 37 CFR 1.113(c) may be filed after final
 for consideration. See MPEP §§
 706.07(e) and 714.13 .
 
 

 The USPTO Internet website contains terminal disclaimer forms which may
 be used. Please visit www.uspto.gov/patent/patents-forms . The filing date of the application
 will determine what form should be used. A web-based eTerminal Disclaimer may be filled out
 completely online using web-screens. An eTerminal Disclaimer that meets all requirements is
 auto-processed and approved immediately upon submission. For more information about eTerminal
 Disclaimers, refer to www.uspto.gov/ patents/apply/applying-online/eterminal-disclaimer .
 

 Examiner Note:

 This form paragraph must precede all nonstatutory double patenting
 rejections as a heading, except "same invention" type.
 

 

 ¶ 15.24 Nonstatutory Double Patenting Rejection (Single
 Reference)
 

 The claim is rejected on the ground of nonstatutory double patenting of
 the claim in United States Patent No. [1] . Although the conflicting claims are
 not identical, they are not patentably distinct from each other because [2] . 
 

 Examiner Note:
 
 1. In bracket 1, insert prior U.S. Patent Number.

 2. In bracket 2, the differences between the conflicting claims must
 be identified and indicated as being minor and not distinguishing the overall appearance
 of one over the other.
 

 3. This form paragraph must be preceded by form paragraph
 15.24.06 
 and followed by form paragraph 15.67 .
 
 
 

 ¶ 15.24.03 Provisional Nonstatutory Double Patenting Rejection (Single
 Reference)
 

 The claim is provisionally rejected on the grounds of nonstatutory double
 patenting of the claim of copending Application No. [1] . Although the conflicting
 claims are not identical, they are not patentably distinct from each other because
 [2] . This is a provisional nonstatutory double patenting rejection because the
 conflicting claims have not in fact been patented.
 

 Examiner Note:
 
 1. In bracket 1, insert conflicting application number.

 2. In bracket 2, the differences between the conflicting claims must
 be identified and indicated as being minor and not distinguishing the overall appearance
 of one over the other.
 

 3. This form paragraph must be preceded by form paragraph
 15.24.06 
 and followed by form paragraph 15.67 .
 
 
 

 ¶ 15.67 Rationale for 35 U.S.C. 103 Rejection (Single
 Reference)
 

 It is well settled that it is
 unobviousness in the overall appearance of the claimed design, when compared with the prior
 art, rather than minute details or small variations in design as appears to be the case
 here, that constitutes the test of design patentability. See In re Frick ,
 275 F.2d 741, 125 USPQ 191 (CCPA 1960) and In re Lamb , 286 F.2d 610, 128
 USPQ 539 (CCPA 1961).
 

 

 ¶ 15.25 Nonstatutory Double Patenting Rejection (Multiple
 References)
 

 The claim is rejected on the grounds of nonstatutory double patenting of
 the claim(s) in United States Patent No. [1] in view of [2] . At the
 time applicant made the design, it would have been obvious to a designer of ordinary skill in
 the art to [3] as demonstrated by [4] .
 

 Examiner Note:
 
 1. In bracket 1, insert conflicting patent number.

 2. In bracket 2, insert secondary reference(s).

 3. In bracket 3, insert an explanation of how the conflicting claim in
 the patent is modified.
 

 4. In bracket 4, identify the secondary reference(s) teaching the
 modification(s).
 

 5. This form paragraph must be preceded by form paragraph
 15.24.06 
 and followed by form paragraph 15.68 .
 
 
 

 ¶ 15.24.04 Provisional Nonstatutory Double Patenting Rejection (Multiple
 References)
 

 The claim is provisionally rejected on the grounds of nonstatutory double
 patenting of the claim of copending Application No. [1] in view of
 [2] . At the time applicant made the design, it would have been obvious to a
 designer of ordinary skill in the art to [3] as demonstrated by [4] .
 This is a provisional nonstatutory double patenting rejection because the conflicting claims
 have not in fact been patented.
 

 Examiner Note:
 
 1. In bracket 1, insert conflicting application number.

 2. In bracket 2, insert secondary reference(s).

 3. In bracket 3, insert an explanation of how the conflicting claim in
 the copending application is modified.
 

 4. In bracket 4, identify the secondary reference(s) teaching the
 modification(s).
 

 5. This form paragraph must be preceded by form paragraph
 15.24.06 
 and followed by form paragraph 15.68. 
 
 

 ¶ 15.68 Rationale for 35 U.S.C. 103 Rejection (Multiple
 References)
 

 This modification of the primary
 reference in light of the secondary reference is proper because the applied references are
 so related that the appearance of features shown in one would suggest the application of
 those features to the other. See In re Rosen , 673 F.2d 388, 213 USPQ 347
 (CCPA 1982); In re Carter , 673 F.2d 1378, 213 USPQ 625 (CCPA 1982), and
 In re Glavas , 230 F.2d 447, 109 USPQ 50 (CCPA 1956). Further, it is
 noted that case law has held that a designer skilled in the art is charged with knowledge of
 the related art; therefore, the combination of old elements, herein, would have been well
 within the level of ordinary skill. See In re Antle , 444 F.2d 1168,170
 USPQ 285 (CCPA 1971) and In re Nalbandian , 661 F.2d 1214, 211 USPQ 782
 (CCPA 1981).
 

