DETAILED ACTION
General Information
The response filed March 27, 2025 is acknowledged and has been entered. Groups II-VIII withdrawn from further consideration by the examiner, 37 CFR 1.142(b), as being for the nonelected design. Election was made without traverse in the reply filed on March 27, 2025.
Objection: Drawings
The drawings are objectionable in view of the above election. The elected group, Group I, consists solely of Reproduction 1.0. As applicant did not traverse the requirement for restriction, Reproductions 2.0-5.0 must be cancelled as being for a nonelected embodiment.
Applicant has identified reproductions 2.0-5.0 as “reference views”. The term “reference view” has no special meaning in U.S. practice. Accordingly, the reference view will be treated as another view of the design, and any inconsistencies between the reference view and the other figures of the claimed design may cause uncertainty as to the scope of the claim, resulting in a rejection under 35 U.S.C. 112(a) and (b), as nonenabling and indefinite. A reference view described in the description as not included in the claimed design may result in uncertainty as the scope of the design claimed where the reference view includes features of the claimed design shown in the other views. MPEP § 2920.04(a)(II). There is also no basis in the original disclosure for the identification of reproductions 2.0-5.0 as “reference views”, as detailed in the objection under 35 U.S.C. 132 set forth below.
Corrected drawing sheets are required in reply to the Office action to avoid abandonment of the application. Any amended replacement drawing sheet should include all of the figures appearing on the immediate prior version of the sheet, even if only one figure is being amended. The figure or figure number of an amended drawing should not be labeled as “amended.” If a drawing figure is to be canceled, the appropriate figure must be removed from the replacement sheet, and where necessary, the remaining figures must be renumbered and appropriate changes made to the brief description of the several views of the drawings for consistency. Additional replacement sheets may be necessary to show the renumbering of the remaining figures. If all the figures on a drawing sheet are canceled, a replacement sheet is not required. A marked-up copy of the drawing sheet (labeled as “Annotated Sheet”) including an annotation showing that all the figures on that drawing sheet have been canceled must be presented in the amendment or remarks section that explains the change to the drawings. Each drawing sheet submitted after the filing date of an application must be labeled in the top margin as either “Replacement Sheet” or “New Sheet” pursuant to 37 CFR 1.121(d). If the changes are not accepted by the examiner, the applicant will be notified and informed of any required corrective action in the next Office action.
When preparing new or replacement drawings, be careful to avoid introducing new matter. New matter is prohibited by 35 U.S.C. 132 and 37 CFR 1.121(f).
Objection: Specification
In view of the above election, the description of the reproductions 2.0-5.0 must be cancelled as being for a nonelected embodiment.
Objection: 35 U.S.C. 132
The identification of reproductions 2.0-5.0 as reference views is objected to under 35 U.S.C. 132 and 37 CFR 1.121 as introducing new matter. The original disclosure does not reasonably convey to a designer of ordinary skill in the art that the inventor was in possession of the amended subject matter at the time the application was filed. See In re Rasmussen, 650 F.2d 1212, 211 USPQ 323 (CCPA 1981).
In the original disclosure, reproductions 2.0-5.0 are identified as distinct designs. Hague Administrative Instructions Section 405 states “When the same industrial design is represented from different angles, the numbering shall consist of two separate figures separated by a dot (e.g. 1.1, 1.2, 1.3, etc. for the first design, 2.1, 2.2, 2.3, etc. for the second design, and so on).” MPEP § 2909.02. As reproductions 2.0-5.0 were identified as separate designs, they cannot be now described as reference views of reproduction 1.0.
To overcome this rejection, applicant may attempt to demonstrate (by means of argument or evidence) that the original disclosure establishes that the inventor had possession of the amended claim or cancel reproductions 2.0-5.0 and the description of them as reference views.
Refusal: 35 U.S.C. 171
The claim is refused 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 “an article of manufacture.” In re Zahn, 617 F.2d 261, 268, 204 U.S.P.Q. 988, 995 (CCPA 1980). 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); Pelouze Scale & Mfg. Co. v. American Cutlery Co., 102 F. 916, 918 (7th Cir. 1900). Kim Craftsmen, Ltd. v. Astra Products, Inc., 212 U.S.P.Q. 268 (D.N.J. 1980); 1 E. Lipscomb, Walker on Patents, 2:11 (1984), 1 W. Robinson, The Law of Patents, 200 (1890).
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. Gorham v. White, 81 U.S. 511, 525 (1871); In re Schnell, 46 F.2d 203, 209 (CCPA 1931); MPEP § 1502.
The claim is understood to be directed to the class of designs referred to as Computer-Generated Icons, described in MPEP § 1504.01(a).
Pursuant to the guidelines for examination of design patent applications for computer-generated icons, 1185 O.G. 60, 61 F.R. 11380 (1996), a design for a computer-generated icon may be considered statutory subject matter if the following conditions are present:
1) The computer screen, monitor, other display panel, or portion thereof is shown in broken or solid lines with the icon displayed on it, and
2) The claim is directed to the subject matter as embodied in an article of manufacture.
