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`UNITED STATES DEPARTMENT OF COMMERCE
`United States Patent and TrademarkOffice
`Address; COMMISSIONER FOR PATENTS
`P.O. Box 1450
`Alexandria, Virginia 22313-1450
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`29/788,007
`
`02/08/2021
`
`Andreas J. Boehm
`
`80040US014
`
`4342
`
`3M INNOVATIVE PROPERTIES COMPANY
`PO BOX 33427
`ST. PAUL, MN 55133-3427
`
`OUM, SHARONSEJIN
`
`ART UNIT
`
`2925
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`PAPER NUMBER
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`NOTIFICATION DATE
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`DELIVERY MODE
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`02/10/2022
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`ELECTRONIC
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`Please find below and/or attached an Office communication concerning this application or proceeding.
`
`The time period for reply, if any, is set in the attached communication.
`
`Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the
`following e-mail address(es):
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`LegalUSDocketing@mmm.com
`
`PTOL-90A (Rev. 04/07)
`
`

`

`Application No.
`Applicant(s)
`29/788 ,007
`Boehm etal.
`
`Office Action Summary Art Unit|AIA (FITF) StatusExaminer
`SHARON S OUM
`2925
`Yes
`
`
`
`-- The MAILING DATEofthis communication appears on the cover sheet with the correspondence address --
`Period for Reply
`
`A SHORTENED STATUTORY PERIOD FOR REPLYIS SET TO EXPIRE 3 MONTHS FROM THE MAILING
`DATE OF THIS COMMUNICATION.
`Extensions of time may be available underthe provisions of 37 CFR 1.136(a). In no event, however, may a reply betimely filed after SIX (6) MONTHSfrom the mailing
`date of this communication.
`If NO period for reply is specified above, the maximum statutory period will apply and will expire SIX (6) MONTHSfrom the mailing date of this communication.
`-
`- Failure to reply within the set or extended period for reply will, by statute, cause the application to become ABANDONED (35 U.S.C. § 133}.
`Any reply received by the Office later than three months after the mailing date of this communication, evenif timely filed, may reduce any earned patent term
`adjustment. See 37 CFR 1.704(b).
`
`Status
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`
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`1) Responsive to communication(s) filed on 11/9/2021.
`C} A declaration(s)/affidavit(s) under 37 CFR 1.130(b) was/werefiled on
`2a)¥) This action is FINAL.
`2b) (J This action is non-final.
`3)02 An election was madeby the applicant in responseto a restriction requirement set forth during the interview
`on
`; the restriction requirement and election have been incorporated into this action.
`4\0) Since this application is in condition for allowance except for formal matters, prosecution as to the merits is
`closed in accordance with the practice under Exparte Quayle, 1935 C.D. 11, 453 O.G. 213.
`
`Disposition of Claims*
`1 is/are pending in the application.
`)
`Claim(s)
`5a) Of the above claim(s) ___ is/are withdrawn from consideration.
`Cj] Claim(s)
`is/are allowed.
`Claim(s) 1 is/are rejected.
`(1 Claim(s)__is/are objectedto.
`Cj) Claim(s
`are subjectto restriction and/or election requirement
`S)
`* If any claims have been determined allowable, you maybeeligible to benefit from the Patent Prosecution Highway program at a
`participating intellectual property office for the corresponding application. For more information, please see
`http://www.uspto.gov/patents/init_events/pph/index.jsp or send an inquiry to PPHfeedback@uspto.gov.
`
`) ) ) )
`
`Application Papers
`10)¥] The specification is objected to by the Examiner.
`11) The drawing(s) filed on 11/9/2021 is/are: a)(¥) accepted or b)() objected to by the Examiner.
`Applicant may not request that any objection to the drawing(s) be held in abeyance. See 37 CFR 1.85(a).
`Replacement drawing sheet(s) including the correction is required if the drawing(s) is objected to. See 37 CFR 1.121 (d).
`
`Priority under 35 U.S.C. § 119
`12) Acknowledgment is made of a claim for foreign priority under 35 U.S.C. § 119(a)-(d)or (f).
`Certified copies:
`_—_c)L) None ofthe:
`b)L) Some**
`a)¥) All
`1.2 Certified copies of the priority documents have been received.
`2.[v} Certified copies of the priority documents have beenreceived in Application No. 29/667,734.
`3.2.) Copies of the certified copies of the priority documents have been receivedin this National Stage
`application from the International Bureau (PCT Rule 17.2(a)).
`* See the attached detailed Office action for a list of the certified copies not received.
`
`Attachment(s)
`
`1) ([] Notice of References Cited (PTO-892)
`
`2) (J Information Disclosure Statement(s) (PTO/SB/08a and/or PTO/SB/08b)
`Paper No(s)/Mail Date
`U.S. Patent and Trademark Office
`
`3) (J Interview Summary (PTO-413)
`Paper No(s)/Mail Date
`(Qj Other:
`
`4)
`
`PTOL-326 (Rev. 11-13)
`
`Office Action Summary
`
`Part of Paper No./Mail Date 20220204
`
`

