The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
OFFICE ACTION
Acknowledgement of Applicant’s Response and Summary of Recent Prosecution
Acknowledgement is made of applicant’s response filed April 11, 2023, in which a request for CPA was filed that included suspension of action to stay prosecution pending a decision on the Petition to the Director that was filed on October 3, 2022, challenging the examiner’s Final Restriction of August 1, 2022. Additional requests for suspension of action were subsequently filed and granted following establishment of the CPA, the latest having expired August 10, 2025. In a communication to applicant on September 23, 2025, the petition was dismissed as moot on the basis that the request for CPA had expressly abandoned the old application in which the petition was filed. The period of suspension having now elapsed with no further reply received; prosecution is continued as set forth below.
On review of the application, the examiner has determined that ambiguity concerning the nature of the claim prevents a clear understanding of its intended scope. Because there is considerable uncertainty as to the proper interpretation of the scope of the claim, no determination can be made without resort to conjecture on whether restrictable groups of designs have been included. Accordingly, the examiner considers the restriction requirement set forth in the August 1, 2022 Office action to have been based on speculation; it is therefore obviated, as are the drawing objection and specification objection relating to the provisional election of a single group as raised in the August 1, 2022 Ex parte Quayle action.
In view of the noted ambiguity concerning intended claim scope, the claim is rejected hereinbelow as indefinite under 35 USC 112(b). Additionally, the claim is rejected under 35 USC 171 as being directed to nonstatutory subject matter.
Multiple Embodiments
The present application discloses four separate drawing figures that are identified in the figure description as corresponding to sequentially-numbered “image[s] of a display screen or portion thereof with virtual character”.
No clear understanding is offered in the specification itself of how the various appearances shown between the different “images” relate to one another as a single unitary design applied to an article of manufacture. (See rejection under 35 USC 112(b) given below.) The disclosure may be alternatively interpreted as intended to show images in a transitional sequence, or static images for a set of four display screens, or four individual static designs for a screen, without any clear indication from the specification itself that any one of these represents the intended nature of the design being claimed.
Per MPEP § 1504.05(II)(A), where multiple embodiments of a design are disclosed, the specification must clearly identify and particularize between the embodiments. Here, in the absence of any clear indication of the proper interpretation of the relationship of the various images to the design being claimed, no certain determination can be made at this point as to whether multiple embodiments that may require restriction are include in the application. Restriction may be forthcoming, pending clarification of the relationship of the figures to one another and of their status in regard to the design being claimed.
Claim Rejection – 35 USC §171
The claim is rejected under 35 U.S.C. 171 as being directed to nonstatutory subject matter. 35 U.S.C. 171 defines the proper subject matter for a design patent:
Whoever invents any new, original and ornamental design for an article of manufacture may obtain a patent therefor, subject to the conditions and requirements of this title.
To be considered statutory subject matter under 35 U.S.C. 171, a claimed design must be embodied in a specific “article of manufacture." The phrase "an article of manufacture" has been interpreted to be a tangible object or physical substance. (See Henry Hanger & Display Fixture Corp. of America v. Sel-O-Rak Corp., 270 F.2d 635,640, 123 U.S.P.Q. 3, 6 (5th Cir. 1959).)
A design may be embodied in an article of manufacture (1) as a configuration for an article of manufacture, (2) as a surface ornamentation for an article of manufacture, or (3) a combination of both. (See Gorham v. White, 81 U.S. 511, 525 (1871); In re Schnell, 46 F.2d 203, 209 (CCPA 1931); MPEP § 1502.)
In order for a claimed design to be patentable, it “cannot exist alone merely as a scheme of surface ornamentation”.1 Moreover, regarding designs comprising computer-generated imagery, MPEP § 1504.01(a)(I)(A) indicates that "[m]ere display of a picture on a screen is not significantly different … from the display of a picture on a piece of paper" and is not enough "to convert a picture into a design for an article of manufacture", citing to Ex parte Strijland, 26 USPQ2d 1259, 1263 (Bd. Pat. App. & Int. 1992). Although images merely displayed on a display screen are not considered consider statutory subject matter under 35 USC 171, the Office considers a computer icon or a graphical user interface shown on a display screen to be more than a mere display of a picture on a screen because a computer icon or a GUI is understood to be an integral and active component in the operation of a programmed computer displaying the icon or graphical user interface. (See MPEP § 1504.01(a)(I)(A).)
The title of the instant application, as amended, directs the claim to the ornamental design for a “DISPLAY SCREEN OR PORTION THEREOF WITH VIRTUAL CHARACTER”. The examiner understands “VIRTUAL CHARACTER” in the present context to refer to computer-generated imagery depicting a fictional character—here, a cycloptic anthropomorphic cartoon creature. The term “virtual character” does not specify imagery that acts as “an integral and active component in the operation of a programmed computer” that displays it, as might be inferred in the case of a “graphical user interface” or an “icon”.2
Per MPEP § 1504.01a(I)(B)(A)(1), a computer-generated electronic image shown on a display panel that is not a computer icon or a GUI is considered a mere illustration of a picture displayed electronically; therefore, a claim to a display panel (or a portion thereof) with the image does not satisfy the article of manufacture requirement and should be rejected under 35 USC 171.
The title of the instant application, as incorporated into the claim language, fails to distinguish the claimed design from a mere picture displayed on a medium of display, and therefore does not represent a design for an article of manufacture. Accordingly, the claim does not represent statutory subject matter under 35 USC 171.