The subject matter of the instant application does not meet these conditions. In the present application, there is insufficient indication that a computer screen, monitor, other display panel, or a portion of any of those articles, is shown in the drawings as required in item (1) above. Disclosure of a graphic design is insufficient indication that an article of manufacture is being shown, because a graphic design may represent any form of two-dimensional artwork, image or surface ornamentation. The article of manufacture cannot be assumed but must be specifically shown. Consequently, the instant design is unpatentable since it is not clearly embodied in an article of manufacture which meets the guidelines for Computer-Generated Icons. See Ex parte Strijland, 26 U.S.P.Q.2d 1259 (BdPatApp & Inter 1992), Ex parte Tayama, 24 U.S.P.Q.2d 1614 (BdPatApp & Inter 1992), Ex parte Donoghue, 26 U.S.P.Q.2d 1266 (BdPatApp & Inter 1992); Ex parte Donoghue, 26 U.S.P.Q.2d 1271 (BdPatApp & Inter 1992), and Ex parte Donaldson, 26 U.S.P.Q.2D 1250 (BdPatApp & Inter 1992).
Applicant may attempt to overcome the above refusal by where possible amending the claim so that the article of manufacture is clearly shown and described, without the introduction of new matter.
It is the understanding of the examiner that in showing an electronic device, the edges of the device may be flush with the edges of the design. Therefore, it is sometimes possible to overcome a rejection under 35 U.S.C. 171 by clarifying the showing of the article of the manufacture by including a broken line without introducing new matter. For example, applicant may include a broken line immediately adjacent to the outer edge perimeter of the solid line rectangles to represent the electronic device. Fig. 23 from U.S. Patent No. D567,249, reproduced below, is an example of an immediately adjacent broken line.
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Alternately, applicant may place the broken line two line-widths adjacent to the outer edge perimeter of the design to show an electronic device. However, applicant is reminded that the addition of lines, broken or full, that enclose or define additional areas or boundaries not shown in the original disclosure, may be considered new matter.
When a drawing is so amended, a statement describing the broken lines as showing the electronic device must be included. For example:
--The outermost broken lines illustrate an electronic device and form no part of the claimed design.--
If applicant prepares new drawings, care must be taken to avoid the introduction of new matter. New matter is prohibited by 35 U.S.C. 132 and 37 CFR 1.121(f). Similarly, in amending the claim, applicants are advised to comply with the written description requirement of 35 U.S.C. 112(a), and make sure any amendment is supported by the original disclosure.
That is, it must be apparent that applicant was in possession of the amended design at the time of filing. This pertains to either the addition to, or the removal of, any elements shown in the original disclosure of the design. Additionally, the solid line claimed subject matter cannot change in character because the appearance of these lines is part of the original disclosure of the claimed design. In 2D type design patents, the solid line image is exactly the claimed design, and is not representative of the claimed design, as is the case with 3D type design patents. No “improvement” of line quality in the claimed solid lines is possible without failing the written description requirement of 35 USC 112(a).
Conclusion
The claim stands refused under 35 U.S.C. 171. The prior art made of record and not relied upon is considered pertinent to the appearance of the claimed design.
Applicant is reminded that any reply to this Refusal must be signed either by a patent practitioner (i.e., a patent attorney or agent registered to practice before the United States Patent and Trademark Office) or by the applicant. If the applicant is a juristic entity, the reply must be signed by a patent practitioner. See 37 CFR 1.33(b).
Discussion on the Merits
All discussions between the applicant and the examiner regarding the merits of a pending application will be considered an interview and are to be made of record. See MPEP § 713. The examiner will not discuss the merits of the application with applicant's representative if the representative is not registered to practice before the USPTO. Appointment as applicant’s representative before the International Bureau pursuant to Rule 3 of the Common Regulations under the Hague Agreement does NOT entitle such representative to represent the applicant before the USPTO. Furthermore, an applicant that is a juristic entity must be represented by a patent attorney or agent registered to practice before the USPTO. Additional information regarding interviews is set forth below.
Telephonic or In Person Interviews
A telephonic or in person interview may only be conducted with an attorney or agent registered to practice before the USPTO (“registered practitioner”) or with a pro se applicant (an applicant who is the inventor and who is not represented by a registered practitioner).
The registered practitioner may either be of record or not of record. To become “of record,” a power of attorney (POA) in accordance with 37 CFR 1.32 must be filed in the application. Form PTO/AIA /80 “Power of Attorney to Prosecute Applications Before the USPTO,” available at https://www.uspto.gov/patents/apply/forms, may be used for this purpose. See MPEP § 402.02(a) for further information. Interviews may also be conducted with a registered practitioner not of record provided the registered practitioner can show authorization to conduct an interview by completing, signing and filing an “Applicant Initiated Interview Request Form” (PTOL-413A) (available at the USPTO web page indicated above). See MPEP § 405. For acceptable ways to submit forms to the USPTO, see “When Responding to Official USPTO Correspondence” below.
Responding to Official USPTO Correspondence
The USPTO transacts business in writing. All replies must be signed in accordance with 37 CFR
1.33(b). Pursuant to 37 CFR 1.33(b)(3), a reply submitted on behalf of a juristic applicant must be signed by an attorney or agent registered to practice before the USPTO. Applicants may submit replies to Office actions only by:
Online via the USPTO's Electronic Filing System‐Web (EFS‐Web) (Registered eFilers only) https://www.uspto.gov/patents/apply
Mail: Commissioner for Patents, P.O. Box 1450, Alexandria, VA, 22313‐1450
Facsimile to the USPTO's Official Fax Number (571‐273‐8300)
Hand‐carry to USPTO's Alexandria, Virginia Customer Service Window
See https://www.uspto.gov/patents/maintain/responding-office-actions for more information.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Rachel A. Voorhies whose telephone number is (571)270-3756. The examiner can normally be reached on Monday-Friday from 9 AM to 5 PM. 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 P. 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.
/RACHEL A. VOORHIES/Primary Examiner, Art Unit 2923