`

`Application/Control Number: 29/788,007
`Art Unit: 2925
`
`Page 2
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`Notice of Pre-AlA or AIA Status
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`The present application, filed on or after March 16, 2013, is being examined underthe
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`first inventor to file provisions of the AIA.
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`OFFICE ACTION
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`INTRODUCTION
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`Acknowledgement is made of the Applicant's Remarks and Amendment of 11/9/2021.
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`The specification objections have been overcome. However, the Applicant's amendmentto the
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`broken line description has necessitated a new objection, as set forth below. The amended
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`drawings of 11/9/2021 do not fully overcome the rejection under 35 U.S.C. 112(a) and (b) set
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`forth in the previous action. The issue pointed out in the rejection have not been sufficiently
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`addressed and therefore the claim is again rejected. Additionally, the amended design does not
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`meetthe written description requirement of 35 U.S.C. 112(a). Therefore, the claim is rejected
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`under 35 U.S.C. 112(a). Accordingly, THIS ACTION IS MADE FINAL. See MPEP 706.07(a).
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`SPECIFICATION OBJECTION - Broken Line Description
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`The broken line description is objected to for its current location after the FIGURE 4
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`description. Per 37 CFR 1.154, the broken line description should be located after the figure
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`descriptions and before the claim. Correction is required.
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`REJECTION - 35 U.S.C. 112(a) and (b)
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`The claim is rejected under 35 U.S.C. 112(a) and (b), as the claimed invention is not
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`described in suchfull, clear, concise and exact terms as to enable any person skilled in the art
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`to make and use the same, and fails to particularly point out and distinctly claim the subject
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`matter which the inventor or a joint inventor regards as the invention.
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`The claim is indefinite and nonenabling because of deficiencies and inconsistencies in
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`the figures that prevent a clear understanding of the appearanceof the claimed design.
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`Specifically, the exact and complete appearanceof the right side of the dispenser cannot
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`be determined. FIG. 2 showsa vertically elongated surface in the upper section of the dispenser
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`that continues downward to the middle section (highlighted in gray in the image on the following
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`page), whereas FIG. 4 shows the corresponding feature in the middle section with a single
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`vertical line. See label A in the image on the following page.
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`

`

`Application/Control Number: 29/788,007
`Art Unit: 2925
`
`Page 3
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`Additionally, in FIG. 4, it is difficult to determine what the vertical line (see label B below)
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`that spans the upper and middle sections of the dispenserillustrates becauseit is not shown in
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`any otherviews.
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` FIG. 2
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`To overcome this rejection, it is suggested that the design be shownclearly, completely
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`and consistently.
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`Any amended replacement drawing sheet should includeall of the figures appearing on
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`the immediate prior version of the sheet, even if only one figure is being amended. The figure or
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`figure number of an amended drawing should not be labeled as amended. A marked-up copyof
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`the drawing sheet(labeled as "Annotated Sheet") including an annotation showing that all the
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`figures on that drawing sheet have been canceled must be presented in the amendmentor
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`remarkssection that explains the change to the drawings. Each drawing sheet submitted after
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`the filing date of an application must be labeled in the top margin as either "Replacement Sheet"
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`or "New Sheet" pursuant to 37 CFR 1.121(d). If the changes are not accepted by the examiner,
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`