 

 

 
 1504.07 - 1504.09 [Reserved]

 

 

 
 1504.10 Priority Under 35 U.S.C. 119(a)-(d), 386(a) and (b) [R-08.2017]

 
 35 U.S.C. 172 
 Right of priority. 

 The right of priority provided for by subsections (a) through
 (d) of section 119 shall be six months
 in the case of designs. The right of priority provided for by section 119(e) 
 shall not apply to designs.
 

 

 The provisions of 35 U.S.C. 119(a) - (d) ,
 172 , 386(a) and (b) 
 apply to design patent applications. In order to obtain the benefit of an earlier
 foreign filing date, the U.S. application must be filed within 6 months of the earliest
 date on which any foreign application for the same design was filed. It should be noted
 that where a design patent application claims benefit under 35 U.S.C. 120 
 to an intermediate nonprovisional utility patent application that directly claims
 priority to a foreign application, the intermediate nonprovisional utility application
 must have been filed within 6 months of the filing date of the foreign priority
 application in order for the design patent application to obtain the benefit of the
 earlier foreign filing date. See 35 U.S.C. 172 . Under certain
 conditions, a right of priority to a foreign application may be restored if the U.S.
 design application is filed within two months of the expiration of the six-month period
 specified in 35
 U.S.C. 172 . See 37 CFR 1.55(c) . Design applications
 may not claim the benefit of a provisional application under 35 U.S.C. 119(e) .
 See 37 CFR
 1.55 and MPEP § 213 - 216 for
 further information concerning the right of priority to a foreign application and the
 formal requirements applicable thereto. 
 

 ¶ 15.01 Conditions Under 35 U.S.C. 119(a)-(d), 172, 386(a) and
 (b)
 

 Applicant is advised of conditions as specified in 35 U.S.C.
 119(a) - (d) , 172 ,
 386(a) and
 (b) . An application for a design patent for an invention filed in
 this country by any person who has, or whose legal representatives have previously filed an
 application for a design patent, or equivalent protection for the same design in a foreign
 country which offers similar privileges in the case of applications filed in the United
 States or in a WTO member country, or to citizens of the United States, shall have the same
 effect as the same application would have if filed in this country on the date on which the
 application for patent for the same invention was first filed in such foreign country, if
 the application in this country is filed within six (6) months from the earliest date on
 which such foreign application was filed. If the design application is filed within two
 months from the expiration of the six-month period and the delay was unintentional, the
 right of priority in the design application may be restored by filing a petition under
 37 CFR
 1.55(c) .
 

 

 ¶ 15.01.01 Conditions Under 35 U.S.C. 172 Not Met

 The claim for priority under 35 U.S.C. 119(a) - (d) , 386(a) or (b) to
 the [1] application is acknowledged, however, the claim for priority cannot be
 based on such application since it was filed more than six (6) months before the filing date
 of the subsequent application in the United States and no petition to restore the right of
 priority under 37 CFR 1.55(c) 
 has been granted. 35 U.S.C 172 .
 

 Applicant may wish to file a petition under 37 CFR 1.55(c) to
 restore the right of priority if the subsequent application was filed within two months from
 the expiration of the six-month period and the delay was unintentional. A petition to restore
 the right of priority must include: (1) the priority claim under 35 U.S.C. 119(a) - (d) ,
 386(a) or
 (b) in an application data sheet, identifying the foreign application to
 which priority is claimed, by specifying the application number, country (or intellectual
 property authority), day, month, and year of its filing (unless previously submitted); (2) the
 petition fee set forth in 37 CFR 1.17(m) ; and (3) a statement that
 the delay in filing the subsequent application within the six-month period was unintentional.
 The petition to restore the right of priority must be filed in the subsequent application, or
 in the earliest nonprovisional application claiming benefit under 35 U.S.C. 120 ,
 121 , 365(c) , or 386(c) to the subsequent application, if
 such subsequent application is not a nonprovisional application. The Director may require
 additional information where there is a question whether the delay was unintentional. The
 petition should be addressed to: Mail Stop Petition, Commissioner for Patents, P.O. Box 1450,
 Alexandria, Virginia, 22313-1450.
 

 Examiner Note:

 In bracket 1, insert the name of the foreign country.

 

 ¶ 15.03 Certified Copy Filed, But Proper Claim Not Made

 Receipt is acknowledged of a certified
 copy of foreign application [1] . If this copy is being filed to obtain priority
 to the foreign filing date under 35 U.S.C. 119(a)-(d), 386(a) or (b), applicant should also
 file a claim for such priority as required by 35 U.S.C. 119(b). If the application was filed
 before September 16, 2012, the priority claim must be made in either the oath or declaration
 or in an application data sheet; if the application was filed on or after September 16,
 2012, the claim for foreign priority must be presented in an application data
 sheet.
 

