¶ 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--.