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`Application/Control Number: 29/788,007
`Art Unit: 2925
`
`Page 4
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`the applicant will be notified and informed of any required corrective action in the next Office
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`action.
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`If the design cannotbeclarified without changing its appearance, and there is no
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`description of this changed appearancein the original disclosure, then applicant may wish to
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`amendthe design such that the non-enabled areas are removed from the claim by converting
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`them to broken lines. Any amendmentto the claim must meet the written description
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`requirement of 35 USC 112(a). Thatis, it must be apparent that applicant was in possession of
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`the amended design atthe time offiling. See MPEP 1504.04.1.C. This pertains to the addition or
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`removalof parts of the design, as well as the conversion of solid lines to broken lines and vice
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`versa. See 35 USC 132 and 37 CFR 1.121 (f) for new matter.
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`REJECTION - 35 U.S.C. 112(a)
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`The claim is finally rejected under 35 U.S.C. 112(a) as failing to comply with the
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`description requirement. The original disclosure does not reasonably convey to a designerof
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`ordinary skill in the art that Applicant was in possession of the design now claimedat the time
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`the application wasfiled. See /n re Daniels, 144 F.3d 1452, 46 USPQ2d 1788 (Fed. Cir. 1998);
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`In re Rasmussen, 650 F.2d 1212, 211 USPQ 323 (CCPA 1981).
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`The appearanceof the uppersection of the dispenser has been changed.
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`Specifically, the amended FIG. 4 showsa vertical line in the upper section of the
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`dispenser that is not shownin the original FIG. 4. See the line indicated with an arrow in the
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`image below.
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`
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`Original FIG. 4
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`AmendedFIG. 4
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`

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`Application/Control Number: 29/788,007
`Art Unit: 2925
`
`Page 5
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`The introduction of this line creates a new design that was not describedin the original
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`disclosure. There is no support in the application as originally filed for an understanding of the
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`altered appearanceof the claimed subject matter shown in the amended design. To overcome
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`this rejection, applicant may attempt to demonstrate that the original disclosure establishes that
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`he or she wasin possession of the amended subject matter, or amend the drawings suchthat
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`the amendment meets the written description requirement of 35 USC 112(a). See MPEP
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`1504.04.1.C.
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`The clann is rejected as set forth above.
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`CONCLUSION
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`Apolicant’s amendment necessilaied the new ground(s) of rejection presented in ihis
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`Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). Applicantis
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`reminded of the extension of time policy as sel forth in 37 CFR 1.136(a).
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`A shortened statutory period for reply to this final action is set to expire THREE
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`
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`MONTHS from the mailing date of this action. In the eventafirst reply is filed within TWO
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`MONTHS of the mailing date of this final action and the advisory action is not mailed until after
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`the end of the THREE-MONTH shortenedstatutory period, then the shortened statutory period
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`will expire on the date the advisory action is mailed, and any extension fee pursuant to 37
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`CFR 1.136(a) will be calculated from the mailing date of the advisory action.
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`In no event,
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`however, will the statutory period for reply expire later than SIX MONTHS from the mailing date
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`of this final action.
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`Anyinquiry concerning this communication or earlier communications from the examiner
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`should be directed to SHARON S. OUM whosetelephone numberis 571-270-3033. The
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`examiner can normally be reached on Monday- Friday, 9am - 5pm, EST.
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`Examinerinterviews are available via telephone, in-person, and video conferencing
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`using a USPTO supplied web-basedcollaboration tool. To schedule an interview, applicantis
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`encouraged to use the USPTO AutomatedInterview Request (AIR)at
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`http://www.uspto.gov/interviewpractice.
`
`If attempts to reach the examiner by telephone are unsuccessful, the examiner’s
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`supervisor, Dana Weiland can be reached on 571-270-0253. The fax phone numberfor the
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`organization where this application or proceeding is assigned is 571-273-8300.
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`

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`Application/Control Number: 29/788,007
`Art Unit: 2925
`
`Page 6
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`Information regarding the status of an application may be obtained from the Patent
`
`Application Information Retrieval (PAIR) system. Status information for published applications
`
`may be obtained from either Private PAIR or Public PAIR. Status information for unpublished
`
`applications is available through Private PAIR only. For more information about the PAIR
`
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`PAIR system, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you
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`would like assistance from a USPTO CustomerService Representative or access to the
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`automated information system, call 800-786-9199 (IN USA OR CANADA)or 571-272-1000.
`
`/SHARON S OUM/
`Primary Examiner, Art Unit 2925
`
`