Applicant may attempt to overcome this rejection by amending the title and claim language to direct the claim to a design comprising computer-generated imagery that is an integral and active component in the operation of a programmed computer displaying the design, however, the examiner notes, as per MPEP § 1504.01(a)(I)(B)(C)(1)(a), it may not be possible to make such amendment without failing the description requirement of 35 USC 112(a) since the original disclosure as a whole does not appear to suggest or describe the claimed subject matter as a computer icon or a GUI embodied in a display panel or portion thereof.
Claim Rejection – 35 USC §112(b)
The claim is rejected under 35 U.S.C. 112(b) as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor regards as the invention.
The claim is indefinite because the relationship of the various images shown in the drawings to one another and to any particular unitary appearance representing a design for an article of manufacture is not defined or described by the specification.
The drawings include four figures, each differing in appearance, that are described as showing one of four “image[s] of a display screen or portion thereof with virtual character”. No indication is given in the specification of how the differing appearances shown among the figures relate to one another or to any unitary ornamental appearance applied to the “display screen” article designated by the claim language. It is thus unclear whether the multiple images of the design are intended to be interpreted as, e.g., (1) a transitional sequence of images, or as (2) a set of four display screens or display screen portions that show four static images, or as (3) four individual static design embodiments for a screen.
Regarding the first potential interpretation, no language has been included in the specification comparable to that required for transitional designs as provided in the guidance given in MPEP § 1504.01(a)(III), which notes that designs consisting in electronic images that change in appearance during viewing are to be understood as viewed sequentially, and requires that a descriptive statement be included in the specification “describing the transitional nature of the design and making it clear that the scope of the claim does not include anything that is not shown.”
Regarding the second potential interpretation, no description is provided in the title identifying a single entity of manufacture made up by the parts (e.g., set, group, combination, etc.) of the design, nor is any statement provided in the specification to make clear that the claim is directed to the collective appearance of such parts3, as per the requirements outlined in MPEP § 1504.01(b) for designs encompassing multiple articles or parts within an article.
Regarding the third potential interpretation, no description is included per the requirement outlined in MPEP § 1504.05(II)(A) to indicate that multiple embodiments of the design are disclosed and to particularize between them.
The nature of the design being claimed is thus ambiguous, with no clear indication provided by the limited description in the specification as to whether any of the interpretations noted above apply. The intended scope of the claim cannot be determined because the design is amendable to conflicting interpretations, rendering the claim indefinite.
In remarks during prosecution, applicant has referred to the figures as showing a top or bottom or side view of the image4 and has indicated that “[t]he figures themselves clearly show different sides of a singular design for a virtual character”5, suggesting that applicant may be attempting to claim the appearance of the unified three-dimensional form of the character rather than the two-dimensional appearance of surface ornamentation applied to a display screen. However, the examiner notes that no description of the views as sides of a character is included in the specification. Moreover, the examiner notes, interpreting the claim as if it were directed to the simulated three-dimensional form of the character would conflict with the language of the claim itself, which is instead directed to surface ornamentation applied to a display screen article.
This rejection may be overcome by amending the title and specification to clearly identify the intended nature of the claimed design by specifying the relationship among the multiple views disclosed, indicating whether the design comprises a transitional sequence of images, or a “set” of screens or screen portions, or four separate design embodiments, or another relationship that might constitute a unitary design for the designated article. Applicant is cautioned that any such amendment must have description support in the original disclosure. See Ex parte Strijland, supra. To that effect, per the guidelines of MPEP §§ 714.02 and 2163.06(I), in making such amendment, "Applicant should […] specifically point out the support for any amendments made to the disclosure.” Without supporting basis, such amendment may otherwise be construed as new matter prohibited by 35 U.S.C. 132 and 37 CFR 1.121, or may risk failure of the description requirement of 35 USC 112(a).
Conclusion
The claimed design is rejected as set forth above.
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
Contact Information
Any inquiry concerning this communication or earlier communications from the examiner should be directed to IAN F WHITMORE whose telephone number is (571)270-3842. The examiner can normally be reached Monday - Friday 9:30 - 5:30.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Christian McLean can be reached at (571) 270-1996. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/IAN F WHITMORE/
Primary Examiner, Art Unit 2923
10/22/2025
1 See also MPEP § 1502; “[T]he design must be shown not to be mere invention of a picture, irrespective of its manner of use [.]” In re Application of William Schnell, 8 USPQ 19 (CCPA 1931) at 26; and Ex parte Cady 1916 C.D. 57; 232 O.G. 619 (August 28, 1916).
2 In the petition filed October 3, 2022, applicant asserts (at 2) that “A designer of ordinary skill would readily recognize ‘virtual character’ as a computer image design that is integral to the operation of a computer”, but declines to provide reasoning or evidence to support the assertion.
The examiner takes note that computer-generated character imagery may often appear on display screens without any apparent integral connection to the operation of the displaying device, such as, e.g., when the movie “Toy Story” is played on a tablet device. Accordingly, there appears to be no reason to assume that the term “virtual character” as used here necessarily indicates an image with an integral, active role in the operation of its displaying medium in the manner of an icon or GUI as per the meaning used by Strijland.
3 The examiner notes that a claim must be understood as directed to the overall appearance of the design as a whole, and that design protection does not extend to patentably distinct segregable parts of a design. Ex parte Sanford, 1914 C.D. 69, 204 OG 1346 (Comm’r Pat. 1914); Blumcraft of Pittsburgh v. Ladd, 238 F. Supp. 648, 144 USPQ 562 (D.D.C.1965).
4 See October 3, 2022 Petition, at 2.
5 See remarks accompanying the response filed July 13, 2022, at 2.