 In the case of a design application, the claim for
 priority must be presented during the pendency of the application, unless filed with a
 petition under 37 CFR 1.55(e). If the claim for priority is filed after the date the issue
 fee is paid, the patent will not include the priority claim unless corrected by a
 certificate of correction under 35 U.S.C. 255 and 37 CFR 1.323. 
 

 Examiner Note:

 In bracket 1, insert the application number of
 the foreign application.
 

 

 For design applications filed on or after May 13, 2015, a claim for
 priority may be made pursuant 35 U.S.C. 386(a) to an international
 design application filed under the Geneva Act of the Hague Agreement Concerning the
 International Registration of Industrial Designs, provided the international design
 application designates at least one Contracting Party other than the United States. The
 United States will also recognize claims for the right of priority under
 35 U.S.C.
 119(a) - (d) based on applications filed
 under such bilateral or multilateral treaties as the “Hague Agreement Concerning the
 International Deposit of Industrial Designs,” “Uniform Benelux Act on Designs and
 Models” and “European Community Design.” In filing a claim for priority of a foreign
 application previously filed under such a treaty, certain information must be supplied
 to the United States Patent and Trademark Office. The required information is: 
 

 
 (A) the application number, 

 (B) the date of filing of the foreign application, 

 (C) the name and location of the national or inter-governmental
 authority which received the application.
 

 
 ¶ 15.02 Claimed Foreign Priority, No Certified Copy Filed

 Acknowledgment is made of applicant’s
 claim for foreign priority based on an application filed in [1] on
 [2] . It is noted, however, that applicant has not filed a certified copy of
 the [3] application as required by 37 CFR 1.55. In the case of a design
 application, the certified copy must be filed during the pendency of the application, unless
 filed with a petition under 37 CFR 1.55(g) together with the fee set forth in 37 CFR
 1.17(g), that includes a showing of good and sufficient cause for the delay in filing the
 certified copy of the foreign application. If the certified copy of the foreign application
 is filed after the date the issue fee is paid, the patent will not include the priority
 claim unless corrected by a certificate of correction under 35 U.S.C. 255 and 37 CFR
 1.323.
 

 Examiner Note:
 
 1. In bracket 1, insert the name of the
 country or intellectual property authority.
 

 2. In bracket 2, insert the filing date of
 the foreign application.
 

 3. In bracket 3, insert the application
 number of the foreign application.
 
 
 

 The notation requirement on design patent application file wrappers
 when foreign priority is claimed is set forth in MPEP §
 202 .
 

 ¶ 15.04 Priority Under Bilateral or Multilateral Treaties

 The United States will recognize claims
 for the right of priority under 35 U.S.C. 119(a) - (d) based on
 applications filed under such bilateral or multilateral treaties as the Hague Agreement
 Concerning the International Deposit of Industrial Designs, the Benelux Designs Convention and
 European Community Design. In filing a claim for priority of a foreign application previously
 filed under such a treaty, certain information must be supplied to the United States Patent
 and Trademark Office. The required information is (1) the application number: (2) the date of
 filing of the application, and (3) the name and location of the national or international
 governmental authority which received such application.
 

 

 

 
 1504.11-1504.19 [Reserved]

 

 

 
 1504.20 Benefit Under 35 U.S.C. 120 [R-10.2019]
 

 
 35 U.S.C. 120 
 Benefit of earlier filing date in the United
 States. 

 [Editor Note: Applicable to a patent application subject to the first
 inventor to file provisions of the AIA (see 35 U.S.C. 100
 (note) ). See 35 U.S.C. 120 (pre-AIA) for
 the law otherwise applicable.] 

 An application for patent for an invention disclosed in
 the manner provided by section 112(a) (other than the
 requirement to disclose the best mode) in an application previously filed in the
 United States, or as provided by section 363 or 385 
 which names an inventor or joint inventor in the previously filed application shall
 have the same effect, as to such invention, as though filed on the date of the prior
 application, if filed before the patenting or abandonment of or termination of
 proceedings on the first application or on an application similarly entitled to the
 benefit of the filing date of the first application and if it contains or is amended
 to contain a specific reference to the earlier filed application. No application
 shall be entitled to the benefit of an earlier filed application under this section
 unless an amendment containing the specific reference to the earlier filed
 application is submitted at such time during the pendency of the application as
 required by the Director. The Director may consider the failure to submit such an
 amendment within that time period as a waiver of any benefit under this section. The
 Director may establish procedures, including the requirement for payment of the fee
 specified in section 41(a)(7) , to accept an
 unintentionally delayed submission of an amendment under this section.
 

