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[BobRoberts]

I'm filing my first solo Design Patent Application- in law firm life, I've handled Office Action Responses to Design Patents (a while back), but never filed one from scratch...

So...  Embarrassed to ask, but here it goes... I believe I know what needs to be included, but need some guidance more to the order, and when to place page breaks.

From 37 CFR 1.154:
(b) The specification should include the following sections in order:

(1) Preamble, stating the name of the applicant, title of the design, and a brief description of the nature and intended use of the article in which the design is embodied.
(2) Cross-reference to related applications (unless included in the application data sheet).
(3) Statement regarding federally sponsored research or development.
(4) Description of the figure or figures of the drawing.
(5) Feature description.
(6) A single claim.

(c) The text of the specification sections defined in paragraph (b) of this section, if applicable, should be preceded by a section heading in uppercase letters without underlining or bold type.


I was planning on including (and formatting ) the Design Patent Application as follows:
First Page as a Cover Page similar to what I use for utility applications, including:
Express Mail info
Date of Deposit

                                            Attorney Reference No.  <     >

 "IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
 APPLICATION FOR UNITED STATES DESIGN PATENT


INVENORS:   <Name>
 
ATTORNEY:   <Name and Address>

Second Page:
                                      in header: PATENT
                                                    REF No.

                    <TITLE>
Cross-Ref to related applications not applicable so omitted
No Federal Sponsored Research, so omitted

DESCRIPTION
Fig. 1 is a ______ view of a ________ ;
Fig. 2 is a ______ view of a/the _________;
Etc…

CLAIM
The ornamental design for a _________________, for the <basic functionality/description  of use>, as substantially shown and described.

((When I look at issued Design Patents, the Claim and Description of Figures is reversed, from what I’ve just stated above- I’ve placed them in this order because of what the CFR says…  Just typing to reconcile the apparent discrepancy))

Third Page (and so on);
Figures… 


I will include a Declaration of Inventors, and appropriate Application and Fee Forms for Design Patent. And eventually, if applicable, an IDS and any Assignment Documents.


Does this sound correct (re format and general content for a Design Application)?
What is a “Feature Description, mentioned in 37 CFR 1.154 (5)?  Some Describing of a feature of the drawings, for example, any broken lines shown?

Thanks for any input...  Hiding under a fireproof rock.

[patentsusa]

It sounds like you are on the right track.  Follow the format of an issued design patent and you'll do fine.  No idea what a feature description is but I don't think you want to include it.

The real trick is in the drawings.  Be sure to include views from all angles and don't include more detail than is needed.  In other words, don't show things that are irrelevant to what you are trying to claim.  A good patent draftsman experienced with working with the design group is worth his or her weight in gold.

[BobRoberts]

Thanks patent USA.

"Follow the format of an issued design patent and you'll do fine.  No idea what a feature description is but I don't think you want to include it."

The CFR seems to list the "Description" section before the "Claim" Section, whereas issued Design Patents seem to list "Claim" section first, and then the "Description" Section. 

Can each be on the same page (but different from the pages showing the Figures)?  And, which should come first in the application- Descriptio or Claims?

Thanks
 

[Yak]

Your format is fine, that is basically how we file ours.  I guess at some point the USPTO reformats the order.  
As for a feature description, I think you are correct.  If the drawings require some descriptive text, it would follow the figure descriptions; ie, broken line statement, claiming a right glove when only the left glove is shown in the drawing views, etc.
You can always find a patent and use public pair to take a look at how the application was filed.  For example D555876 application #29/272,313 was one I just looked up.  

[Yak]

Typically, we file Specification on one page(s); claim on one page; and drawings on one page(s).  File the description first, like the CFR says. 

[bleedingpen]

                                            Attorney Reference No.  <     >

 "IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
 APPLICATION FOR UNITED STATES DESIGN PATENT


INVENORS:   <Name>
 
ATTORNEY:   <Name and Address>

Second Page:
                                      in header: PATENT
                                                    REF No.

                    <TITLE>
Cross-Ref to related applications not applicable so omitted
No Federal Sponsored Research, so omitted

DESCRIPTION
Fig. 1 is a ______ view of a ________ ;
Fig. 2 is a ______ view of a/the _________;
Etc…

CLAIM
The ornamental design for a _________________, for the <basic functionality/description  of use>, as substantially shown and described.

((When I look at issued Design Patents, the Claim and Description of Figures is reversed, from what I’ve just stated above- I’ve placed them in this order because of what the CFR says…  Just typing to reconcile the apparent discrepancy))

I have seen apps get bounced as non-compliant because the claims and description were reversed.  I have also filed some with the reversal and they have went right through, so it will depend entirely on the Examiner.

It looks like you are paper filing a design app?  If so, the drawings are so important that I would make sure to E-file design applications.  You run the risk of all kinds of issues with the USPTO scanning the drawings in.

