How can applicants overcome a rejection due to unclear use of coloring in international design applications?

When coloring in international design application drawings is not described in the specification, it can lead to a rejection under 35 U.S.C. 112(b) for indefiniteness. To overcome this rejection, applicants can insert a statement in the specification explaining the purpose of the coloring. The MPEP provides the following guidance:

“If the coloring identifies matter for which protection is not sought, applicant may overcome this rejection by inserting a statement similar to the following into the specification immediately preceding the claim, provided such statement does not introduce new matter (see 35 U.S.C. 132): –The portion of the design shown in the color [2] is for the purpose of illustrating [3] and forms no part of the claimed design.–“

This statement clarifies the scope of the claimed design by explicitly excluding the colored portions from protection.

To learn more:

• international design applications
• coloring
• 35 U.S.C. 112(b)
• indefiniteness
• design drawings