 

 
 35 U.S.C. 120 (pre-AIA) 
 Benefit of earlier filing date in the United States. 

 An application for patent for an invention disclosed in the manner
 provided by the first paragraph of section 112 of this title in an
 application previously filed in the United States, or as provided by
 section
 363 of this title, which is filed by an inventor or inventors
 named in the previously filed application shall have the same effect, as to such
 invention, as though filed on the date of the prior application, if filed before the
 patenting or abandonment of or termination of proceedings on the first application or
 on an application similarly entitled to the benefit of the filing date of the first
 application and if it contains or is amended to contain a specific reference to the
 earlier filed application. No application shall be entitled to the benefit of an
 earlier filed application under this section unless an amendment containing the
 specific reference to the earlier filed application is submitted at such time during
 the pendency of the application as required by the Director. The Director may
 consider the failure to submit such an amendment within that time period as a waiver
 of any benefit under this section. The Director may establish procedures, including
 the payment of a surcharge, to accept an unintentionally delayed submission of an
 amendment under this section.
 

 

 For a benefit claim under 35 U.S.C. 120 , the later-filed
 application must contain a reference to the prior-filed copending application. For
 applications filed on or after September 16, 2012, the specific reference to the prior
 application must be in the application data sheet ( 37 CFR 1.76 ).
 For applications filed prior to September 16, 2012, the specific reference to the prior
 application must be in the first sentence(s) of the specification or in an application
 data sheet. The prior-filed application must name the inventor or a joint inventor named
 in the later-filed application as the inventor or a joint inventor. In addition, the
 prior-filed application must either be: (i) a nonprovisional application under
 35 U.S.C.
 111(a) that is entitled to a filing date as set forth in §§
 1.53(b) or 1.53(d) for which the basic filing
 fee set forth in § 1.16 has been paid within the pendency of the application, (ii)
 an international design application entitled to a filing date in accordance with §
 1.1023 and designating the United States; or (iii) an
 international application entitled to a filing date in accordance with PCT Article 11 and
 designating the United States. See 37 CFR 1.78(d) . 
 

 Except as provided for in 37 CFR
 1.78(e) , the failure to timely submit the reference required under
 35 U.S.C.
 120 and 37 CFR 1.78 in a design application
 during its pendency is considered a waiver of any benefit under 35 U.S.C. 120 ,
 121 , 365(c) or 386(c) .
 See 37 CFR
 1.78(d)(3)(iii) .
 

 See MPEP § 211 for additional information
 concerning benefit claims under 35 U.S.C. 120 .
 

 Form paragraph 15.26 may be used to remind applicant
 where a reference to the prior application must be included in the first sentence(s) of
 the specification or in an application data sheet.
 

 ¶ 15.26 Identification of Prior Application(s) in Nonprovisional
 Applications - Benefit Claimed
 

 Applicant is reminded of the following
 requirement:
 

 
 To claim the benefit of a prior-filed application, a continuation
 or divisional application (other than a continued prosecution application filed under
 37 CFR
 1.53(d) ), must include a specific reference to the prior-filed
 application in compliance with 37 CFR 1.78 . If the application was filed
 before September 16, 2012, the specific reference must be included in the first sentence(s)
 of the specification following the title or in an application data sheet; if the
 application was filed on or after September 16, 2012, the specific reference must be
 included in an application data sheet. For benefit claims under 35 U.S.C. 120 ,
 121 , 365(c) , or 386(c) , the
 reference must include the relationship (i.e., continuation, divisional, or
 continuation-in-part) of the applications.
 

 
 

 Attention is directed to the requirements for “continuing” applications
 set forth in MPEP §§ 201.07 , 201.08 ,
 and §
 211 . Applicants are entitled to claim the benefit of the
 filing date of earlier applications for later claimed inventions under 35 U.S.C. 120 
 only when the earlier application discloses that invention in the manner required by
 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 all continuation and divisional
 applications, a determination must be made by the examiner as to whether the conditions
 for priority under 35 U.S.C. 120 have been met. The claimed design in a continuation
 application and in a divisional application must be disclosed in the original
 application. If this condition is not met, the application is not entitled to the
 benefit of the earlier filing date and the examiner should notify applicant accordingly
 by specifying the reasons why applicant is not entitled to claim the benefit under
 35 U.S.C.
 120 . Form paragraphs 2.09 , 2.10 and 2.10.01 may be used followed by a specific explanation
 as to why the later filed application fails to comply with the requirements of
 35 U.S.C.
 120 . The examiner should also require applicant to change the
 relationship (continuation or divisional application) to continuation-in-part or delete
 the benefit claim. For applications filed on or after September 16, 2012, applicant can
 delete or change the benefit claim by filing a corrected application data sheet in
 compliance with 37
 CFR 1.76(c) . For applications filed prior to September 16, 2012,
 applicant can delete or change the benefit claim by amending the specification (if the
 benefit claim is in the specification) or by submitting a supplemental application data
 sheet in compliance with pre-AIA 37 CFR 1.76(c) . If applicant
 chooses to change the relationship (continuation or divisional application) to
 continuation-in-part, note that for applications filed on or after September 16, 2012, a
 continuing application, including a continuation-in-part application, may be filed with
 a copy of an oath or declaration or substitute statement from the prior nonprovisional
 application, provided that the oath or declaration is in compliance with
 37 CFR
 1.63 or the substitute statement is incompliance with
 37 CFR
 1.64 . See 37 CFR 1.63(d)(1) . See also
 MPEP §
 602.05(a) (more information regarding the oath or declaration
 in continuing applications filed on or after September 16, 2012). For
 continuation-in-part applications filed before September 16, 2012, a newly executed oath
 or declaration must be filed. See pre-AIA 37 CFR 1.63(e) . 
 

