Examination

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providing convincing arguments that the rejection should be withdrawn, that rejection must

be indicated as withdrawn in the next Office action, unless such action is a notice of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.