[BobRoberts]

Thanks for everyone's input. 

Yak, I don't know why I didn't think about PAIR.  Thanks

[Robert K S]

CLAIM
The ornamental design for a _________________, for the <basic functionality/description  of use>, as substantially shown and described.

I don't know a lot about design patents (I've only ever filed one myself) and I can't cite to the particular case law or reg, but I have it in my notes that as of 1998 the word "substantially" is not permitted in the claim of a design patent.

If anyone can dig up the authority on this, I'd be grateful, as would Bob, presumably.

[Yak]

I do not have law or rules to support either, but off of the USPTO website:
A Single Claim

---   A design patent application may only include a single claim. The claim defines the design which applicant wishes to patent, in terms of the article in which it is embodied or applied. The claim must be in formal terms to “The ornamental design for (the article which embodies the design or to which it is applied) as shown.” The description of the article in the claim should be consistent in terminology with the title of the invention.
When there is a properly included special description of the design in the specification, or a proper showing of modified forms of the design, or other descriptive matter has been included in the specification, the words “and described” should be added to the claim following the term “shown.” The claim should then read “The ornamental design for (the article which embodies the design or to which it is applied) as shown and described.”   ----

I file a lot of design applications and never use the word "substantially" in the claim.  I do not typically use "...for the <basic functionality/description  of use>,"  either.  If some functionality is implied in the title i usually just let that do the talking. 

[Robert K S]

According to my source (a PRG review lecturer), the proscription against use of the word "substantially" in a design patent claim comes from the 1988 Board appeal Ex parte Sussman, 8 USPQ2d 1444 (BPAI).  The claim read:

"The ornamental design for a serving tray substantially as shown and described."

In the appeal decision, a footnote follows the claim:

The claim format utilized herein is improper (37 C.F.R. 1.153 and M.P.E.P. §1503.01, page 1500-2, "Claim"), because of the inclusion of the term "substantially."  We have, in this decision, considered the claim as directed to the ornamental design for a serving tray as shown and described (the description referring herein only to the reference in the specification to the various figures).  Compare with In re Blum. 374 F.2d 904, 153 USPQ 177 (C.C.P.A. 1967); Ex parte Kahn, 116 O.G. 2008, 1905 C.D. 212; Ex parte Kurz, 113 O.G. 2215, 1904 C.D. 557. As stated by Commissioner Allen in Ex parte Kahn:

"Whatever form the claim takes, it includes nothing more nor less than the design which the appellant discloses as the one which he has invented. He cannot change his design by changing the wording of his claim, and the attempt to do so is objectionable because [it is] likely to confuse the public."

An older edition of the MPEP (7th Edition, Chapter 1500, page 26) even used to offer examiners some form paragraphs for making rejections based on Sussman:

II. 35 U.S.C. 112, SECOND PARAGRAPH

Defects in claim language give rise to a rejection of the claim under the second paragraph of 35 U.S.C. 112. Typical examples include:

(A) Use of phrases in the claim such as "substantially as shown," "or similar article," "or the like," or equivalent terminology. Ex parte Sussman, 8 USPQ2d 1443 (Ed. Pat. App. & Inter. 1988); Ex parte Pappas, 23 USPQ2d 1636 (Bd. Pat. App. & Inter. 1992).

¶ 15.22.01 Rejection, 35 U.S.C. 112, 2nd Paragraph ("Substantially" in Claim)
The claim is rejected under 35 U.S.C. 112, second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which applicant regards as the invention. The claim is indefinite because of the use of the term "substantially" therein.  Cancellation of said term will overcome the rejection. See Ex parte Sussman, 8 USPQ2d 1443 (Bd. Pat. App. & Inter. 1988).  Ex parte Pappas, 23 USPQ2d 1636 (Bd. App. & Inter. 1992) and 37 CPR 1.153.

Examiner Note:
This rejection should be used where there is another rejection in the Office action. For issue with an examiner's amendment, see form paragraph 15.69.

¶ 15.69 Remove Indefinite Language ("Substantially") by Examiner's Amendment
The term "substantially" in the claim renders the claim indefinite under 35 U.S.c. 112,second paragraph,and37CFR 1.153. See Ex parte Sussman, 8 USPQ2d 1443 (Bd. Pat. App. & Inter. 1988) and Ex parte Pappas, 23 USPQ2d 1636 (Bd. Pat. App. & Inter. 1992). The term "substantially" has been cancelled from the claim by authorization of [1] in a telephone interview on [2].

...but this text has been removed from the MPEP subsequently, so who knows if examiners are still making rejections based on Sussman.  Whatever the case, my source thinks Sussman is still good law (having been cited by a few BPAI decisions, though none at the CAFC level), and that putting "substantially" into your design patent claim buys you nothing.