 In general, a mere statement that an application is a continuation or
 division of an earlier filed application is not an incorporation of anything into the
 application containing such reference for purposes of satisfying the disclosure
 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). See In re de Seversky, 474 F.2d 671, 177 USPQ 144 (CCPA
 1973). See also MPEP §
 608.01(p) . However, for applications filed on or after
 September 21, 2004, 37
 CFR 1.57(b) provides that a claim under 37 CFR 1.78 
 for the benefit of a prior-filed application, that was present on the filing date of
 the application, is considered an incorporation by reference as to inadvertently omitted
 material. See MPEP § 217 .
 

 A continuation-in-part application is an application
 filed during the lifetime of an earlier nonprovisional application, repeating some
 substantial portion or all of the earlier nonprovisional application and adding matter
 not disclosed in the earlier nonprovisional application. Only when the claim of the
 continuation-in-part application is disclosed in the manner provided by
 35 U.S.C.
 112(a) or pre-AIA 35 U.S.C. 112 , first
 paragraph in the earlier non-provisional application will the claim be entitled to the
 benefit of the filing date of the earlier nonprovisional application. However, unless
 the filing date of the earlier application is needed, such as with the existence of
 intervening prior art, the entitlement to benefit in the continuation‐in‐part
 application, as based on 35 U.S.C. 120 , will not be
 considered by the examiner. See In re Corba, 212 USPQ 825 (Comm’r
 Pat. 1981 ).
 

 When the first application is found to be fatally defective under
 35 U.S.C.
 112 because of insufficient disclosure to support an allowable
 claim and such position has been made of record by the examiner, a second design patent
 application filed as an alleged “continuation-in-part” of the first application to
 supply the deficiency is not entitled to the benefit of the earlier filing date. See
 Hunt Co. v. Mallinckrodt Chemical Works, 177 F.2d 583, 83 USPQ 277
 (2d. Cir. 1949) and cases cited therein. Also, a design application filed as a
 “continuation-in-part” that changes the shape or configuration of a design disclosed in
 an earlier application is not entitled to the benefit of the filing date of the earlier
 application. See In re Salmon, 705 F.2d 1579, 217 USPQ 981 (Fed. Cir.
 1983). However, a later filed application that changes the scope of a design claimed in
 an earlier filed application by reducing certain portions of the drawing to broken lines
 is not a change in configuration as defined by the court in Salmon. 
 See MPEP §
 1504.04 , subsection II.
 

 Form paragraph 15.74 may be used in an Office action
 in any application identified as a continuation-in-part which claims benefit under
 35 U.S.C.
 120 to a prior application and the examiner has not considered
 whether the application is entitled to benefit of the earlier filing date. Form
 paragraph 15.74.01 should be used where there is intervening
 prior art and the examiner has determined that the application is not entitled to
 benefit of the earlier filing date.
 

 ¶ 15.74 Continuation-In-Part

 Reference to this design application as
 a continuation-in-part under 35 U.S.C. 120 is acknowledged. Unless the
 filing date of the earlier application is actually needed, such as to avoid intervening prior
 art, the entitlement to priority in this CIP application will not be considered. See 
 In re Corba , 212 USPQ 825 (Comm’r Pat. 1981).
 

 Examiner Note:

 This form paragraph should be used
 to notify applicant that the C-I-P application is not entitled to the benefit of the parent
 application under 35
 U.S.C. 120 .
 

 

 ¶ 15.74.01 Continuation-In-Part – Not Entitled To Benefit of Earlier Filing Date 

 Reference to this design application as a continuation-in-part
 under 35 U.S.C.
 120 is acknowledged. Applicant is advised that the design claimed in the
 present application is not disclosed in the parent application. Therefore, the parent
 application does not satisfy the written description requirement of 35 U.S.C.
 112(a) or pre-AIA 35 U.S.C. 112 , first paragraph,
 under 35 U.S.C.
 120 for the design claimed in the present application and the present
 application is not entitled to the benefit of the earlier filing date.
 

 Examiner Note:
 
 This form paragraph should be used to notify applicant that the
 C-I-P application is not entitled to the benefit of the parent application
 under 35 U.S.C. 120 .
 
