What options do applicants have to overcome rejections under 35 U.S.C. 112(a) and (b) in international design applications?

This page is an FAQ based on guidance from the Manual of Patent Examining Procedure. It is provided as guidance, with links to the ground truth sources. This is information only: it is not legal advice.

Applicants have several options to overcome rejections under 35 U.S.C. 112(a) and (b) in international design applications due to insufficient drawing disclosure. The MPEP suggests the following approach:

“Applicant may indicate that protection is not sought for those portions of the reproductions which are considered indefinite and nonenabling in the rejection under 35 U.S.C. 112 above by amending the reproductions to color those portions or convert those portions to broken lines and by amending the specification to include a statement that the portions of the [1] shown in broken lines form no part of the claimed design or a statement that the portions of the [1] shown by coloring form no part of the claimed design provided such amendments do not introduce new matter (see 35 U.S.C. 132, 37 CFR 1.121).“

This approach allows applicants to clarify the scope of their design by excluding problematic portions from the claimed design, either through coloring or broken lines, accompanied by an appropriate statement in the specification.