How can applicants overcome a rejection due to unclear use of coloring 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.

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.