 
 

 Where a continuation-in-part application claims benefit under
 35 U.S.C.
 120 of the filing date of an earlier application, and also claims
 priority under 35
 U.S.C. 119(a) - (d) of a foreign application through
 the earlier application, and the conditions of 35 U.S.C. 120 are not met, e.g.,
 insufficient disclosure under 35 U.S.C. 112 , the
 continuation-in-part application is not entitled to the benefit of the filing date of
 the parent application. In this situation, a determination must be made as to whether
 the foreign application would qualify as prior art under pre-AIA 35 U.S.C.
 102(d) / 172 . To qualify as prior art under
 pre-AIA 35 U.S.C.
 102(d) / 172 , the foreign application (for
 patent or registration) must have been filed more than six months before the filing date
 of the U.S. (CIP) application and the foreign application for patent/registration must
 have matured into a form of patent protection prior to the filing date of the U.S. (CIP)
 application. To determine the status of the foreign application, the charts in
 MPEP §
 1504.02 should be used. If the foreign application for
 patent/registration has matured into a form of patent protection, the foreign
 application would qualify as prior art under pre-AIA 35 U.S.C.
 102(d) / 172 and the examiner should consider
 whether the design shown in the foreign application papers would anticipate or render
 the claim in the CIP application obvious. If the design shown in the foreign application
 papers would anticipate or render the claim in the CIP application obvious, the claim
 should be rejected under 35 U.S.C. 102 / 103 using
 form paragraphs 15.74.01 and 15.75.fti followed with a rejection
 under pre-AIA 35
 U.S.C. 102(d) / pre-AIA 35 U.S.C. 103(a) .
 

 ¶ 15.75.fti Preface to Rejection in CIP Based on pre-AIA 35 U.S.C. 102(d)/35
 U.S.C.172 
 

 Reference to this design application as a continuation-in-part under
 35 U.S.C.
 120 is acknowledged. Applicant is advised that the design disclosed in
 the parent application is not the same design as the design disclosed in this application.
 Therefore, this application does not satisfy the written description requirement of
 35 U.S.C.
 112(a) or pre-AIA 35 U.S.C. 112 , first paragraph,
 under 35 U.S.C.
 120 and is not entitled to benefit of the earlier filing date.
 

 The parent application claimed foreign priority under 35 U.S.C. 119(a) 
 - (d) ,
 however, the present application is not entitled to the benefit of the earlier filing date of
 the parent application. The foreign application that the parent application has claimed
 priority to has matured into a patent/registration before the filing date of the present
 application and was filed more than six months before the filing date of the present
 application. Therefore, the foreign patent/registration qualifies as prior art under
 pre-AIA 35 U.S.C.
 102(d) / 35 U.S.C. 172 .
 

 Examiner Note:

 This form paragraph should be followed with a rejection under
 pre-AIA 35 U.S.C.
 102(d) / pre-AIA 35 U.S.C. 103(a) depending on
 the difference(s) between this claim and the design shown in the priority papers. 
 

 

 If the status of the foreign application cannot be determined the
 following form paragraph should be used instead.
 

 ¶ 15.75.01.fti C-I-P Caution, Claim to Foreign Priority in Earlier Filed
 Application - Status of Foreign Application Unknown 
 

 Reference to this application as a continuation-in-part under
 35 U.S.C.
 120 is acknowledged. Applicant is advised that the design disclosed
 in the parent application is not the same design as the design disclosed in this
 application. Therefore, this application does not satisfy the written description
 requirement of 35 U.S.C. 112(a) or pre-AIA 35 U.S.C. 112 , first paragraph,
 under 35 U.S.C.
 120 and is not entitled to benefit of the earlier filing date.
 

 The parent application claimed foreign priority under 35 U.S.C.
 119(a) - (d) . Applicant is reminded that if the
 foreign application to which priority was claimed matured into a patent/registration before
 the filing of the present application and was filed more than six months before the filing
 date of the present application, the foreign patent/registration qualifies as prior art
 under pre-AIA 35
 U.S.C. 102(d) / 35 U.S.C. 172 .
 

 Therefore, Applicant is requested to inform the Office of the
 status of the foreign application to which priority is claimed. 

 

 Where the conditions of 35 U.S.C. 120 are met, a design
 application may be considered a continuing application of an earlier utility
 application. Racing Strollers Inc. v. TRI Industries Inc., 878 F.2d
 1418, 11 USPQ2d 1300 (Fed. Cir. 1989). Conversely, this also applies to a utility
 application relying on the benefit of the filing date of an earlier filed design
 application. Vas-Cath Inc. v. Mahurkar, 935 F.2d 1555, 19 USPQ2d 1111
 (Fed. Cir. 1991). In addition, a design application may claim benefit from an earlier
 filed PCT application under 35 U.S.C. 120 if the U.S. was
 designated in the PCT application. It should be noted that where a design patent
 application claims benefit under 35 U.S.C. 120 to an intermediate
 nonprovisional utility patent application that directly claims the benefit of a
 provisional application, the design patent application cannot claim the benefit of the
 filing date of the provisional application. This is because a design application may not
 claim the benefit of a provisional application. See 35 U.S.C. 172 . 
 

