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."
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.