Received a Obviousness rejection on design application from USPTO. The prior arts are quite close to our design, except a pattern on the bottom view. However, the pattern on the bottom view is in broken line and no claimed originally.
Here is the question, can I rectify the broken-line pattern to solid line and reclaim it in reply to the obviousness rejection?
MPEP 1504.04 discusses converting originally disclosed broken lines to solid lines:
"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."
MPEP 1504.04(B) 6th paragraph. Emphasis added
I have seen many office actions on design patent applications that we have worked over years, In most cases examiner will not allow reclaiming a portion of the design by converting broken line to solid line.
The MPEP provides an example where removal of three-dimensional surface treatment, such as beading, grooves, or ribs, would not be permitted, but that “an amendment that changes the scope of a design by either reducing certain portions of the drawing to broken lines or converting broken line structure to solid lines is not a change in configuration.” Thus, the examination policy changes appear to be in direct contradiction to the Patent Office’s previously published examination guidelines.