 Note also In re Berkman, 642 F.2d 427, 209 USPQ 45
 (CCPA 1981) where the benefit of a design patent application filing date requested under
 35 U.S.C.
 120 was denied in the later filed utility application of the same
 inventor. The Court of Customs and Patent Appeals took the position that the design
 application did not satisfy 35 U.S.C. 112 , first paragraph, as
 required under 35
 U.S.C. 120 .
 

 

 
 1504.21-1504.29 [Reserved]

 

 

 
 1504.30 Expedited Examination [R-01.2024]

 
 37 CFR 1.155 Expedited examination of design applications. 

 
 (a) The applicant may request that the Office expedite the
 examination of a design application. To qualify for expedited examination.
 
 (1) The application must include drawings in compliance with
 §
 1.84 , or for an international design application
 that designates the United States, must have been published pursuant to
 Hague Agreement Article 10(3);
 

 (2) The applicant must have conducted a preexamination
 search; and
 

 (3) The applicant must file a request for expedited
 examination including:
 
 (i) The fee set forth in §
 1.17(k) ; and
 

 (ii) A statement that a preexamination search was
 conducted. The statement must also indicate the field of search and
 include an information disclosure statement in compliance with
 § 1.98 .
 

 
 

 
 

 (b) The Office will not examine an application that is not in
 condition for examination ( e.g. , missing basic filing fee)
 even if the applicant files a request for expedited examination under this
 section.
 

 
 

 37 CFR
 1.155 establishes an expedited procedure for design applications.
 This expedited procedure is available to design applicants who first conduct a
 preliminary examination search and file a request for expedited treatment accompanied by
 the fee specified in 37 CFR 1.17(k) . This expedited
 treatment is intended to fulfill a particular need by affording rapid design patent
 protection that may be especially important where marketplace conditions are such that
 new designs on articles are typically in vogue for limited periods of time. The
 expedited procedure is available for international design applications designating the
 United States that have been published pursuant to Hague Agreement Article 10(3).
 

 A design application may qualify for expedited examination provided the
 following requirements are met: 
 

 
 (A) Expedited examination request is filed (Form PTO/SB/27 should be
 used); 
 

 
 
 (B) The design application is complete and includes drawings in
 compliance with 37 CFR 1.84 (see 37 CFR 1.154 and
 MPEP §
 1503 concerning the requirements for a complete design
 application), or is an international design application designating the United
 States that was published pursuant to Hague Agreement Article 10(3); 
 

 
 
 (C) A statement is filed indicating that a preexamination search was
 conducted (a search made by a foreign patent office satisfies this requirement).
 The statement must also indicate the field of search such as by U.S. Class and
 Subclass (including domestic patent documents, foreign patent documents and
 nonpatent literature); 
 

 
 
 (D) An information disclosure statement in compliance with
 37 CFR
 1.98 is filed; 
 

 
 
 (E) The basic design application filing fee set forth in
 37 CFR
 1.16(b) , if applicable, is paid; and 
 

 
 
 (F) The fee for expedited examination set forth in 37 CFR
 1.17(k) is paid. 
 

 EXPEDITED EXAMINATION PROCEDURE Design applications requesting expedited examination and complying
 with the requirements of 37 CFR 1.155 are examined with
 priority and undergo expedited processing throughout the entire course of prosecution
 in the Office, including appeal, if any, to the Patent Trial and Appeal Board. All
 processing is expedited from the date the request is granted.
 

 Design applicants seeking expedited examination may file a design
 application under 35 U.S.C. chapter 16 in the Office together with a corresponding
 request under 37
 CFR 1.155 by the USPTO patent electronic filing system, mail,
 or by hand-delivering the application papers and the request to the Customer Service
 Window. See MPEP §
 501 , subsection III for information regarding hand-delivery
 of papers. For applicants who choose to file a design application under 35 U.S.C.
 chapter 16 and the corresponding request under 37 CFR 1.155 via the USPTO patent
 electronic filing system, the document description “Req for Expedited Processing,
 Design Rocket Docket” should be used to ensure efficient processing of the request.
 For applicants who choose to file a design application under 35 U.S.C. chapter 16 and
 the corresponding request under 37 CFR 1.155 by mail, the
 envelope should be addressed to:
 

 Mail Stop Expedited Design
Commissioner for Patents
P.O. Box 1450
Alexandria, VA 22313-1450.

 A request under 37 CFR 1.155 may also be made for
 a previously filed design application. "Mail Stop Expedited Design" should also be
 used when filing a request for expedited examination under 37 CFR 1.155 by
 mail in a previously filed design application. A subsequently filed request under
 37 CFR
 1.155 may also be filed via the USPTO patent electronic filing
 system. In such a case, the document description “Req for Expedited Processing,
 Design Rocket Docket” in the USPTO patent electronic filing system should be used for
 the request to ensure efficient processing. In addition, a subsequently filed request
 under 37 CFR
 1.155 may be filed by facsimile to the centralized facsimile
 number 571-273-8300. 
 

 To facilitate processing of a Request for Expedited Examination,
 the Office strongly encourages use of Form PTO/SB/27 available at www.uspto.gov/
 PatentForms . If Form PTO/SB/27 is not used, then the notations
 “REQUEST FOR EXPEDITED EXAMINATION OF A DESIGN APPLICATION ( 37 CFR 1.155 )”
 and “Doc Code: ROCKET” should be included at the top of the first page of the
 request, and for a subsequently filed request the corresponding application number
 should also be identified.
 

 Requests for expedited examination under
 37 CFR
 1.155 are evaluated by the Director of Technology Center 2900.
 Expedited examination will be initiated provided the application is in condition for
 examination and a complete request under 37 CFR 1.155 (including the fee
 specified at 37 CFR 1.17(k) ) qualifies the
 application for expedited examination. 
 

 Upon a decision by the Director of Technology Center 2900 to grant
 the request for expedited examination, the application is dispatched to an examiner
 for expedited examination. In addition, the applicant is notified that examination is
 being expedited. Expedited treatment under 37 CFR 1.155 occurs through
 initial examination processing and throughout the entire prosecution in the Office.
 Whereas, an application granted special status pursuant to a successful “petition to
 make special” under MPEP § 708.02 is prioritized while it is on the examiner’s
 docket so that the application will be examined out of turn responsive to each
 successive communication from the applicant requiring Office action. For a patentable
 design application, the expedited treatment under 37 CFR 1.155 would be a
 streamlined filing-to-issuance procedure. This procedure further expedites design
 application processing by decreasing clerical processing time as well as the time
 spent routing the application between processing steps. 
 

 Although a request under 37 CFR 1.155 may be filed
 subsequent to the filing of the design application under 35 U.S.C. chapter 16, it is
 recommended that the request and corresponding design application be filed together
 in order to optimize expeditious processing. Any request under 37 CFR 1.155 in
 an international design application designating the United States should be filed
 after publication of the international design application pursuant to Hague Agreement
 Article 10(3), as publication of the international design application is required in
 order to qualify for expedited examination. See 37 CFR 1.155(a)(1) . Any request
 under 37 CFR
 1.155 filed in an international design application will
 generally not be acted upon prior to publication of the application pursuant to
 Article 10(3). Applicants filing international design applications and seeking
 expedited examination in the United States may wish to consider requesting the
 immediate publication of the international design application after registration
 pursuant to Rule 17(1) of the Common Regulations Under the 1999 Act and the 1960 Act
 of the Hague Agreement. 
 

 The Office will not examine an application not in condition for
 examination even if the applicant files a request for expedited examination. See
 37 CFR
 1.155(b) . 
 

 If the Office finds that a request for expedited examination fails
 to comply with one or more of the requirements under 37 CFR 1.155 ,
 but the application is otherwise complete, the applicant will be promptly notified of
 the deficiency. Applicant may submit a renewed request under 37 CFR 1.155 to
 rectify the deficiency. Unless all requirements under 37 CFR 1.155 
 are timely met, the application will await action in its regular turn.
 

 

 

 [top] 

 

 

 
 

 
 

 

 

 

 
 
 
 1501-Statutes and Rules Applicable 

 1502-Definition of a Design 
 1502.01-Distinction Between Design and Utility Patents 

 1502.02-Design Patent Practitioner Bar 

 
 

 1503-Elements of a Design Patent Application Filed Under 35 U.S.C. chapter 16 
 1503.01-Specification 

 1503.02-Drawing 

 
 

 1504-Examination 
 1504.01-Statutory Subject Matter for Designs 
 1504.01(a)-Computer-Generated Electronic Images 

 1504.01(b)-Design Comprising Multiple Articles or Multiple Parts Embodied in a Single Article 

 1504.01(c)-Lack of Ornamentality 

 1504.01(d)-Simulation 

 1504.01(e)-Offensive Subject Matter 

 
 

 1504.02-Novelty 

 1504.03-Nonobviousness 

 1504.04-Considerations Under 35 U.S.C. 112 

 1504.05-Restriction 

 1504.06-Double Patenting 

 1504.07 - 1504.09-[Reserved] 

 1504.10-Priority Under 35 U.S.C. 119(a)-(d), 386(a) and (b) 

 1504.11-1504.19-[Reserved] 

 1504.20-Benefit Under 35 U.S.C. 120 

 1504.21-1504.29-[Reserved] 

 1504.30-Expedited Examination 

 
 

 1505-Term of Design Patent 

 1506-1508-[Reserved] 

 1509-Reissue of a Design Patent 

 1510-Reexamination 

 1511-Protest 

 1512-Relationship Between Design Patent, Copyright, and Trademark 

 1513-Miscellaneous 

 

 

 
 

 
 
 

 
 

 

 
 
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 03/09/2026 20:49:27